Appeal No. 1999-1393
Application No. 08/242,344
The examiner’s states (Answer, bridging paragraph, pages 10-11) that:
[T]he … publications are being relied upon in combination because
they show that it was known in the art prior to the making of the instant
invention that the sequences and structures of those proteins that
serve as the subunits of ligand-gated ion channels (a.k.a. ionotropic
receptors) from one mammal were known to be predictive of the
structures and functions of homologous proteins from other mammals
and that an artisan had more than a reasonable expectation the
structure and function of the GluR3 subunit of Heinemann et al. to be
predictive of a homologous human protein.
However, given the teachings of Sun, Puckett and Heinemann, supra, of
cross-reactivity at the nucleic acid level we are of the opinion that a person of
ordinary skill in the art would not have a reasonable expectation of success in
isolating the GluR3A or GluR3B receptor. Furthermore, none of these references
teach the existence of two forms of the GluR3 receptor, GluR3A and 3B. The initial
burden of establishing reasons for unpatentability rests on the examiner. In re
Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 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).
We do not agree with the examiner’s conclusion (Answer, page 12) that due
to the library in which they were isolated the GluR3A and GluR3B sequences
“obviously correspond to allelic variations of the same protein and appear to be
functionally indistinguishable.” On this record, in the absence of appellants’
disclosure a person of ordinary skill in the art would not have known that GluR3a and
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