Appeal No. 93-2460
Application No. 07/590,647
manner “implies an in vitro modification of an EPSP enzyme.”
Rather, § 112, second paragraph problems discussed above
notwithstanding, we find that the claimed method is directed to
the substitution of specific codons within specific regions of
the EPSP synthase gene. The issue then to be resolved is whether
the specification would have enabled one skilled in the art to
make and use the claimed method. To that end the court in In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971)
directs us to consider that “a specification disclosure which
contains a teaching of the manner and process of making and using
the invention in terms which correspond in scope to those used in
describing and defining the subject matter sought to be patented
must be taken as in compliance with the enabling requirement of
the first paragraph of § 112 unless there is a reason to doubt
the objective truth of the statements contained therein which
must be relied on for enabling support.” (Emphases in original.)
In the case before us, the examiner acknowledges in the body of
the rejection that the specification describes a process of
mutating a DNA sequence which encodes an EPSP synthase enzyme.
Answer, p. 5. She has not articulated any reasons as to why
given this description one skilled in the art would have been
unable to perform the claimed method. Accordingly, we find the
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