Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 71


                  Appeal No.  1997-3221                                                                                          
                  Application No.  08/249,241                                                                                    
                  GROUNDS OF REJECTION                                                                                           
                          Claims 23 and 24 are rejected under 35 U.S.C. § 102(b) as being                                        
                  anticipated by Cutting.                                                                                        
                          Claims 1, 4, 7, 10, 11, 13, 15, 16, 18, 19, 26, and 42-49 are rejected under                           
                  35 U.S.C. § 103 as being unpatentable over Heinemann in view of Puckett, Sun,                                  
                  Schofield, and Grenningloh.                                                                                    
                          Claims 23, 24, and 27 are rejected under 35 U.S.C. § 103 as being                                      
                  unpatentable over Heinemann in view of Puckett, Sun, Schofield, and Grenningloh                                
                  as applied to claims 1, 4, 7, 10, 11, 13, 15, 16, 18, 19, 26, and 42-49 above, and                             
                  further in view of Cutting.                                                                                    
                          We affirm the rejection under 35 U.S.C. § 102(b), and reverse the rejections                           
                  under 35 U.S.C. § 103.                                                                                         
                  The rejection under 35 U.S.C. §102(b):                                                                         
                          The examiner states (Answer57, page 5) that “[n]othing in these claims                                 

                  requires the membrane preparation recited therein to actually contain human GluR3                              
                  protein and this limitation does not flow either naturally or inherently from any or all of                    
                  the limitations recited in the claims.                                                                         
                          Appellants respond by arguing (Brief58, page 7) stating that the membrane                              

                  preparations are derived from cells transformed with a heterologous polynucleotide                             
                  which encodes a human GluR3 having a specific amino acid sequence.  Therefore,                                 
                  a membrane preparation prepared from such a cell necessarily encodes human                                     
                                                                                                                                 
                  57 Paper No. 26, mailed March 18, 1999.                                                                        
                  58 Paper No. 25, received January 12, 1999.                                                                    

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