Appeal No. 2000-1779 Application No. 08/473,204 The examiner’s basis for this rejection is substantially the same as that discussed above, except that it adds the teachings of Cutting. According to the examiner (Answer, bridging paragraph, pages 8-9) Cutting teaches: [I]ncorporation of a DNA encoding the GABA receptor subunit described therein into an expression vector, the introduction of that expression vector into a mammalian host cell and the preparation of membrane homogenate from those cells for the purpose of determining the binding characteristics of a receptor containing that subunit. The examiner concludes (Answer, page 9) that “[b]ecause GluR6 was known to be structurally and functionally analogous to the GABA receptor subunit of Cutting” the preparation of membrane homogenate containing GluR6 would have been prima facie obvious. The examiner failed to establish a prima facie case of obviousness with respect to the combination of Egebjerg in view of Puckett or Sun, supra. Cutting fails to make up for the deficiencies of the combination of Egebjerg in view of Puckett or Sun. Where the examiner fails to establish a prima facie case, the rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Accordingly, we reverse the examiner’s rejection of claim 28 under 35 U.S.C. § 103 as being unpatentable over Egebjerg in view of Puckett or Sun as to claims 26, 27, 40, 45, and 47-52 and further in view of Cutting. Summary: 28Page: Previous 21 22 23 24 25 26 27 28 29 30 31 32 33 34 35 NextLast modified: November 3, 2007