Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 87


                  Appeal No.  1997-3221                                                                                          
                  Application No.  08/249,241                                                                                    
                  NO:2 or the GluR3B receptor having amino acid sequence of residues 1-866 of                                    
                  SEQ ID NO:4 as required by the claim.  In re Ochiai, 71 F.3d 1565, 1570,     37                                
                  USPQ2d 1127, 1131 (Fed. Cir. 1995); In re Fine, 837 F.2d 1071, 1074,                                           
                  5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988).  We also do not find that there was a                                 
                  reasonable expectation that one could have obtained such a receptor sequence                                   
                  required to perform the claimed methods.  In re O’Farrell, 858 F.2d 894, 904,                                  
                  7 USPQ2d 1673, 1681 (Fed. Cir. 1988)(obviousness also requires a “reasonable                                   
                  expectation of success”).                                                                                      
                          The examiner has the burden of supplying a factual basis to support his                                
                  obviousness rejection.  In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443,                                    
                  1445 (Fed. Cir. 1992).  We also remind the examiner that conclusions of                                        
                  obviousness must be based upon facts, not generality.  In re Warner, 379 F.2d                                  
                  1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057                                         
                  (1968);  In re Freed, 425 F.2d 785, 788, 165 USPQ 570, 571 (CCPA 1970).                                        
                          In our opinion, on these facts, the examiner failed to meet his burden of                              
                  establishing a prima facie case of obviousness.                                                                
                          Where the examiner fails to establish a prima facie case, the rejection is                             
                  improper and will be overturned.  In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,                              
                  1598 (Fed. Cir. 1988).                                                                                         
                          Having determined that the examiner has not established a prima facie case                             
                  of obviousness, we find it unnecessary to discuss the Zimmerman Declaration                                    





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