Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 97


                  Appeal No.  1999-2200                                                                                    
                  Application No.  08/896,063                                                                              
                  Claim 31:                                                                                                
                         We note the examiner’s statement (Answer, page 8) that “[t]he disclosure of                       
                  the sequence of human GluR4B as amino acids 1-881 of SEQ ID NO:2 is the                                  
                  recitation of an inherent property of a protein that was known to exist and does not                     
                  make that compound unobvious.”                                                                           
                         In response, appellants cite (Reply Brief71, page 1) In re Spormann,                              

                  363 F.2d 444, 448, 150 USPQ 449, 452 (CCPA 1966) for the position that “[t]hat                           
                  which may be inherent is not necessarily known ….  Obviousness cannot be                                 
                  predicated on what is unknown.”  We agree.                                                               
                         There is no suggestion or reasonable expectation in the combination of prior                      
                  art relied upon by the examiner that a GluR4B comprising amino acid residues 1-                          
                  881 of SEQ-ID NO:2 would have been obtained.  Therefore, in our opinion, the                             
                  examiner failed to meet her burden of establishing a prima facie case of                                 
                  obviousness.                                                                                             
                         Where the examiner fails to establish a prima facie case, the rejection is                        
                  improper and will be overturned.  In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,                        
                  1598 (Fed. Cir. 1988).                                                                                   
                         Accordingly, we reverse the rejection of claim 31 under 35 U.S.C. § 103 over                      
                  the combination of McNamara and Sommer.                                                                  
                  Summary:                                                                                                 
                         We affirm the rejection of claims 17 and 19 under 35 U.S.C. § 103 as being                        
                  unpatentable over the combination of McNamara and Sommer ‘90.                                            



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