Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 115


                  Appeal No.  1997-3221                                                                                        
                  Application No.  08/249,241                                                                                  
                          On this record, we see no suggestion that would lead one of ordinary skill in                        
                  the art to obtain NR3-1 or NR3-2 having the sequences recited in the claims. 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, based on the                                      
                  existence of the three receptor types NR2A-C taught by Monyer.  In re O’Farrell, 858                         
                  F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988)(obviousness also requires                                
                  a “reasonable expectation of success”).                                                                      
                          Even had there been a reasonable expectation of success we find no                                   
                  suggestion, absent the information found in appellants’ specification, to use NR2B                           
                  instead of NR2A or NR2C to obtain the claimed NR3-1 and NR3-2 receptors.  Each                               
                  of Puckett, Schofield and Grenningloh fail to make up this deficiency.                                       
                          Based on the combination of references applied by the examiner, without                              
                  first obtaining a cDNA for NR3-1 or NR3-2 the claimed method could not be                                    
                  obtained.  On this record, we find that the examiner failed to meet his burden of                            
                  establishing a prima facie case of obviousness.  In re Oetiker, 977 F.2d 1443,                               
                  1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992).                                                                 
                          Having found that the examiner failed to meet his burden of establishing a                           
                  prima facie case of obviousness in obtaining the NR3-1 and NR3-2 protein, the                                
                  claimed assay method of claim 14 would not have been obvious.  In addition, since                            
                  the examiner failed to meet his burden of establishing a prima facie case of                                 
                  obviousness in obtaining the NR3-1 and NR3-2 protein, we need not discuss the                                

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