Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 99


                  Appeal No.  1999-2200                                                                                      
                  Application No.  08/896,063                                                                                
                                                  Appeal No. 2000-1780                                                       
                                               Application No. 08/403,663                                                    
                  Claim 2272 is illustrative of the subject matter on appeal and is reproduced below:                        

                         22.  A method of assaying interaction between a test ligand and a receptor of                       
                             the human central nervous system, which comprises incubating the test                           
                             ligand with a cellular host or with membrane preparation derived from                           
                             said cellular host, said cellular host having incorporated expressibly                          
                             therein a heterologous polynucleotide encoding the human GluR4B                                 
                             receptor having the amino acid sequence of residues 1-881 of SEQ ID                             
                             NO: 2 or an AMPA-binding fragment of said GluR4B receptor having the                            
                             amino acid sequence that is a fragment of the amino acid sequence of                            
                             residues 1-881 of SEQ ID NO: 2, and determining the extent of                                   
                             interaction between said GluR4B receptor or said fragment and the test                          
                             ligand.                                                                                         
                  GROUNDS OF REJECTION73                                                                                     

                         Claims 22-23 and 34-38 are rejected under 35 U.S.C. § 103 as being                                  
                  unpatentable over Keinanen in view of Sommer ’90 and McNamara.                                             
                         We reverse.                                                                                         





                                                                                                                             
                  72 We note that claim 22 was incorrectly presented in the appendix of Appellants’                          
                  Brief (Paper No. 20, received November 3, 1998).  Claim 22 was amended in                                  
                  appellants’ amendment received May 11, 1995 (Paper No. 6).  Claim 22 is correctly                          
                  reproduced herein.                                                                                         
                  73 We note the examiner’s reference at pages 7 and 10 of the Answer to Puckett et                          
                  al. “Molecular cloning and chromosomal localization of one of the human glutamate                          
                  receptor genes,” Proceedings of the National Academy of Science, USA, Vol. 88,                             
                  pp. 7557-561 (1991), and to Sun et al. “Molecular cloning, chromosomal mapping,                            
                  and functional expression of human brain glutamate receptors,” Proceedings of the                          
                  National Academy of Science, USA, Vol. 89, pp. 1443-447 (1992).  However, we                               
                  remind the examiner that “[w]here a reference is relied on to support a rejection,                         
                  whether or not in a ‘minor capacity,’ there would appear to be no excuse for not                           
                  positively including the reference in the statement of the rejection.  In re Hoch, 428                     
                  F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).                                                    

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