Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 22


                  Appeal No.  1999-2200                                                                                        
                  Application No.  08/896,063                                                                                  
                  GROUNDS OF REJECTION35                                                                                       

                          Claims 26, 27, 40, 45 and 47-52 are rejected under 35 U.S.C. § 103 as                                
                  being unpatentable over Egebjerg in view of either Sun or Puckett.                                           
                          Claim 28 is rejected under 35 U.S.C. § 103 as being unpatentable over                                
                  Egebjerg, Puckett and Sun as applied to claim 26, 27, 40, 45 and 47-52 and further                           
                  in view of Cutting.                                                                                          
                          We reverse                                                                                           
                  Claims 26 and 45:                                                                                            
                          The examiner’s basis for this rejection is that it would have been obvious to                        
                  identify and isolate a nucleic acid encoding the EAA4 receptor subunit, engineer a                           
                  cell to express this subunit and then obtain a method of assaying as claimed.  To                            
                  support this rejection the examiner references (Answer36, page 4) Egebjerg (Figure                           

                  1, page 746) for a teaching of the rat GluR6 receptor subunit, and a binding assay                           
                  using a cell expressing this GluR6 receptor subunit.  This                                                   





                                                                                                                               
                  35 We note the Communication from the examiner (Paper No. 18, mailed May 16,                                 
                  1997) wherein the examiner refused to enter appellants’ Reply Brief (Paper No. 17,                           
                  received March 31, 1997).  Appellants’ petitioned (Paper No. 19, received July 16,                           
                  1997) under 37 CFR § 1.181 the refusal to enter the Reply Brief.  The Decision on                            
                  the Petition (Paper No. 20, mailed August 7, 1997), granting the petition, states in                         
                  part “[t]he application will be forwarded to the examiner for entry of the reply brief                       
                  and for any other appropriate action.”  However, no further action by the examiner                           
                  was taken in response to the Decision on the Petition.  Under these circumstances,                           
                  we have considered appellants’ Reply Brief, rather than remand the application for                           
                  the examiner to comply with the Decision on the Petition.                                                    
                  36 Paper No. 16, mailed January 29, 1997.                                                                    

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