Appeal No. 94-2006
Application 07/586,317
Claims 49, 51 through 59, 69 through 71, 73, 75, 77 and 80 stand rejected under
35 U.S.C. § 112, first paragraph, as being non-enabled. The examiner does not rely upon
any evidence in support of this rejection. We reverse.
DISCUSSION
The claimed invention involves a chimeric gene functional in a plant cell which
comprises three coding regions. Of particular interest in this appeal is the coding region
of a aphIV gene set forth in claim 49(c) which encodes either a functional hygromycin
phosphotransferase enzyme or a functional portion thereof. It is the examiner's position
that one skilled in the art could only make and use that aspect of the claimed subject matter
which requires a coding region which encodes a functional portion of hygromycin
phosphotransferase enzyme through use of undue experimentation. We disagree.
In setting forth the statement of the rejection in the paragraph bridging pages 3-4 of
the examiner's answer, the examiner points to the fact that the specification of this
application describes only a single modification of the aphIV gene. The examiner also
relies upon the purported lack of guidance in the specification in regard to identifying or
evaluating essential or non-essential terminal or internal regions of the aphIV gene. Finally,
the examiner relies upon a declaration filed by Dr. Raymond Shillito, filed on December 2,
1992, as evidence of the “unpredictability inherent in the expression of bacterially derived
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