Appeal No. 1997-3221
Application No. 08/249,241
isolated DNA encoding any one of these proteins [NR2A, NR2B,
NR2C and NR1], as well as the protein encoded thereby, would have
reasonably been expected to be predictive of the existence, structure
and function of an analogous DNA and protein from any other
mammal.
Lacking from the examiner’s rejection is any reference to the claimed
proteins, specifically NR2A-1 and NR2A-2. The examiner merely refers to NR2A
generically, throughout the body of the Answer. It is well-established that before a
conclusion of obviousness may be made based on a combination of references,
there must have been a reason, suggestion, or motivation to lead an inventor to
combine those references. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75
F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
On this record, we see no suggestion that would lead one of ordinary skill in
the art to obtain NR2A-1 or NR2A-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). Contrary
to the examiner’s position, we also do not find that there was a reasonable
expectation that one could have obtained such a receptor sequence, having the
claimed sequences, required to perform the claimed methods, based on the
existence of the three rat receptors 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”).
Based on the combination of references applied by the examiner, without
first obtaining a cDNA for NR2A-1 or NR2A-2 the claimed method could not be
obtained. On this record, we find that the examiner failed to meet his burden of
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