Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 103


                  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.”                                                          

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