Appeal No. 2006-0102 Page 15
Application No. 09/732,439
Claims 59-61, 63, 72 and 73 stand rejected under 35 U.S.C. § 102(e), as
being anticipated by Verma II. Verma II was filed on June 29, 1994, after the
effective filing date of the instant application. The examiner recognizes,
however, that Verma II is a continuation-in-part of Verma I, which has a filing
date of September 29, 1992. Accordingly, the examiner relies on the September
29, 1992 effective filing date of Verma II. We note, however, that in doing so the
examiner can only rely on the subject matter disclosed in Verma II that is also
disclosed in Verma I. Any subject matter in Verma II that is not present in Verma
I does not receive the benefit of the September 29, 1992 filing date. In this
regard, we note that the examiner concedes that Verma I does not disclose the
subject matter of the invention before us on appeal - a transformed monocot
plant. Answer, page 26.
As we understand the examiner’s findings, Verma I teach mothbean plants
(dicots) transformed with a recombinant Δ1-pyrroline-5-carboxyl synthetase and
suggest that “it would be desirable to use genetic engineering of the proline
production pathway in plants to counter osmotic stress. . . .” Answer, page 27.
According to the examiner (Answer, page 30), since monocot transformation was
known in the art as of the filing date of Verma I, neither Verma I nor Verma II
need to “disclose a method for transforming monocots and teach transformation
vectors that could be used to achieve gene expression in monocots. . . .”
The examiner then leaps to the Verma II disclosure finding (Answer, page
12) that Verma II “teach corn, wheat, barley and rye monocot plants comprising a
recombinant DNA encoding Δ1-pyrroline-5-carboxylate synthetase which
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