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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