Appeal No. 1997-3221
Application No. 08/249,241
reasonable expectation of success existed based on the combined teachings of
McNamara and Sommer to obtain a cDNA encoding GluR4B.
The examiner notes (Answer, bridging paragraph, pages 17-18) that
Sommer et al. teach cultured mammalian cells engineered with GluR genes for
electrophysiological characterization (Sommer, column 1, page 1581, and Sommer,
reference 8). We therefore, agree with the examiner’s conclusion (Answer, page
18) that:
[A] membrane preparation containing human GluR4 would have been
obvious since the polynucleotide encoding human GluR4B was
obvious, advantages of expressing a heterologous GluR receptor in a
cell for pharmacological analysis of the receptor were known, and it
was routine to use membrane preparation as well as whole cells for
such pharmacological investigations to analyze properties of drugs
with clinical potential.
Appellants provide the Kamboj Declaration, executed August 7, 1997, under
37 CFR § 1.131 and state (Brief, page 12) “applicants have made of record Rule
131 declaration by inventors Kamboj, Nutt and Elliott.” However, as the examiner
notes (Answer, page 13):
[T]he declaration under 37 CFR [§] 1.131 must be executed by all the
inventors of the claimed invention, which has not been done.
Appellants say at the beginning of section 4 on page 15 of the brief
that declarations signed by inventors Nutt and Elliott are attached to
the brief, but no such declarations accompanied the appeal brief.
Since the declaration filed under 37 CFR §1.131 was not properly executed,
we will not address the merits of the declaration69.
69 However, we note the examiner’s statement (Answer, page 13) “[t]he Rule 1.131
declaration submitted by [a]ppellants would only be sufficient to effectively establish
reduction to practice prior to McNamara for the teaching that there is conservation
95
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