Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 79


                  Appeal No.  1997-3221                                                                                          
                  Application No.  08/249,241                                                                                    

                          Having determined that the examiner has not established a prima facie case                             
                  of obviousness, we find it unnecessary to discuss the Zimmerman Declaration                                    
                  executed July 21, 1997, and the Declarations61 filed under 37 CFR  § 1.131 of                                  
                  Kamboj (executed August 7, 1997), Nutt (executed June 26, 1997) and Elliott                                    
                  (executed June 26, 1997) relied on by appellants to rebut any such prima facie                                 
                  case.                                                                                                          
                          Accordingly, we reverse the examiner’s rejection of claims 23, 24 and 27                               
                  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.                                                        
                  Statement under 37 CFR § 1.196(c):                                                                             
                          It appears to us that the rejection of claims 23 and 24 under 35 U.S.C.     §                          
                  102(b) as being anticipated by Cutting may be over come by adding a phrase to the                              
                  claim that requires GluR3’s presence in the membrane.  We note of interest, a                                  
                  phrase from Appeal No. 2000-1779, Application No. 08/473,204, claim 17 “a                                      
                  membrane preparation that contains human GluR4B protein.”                                                      
                  Time Period for Response for Appeal No. 1999-2200:                                                             
                          This opinion in Appeal No. 1999-2200 contains a statement pursuant to 37                               
                  CFR § 1.196(c) has been made in this decision.  37 CFR § 1.196(c) provides:                                    
                          Should the decision of the Board of Patent Appeals and Interferences                                   
                          include an explicit statement that a claims may be allowd in amended form,                             
                          appellants shall have the right to amend in conformity with such statement                             
                          which shall be binding upon the examiner in the absence of new references                              
                          or grounds of rejection.                                                                               

                                                                                                                                 
                  61 However, we compare the examiner’s statement (Answer, page 30) that “[t]he                                  
                  transmission of confidential information does not show a reduction to practice of the                          
                  claimed isolated DNA,” with similar statements made in Appeal Nos.: 1999-1393,                                 
                  1999-2118, 1999-2200, 2000-1778, 2000-1779, and 2000-1780.                                                     

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