Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 48


                  Appeal No.  2000-1779                                                                                       
                  Application No.  08/473,204                                                                                 
                         With regard to the examiner’s approach, we note that the instant application                         
                  is a divisional application of Application No. 07/896,611, now abandoned.                                   
                  Application No. 08/254,573, now United Sates Patent No. 5,610,032 (‘032) is a                               
                  direct continuation of 07/896,611.  It appears that the examiner’s rejection of the                         
                  claims in the present application under 35 U.S.C.                                                           
                  § 103 is inconsistent with the determination that the claims of ‘032 are patentable.                        
                  For example, claims 1, 8, 9 and 10 of the ‘032 patent read as follows:                                      
                         1. An isolated polynucleotide which encodes a protein having the                                     
                               sequence of SEQ ID NO:2.                                                                       
                         8. A cellular host having incorporated therein a heterologous                                        
                               polynucleotide which encodes a protein having the sequence of SEQ ID                           
                               NO: 2.                                                                                         
                         9. A cellular host according to claim 8, which is a mammalian cell.                                  
                         10. A membrane preparation derived from a cellular host as defined in                                
                               claim 9.                                                                                       
                         In addition, Puckett relied upon the examiner in this appeal is cited on the                         
                  face of the patent as considered prior art.                                                                 
                         While the examiner may issue a rejection if appropriate under these                                  
                  circumstances, a rejection using the rationale set forth above would appear to                              
                  require the signature of the Group Director.  Compare MPEP ' 2307.02 (7th ed.,                              

                  July 1998).  We note the Group Director did not sign the examiner’s action.                                 


                         Generally, appeals on these facts are remanded to provide the examiner an                            
                  opportunity to consider the issued patent and determine its effect, if any, on the                          



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