Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 44


                  Appeal No.  1997-3221                                                                                       
                  Application No.  08/249,241                                                                                 
                  examiner’s basis for the rejection to lead an inventor to combine the references to                         
                  obtain a DNA construct (claim 10), or cell containing such a construct (claim 40).                          
                  Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d                            
                  1626, 1629 (Fed. Cir. 1996).                                                                                
                  Claim 17:                                                                                                   
                         The examiner states (Answer, page 22) that “Bettler teaches membrane                                 
                  preparations for ligand binding assays … [t]hus, transfected cells comprising the                           
                  human GluR7 and membrane preparation of such cells, both obtained by following                              
                  the teachings of Bettler [‘92] and Puckett, are obvious over the prior art.”                                
                         In our opinion, supra, the examiner failed to meet her burden of establishing                        
                  a prima facie case of obviousness in obtaining the claimed DNA compounds.                                   
                  Without these compounds a membrane preparation derived from a cell transfected                              
                  with these constructs would not be available.                                                               
                         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).                                                                                      
                         Having determined that the examiner has not established a prima facie case                           
                  of obviousness, we find it unnecessary to discuss the Kamboj Declaration executed                           
                  May 3, 1994, relied on by appellants to rebut any such prima facie case.                                    
                         Accordingly we reverse the examiner’s rejection of claims 1, 2, 8-21, and 40                         
                  under 35 U.S.C. § 103 as being unpatentable over Bettler ‘92 in view of Puckett.                            
                  Summary:                                                                                                    
                         We reverse the examiner’s rejection of claims 1, 2, 8-21 and 40 under                                

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