Appeal No. 94-0224
Application 07/322,604
invention adds a completely exogenous bacterial gene to a plant. Dr. Streber concludes
(declaration, page 2):
There was no way to predict from [Comai], either alone or in combination
with the other cited reference, whether:
a) the bacterial 2,4-D monooxygenase could be expressed inside
eukaryotic cells, e.g., plant cells, and
b) even if it were, if the biological activity of the 2,4-D monooxygenase
would be retained, and,
c) even if it were, if it would be retained at a level compatible with both
I) the biological activity of herbicide-resistance and
ii) the viability of the plant.
Dr. Streber concludes at page 3 of his declaration:
Therefore, in view of the differences in the enzymes, in particular the
endogenous versus exogenous nature of the enzymes, the very different
chemistry of the herbicides, the metabolic pathways affected, the toxicity of
reaction products, etc., between the reference and the present invention, a
skilled worker would not be able to predict anything from the cited
references, particularly in view of Comai, with respect to the present
invention.
In response, the examiner states at page 9 of the Answer:
In the instant case, an artisan would have known that a structural gene from a
gram negative bacterial source had been successfully expressed in a plant
system prior to the time of the instant invention and would have reasonably
expected that any other bacterial genes could also be expressed in a plant,
absent unexpected results.
In essence, the examiner has taken the single success described by Comai and
extrapolated that success into a generic teaching. Having done that, the examiner then
takes the generic teaching and turns that into a per se rule, i.e., it would have been obvious
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