Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 119


                  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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