Appeal No. 94-3255
Application 07/673,264
excreted by a particular bacterium, but the examiner should
consider whether that information would have enabled such
persons to “make” auxotrophic mutants capable of excreting a
particular amount of a given amino acid without undue
experimentation. The examiner should consider whether the
availability of an assay would render the results of any of
the chemical mutagenic procedures, spontaneous mutations,
etc., described in the specification and the brief,
predictable. Is the technique of mutagenizing bacteria with
ethyl methane sulfonate (EMS) or N-methyl-N-nitro-N’-
nitrosoguanine (NTG), a controlled procedure wherein one can
direct the production of a specific mutation? Or, as the
results set forth in the appellants’ disclosure appear to
indicate, do the mutagenesis techniques described in the
specification result in random and unpredictable mutations
which give rise to numerous, different types of mutants,
wherein such mutants may or may not include the types of
auxotrophic mutants set forth in the claim? Should the
enablement issue arise in future prosecution, the examiner
should consider the finding of the court in In re Marzocchi,
439 F.2d 220, 223-24, 169 USPQ 367, 369 (CCPA 1971) that “[i]n
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