Appeal No. 2000-1910 Page 5
Application No. 08/785,716
We note that the 1998 Anderson Declaration (paragraph 2) states “[w]heat flour
is made by milling seeds from wheat plants. Wheat flour will inherently contain
the genome of the plant from which the seeds are derived. This is because the
genome is present in the seeds and milling the seeds into flour does not make
the genome go away.”
In response, the examiner argues (Answer, page 5):
The presence or absence of any DNA material in an
identifiable form in the flour is not of record in this
application. The genomic structure of a plant is relevant
when the DNA is cellular and in expressible form. Once the
cells of the seed are destroyed through the processes used
to produce flour, there is no evidence that the DNA is
present or functional in any sense. It is important to note
that whatever genomic material is left after the extensive
mechanical processing of the wheat seeds is not in a form
that is expressible or functional in any way, and is not
imparting any special property or feature to the flour itself.
To this appellants argue (Reply Brief4, page 1):
if the genome of the genetically-engineered plant is retained in the
claimed flour, such flour is necessarily different from the cited art
flour derived from the wild-type plant … [the 1998 Anderson]
declaration, demonstrates that wheat flour will inherently contain
the genome of the plant from which the flour is derived. Hence, the
claimed flour, by virtue of its genome, is necessarily different from
the cited art flour derived from the wild-type plant.
As we understand appellants’ argument, their patented wheat seed5,
which is the source of the wheat flour, as set forth in claim 20, inherently
contains a “genome” that is different from the cited art. Accordingly, this
distinctive genome will give the claimed wheat flour a genetic “fingerprint” that is
4 Paper No. 18, received January 20, 1999.
5 See the ‘558 patent, claim 17.
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