Appeal No. 1997-3221
Application No. 08/249,241
Without a cDNA having the claimed sequence, a method of assaying as
claimed can not be reasonably expected. Therefore, in our opinion, the examiner
failed to meet her burden of establishing a prima facie case of obviousness.
Where the examiner fails to establish a prima facie case, the rejection is
improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988).
Having determined that the examiner has not established a prima facie case
of obviousness, we find it unnecessary to discuss the Kamboj Declaration77,
executed August 7, 1997, under 37 CFR § 1.131, relied on by appellants to rebut
any such prima facie case.
Accordingly we reverse the rejection of claims 22, 23, and 34-38 under 35
U.S.C. §103 over Keinanen in view of Sommer ’90 and McNamara.
Summary:
We reverse the examiner’s rejection of claims 22-23 and 34-38 under
35 U.S.C. § 103 as being unpatentable over Keinanen in view of Sommer ’90 and
McNamara.
REVERSED
THE NMDA CLASS OF GLUTAMATE RECEPTORS
77 However, we note the examiner’s statement (Answer, page 17) “[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
between the human GluR1-3 compared to rat GluR1-5 as well as human EAA1a
and EAA2a receptors, but no additional teaching.”
103
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