Ex parte KAMBOJ et al.; Ex parte NUTT; Ex parte FOLDES et al. - Page 27


                  Appeal No.  1999-1393                                                                                        
                  Application No.  08/242,344                                                                                  
                  addition to providing the methodology of isolating, identifying and sequencing a                             
                  DNA which would encode a known polypeptide, the prior art indicated that the                                 
                  polypeptide for which the DNA was sought had been purified and the amino acid                                
                  sequence was known.                                                                                          
                          On the record before us, and as argued by appellants, the proteins of the                            
                  claimed invention were not known to be present in humans, there was only a                                   
                  suggestion by Puckett (Page 7559, column 1) that a similar diversity in rats “is likely                      
                  to be found in human KA receptors.”  Further, the examiner has provided no                                   
                  evidence that would provide a reasonable suggestion, motivation, or direction that                           
                  would have led one of ordinary skill in this art to use the techniques of Puckett to                         
                  isolate and identify the DNA sequences that encode such unknown proteins.  In re                             
                  Vaeck, 947 F.2d 488, 494, 20 USPQ2d 1438, 1443-444 (Fed. Cir. 1991).                                         
                          The initial burden of presenting a prima facie case of obviousness rests on                          
                  the examiner.  On these facts, we are constrained to reach the conclusion that the                           
                  examiner has failed to provide the evidence necessary to support a prima facie                               
                  case of obviousness as to the EAA4 receptors used in the claimed assay method.                               
                          Where the examiner fails to establish a prima facie case, the rejection is                           
                  improper and will be overturned.  In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,                            
                  1598 (Fed. Cir. 1988).                                                                                       
                          Accordingly we reverse the examiner’s rejection of claims 26, 27, 40,                                
                  45 and 47-52 under 35 U.S.C. § 103 as being unpatentable over Egebjerg in                                    
                  view of Puckett or Sun.                                                                                      
                  Claim 28:                                                                                                    

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