Appeal No. 93-2460
Application No. 07/590,647
maize and rice, “is likely to be a problem for some years
because, so far, the establishment of the appropriate cell
cultures is an art that depends upon parameters beyond
experimental control (Potrykus, page 540, section 12).” Answer,
sentence bridging pp. 17-18. Having provided objective evidence
to support her position, the burden now shifts to the appellants
to demonstrate by way of rebuttal evidence that the application
is enabling. In re Marzocchi, 439 F.2d at 223, 169 USPQ at 369.
In their response, however, the appellants address the
rejection only as it applies to claim 46. Brief, p. 21. The
appellants contend that “suitable transformation methods for both
dicot and monocot plants were known at the time of filing of the
instant application” and they refer generally to a list of
references provided in an amendment, filed December 11, 1991
(Paper No. 5). Brief, p. 21, lines 4-8. In addition, the
appellants argue that the teachings on pp. 66-68 of the
specification demonstrate that techniques known in the art were
used for the regeneration of maize protoplasts which expressed
the claimed variant EPSPS. Thus, the appellants urge that it
would not require undue experimentation for one skilled in the
art to make and use the invention described in claim 46. We find
the appellants’ position untenable.
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