Appeal No. 1997-3221
Application No. 08/249,241
The rejections under 35 U.S.C. § 103:
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). Furthermore, 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. In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
The rejection of claims 14, 21 and 22:
The examiner states (Answer85, bridging paragraph, pages 9-10) that:
[T]he combination of the McNamara et al., Blackstone et al., Puckett
et al., Schofield et al. and Grenningloh et al. publications provided
overwhelming evidence that the genes encoding ionotrophic receptor
subunits and the proteins encoded thereby were highly conserved
both structurally and functionally between mammalian species and a
reasonable expectation that the sequence and structure of the NR1
and NR2B subunits of Monyer et al. were predictive of a human
homologous proteins, that artisan would have found it prima facie
obvious to have isolated cDNAs encoding human NR1 (NMDAR1)
and NR2B (NR3) by screening a human cDNA library like the one
described … [by] Puckett … Schofield … and … Grenningloh et al.
with a nucleic acid probe corresponding to the rat NR1 and NR2B
cDNAs of Monyer et al. in a manner that was directly analogous to
those that were employed by each of Puckett et al., Schofield et al.
and Grenningloh et al.
The examiner further states (Answer, page 11) that:
The rejection is based upon the fact that a comparison of the amino
acid sequence presented in Figure 1 (SEQ ID NO:2) of the instant
application, which is recited in the claims under appeal, with the
amino acid sequence presented as NR2A in Figure 1 of Monyer et al.
shows that these two sequences from these two naturally occurring
mammalian proteins are greater than 95% identical. … The
preponderance of evidence of record supports a conclusion that an
85 Paper No. 32, mailed February 10, 1999.
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