Appeal No. 2003-1993
Application No. 09/470,526
We agree with appellants that the examiner has not established that the
combination of the disclosure of the specific chemical structures of a polynucleotide
comprising the coding sequence set forth in SEQ ID NO:1, as well as teachings in the
specification on how to test for wee1 activity and teachings of the areas of the wee1
gene that can be altered without disturbing substrate recognition are insufficient to
enable a wee1 polynucleotide having at least 80% identity to the entire coding region of
SEQ ID NO:1.
Nor has the examiner established that one of ordinary skill in the art having the
chemical structures of a polynucleotide comprising the coding sequence set forth in
SEQ ID NO:1 and the ability to test for expression as described in the specification,
would be insufficient to transform cells, plants and seeds in view of the success
described in the specification. While the examiner relies on Hemerly for the
transformation of Arabidopsis with wild-type Cdc2a and with a Cdc2a mutant, the
examiner has not explained how or why potential unpredictability associated with Cdc2a
expression is related to or affects Wee1 expression. Nor is it clear from the examiner’s
analysis that the examiner has fully considered the state of the art as it relates to the
transformation of vectors, seeds and plant cells, as outlined in the specification.
The Patent and Trademark Office Board of Appeals stated:
The test [for enablement] is not merely quantitative, since a considerable
amount of experimentation is permissible, if it is merely routine, or if the
specification in question provides a reasonable amount of guidance with
respect to the direction in which the experimentation should proceed to
enable the determination of how to practice a desired embodiment of the
invention claimed.
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