Appeal No. 96-1027
Application 08/162,288
Claims 4, 17-19, and 21-23 are rejected under 35 U.S.C. § 112, first paragraph, "as
the disclosure is enabling only for claims limited to the construct pJR16S."
Claims 4, 17-19, and 21-24 are rejected under 35 U.S.C. §103 as being
unpatentable over "either of van der Krol (Ph.D. Thesis) or Jorgensen et al. taken with Hiatt
et al."
DISCUSSION
As set forth in the representative claim, the objective of the claimed invention is to
modify the expression of a fruit ripening enzyme in a plant cell. In particular (Specification,
pp. 1-2), the objective is to inhibit gene expression of the enzymes polygalacturonase and
pectinesterase that cause a fruit's cell wall to change when it ripens. As indicated in a
number of dependent claims, the invention is particularly directed to tomatos. The claimed
invention accomplishes the fruit enzyme expression modification by transforming the plant
cell with a DNA construct. The DNA construct comprises a recombinant DNA sequence
coding for only a part of the fruit ripening enzyme.
Enablement
We first note that two of the three enablement rejections are internally inconsistent.
1) With regard to the first enablement rejection, which is directed only to claims 17 and 21-
23, examiner argues (Examiner's Answer, p. 4) that the disclosure is enabling only for
DNA constructs involving polygalacturonase and pectinesterase sequences derived from
tomato. Claims 4 and 18 are not so limited. Therefore, to be consistent, the rejection
3
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