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.
71
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