Appeal No. 93-2460
Application No. 07/590,647
determine whether those skilled in the art could practice the
method of claim 46 without undue experimentation. Moreover, we
also note from the titles of the articles that they appear to be
directed to the two exceptions taught by Potrykus, i.e., rice and
maize.
Thus, from the evidence of record, we conclude that since
the scope of claim 46 includes all monocotyledonous plants, the
appellants have failed to meet their burden of establishing that
the specification provides an enabling disclosure. Genentech 7
Inc. v. Novo Nordisk A/S, 108 F.3d at 1366, 42 USPQ2d at 1005
(“Tossing out the mere germ of an idea does not constitute
enabling disclosure”).
7We direct attention to the enablement issue raised in
Goodman as to whether or not the specification would have enabled
one skilled in the art to produce any type of mammalian peptide
by transforming any type of plant cell, which includes monocot
plants, with a structural gene encoding a desired peptide. In re
Goodman, 11 F.3d at 1050-1052, 29 USPQ2d at 2013-2015. The court
concluded from the art of record that because the methods of
transforming monocot plants were unreliable and unpredictable, it
would have required “extensive experimentation to practice the
claimed method for just a few plants, let alone all plant cells
as broadly claimed in the application.” Id. at 1052, 29 USPQ2d
at 2015. We acknowledge that the filing date of the present
application is five years later than the filing date of the
Goodman application, however, the appellants have failed to
provide any evidence that the art of transforming monocot plants
with DNA sequences encoding heterologous proteins of interest,
and the subsequent expression of said proteins, has advanced
during the intervening time period.
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