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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