Appeal No. 2003-0936
Application No. 09/532,806
identify which of all the possible at least 95 contiguous
nucleotide segments of the 3536 contiguous nucleotides of SEQ ID
NO:1 described are required to promote expression of the various
coding regions to be linked thereto. More specifically, the
examiner argues (EA 4-5):
35 U.S.C. § 112 requires that Appellants describe in some
manner the structure of the nucleic acid sequences that
would have promoter function. Showing how or why the
claimed promoter sequences function, in particular showing
which structural features are necessary for the function
of the maize GRP promoter, is one way in which Appellants
may describe the structure of subfragments of SEQ ID NO:1
that would have promoter function. Appellants might also
describe the structure of subfragments of SEQ ID NO:1 that
would have promoter function by describing a representative
number of species of subfragments having promoter function,
so that one skilled in the art would have a basis for
recognizing the characteristics of SEQ ID NO:1 subfragments
that retain promoter function. Here Appellants have done
neither. Appellants describe only a single element that
has promoter function. However, this element has only
been shown to have promoter activity when linked to the
rice act 2 intron 1 deletion derivative. This element
appears to be a 639 base pair subfragment of the 3536
base pair sequence of SEQ ID NO:1 (examples 2 and 3
pages 112-114 of the specification, and figures 1 and 2),
though it is unclear exactly which nucleotides of SEQ ID
NO:1 provided this promoter function, as the specification
describes the construction of the promoter containing
construct only in terms of the restriction enzymes used
to subclone the subfragment of SEQ ID NO:1 into the
reporter construct. . . . If a nucleotide required for
promoter function is not present in a given sequence,
that sequence will no longer exhibit promoter function.
Unlike the specification which describes every subfragment of SEQ
ID NO:1 that is between 95 and 3536 contiguous bases long, the
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