Appeal No. 93-2460
Application No. 07/590,647
encode the consensus amino acid sequences in the specified
locations for use in the claimed process, then those DNA
sequences, such as that which is disclosed by Fitzgibbon, are not
within the scope of the claim. That is to say, in our opinion,
representative claim 1 is limited to the EPSPS sequences which
encode the consensus amino acid sequences set forth in Figure 1.
Accordingly, Rejection III is reversed.
Rejection IV
The examiner argues that the specification “is only enabling
for dicot plant species.” Answer, p. 6. According to the
examiner, “[e]xtrapolation to other species from Applicants’
specification would require undue experimentation by one skilled
in the art because methods of transformation and regeneration are
not generally available for monocot species (see Potrykus).” Id.
It is well established that the examiner may reject the
claims as being based on a non-enabling disclosure when s/he has
reason to conclude that one skilled in the art would be unable to
carry out the claimed invention. In re Buchner, 929 F.2d 660,
661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991). Here, we find that
the examiner has such reasons based on the disclosure of Potrykus
that the transformation of monocotyledonous plants, except for
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