Appeal No. 2002-2030 Page 9
Application No. 09/294,663
specification does not provide “enablement for a transformed plant comprising a
gene encoding an intestinal mucin protein of any invertebrate.” Examiner’s
Answer, page 3.
The examiner noted that claim 1 is very broad, in that it encompasses IIM-
encoding genes from any invertebrate, which includes such divergent organisms
as insects, earthworms, mollusks, and crustaceans. See the Examiner’s Answer,
page 4. The examiner also noted that the specification provides no guidance
for how to obtain other IIM genes from other insect species or other
invertebrate species. No other DNA sequence from other insect
species, and no protein or DNA sequence from non-insect
invertebrate species, has been isolated or characterized. No
specific guidance for obtaining the genes such as specific probes,
hybridization stringency conditions, or gene sequence similarity has
been provided.
Id. (emphasis omitted). The examiner concluded that “[t]o claim transgenic
plants expressing a multitude of IIM genes from a multitude of sources without
any disclosure or guidance for how to obtain the genes is an invitation to
experiment requiring undue and excessive experimentation.” Id., pages 5-6.
We agree. The claims are extremely broad, reading as they do on IIM-
encoding genes from any invertebrate animal. The specification’s working
examples, by contrast, are limited to two IIM-encoding cDNAs from a single
species of insect (T. ni). As the examiner pointed out, the specification provides
no guidance whatever to direct those skilled in the art in practicing the claimed
invention more broadly than it is exemplified. The specification does not show,
for example, that other insect IIM-encoding genes are substantially similar in
sequence to the disclosed T. ni IIM cDNAs. Nor does the specification disclose
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