Appeal No. 1996-0963
Application 07/947,249
DISCUSSION
In its broadest aspect, the claimed invention is directed to monocotyledonous
seeds and plants resistant to herbicides that inhibit the activity of acetohydroxyacid
synthase (AHAS), wherein resistance is conferred by an inheritable mutant AHAS. The
examiner concludes that the claimed invention is not enabled throughout its scope, based
on an analysis in keeping with that described in In re Wands, 858 F.2d 731, 737, 8
USPQ2d 1400, 1404 (Fed. Cir. 1988):
Factors to be considered in determining whether a disclosure would require
undue experimentation have been summarized by the board in Ex parte
Forman [230 USPQ 546, 547 (BdPatAppInt 1986)]. They include (1) the
quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the prior art, (6) the relative skill of
those in the art, (7) the predictability or unpredictability of the art, and (8) the
breadth of the claims (footnote omitted).
The examiner notes that the claims are extremely broad in that monocotyledons
comprise a large and diverse group of plants, but maize is the only one represented in the
working examples. In addition, the examiner estimates that “even if optimal culture
conditions were already known for a given species, it would require 1 to 2 years to select a
resistant cell line, regenerate plants, determine if the plants were herbicide resistant and
fertile, and determine if the resistance trait was transmissible to the next generation,” thus
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