Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 120


                  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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