Appeal No. 2006-0102 Page 7
Application No. 09/732,439
Id. In this regard, the examiner finds (Answer, page 15), the phrase
“recombinant DNA segment encoding an enzyme which catalyzes the synthesis
of the osmoprotectant proline” encompasses a genus of DNAs “of any
sequence”, “obtained from any source”, “encoding any enzyme of any type”,
“which catalyzes the synthesis of the osmoprotectant proline.” According to the
examiner (Answer, bridging sentence, pages 15-16), appellants’ specification
does not disclose or refer to any DNA segment or enzyme within this genus.
Specifically, the examiner finds (Answer, page 7),
the specification does not describe any plant comprising any
recombinant DNA encoding any enzyme which catalyzes the
synthesis of the osmoprotectant proline. The specification also
does not describe any recombinant DNA encoding any enzyme
which catalyzes the synthesis of the osmoprotectant proline. Given
that proline is an amino acid found in virtually all organisms, a
variety of structurally and functionally distinct proline biosynthetic
enzymes exist that are encoded by genes from divergent plant,
animal and microbial species.
Therefore, the examiner concludes (Answer, page 8),
Given the claim breadth and lack of description as discussed
above, the specification fails to provide an adequate written
description of the genus as broadly claimed. Given the lack of
written description of the claimed products, any method of using
them would also be inadequately described. Accordingly, one
skilled in the art would not have recognized [a]ppellants to have
been in possession of the claimed invention at the time of filing.
In response, appellants assert (Brief, page 4) “that genes encoding
enzymes that elevate the level of proline were known in the art at the time of
filing.” In this regard, appellants direct attention (Brief, pages 4-5) to the following
references:
1. Verma I, for a disclosure of mothbean Δ1-pyrroline-5-carboxylate
synthetase (P5CS).
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