Appeal No. 1999-1393
Application No. 08/242,344
On this record, we see no suggestion that would lead one of ordinary skill in
the art to obtain NR3-1 or NR3-2 having the sequences recited in the claims. 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, based on the
existence of the three receptor types NR2A-C taught by Monyer. In re O’Farrell, 858
F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988)(obviousness also requires
a “reasonable expectation of success”).
Even had there been a reasonable expectation of success we find no
suggestion, absent the information found in appellants’ specification, to use NR2B
instead of NR2A or NR2C to obtain the claimed NR3-1 and NR3-2 receptors. Each
of Puckett, Schofield and Grenningloh fail to make up this deficiency.
Based on the combination of references applied by the examiner, without
first obtaining a cDNA for NR3-1 or NR3-2 the claimed method could not be
obtained. On this record, we find that the examiner failed to meet his burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443,
1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992).
Having found that the examiner failed to meet his burden of establishing a
prima facie case of obviousness in obtaining the NR3-1 and NR3-2 protein, the
claimed assay method of claim 14 would not have been obvious. In addition, since
the examiner failed to meet his burden of establishing a prima facie case of
obviousness in obtaining the NR3-1 and NR3-2 protein, we need not discuss the
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