Appeal No. 1999-1393
Application No. 08/242,344
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443,
1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992).
Having found that the examiner failed to meet his burden of establishing a
prima facie case of obviousness in obtaining the NR2A-1 and NR2A-2 protein, the
claimed assay method of claim 14 would not have been obvious. In addition, since
the examiner failed to meet his burden of establishing a prima facie case of
obviousness in obtaining the NR2A-1 and NR2A-2 protein, we need not discuss the
NMDAR1 receptor unit used in a heteromeric receptor complex with NR3 protein of
claim 21.
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).
Accordingly we reverse the rejection of claims 14, 21 and 22 under
35 U.S.C. § 103 as being unpatentable over Monyer in view of McNamara,
Blackstone, Schofield, Grenningloh and Puckett.
The rejection of claims 23 and 34:
The examiner relies (Answer, page 10) upon Durand for the teaching that the
rat NMDAR1 receptor subunit was known to occur in eight splicing variants.
However, Durand does not make up for the deficiencies in the combination of
Monyer in view of McNamara, Blackstone, Schofield, Grenningloh and Puckett.
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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