Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 85


                  Appeal No.  1999-2200                                                                                          
                  Application No.  08/896,063                                                                                    
                  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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