Appeal No. 2003-1126 Page 6
Application No. 08/444,285
at least almost all, somatic and germ cells of the mammals. In this regard, the
transgenic mammal can pass the heterologous gene to its progeny through either
the female or male germ cells.
With respect to the state of the art at the time of filing, the examiner
observes that the earliest filing date is June 12, 1981. The rejection contends
that at that time, “the production of transgenic rabbits, goats, pigs, cattle or sheep
was neither routine nor well known,” but “was an emerging endeavor of scientific
research.” Id. at 5.
With respect to the amount of guidance presented by the specification and
the working examples, the last factors discussed by the rejection, the rejection
asserts that “the specification does not provide any teachings as to transgenic
mice, other rodent [sic], rabbits, goats, pigs, cattle or sheep where expression of
the transgene provides anything short of a phenotypic change that benefits the
art,” i.e., “there is no disclosed use for a transgenic mammal that expresses the
transgene at a detectable level in some cells.” Id. at 6.
The rejection contends that when the claims are read in light of the
specification, “the artisan would see that the use for the claimed mammals and
methods of producing a polypeptide or protein is to increase feed utilization and
growth rate in food mammals, to increase feed utilization and milk production in
mammals, to produce of [sic] meats of altered flavor, to serve as developmental
models and to eliminate or diminish genetic diseases.” Id. at 7-8. According to
the rejection, those uses require expression of specific genetic material, but that
at the time of filing, “the ability to specifically produce desired phenotypes in a
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