Appeal 2007-1819
Application 09/886,055
in the art would have reasonably expected that Appellants’ SEQ ID NO: 55
is an olfactory receptor that could have been used in the method taught by
Krautwurst with a reasonable expectation of success in representing sensory
perception” (supra p. 9). On the contrary, given the evidence of record, it is
at least more likely than not SEQ ID NO:27 is an olfactory receptor. (FFs 4-
6.) Certainly, the record as a whole would have suggested that it is. This is
particularly true in that SEQ ID NO:27 is undeniably a GPCR receptor and
therefore more likely than not an olfactory receptor, as the “largest
subfamily of GPCRs . . . are the olfactory receptors”. (Burford, col. 2, ll. 1-
3.)
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii)
("Any arguments or authorities not included in the brief or a reply brief ...
will be refused consideration by the Board, unless good cause is shown.").
Thus, to the extent Appellants had an argument or evidence with which they
could have rebutted the Examiner’s prima facie case of obviousness and did
not do so, the Board should not attempt to fill that void with its own
reasoning on Appellants’ behalf.
Based on the Examiner’s undisputed findings and those above, I
conclude it would have been obvious to try using each of the 24
polypeptides Burford suggests are olfactory receptor sequences in
Krautwurst’s assay with a reasonable expectation of success. (FFs 8-9.)
“Obvious to try” can be an appropriate test in certain situations. When there
is motivation “to solve a problem,” such as the “identification, on a large
scale, of cognate receptor-odorant interactions” (Krautwurst 917, col. 1), and
“there are a finite number of identified, predictable solutions,” such as the
limited number of potential olfactory receptor sequences disclosed in
17
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