Appeal No. 1997-3221
Application No. 08/249,241
Claim 31:
We note the examiner’s statement (Answer, page 8) that “[t]he disclosure of
the sequence of human GluR4B as amino acids 1-881 of SEQ ID NO:2 is the
recitation of an inherent property of a protein that was known to exist and does not
make that compound unobvious.”
In response, appellants cite (Reply Brief71, page 1) In re Spormann,
363 F.2d 444, 448, 150 USPQ 449, 452 (CCPA 1966) for the position that “[t]hat
which may be inherent is not necessarily known …. Obviousness cannot be
predicated on what is unknown.” We agree.
There is no suggestion or reasonable expectation in the combination of prior
art relied upon by the examiner that a GluR4B comprising amino acid residues 1-
881 of SEQ-ID NO:2 would have been obtained. Therefore, in our opinion, the
examiner failed to meet her 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).
Accordingly, we reverse the rejection of claim 31 under 35 U.S.C. § 103 over
the combination of McNamara and Sommer.
Summary:
We affirm the rejection of claims 17 and 19 under 35 U.S.C. § 103 as being
unpatentable over the combination of McNamara and Sommer ‘90.
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