Appeal No. 2001-1436 Page 7
Application No. 08/422,612
protein-coupled receptor could be functionally expressed in S.
cerevisiae because S. cerevisiae was already known to naturally
produce G proteins and G protein-coupled receptors and because
the functional expression of other mammalian receptor proteins in
S. cerevisiae was a routine practice in the art at the time of the
instant invention.
Examiner’s Answer, page 10.
Appellants argue that the cited references do not provide adequate
motivation to combine their respective teachings in such a way as to yield the
claimed invention. See the Appeal Brief, page 39.1 Appellants focus on Dietzel,
and thoroughly review Dietzel’s data and conclusions. See the Appeal Brief,
pages 47-56. Based on this review, Appellants argue that Dietzel leads away
from the claimed invention, because it suggests that a mammalian G protein-
coupled receptor would not be fully functional if expressed in yeast. Appeal Brief,
page 56. See also the Reply Brief, pages 3-7.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness.” In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). “The consistent criterion
for determination of obviousness is whether the prior art would have suggested
to one of ordinary skill in the art that this process should be carried out and would
have a reasonable likelihood of success, viewed in the light of the prior art. Both
the suggestion and the expectation of success must be founded in the prior art,
1 Appellants state that, during prosecution, they “repeatedly asserted that the cited documents do
not provide a reasonable expectation of success.” Appeal Brief, page 39. However, Appellants
chose not to “reiterate those points in th[e] brief.” Id. Therefore, we consider this argument to
have been waived for purposes of the appeal. See 37 CFR § 1.192(a) (“The brief . . . must set
forth the authorities and arguments on which appellant will rely to maintain the appeal.”).
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