Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 95


                  Appeal No.  1999-2200                                                                                    
                  Application No.  08/896,063                                                                              
                  reasonable expectation of success existed based on the combined teachings of                             
                  McNamara and Sommer to obtain a cDNA encoding GluR4B.                                                    
                         The examiner notes (Answer, bridging paragraph, pages 17-18) that                                 
                  Sommer et al. teach cultured mammalian cells engineered with GluR genes for                              
                  electrophysiological characterization (Sommer, column 1, page 1581, and Sommer,                          
                  reference 8).  We therefore, agree with the examiner’s conclusion (Answer, page                          
                  18) that:                                                                                                
                         [A] membrane preparation containing human GluR4 would have been                                   
                         obvious since the polynucleotide encoding human GluR4B was                                        
                         obvious, advantages of expressing a heterologous GluR receptor in a                               
                         cell for pharmacological analysis of the receptor were known, and it                              
                         was routine to use membrane preparation as well as whole cells for                                
                         such pharmacological investigations to analyze properties of drugs                                
                         with clinical potential.                                                                          
                         Appellants provide the Kamboj Declaration, executed August 7, 1997, under                         
                  37 CFR § 1.131 and state (Brief, page 12) “applicants have made of record Rule                           
                  131 declaration by inventors Kamboj, Nutt and Elliott.”  However, as the examiner                        
                  notes (Answer, page 13):                                                                                 
                         [T]he declaration under 37 CFR [§] 1.131 must be executed by all the                              
                         inventors of the claimed invention, which has not been done.                                      
                         Appellants say at the beginning of section 4 on page 15 of the brief                              
                         that declarations signed by inventors Nutt and Elliott are attached to                            
                         the brief, but no such declarations accompanied the appeal brief.                                 
                         Since the declaration filed under 37 CFR §1.131 was not properly executed,                        
                  we will not address the merits of the declaration69.                                                     

                                                                                                                           
                  69 However, we note the examiner’s statement (Answer, page 13) “[t]he Rule 1.131                         
                  declaration submitted by [a]ppellants would only be sufficient to effectively establish                  
                  reduction to practice prior to McNamara for the teaching that there is conservation                      

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