Ex Parte Stryer et al - Page 17

                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                        

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