Ex parte KAMBOJ et al.; Ex parte NUTT; Ex parte FOLDES et al. - Page 55


                  Appeal No.  1999-1393                                                                                       
                  Application No.  08/242,344                                                                                 
                         predictive of the existence, structure and function of an analogous                                  
                         human glutamate receptor subunit.  Further, since Sun et al. disclosed                               
                         a manner through which a cDNA encoding two-thirds of human GluR2                                     
                         had been isolated and the chromosomal location of the                                                
                         corresponding gene, an artisan would have been certain that a cDNA                                   
                         encoding the entire human GluR2 subunit could be isolated by                                         
                         employing those methods which were routine in the art at the time of                                 
                         the instant invention.                                                                               
                         Initially, we note that the instant application shares the same parent with                          
                  Application No. 08/483,327, now United States Patent No. 6,040,175 (‘175).  It                              
                  appears that the examiner’s rejection of the claims in the present application under                        
                  35 U.S.C. § 103 is inconsistent with the determination that claim 3 of ‘175 is                              
                  patentable.  Claim 3 of the ‘175 patent reads as follows:                                                   
                         3. The human GluR2B receptor having the sequence of amino acids    1-                                
                              863 of SEQ ID NO:2, in a form essentially free from other proteins of                           
                              human origin.                                                                                   
                         In addition, Heinemann, Puckett, and Sun relied upon by the examiner in this                         
                  appeal are cited on the face of the patent as considered prior art.                                         
                         While the examiner may issue a rejection if appropriate under these                                  
                  circumstances, a rejection using the rationale set forth above would appear to                              
                  require the signature of the Group Director.  Compare MPEP ' 2307.02 (7th ed.,                              

                  July 1998).  We note the Group Director did not sign the examiner’s action.                                 
                         Generally, appeals on these facts are remanded to provide the examiner an                            
                  opportunity to consider the issued patent and determine its effect, if any, on the                          
                  issues raised under 35 U.S.C. § 103.  However, after considering the facts in this                          
                  case we believe the better course of action is to move forward with a decision on                           
                  the merits of this appeal.                                                                                  


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