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:
28
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