Appeal No. 96-1027
Application 08/162,288
PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623
(Fed. Cir. 1996). However, the burden rests initially with the examiner to substantiate the
unpredictability of the art and that, given the unpredictability, the specification does not
provide sufficient information to guide those of skill to make and use the claimed process
across the full scope of the claims. Here a clear goal is disclosed; i.e, to inhibit the
expression of fruit-ripening enzymes. Examples are provided which extensively describe
the techniques necessary to make the recombinant DNA construct and thereafter to
transfer the construct to the plant cell to be modified (specifcation, pp. 7-33). While the
specification focusses on tomatos, there is no evidence that the process detailed therein
for tomatos is not a sufficient guide for one of skill to apply the same techniques to the cells
and constructs of other disclosed fruits (specification, p. 4, lines 24-27). Whatever
unpredictability surrounds the use of constructs and cells other than tomato and pJR16S, or
a recombinant DNA of different sequence segment lengths, the need for undue
experimentation appears to be mitigated by appellants' clearly described examples of how
to make and use the process. There is no evidence that would refute the statements made
in the specification that the invention exemplified therein finds equal application in
numerous other embodiments (specification, pp. 1-6). The lack of evidence of undue
experimenation as to these other embodiments cannot be replaced by speculating about
the possibility of producing an inoperative result. The examiner has not met the burden of
providing evidence or reasoning sufficient to support a legal conclusion of lack of
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