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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