Appeal No. 93-2460
Application No. 07/590,647
affirmed this rejection with respect to claims 1 through 3, we
decline to do so again. Accordingly, we direct attention to our
disposition of the § 112, second paragraph issue above, although
we reverse Rejection II, in its entirety.
Rejection III
The examiner urges that the specification is enabling only
for “the sequences shown in Figure 1 (see Fitzgibbon).
Consequently, there is no guidance such that one skilled in the
art would know where to make the appropriate mutations . . . one
could not predict that application of the mutations in the
regions claimed to any EPSPS encoding sequence would yield an
effective glyphosate tolerant gene and corresponding plant.”
Answer, p. 6. We find this position untenable.
The enablement section of 35 U.S.C. § 112, first paragraph,
"requires that the scope of the claims must bear a reasonable
correlation to the scope of enablement provided by the
specification to persons of ordinary skill in the art." In re
Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970). Thus, in
order to determine whether the present claims are enabled, we
must analyze the teachings of the specification, and make an
inquiry into the knowledge of persons of ordinary skill in the
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