Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 92


                  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                             



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