Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 89


                  Appeal No.  1997-3221                                                                                          
                  Application No.  08/249,241                                                                                    
                  IV.     The GLUR4 Subclass:                                                                                    
                                                   Appeal No. 2000-1779                                                          
                                                 Application No. 08/473,204                                                      
                  Claims 17 and 3164 are illustrative of the subject matter on appeal and are                                    
                  reproduced below:                                                                                              
                          17. A membrane preparation that contains human GluR4B protein, said                                    
                               membrane preparation being derived from a cellular host having                                    
                               incorporated therein a heterologous polynucleotide comprising a region                            
                               that encodes human GluR4B.                                                                        
                          31. A membrane preparation as claimed in claim 17, wherein the human                                   
                               GluR4B protein comprises amino acid residues 1-881 of SEQ-ID NO:2.                                
                  GROUNDS OF REJECTION65                                                                                         
                          Claims66 17, 19 and 31 are rejected under 35 U.S.C. § 103 as being                                     

                  unpatentable over the combination of McNamara and Sommer ‘90.                                                  
                          We affirm the rejection of claims 17 and 19 under 35 U.S.C. § 103.  We                                 
                  reverse the rejection of claim 31 under 35 U.S.C. § 103.                                                       
                                                                                                                                 
                  64 We note that claim 31 was incorrectly presented in the appendix of Appellants’                              
                  Brief (Paper No. 16, received November 4, 1998).  Claim 31 was amended in                                      
                  Appellants’ response received August 13, 1997 (Paper No. 7).  Claim 31 is                                      
                  correctly reproduced herein.                                                                                   
                  65 We note the examiner’s reference at pages 7-9 of the Answer to Puckett et al.                               
                  “Molecular cloning and chromosomal localization of one of the human glutamate                                  
                  receptor genes,” Proceedings of the National Academy of Science, USA, Vol. 88,                                 
                  pp. 7557-561 (1991), and to Sun et al. “Molecular cloning, chromosomal mapping,                                
                  and functional expression of human brain glutamate receptors,” Proceedings of the                              
                  National Academy of Science, USA, Vol. 89, pp. 1443-447 (1992).  However, we                                   
                  remind the examiner that “[w]here a reference is relied on to support a rejection,                             
                  whether or not in a ‘minor capacity,’ there would appear to be no excuse for not                               
                  positively including the reference in the statement of the rejection.  In re Hoch, 428                         
                  F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).                                                        
                  66 We note the following typographical error in the examiner’s statement of the                                
                  rejection at page 3 of the Answer, “[c]laims 17 to 19 and 31,” should read --[c]laims                          



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