Appeal No. 1999-1393
Application No. 08/242,344
Having determined that the examiner has not established a prima facie case
of obviousness, we find it unnecessary to discuss the Zimmerman Declaration
executed July 21, 1997, and the Declarations61 filed under 37 CFR § 1.131 of
Kamboj (executed August 7, 1997), Nutt (executed June 26, 1997) and Elliott
(executed June 26, 1997) relied on by appellants to rebut any such prima facie
case.
Accordingly, we reverse the examiner’s rejection of claims 23, 24 and 27
under 35 U.S.C. § 103 as being unpatentable over Heinemann in view of Puckett,
Sun, Schofield and Grenningloh as applied to claims 1, 4, 7, 10, 11, 13, 15, 16, 18,
19, 26 and 42-49 above, and further in view of Cutting.
Statement under 37 CFR § 1.196(c):
It appears to us that the rejection of claims 23 and 24 under 35 U.S.C. §
102(b) as being anticipated by Cutting may be over come by adding a phrase to the
claim that requires GluR3’s presence in the membrane. We note of interest, a
phrase from Appeal No. 2000-1779, Application No. 08/473,204, claim 17 “a
membrane preparation that contains human GluR4B protein.”
Time Period for Response for Appeal No. 1999-2200:
This opinion in Appeal No. 1999-2200 contains a statement pursuant to 37
CFR § 1.196(c) has been made in this decision. 37 CFR § 1.196(c) provides:
Should the decision of the Board of Patent Appeals and Interferences
include an explicit statement that a claims may be allowd in amended form,
appellants shall have the right to amend in conformity with such statement
which shall be binding upon the examiner in the absence of new references
or grounds of rejection.
61 However, we compare the examiner’s statement (Answer, page 30) that “[t]he
transmission of confidential information does not show a reduction to practice of the
claimed isolated DNA,” with similar statements made in Appeal Nos.: 1999-1393,
1999-2118, 1999-2200, 2000-1778, 2000-1779, and 2000-1780.
79
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