Appeal No. 1999-2200 Application No. 08/896,063 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). 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). Claim 22: The examiner states (Answer53, bridging paragraph, pages 6-7) that: Because a practitioner of the art of molecular biology was well aware that the ultimate value of a glutamate receptor subunit like those of Heinemann et al. would lie in the applicability of the data derived therefrom to human subjects, as evidenced by the statements of Sun et al., that artisan would have found the isolation of a DNA encoding the entire human counterpart of the rat GluR2 that was disclosed in the Heinemann et al. publication by probing a human cDNA library with a rat nucleic acid probe in a manner that was directly analogous to the one described by Puckett et al. to facilitate the recombinant expression and characterization of the encoded product in the absence of other human glutamate receptors for those reasons disclosed by Sun et al. to have been prima facie obvious to an artisan of ordinary skill in the art of molecular biology at the time the instant invention was made. Appellants discuss the differences between the GluR2B receptor recited in the instant claims and the prior art, and argue (Brief54, pages 13-15) that “[t]he art fails to suggest not only the existence of appellants’ GluR2B receptor, but also the structure and sequence of such a protein.” 53 Paper No. 37, mailed March 18, 1999. 63Page: Previous 56 57 58 59 60 61 62 63 64 65 66 67 68 69 70 NextLast modified: November 3, 2007