Appeal No. 1996-0963
Application 07/947,249
“[t]he process disclosed in the specification requires a considerable amount of
experimentation.” Examiner’s Answer, pages 7 and 8.
Ultimately, the examiner focuses on “[t]he unpredictable nature of the art [as] the
most important factor in the instant application.” Examiner’s Answer, pages 4 and 5. For
example, the examiner argues that one “can not predict the length of time necessary to
select herbicide resistant cell lines . . . because of the random nature of mutagenesis . . .
[t]he length of time is important because [it] affects the ability of cultured tissues to
regenerate fertile plants.” Although “it is a statistical certainty that the desired mutation will
ultimately arise,” the examiner maintains that “it is not certain that the cell culture technique
will allow selection and isolation of cells harboring said mutation.” Additionally, the
2
examiner relies on Reisch to establish that “cultured maize tissue is more cytogenetically
stable than other monocotyledons, particularly rice and oat,” thus, “it is easier to regenerate
normal corn plants from culture than normal plants of other species.” Examiner’s Answer,
page 7.
For these reasons, the examiner concludes that “it would require undue
experimentation to make the claimed plants and seeds” (Examiner’s Answer, page 8). If
we can summarize the basis of the examiner’s position, it is that it would require a
considerable amount of experimentation, over an uncertain period of time, to develop
2B. Reisch, “Genetic Variability in Regenerated Plants,” in Handbook of Plant Cell
Culture, Volume 1, D.A. Evans et al, eds., Macmillan Publishing Co, New York, NY, pp.
748-769 (1983).
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007