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
87
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