Appeal No. 1999-1393
Application No. 08/242,344
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).
In response to the examiner’s rejection appellants’ state (Brief, bridging
paragraph, pages 13-14):
Given a rat receptor, or any non-human receptor, one of skill
may postulate as to the existence of a similar human receptor, but
until that receptor is actually isolated, its existence and degree of
similarity to the rat receptor with respect to sequence and function,
can only be surmised, not reasonably expected.
Appellants further provide a table (Brief37, page 7), and corresponding
explanation of the differences between GluR6 and EAA4a and EAA4b.
In the absence of a reasonable expectation of success of isolating and
identifying the specific DNA sequence of the claim, one is left with only an “obvious
to try” situation which is not the standard of obviousness under 35 U.S.C. §
103. See In re O’Farrell, 853 F.2d at 903, 7 USPQ2d at 1680.
The examiner states (Answer, page 14) “[t]here is no art of record which
reports that a human homologue of a known rat neurotransmitter receptor does not
exist.” The examiner after citing the Puckett reference for its teaching of the
conservation in the human and rat kainate receptor subunits, states (Answer, page
13) “[w]hereas it is certain that not every gene which is present in one mammal will
have a homologous gene in a second mammal, an artisan had more than a
reasonable expectation that humans contain a gene that was homologous to the
GluR6 gene.” The examiner continues by stating (Answer, bridging paragraph,
pages 14-15) that:
37 Paper No. 15, received November 12, 1996.
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