Appeal No. 1999-1393
Application No. 08/242,344
absence of appellants’ disclosure a person of ordinary skill in the art would not have
known that GluR3A and GluR3B existed. We remind the examiner that “[t]he Patent
Office has the initial duty of supplying the factual basis for its rejection. It may not,
because it may doubt that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply deficiencies in its
factual basis.” In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968).
Here, we agree with the appellants (Brief, pages 8-13) that there is no
teaching or suggestion in the applied prior art of the GluR3A receptor having the
amino acid sequence of residues 1-866 of SEQ ID NO:2 or the GluR3B receptor
having amino acid sequence of residues 1-866 of SEQ ID NO:4 as required by the
claim. In re Ochiai, 71 F.3d 1565, 1570, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995);
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988). We
also do not find that there was a reasonable expectation that one could have
obtained such a receptor sequence required to perform the claimed methods. In re
O’Farrell, 858 F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988)(obviousness
also requires a “reasonable expectation of success”).
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