Appeal No. 93-2460
Application No. 07/590,647
specification disclosure would have enabled one skilled in the
art to make transgenic maize. We need not make this
determination, however, because we do not find the single,
disclosed example of maize protoplasts which express the variant
EPSPS sufficient to enable the one skilled in the art to make the
invention as broadly claimed. That is, the method of claim 46
encompasses all monocot plant species. However, Potrykus
discloses that in 1990, the filing date of the present
application, standard direct gene transfer procedures, were not
generally applicable to all monocots, but had only been
successful with maize and rice. Thus, on these facts, we find
that successful results obtained for the regeneration of
transformed maize protoplasts do not enable those skilled in the
art to practice the full scope of the invention, absent undue
experimentation. In re Goodman, 11 F.3d 1046, 1050, 29 USPQ2d
2010, 2013 (Fed. Cir. 1993), citing In re Wands, 858 F.2d at 737,
8 USPQ2d at 1404.
As to the list of reference titles submitted by the
appellants, we are unable to discern on the basis of this
information alone, what was known in the art with respect to the
production of transgenic cereals at the time the application was
filed. Absent the references themselves, it is not possible to
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