Appeal No. 1997-3221
Application No. 08/249,241
In addition, both references (McNamara and Sommer ‘90) relied upon in the
present application to support the rejection under 35 U.S.C. § 103 are cited on the
face of the ‘785 patent as considered.
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
case we believe the better course of action is to move forward with a decision on
the merits of this appeal.
The initial burden of establishing reasons for unpatentability rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir.
1992). To establish a prima facie case of obviousness, there must be both some
suggestion or motivation to modify the references or combine reference teachings
and a reasonable expectation of success. Furthermore, the prior art must teach of
suggest all the claim limitations. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d
1438, 1442 (Fed. Cir. 1991).
On this record, the examiner applies McNamara for the teaching of the
chromosomal localization of a human GluR4 receptor gene (Figure 3, and
discussion bridging paragraph pages 2560-561). According to McNamara, (page
92
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