Ex parte KAMBOJ et al.; Ex parte NUTT; Ex parte FOLDES et al. - Page 59


                  Appeal No.  1999-1393                                                                                       
                  Application No.  08/242,344                                                                                 
                  acids that an artisan would have certainly identified something.  That, based on this                       
                  record, a skilled artisan would reasonably have expected to isolated GluR2, we can                          
                  not agree.                                                                                                  
                  Claim 2:                                                                                                    
                         Appellants’ argue (Brief, pages 13-14) that the GluR2B receptor claimed                              
                  differs from the receptor of the prior art.                                                                 
                         The examiner, inter alia, states (Answer, page 18) the “cDNAs of the instant                         
                  invention are chemical compounds which were present in each of the cDNA                                     
                  libraries of Puckett et al. and Sun et al. … [a]ppellant’s inventive contribution was the                   
                  isolation and characterization of one of these pre-existing compounds and its use in                        
                  the production of the other.”  We agree.  However, the examiner is reminded that                            
                  “[t]he consistent criterion for determination of obviousness is whether the prior art                       
                  would have suggested to one of ordinary skill in the art that this process should be                        
                  carried out and would have a reasonable likelihood of success, viewed in the light of                       
                  the prior art.”  In re Dow Chemical Co. 837 F.2d 469, 473, 5 USPQ2d 1529, 1531                              
                  (Fed. Cir. 1988).  In our opinion, on this record, a person of ordinary skill in the art                    
                  would not have a reasonable expectation of success in obtaining the claimed                                 
                  invention.                                                                                                  
                         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).                                                                                      
                         Having determined that the examiner has not established a prima facie case                           
                  of obviousness, we find it unnecessary to discuss the Zimmerman Declaration                                 

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