Ex parte KAMBOJ et al.; Ex parte NUTT; Ex parte FOLDES et al. - Page 36


                  Appeal No.  1999-1393                                                                                       
                  Application No.  08/242,344                                                                                 
                         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 Declaration executed                           
                  May 3, 1994, relied on by appellants to rebut any such prima facie case.                                    
                         Accordingly, we reverse the examiner’s rejection of claims 35-38 under  35                           
                  U.S.C. § 103 as being unpatentable over Werner in view of Heinemann and                                     
                  Puckett.                                                                                                    
                  New Grounds of Rejection under 37 CFR § 1.196(b):                                                           
                         Claims 35-38 are rejected under 35 U.S.C. §112, first paragraph, as                                  
                  containing subject matter which was not described in the specification in such a way                        
                  as to reasonably convey to one skilled in the relevant art that the inventor(s), at the                     
                  time the application was filed, had possession of the claimed invention.                                    
                         The claims are directed to a method of assaying comprising the steps of                              
                  incubating a test ligand with a genetically engineered cell that produces “a high                           
                  affinity kainate-binding” human EAA5 receptor.  The specification as originally filed                       
                  does not describe the human EAA5 receptor subunit as a high affinity kainate                                
                  binding polypeptide, and the claims as originally filed do not recite the term “high                        
                  affinity kainate-binding.”  Example 3 of the specification shows that the human                             
                  EAA5a receptor subunit binds kainate, but example 3 does not show that the                                  
                  receptor subunit is a high affinity kainate-binding polypeptide.  Thus, the                                 
                  specification does not reasonably convey to the skilled artisan that the inventor, at                       

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