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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