Appeal No. 1997-3221
Application No. 08/249,241
predictive of the existence, structure and function of an analogous
human glutamate receptor subunit. Further, since Sun et al. disclosed
a manner through which a cDNA encoding two-thirds of human GluR2
had been isolated and the chromosomal location of the
corresponding gene, an artisan would have been certain that a cDNA
encoding the entire human GluR2 subunit could be isolated by
employing those methods which were routine in the art at the time of
the instant invention.
Initially, we note that the instant application shares the same parent with
Application No. 08/483,327, now United States Patent No. 6,040,175 (‘175). It
appears that the examiner’s rejection of the claims in the present application under
35 U.S.C. § 103 is inconsistent with the determination that claim 3 of ‘175 is
patentable. Claim 3 of the ‘175 patent reads as follows:
3. The human GluR2B receptor having the sequence of amino acids 1-
863 of SEQ ID NO:2, in a form essentially free from other proteins of
human origin.
In addition, Heinemann, Puckett, and Sun relied upon by the examiner in this
appeal are cited on the face of the patent as considered prior art.
While the examiner may issue a rejection if appropriate under these
circumstances, a rejection using the rationale set forth above would appear to
require the signature of the Group Director. Compare MPEP ' 2307.02 (7th ed.,
July 1998). We note the Group Director did not sign the examiner’s action.
Generally, appeals on these facts are remanded to provide the examiner an
opportunity to consider the issued patent and determine its effect, if any, on the
issues raised under 35 U.S.C. § 103. However, after considering the facts in this
case we believe the better course of action is to move forward with a decision on
the merits of this appeal.
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