Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 28


                  Appeal No.  1997-3221                                                                                        
                  Application No.  08/249,241                                                                                  
                          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:                                                                                                     




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