Appeal 2007-0082
Application 10/171,498
The Examiner further finds that
[t]he teachings of Tomes [ ] provide[ ] evidence … that one of
ordinary skill in the art at the time of the instant invention would have
had a reasonable expectation of success in making a fertile transgenic
maize plant that contains a transgene for herbicide resistance. The
teachings of Strauch [ ] provides evidence that one of ordinary skill in
the art at the time of the instant invention would have had a
reasonable expectation of success in producing a transgenic plant
having resistance to phosphinothricin using a transgene encoding
phosphinothricin acetyl transferase (PAT).
(Answer 6).
We conclude that the evidence cited by the Examiner establishes a prima
facie case of obviousness. We find that the disclosures of Tomes and Strauch
provide a reasonable expectation of successfully obtaining a seed of a fertile
transgenic maize plant, the seed comprising a chromosomally incorporated nucleic
acid sequence encoding PAT and capable of being cultivated to produce a
transgenic maize plant having resistance to a herbicide comprising
phosphinothricin, using the transformation methodology described by Tomes..
Appellants contend that "[t]he references cited by the Examiner are entirely
prophetic with regard to a transgenic maize plant" and "[t]he ability to express any
gene in transgenic maize plant was therefore absolute speculation . . . absent the
teaching of the current specification" (Reply Br. 4). Appellants point out that
"Tomes provides herbicide resistant plants, but a review of the application reveals
that the working examples involve only maize cultured cells in vitro." (Id.) Thus,
Appellants contend that there was no expectation of successfully obtaining a fertile
corn plant and seed based on the teachings of Tomes and Strauch.
However, Appellants have presented no evidence showing that one of skill
in the art, presented with Tomes’ teachings, would not have had a reasonable
expectation of successfully using Tomes’ methodology to obtain a fertile,
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