Appeal No. 2006-0102 Page 16
Application No. 09/732,439
catalyzes the synthesis of the osmoprotectant proline (column 17, claim 5 and
column 18, claim 14).” The examiner reasons (id.), since Verma II discloses that
the monocot plants are drought resistant, the Δ1-pyrroline-5-carboxylate
synthetase must be “expressed in an amount effective to confer tolerance or
resistance to a reduction in water availability. . . .” Verma II is not entitled to the
benefit of the September 29, 1992 filing date of Verma I for subject matter that is
disclosed in Verma II but not in Verma I. Specifically, since Verma I does not
disclose monocots transformed with Δ1-pyrroline-5-carboxylate synthetase,
Verma II does not receive the benefit of Verma I’s filing date for this subject
matter. Instead, the new subject matter disclosing transformed monocots
present in Verma II receives benefit of the June 29, 1994 filing date of Verma II,
which is after the August 25, 1993 effective filing date of the instant invention.
Therefore despite the examiner’s assertion (Answer, page 26) that the
methodology used by Verma II to transform monocots is the same as that used
by Verma I to transform dicots, there is no evidence on this record that Verma I
or Verma II disclosed a monocot transformed with Δ1-pyrroline-5-carboxylate
synthetase as of the August 25, 1993 effective filing date of the present
application. “Under 35 U.S.C. § 102, every limitation of a claim must identically
appear in a single prior art reference for it to anticipate the claim.” Gechter v.
Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997).
“Every element of the claimed invention must be literally present, arranged as in
the claim.” Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226, 1236, 9
USPQ2d 1913, 1920 (Fed. Cir. 1989).
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