Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 68


                  Appeal No.  2000-1779                                                                                         
                  Application No.  08/473,204                                                                                   
                  Claim 31:                                                                                                     
                          The examiner states (Answer, page 8) “[b]ecause GluR2 was known to be                                 
                  structurally and functionally analogous to the GABA receptor subunit of Cutting                               
                  et al., an artisan would have found the incorporation of a cDNA encoding that                                 
                  receptor subunit into an expression system like the one described by Cutting                                  
                  et al., and the subsequent preparation of membrane homogenates from the                                       
                  resulting cells to determine the ligand binding characteristics of a receptor                                 
                  composed of human GluR2 in the absence of other human glutamate receptors to                                  
                  have been prima facie obvious in view of this combination of references at the time                           
                  the instant invention was made.”                                                                              
                          This rejection based on the combination of Heinemann, Puckett and Sun                                 
                  further in view of Cutting hinges on the fact that it would have been obvious to obtain                       
                  GluR2B, comprising the amino acid sequence of amino acids 1-863 of SEQ ID                                     
                  NO:2, as recited in the claims.  In our opinion, supra, the examiner failed to meet his                       
                  burden of establishing a prima facie of obviousness, based on the combination of                              
                  Heinemann, Puckett and Sun.  Cutting does not make up for the deficiencies noted                              
                  above.                                                                                                        
                          Having determined that the examiner has not established a prima facie case                            
                  of obviousness, we find it unnecessary to discuss the Zimmerman Declaration                                   
                  executed July 21, 1997, and the Declarations filed under 37 CFR     § 1.131 of                                
                  Kamboj (executed August 7, 1997), Nutt (executed June 26, 1997) and Elliott                                   
                  (executed June 26, 1997) relied on by appellants to rebut any such prima facie                                
                  case.                                                                                                         

                                                              68                                                                



Page:  Previous  61  62  63  64  65  66  67  68  69  70  71  72  73  74  75  Next 

Last modified: November 3, 2007