Appeal No. 1999-1223 Page 5
Application No. 08/446,021
dosage regimes to embryonic birds in ovo to produce a useful phenotypic change in
birds, the claims are not enabled."
Appellants argue that the working examples of this application teach a method of
delivering heterologous cells to an avian embryo where the cells persist in the hatched
chick. Appellants argue that that chick containing heterologous cells represents a chick
having a changed phenotype. The examiner disagrees stating at page 11 of the
Examiner's Answer the fact that the hatched chick contains the heterologous cells
"does not indicate that the method results in [a] useful phenotypic change to the bird."
From this, it appears the examiner agrees that the hatched chicks described in the
working examples do have an altered phenotype, just that the altered phenotype is not
"useful."
Since the Examiner's Answer represents a new position taken by the examiner,
it is difficult for us to fully understand the examiner's insistence that appellants
demonstrate "a useful phenotypic change in birds." The specification states at page 6:
As used herein, an altered "phenotype" of a bird is intended to
encompass a sustained alteration in the cellular biochemistry of a bird by
the expression of a foreign DNA molecule within the tissues of the bird,
which alteration results in a change in one or more physical characteristics
of the bird. Thus an altered phenotype can be a change in size,
appearance, endocrine response growth rate, immune response to
specific antigens, metabolic rate, feed consumption and efficiency,
gender, and the like.
Contrary to the examiner’s insistence, the hatched chicks of the working examples
appear to be as "useful" as any other chick would be. We believe that the examiner’s
real concern is that the hatched chicks do not meet the above referenced specification
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