Ex Parte Anderson et al - Page 2


                 Appeal No.  2006-0102                                                           Page 2                   
                 Application No.  09/732,439                                                                              
                 1.  Is our Decision legally inconsistent with the holding of Capon v. Eshhar,                            
                 418 F.3d 1349, 76 USPQ2d 1078 (Fed. Cir. 2005)?                                                          
                         Appellants argue that the affirmance of the written description rejection                        
                 “is legally inconsistent with the holding of Capon v. Eshhar.”  Request, page 2.2                        
                 According to appellants (Request, pages 3-4), “[t]he Board relied extensively on                         
                 the holding in University of California v. Eli Lilly and Co., 119 F.3d 1559[, 43                         
                 USPQ2d 1398] (Fed. Cir. 1997) . . . [yet] failed to acknowledge that the facts and                       
                 holding of Lilly are inapposite to the present case, as vividly demonstrated in                          
                 Capon.”  In support of this assertion, appellants assert that                                            
                         Lilly concerned a gene that “had never been characterized.” . . .  In                            
                         contrast, the current application does not claim nucleic acids and                               
                         the novelty of the invention does not turn on the DNA sequences                                  
                         allegedly non-disclosed, which were known in the art.  Rather, the                               
                         invention lies in the expression of known DNA sequences in a                                     
                         monocot plant to confer drought tolerance.                                                       
                 Request, page 4.  We disagree with appellants’ characterization of their                                 
                 invention.  More specifically, we disagree with appellants’ assertion that they “are                     
                 not claiming novel nucleic acids, but rather are claiming an invention that makes                        
                 use of known sequences.”  Request, page 5.  We also disagree with appellants’                            



                                                                                                                          
                 2 We remind appellants as explained in section 1206 of the Manual of Patent Examining                    
                 Procedure (8th ed., rev 2, May 2004) (MPEP), emphasis added:                                             
                         37 C[.]F[.]R[. ] 1.192(a) is not intended to preclude the filing of a supplemental              
                         paper if new authority should become available or relevant after the brief was                   
                         filed.  An example of such circumstances would be where a pertinent decision of                  
                         a court or other tribunal was not published until after the brief was filed.                     
                 Here, appellants simply assert that Capon was not cited or relied upon prior to the Decision             
                 because Capon did not publish until after the briefs were filed.  It remains unclear why appellants      
                 did not file a supplemental paper in the one year period between the publication of the Capon            
                 opinion (August 12, 2005) and the Board’s August 31, 2006 Decision.  Particularly when they              
                 believe that “[t]he present case involves issues that are more analogous to those in Capon, rather       
                 than those in Lilly.”  Request, page 5.                                                                  





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