Appeal No. 1999-1393
Application No. 08/242,344
In our opinion, supra, the examiner failed to meet his burden of establishing a
prima facie case of obviousness in obtaining the GluR1B receptor having the amino
acid sequence of residues 1-888 of SEQ ID NO:2. Therefore, a method of
assaying, using a membrane preparation derived from a human GluR1B-producing
cell would also not have been prima facie obvious.
Claim 39:
In response to appellants’ argument that the limitations of claims 39 and 40
were not separately addressed, the examiner states (Answer, page 10) that
“[a]ppellant has failed to indicate how these additional limitations provide a
patentable contribution over the sequence limitations of the other claims.”
We remind the examiner that the burden of establishing unpatentability rests
on the examiner. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445
(Fed. Cir. 1992). In this instance the examiner is attempting to shift the burden to
appellants to prove patentability. This is clearly improper.
We find nothing in the examiner’s Answer which demonstrates that the
combination of references relied upon render a method of assaying, (1) “wherein
said cell comprises a 3.2 kilobase EcoR1/EcoR1 fragment of the plasmid
pBS/human GluR1B (ATCC 75246)” (claim 39) or (2) “wherein said cell has
incorporated expressibly therein a heterologous DNA molecule having the
nucleotide sequence 116-2779 of SEQ ID NO:1” (claim 40).
Therefore, in addition to those reasons provided above, we find that the
examiner failed to meet his burden of establishing a prima facie case of
unobviousness.
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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