Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 37


                  Appeal No.  1997-3221                                                                                       
                  Application No.  08/249,241                                                                                 
                  the time the application was filed, had possession of a polynucleotide encoding a                           
                  high affinity kainate binding human EAA5 receptor subunit, and thereby did not have                         
                  a method of assaying a test ligand using a genetically engineered cell that produces                        
                  a high affinity kainate-binding human EAA5 receptor.                                                        
                         We note that a rejection based on these facts was made in the Examiner’s                             
                  Answer of Application No. 08/377,503 (Appeal No. 1999-0399).  In response to this                           
                  ground of rejection appellants’ amended the claim to remove the term “high affinity.”                       
                  Time Period for Response for Appeal No. 1998-0217:                                                          
                         This opinion in Appeal No. 1998-0217 contains a new ground of rejection                              
                  pursuant to 37 CFR § 1.196(b).  37 CFR § 1.196(b) provides that, “[a] new ground                            
                  of rejection shall not be considered final for purposes of judicial review.”                                
                         37 CFR § 1.196(b) also provides that the appellants, WITHIN TWO MONTHS                               
                  FROM THE DATE OF THE DECISION, must exercise one of the two following                                       
                  options with respect to the new ground of rejection to avoid termination of                                 
                  proceedings (§ 1.197(c)) as to the rejected claims:                                                         
                         (1) Submit an appropriate amendment of the claims so rejected or a                                   
                             showing of facts relating to the claims so rejected, or both, and have the                       
                             matter reconsidered by the examiner, in which event the application will                         
                             be remanded to the examiner ….                                                                   
                         (2) Request that the application be reheard under § 1.197(b) by the Board of                         
                             Patent Appeals and Interferences upon the same record ….                                         
                  Summary:                                                                                                    
                         We reverse the examiner’s rejection of claims 35, 37 and 38 under         35                         
                  U.S.C. § 103 as being unpatentable over Bettler in view of Puckett.                                         



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