Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 114


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

                  NR2A, NR2B and NR2C.  Monyer teaches (page 1217, bridging paragraph,                                         
                  columns 1-2) that “[b]y polymerase chain reaction (PCR) amplification of rat brain                           
                  cDNA with oligonucleotides constructed to detect such conserved sequences … we                               
                  found three cDNAs encoding new glutamate receptor subunits, termed NMDAR2A                                   
                  (NR2A), NR2B, and NR2C (Fig. 1).”                                                                            
                          The examiner notes (Answer, page 6) the human “NR3 of the instant                                    
                  invention as depicted in SEQ ID NO:2 of the instant application is 97% identical to                          
                  the amino acid sequence of the NR2B protein that was depicted in Figure 1 of the                             
                  Monyer et al. publication and, therefore, NR3 is clearly the human homolog of                                
                  NR2B.”                                                                                                       
                  Claim 15:                                                                                                    
                          Appellants argue (Brief, page 27) that:                                                              
                          The examiner has not explained why the combination of references                                     
                          would have suggested a method of assaying for a heteromeric                                          
                          complex of human NR3 protein and human NMDA protein.  Just as                                        
                          the art does not suggest a human counterpart to Monyer’s NR2B                                        
                          receptor subunit, the art also does not suggest a human NMDA                                         
                          protein, as recited in claim 15.                                                                     
                          Lacking from the examiner’s rejection is any reference to the claimed                                
                  proteins, specifically NR3-1 and NR3-2.  The examiner merely refers to NR3                                   
                  generically.  See e.g., Answer, page 6 (“therefore, NR3 is clearly the human                                 
                  homolog of NR2B”).  It is well-established that before a conclusion of obviousness                           
                  may be made based on a combination of references, there must have been a                                     
                  reason, suggestion, or motivation to lead an inventor to combine those references.                           
                  Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d                             
                  1626, 1629 (Fed. Cir. 1996).                                                                                 



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