Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 121


                  Appeal No.  1997-3221                                                                                        
                  Application No.  08/249,241                                                                                  
                  establishing a prima facie case of obviousness.  In re Oetiker, 977 F.2d 1443,                               
                  1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992).                                                                 
                          Having found that the examiner failed to meet his burden of establishing a                           
                  prima facie case of obviousness in obtaining the NR2A-1 and NR2A-2 protein, the                              
                  claimed assay method of claim 14 would not have been obvious.  In addition, since                            
                  the examiner failed to meet his burden of establishing a prima facie case of                                 
                  obviousness in obtaining the NR2A-1 and NR2A-2 protein, we need not discuss the                              
                  NMDAR1 receptor unit used in a heteromeric receptor complex with NR3 protein of                              
                  claim 21.                                                                                                    
                          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).                                                                                       
                          Accordingly we reverse the rejection of claims 14, 21 and 22 under                                   
                  35 U.S.C. § 103 as being unpatentable over Monyer in view of McNamara,                                       
                  Blackstone, Schofield, Grenningloh and Puckett.                                                              
                  The rejection of claims 23 and 34:                                                                           
                          The examiner relies (Answer, page 10) upon Durand for the teaching that the                          
                  rat NMDAR1 receptor subunit was known to occur in eight splicing variants.                                   
                  However, Durand does not make up for the deficiencies in the combination of                                  
                  Monyer in view of McNamara, Blackstone, Schofield, Grenningloh and Puckett.                                  
                          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).                                                                                       

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