Appeal No. 2006-0102 Page 2
Application No. 09/732,439
1. Is our Decision legally inconsistent with the holding of Capon v. Eshhar,
418 F.3d 1349, 76 USPQ2d 1078 (Fed. Cir. 2005)?
Appellants argue that the affirmance of the written description rejection
“is legally inconsistent with the holding of Capon v. Eshhar.” Request, page 2.2
According to appellants (Request, pages 3-4), “[t]he Board relied extensively on
the holding in University of California v. Eli Lilly and Co., 119 F.3d 1559[, 43
USPQ2d 1398] (Fed. Cir. 1997) . . . [yet] failed to acknowledge that the facts and
holding of Lilly are inapposite to the present case, as vividly demonstrated in
Capon.” In support of this assertion, appellants assert that
Lilly concerned a gene that “had never been characterized.” . . . In
contrast, the current application does not claim nucleic acids and
the novelty of the invention does not turn on the DNA sequences
allegedly non-disclosed, which were known in the art. Rather, the
invention lies in the expression of known DNA sequences in a
monocot plant to confer drought tolerance.
Request, page 4. We disagree with appellants’ characterization of their
invention. More specifically, we disagree with appellants’ assertion that they “are
not claiming novel nucleic acids, but rather are claiming an invention that makes
use of known sequences.” Request, page 5. We also disagree with appellants’
2 We remind appellants as explained in section 1206 of the Manual of Patent Examining
Procedure (8th ed., rev 2, May 2004) (MPEP), emphasis added:
37 C[.]F[.]R[. §] 1.192(a) is not intended to preclude the filing of a supplemental
paper if new authority should become available or relevant after the brief was
filed. An example of such circumstances would be where a pertinent decision of
a court or other tribunal was not published until after the brief was filed.
Here, appellants simply assert that Capon was not cited or relied upon prior to the Decision
because Capon did not publish until after the briefs were filed. It remains unclear why appellants
did not file a supplemental paper in the one year period between the publication of the Capon
opinion (August 12, 2005) and the Board’s August 31, 2006 Decision. Particularly when they
believe that “[t]he present case involves issues that are more analogous to those in Capon, rather
than those in Lilly.” Request, page 5.
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