Appeal No. 2003-1126 Page 11
Application No. 08/444,285
Claims 1 of the ’191 patent, which is not limited to any specific mammal or
any specific gene, reads as follows:
1. A method of obtaining a mammal characterizes as having a plurality of
cells containing exogenous genetic material, said material including at least one
gene and a control sequence operably associated therewith, which, under
predetermined conditions, express said gene under the control of said control
sequence in a cell of said mammal, which comprises:
(a) introducing exogenous material into a pronucleus of a mammalian
zygote by microinjection, said zygote being capable of development into a
mammal, said genetic material including at least one gene and a control
sequence associated therewith, thereby obtaining a genetically transformed
zygote;
(b) transplanting an embryo derived from the genetically transformed
zygote into a pseudopregnant female capable of bearing an embryo to term;
(c) allowing the embryo to develop to term;
where said gene and control sequence are selected so that the gene is not
activated in such manner and degree as would prevent normal development of
the embryo to term.
What we understand the examiner’s argument to be is that, while the
specification is enabling for a broad method of producing the claimed transgenic
material, it does not teach one skilled in the art how to use the product. The
panel does not agree that this is a proper distinction, however, i.e., that the
amount of disclosure required to enable a product is higher than that required to
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007