Appeal No. 1999-1393
Application No. 08/242,344
Those nucleotide sequences are the inherent properties of cDNAs
which existed in the prior art. The prior art of record provided
compositions containing those cDNAs in the form of … cDNA
libraries…. It further provided analogous compositions and the means
and motivation to isolate from those libraries a cDNA of the instant
invention. Because a chemical compound and all of its properties are
inseparable, and the sequence of a cDNA encoding human GluR3
was an inherent property of that compound as it existed prior to being
isolated by [a]ppellant, that limitation was fairly taught by the
combination of references cited above.
We note the examiner’s use of “GluR3” instead of either GluR3A or GluR3B.
This is apparently because the examiner’s combination of references fails to teach
GluR3A (SEQ ID NO:1) or GluR3B (SEQ ID NO:3). See specification, page 3, for
definition of SEQ ID NOs: 1 & 3 as GluR3A and GluR3B respectively. Here, the
examiner has failed to meet his burden of establishing a prima facie case of
obviousness for either of the specifically claimed sequences. We see no teaching
in the combination of prior art relied upon by the examiner which teaches, suggests
or renders the specifically claimed sequences prima facie obvious. It is the
examiner who has the initial burden of establishing unpatentability. In re Oetiker,
977 F.2d 1443, 1446,
24 USPQ2d 1443, 1445 (Fed. Cir. 1992). Conclusions of obviousness must be
based upon facts, not generality. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968); In re Freed, 425
F.2d 785, 788, 165 USPQ 570, 571 (CCPA 1970).
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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