Appeal No. 2006-0102 Page 3
Application No. 09/732,439
assertion that the court in Capon was “faced with facts similar to those in the
present case . . . .” Request, page 6.
For clarity we reproduce claim 59 below:
59. A transformed monocot plant, which plant is substantially tolerant or
resistant to a reduction in water availability, the cells of which
comprise a recombinant DNA segment comprising a preselected DNA
segment encoding an enzyme which catalyzes the synthesis of the
osmoprotectant proline, wherein the enzyme is expressed in an
amount effective to confer tolerance or resistance to the transformed
plant to a reduction in water availability.
Claim 59 is drawn to a transformed monocot plant. The cells of the plant
comprise a recombinant DNA segment. The recombinant DNA segment
comprises a preselected DNA segment encoding an enzyme which catalyzes the
synthesis of the osmoprotectant proline. This enzyme is expressed in an amount
effective to confer tolerance or resistance to the transformed plant to a reduction
in water availability. Thus, the plant is substantially tolerant or resistant to a
reduction in water availability.
According to appellants, they “are not claiming novel nucleic acids, but
rather are claiming an invention that makes use of known sequences.” Request,
page 5. If this were true, appellants’ arguments regarding Capon might be more
applicable. Claim 59, however, is not so limited. To the contrary, claim 59
requires a “recombinant DNA segment [that] comprises a preselected DNA
segment encoding an enzyme which catalyzes the synthesis of the
osmoprotectant proline.” As we explained at page 7 of the Decision,
the examiner finds (Answer, page 15), the phase “recombinant
DNA segment encoding an enzyme which catalyzes the synthesis
of the osmoprotectant proline” encompasses a genus of DNAs “of
any sequence”, “obtained from any source”, “encoding any enzyme
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