Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 102


                  Appeal No.  1997-3221                                                                                      
                  Application No.  08/249,241                                                                                
                  case we believe the better course of action is to move forward with a decision on                          
                  the merits of this appeal.                                                                                 
                         The initial burden of establishing reasons for unpatentability rests on the                         
                  examiner.  In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir.                             
                  1992). To establish a prima facie case of obviousness, there must be both some                             
                  suggestion or motivation to modify the references or combine reference teachings                           
                  and a reasonable expectation of success.  Furthermore, the prior art must teach of                         
                  suggest all the claim limitations.  In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d                              
                  1438, 1442 (Fed. Cir. 1991).                                                                               
                  Claims 22 and 35:                                                                                          
                         Appellants argue (Brief76, page 8) “[b]ased on the minimal teaching,                                

                  applicants assert that an assay using a cellular host or membrane preparation which                        
                  expresses a polynucleotide that specifically encodes a receptor having the amino                           
                  acid sequence of residues 1-881 of SEQ ID NO:2 is clearly not suggested by the                             
                  combination of references.”  We agree.                                                                     
                         The examiner emphasizes (Answer, pages 5-7) the sequence homology                                   
                  between Keinanen’s rat GluR4B and the claimed GluR4B.  However, we find no                                 
                  teaching or suggestion in the combination of prior art relied upon by the examiner                         
                  that a human GluR4B having the amino acid sequence of residues     1-881 of SEQ                            
                  ID NO:2 or a fragment thereof can be obtained with a reasonable expectation of                             
                  success.                                                                                                   

                                                                                                                             
                  76 Paper No. 20, received November 3, 1998.                                                                

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