Appeal No. 2003-0936
Application No. 09/532,806
have promoter activity because the specification does
not provide sufficient structural and functional
information for one skilled in the art to recognize
which sequence has promoter function.
In the two quotations reproduced above, we find the origins of the
examiner’s reversible error in this case.
Even in an unpredictable art, this being one, it is legal
error for an examiner to require an applicant to disclose a common
chemical structure essential for functional activity, here the
nucleotide sequence of the maize GRP promoter of SEQ ID NO:1
critical for functional activity, to satisfy the enablement
requirement of 35 U.S.C. § 112, first paragraph. To enable persons
skilled in the art to make and use the full scope of the subject
matter claimed, here all the subfragments of SEQ ID NO:1 which are
in fact active as maize GRP promoters, (1) it may not be necessary
to disclose, or even know, the chemical structure essential for
functional activity in order to enable any person skilled in the
art to make and use the full scope of the subject matter claimed,
and (2) there may not be a common chemical structure essential for
functional activity of the full scope of the subject matter
claimed. While each case must be considered on its own facts, we
are directed to reverse the examiner’s rejection of appellants’
claims under 35 U.S.C. § 112, first paragraph, as explained in the
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