Appeal No. 2000-1779 Application No. 08/473,204 In our opinion, supra, the examiner failed to meet his burden of establishing a prima facie case of obviousness in obtaining the GluR1B receptor having the amino acid sequence of residues 1-888 of SEQ ID NO:2. Therefore, a method of assaying, using a membrane preparation derived from a human GluR1B-producing cell would also not have been prima facie obvious. Claim 39: In response to appellants’ argument that the limitations of claims 39 and 40 were not separately addressed, the examiner states (Answer, page 10) that “[a]ppellant has failed to indicate how these additional limitations provide a patentable contribution over the sequence limitations of the other claims.” We remind the examiner that the burden of establishing unpatentability rests on the examiner. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). In this instance the examiner is attempting to shift the burden to appellants to prove patentability. This is clearly improper. We find nothing in the examiner’s Answer which demonstrates that the combination of references relied upon render a method of assaying, (1) “wherein said cell comprises a 3.2 kilobase EcoR1/EcoR1 fragment of the plasmid pBS/human GluR1B (ATCC 75246)” (claim 39) or (2) “wherein said cell has incorporated expressibly therein a heterologous DNA molecule having the nucleotide sequence 116-2779 of SEQ ID NO:1” (claim 40). Therefore, in addition to those reasons provided above, we find that the examiner failed to meet his burden of establishing a prima facie case of unobviousness. 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). 52Page: Previous 45 46 47 48 49 50 51 52 53 54 55 56 57 58 59 NextLast modified: November 3, 2007