Ex Parte Sun et al - Page 13




              Appeal No. 2003-1993                                                                                            
              Application No. 09/470,526                                                                                      
              omitted).  In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404, (Fed. Cir. 1988).                               
                      In the present case the examiner provided an analysis of several of the relevant                        
              enablement factors on pages 5-9 of the Answer.   One of the examiner's primary                                  
              arguments is that the specification does not disclose any specific structural or functional                     
              characteristics of any isolated nucleic acid comprising a polynucleotide having at least                        
              80% identity to the entire coding region of SEQ ID NO:1.   Answer, page 7.   The                                
              examiner also argues that the “specification does not disclose any examples of how to                           
              make a transgenic host cell or plant comprising an isolated nucleic acid comprising a                           
              polynucleotide having at least 80% identity to the entire coding region of SEQ ID NO:1"                         
              or provide “any definitive evidence that introducing any isolated nucleic acid comprising                       
              a polynucleotide having at least 80% identity to the entire coding region of SEQ ID                             
              NO:1 into a plant will result in an alteration of the plant's phenotype.”   Id.                                 
                      The examiner relies on Hemerly to support the position that the transformation of                       
              plant material is unpredictable in view of the disclosure.   According to the examiner,                         
              Hemerly teaches “the transformation of Arabidopsis and tobacco plants with isolated                             
              nucleic acids encoding wild-type and mutant Cdc2a cell cycle regulatory proteins”.                              
              Answer, page 8.   Transformation of Arabidopsis with wild-type Cdc2a and with a Cdc2a                           
              mutant designed to accelerate the cell cycle unexpectedly did not affect the                                    
              development of transgenic plants.  The transformation of Arabidopsis and tobacco with                           
              a Cdc2a mutant designed to arrest the cell cycle did affect the development of                                  
              transgenic plants as expected.  Id.                                                                             

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