Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 62


                  Appeal No.  1997-3221                                                                                       
                  Application No.  08/249,241                                                                                 
                  The rejections under 35 U. S.C. § 103:                                                                      
                         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 1 of ‘175 is                              
                  patentable.  Claim 1 of the ‘175 patent reads as follows:                                                   
                         1. A membrane preparation derived from a host cell, said host cell having                            
                              incorporated expressibly therein a heterologous polynucleotide that                             
                              encodes human GluR2B receptor selected from the group consisting of:                            
                              (a) the sequence of amino acids 1-863 of SEQ ID NO:2, (b) a human                               
                              GluR2B receptor variant having a sequence of amino acids 1-863 of                               
                              SEQ ID NO:2 with the exception that there are from 1-32 conservative                            
                              amino acid substitutions, (c) a membrane-bound fragment of the human                            
                              GluR2B receptor of (a) or (b) comprising the extracellular N-terminal                           
                              region that precedes TM-1, and (d) a membrane-bound fragment of the                             
                              human GluR2B receptor of (a) comprising the extracellular C-terminal                            
                              region that follows TM-4.                                                                       
                         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                          





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