Appeal No. 93-2460
Application No. 07/590,647
In their response the appellants point out that although
Fillatti does not describe the EPSPS variant used in the studies,
the evidence of record indicates that their variant was obtained
from Comai. Therefore, the appellants conclude that the EPSPS
variant employed by Fillati is the same as the variant taught by
Comai. Brief, p. 24, para. 1. The examiner does rebut the
appellants’ finding, thus, for purposes of this appeal, we will
assume that the EPSPS variants disclosed by Fillatti and Comai
are identical.
We greatly appreciate the examiner’s concerns that
phenotypically there may be no differences between the claimed
glyphosate-resistant plants and those of the prior art. In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA 1977)
(Where the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed
product). However, in the case before us, the claimed variants
contain two different mutations in two different regions of the
nucleotide/amino acid sequences. The mere fact that claimed
mutations are in the same EPSPS enzyme as the prior art, does not
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