Appeal No. 1999-1393
Application No. 08/242,344
case we believe the better course of action is to move forward with a decision on
the merits of this appeal.
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). 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. Furthermore, the prior art must teach of
suggest all the claim limitations. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d
1438, 1442 (Fed. Cir. 1991).
Claims 22 and 35:
Appellants argue (Brief76, page 8) “[b]ased on the minimal teaching,
applicants assert that an assay using a cellular host or membrane preparation which
expresses a polynucleotide that specifically encodes a receptor having the amino
acid sequence of residues 1-881 of SEQ ID NO:2 is clearly not suggested by the
combination of references.” We agree.
The examiner emphasizes (Answer, pages 5-7) the sequence homology
between Keinanen’s rat GluR4B and the claimed GluR4B. However, we find no
teaching or suggestion in the combination of prior art relied upon by the examiner
that a human GluR4B having the amino acid sequence of residues 1-881 of SEQ
ID NO:2 or a fragment thereof can be obtained with a reasonable expectation of
success.
76 Paper No. 20, received November 3, 1998.
102
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