Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 52


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

                         In our opinion, supra, the examiner failed to meet his burden of establishing a                      
                  prima facie case of obviousness in obtaining the GluR1B receptor having the amino                           
                  acid sequence of residues 1-888 of SEQ ID NO:2.  Therefore, a method of                                     
                  assaying, using a membrane preparation derived from a human GluR1B-producing                                
                  cell would also not have been prima facie obvious.                                                          
                  Claim 39:                                                                                                   
                         In response to appellants’ argument that the limitations of claims 39 and 40                         
                  were not separately addressed, the examiner states (Answer, page 10) that                                   
                  “[a]ppellant has failed to indicate how these additional limitations provide a                              
                  patentable contribution over the sequence limitations of the other claims.”                                 
                         We remind the examiner that the burden of establishing unpatentability rests                         
                  on the examiner.  In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445                                  
                  (Fed. Cir. 1992).  In this instance the examiner is attempting to shift the burden to                       
                  appellants to prove patentability.  This is clearly improper.                                               
                         We find nothing in the examiner’s Answer which demonstrates that the                                 
                  combination of references relied upon render a method of assaying, (1) “wherein                             
                  said cell comprises a 3.2 kilobase EcoR1/EcoR1 fragment of the plasmid                                      
                  pBS/human GluR1B (ATCC 75246)” (claim 39) or  (2) “wherein said cell has                                    
                  incorporated expressibly therein a heterologous DNA molecule having the                                     
                  nucleotide sequence 116-2779 of SEQ ID NO:1” (claim 40).                                                    
                         Therefore, in addition to those reasons provided above, we find that the                             
                  examiner failed to meet his burden of establishing a prima facie case of                                    
                  unobviousness.                                                                                              
                         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).                                                                                      


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