Appeal No. 2005-2663 Page 10
Application No. 10/140,323
Regarding claim 20, the examiner argues that the specification does not describe
the limitation “biotic and abiotic environmental stress”. It is true that the specification
does not contain this phrase, in those words. The specification does, however, refer to
“different environmental conditions” generally, as well as recite examples of both biotic
and abiotic stresses.3 See pages 3-4: the claimed method can “reconstruct networks
of gene interactions that change in different environmental conditions,” “identify
pathways for host defense in plants,” “identify gene pathways in plants responsible for
insecticidal activity,” and “identify pathways in plants that are responsible for drought
tolerance and virulence.” See also page 35: the “invention will answer a multitude of
questions about the genetic architecture of organisms such as . . . in different
environmental conditions.”
We agree with Appellant that the examiner has not adequately explained why
these specific and generic descriptions are inadequate to show possession of the
method of claim 20 to a person of ordinary skill in the art. We therefore reverse the
rejection for lack of adequate written description (new matter).
3. Obviousness
The examiner rejected claims 1-4, 9, 16, 17, 19, and 20 under 35 U.S.C. § 102(a)
as anticipated by Küffner.4 The examiner’s reasoning with respect to claim 1 is as
follows:
Kuffner et al. disclose a method and system, PETRI nets, for representing
differential content of individual databases (KEGG and BRENDA pathway
databases), comparing genomic and network information; and defining
3 A biotic stress is one that is “caused or produced by living things,” and an abiotic stress is one “not
biotic”; i.e., not caused by living things. Merriam-Webster’s Collegiate Dictionary, Deluxe Edition (1998).
4 Küffner et al., “Pathway analysis in metabolic databases via differential metabolic display (DMD),”
Bioinformatics, Vol. 16, pp. 825-836 (2000).
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