Appeal No. 2000-1779 Application No. 08/473,204 GROUNDS OF REJECTION Claims 23 and 24 are rejected under 35 U.S.C. § 102(b) as being anticipated by Cutting. Claims 1, 4, 7, 10, 11, 13, 15, 16, 18, 19, 26, and 42-49 are rejected under 35 U.S.C. § 103 as being unpatentable over Heinemann in view of Puckett, Sun, Schofield, and Grenningloh. Claims 23, 24, and 27 are rejected under 35 U.S.C. § 103 as being unpatentable over Heinemann in view of Puckett, Sun, Schofield, and Grenningloh as applied to claims 1, 4, 7, 10, 11, 13, 15, 16, 18, 19, 26, and 42-49 above, and further in view of Cutting. We affirm the rejection under 35 U.S.C. § 102(b), and reverse the rejections under 35 U.S.C. § 103. The rejection under 35 U.S.C. §102(b): The examiner states (Answer57, page 5) that “[n]othing in these claims requires the membrane preparation recited therein to actually contain human GluR3 protein and this limitation does not flow either naturally or inherently from any or all of the limitations recited in the claims. Appellants respond by arguing (Brief58, page 7) stating that the membrane preparations are derived from cells transformed with a heterologous polynucleotide which encodes a human GluR3 having a specific amino acid sequence. Therefore, a membrane preparation prepared from such a cell necessarily encodes human 57 Paper No. 26, mailed March 18, 1999. 58 Paper No. 25, received January 12, 1999. 71Page: Previous 64 65 66 67 68 69 70 71 72 73 74 75 76 77 78 NextLast modified: November 3, 2007