Appeal No. 94-2006
Application 07/586,317
selectable marker systems in animal cells to plant cells. As set forth in paragraph 12 of the
Shillito declaration “the results of other antibiotic studies in animal cells would not have led
to the expectation of parallel findings in plant cells.” This is not the issue raised by the
rejection under review herein.
In considering an issue of enablement, the examiner must consider not only the
relevant teachings of the prior art but also the disclosure of the supporting specification of
the application under review. While the Shillito declaration provides evidence that prior to
appellant's invention there was a degree of unpredictability in extrapolating successful
selection agents for animal cells to plant cells, that degree of unpredictability was in the
context of the prior art. In considering a prior art rejection, the examiner, of course, may not
use appellant’s description of the present invention in the supporting specification.
However, that disclosure must be considered in considering issues of enablement. Here,
appellant demonstrated that a coding region which encodes a hygromycin
phosphotransferase enzyme will confer resistance to hygromycin B on appropriately
transformed plant cells. Thus, it stands to reason that a coding region which encodes a
functional portion of hygromycin phosphotransferase enzyme would also work as claimed.
The examiner has simply not provided evidence that at the time of the present invention, it
would entail undue experimentation for those skilled in the art to determine coding regions
which encode a functional portion of hygromycin phosphotransferase enzyme.
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