Appeal 2007-0082
Application 10/171,498
genetically transformed corn plant and seed with herbicide resistance as of Tomes’
1988 effective filing date. The fact that Tomes provides a description of
methodology for transformation of corn plants and seeds which uses prophetic
examples and examples involving the culturing of maize cells in vitro is not in and
of itself evidence that one of ordinary skill in the art would not have expected to
obtain a seed of a fertile transgenic maize plant by following the methodology
outlined in Tomes. None of the evidence relied upon by Appellants addresses
Tomes disclosure.
Somers Declaration
Appellants put forth the Declaration under 37 C.F.R. § 1.132 of Professor
David Somers as evidence of a lack of expectation of success and long-felt need
for a genetically transformed corn plant in early- to mid-1990. (Br. 7-10). Dr.
Somers cites articles and reviews published in early- to mid-1990 as evidence of a
long-felt and unresolved need for a fertile corn plant, and the failure of others to
obtain one. (Br. 7). Publications attached to the Declaration as evidence of long-
felt need address known hurdles in the art to obtaining a fertile transgenic corn
plant. Of particular interest is a publication from the journal Science, "Corn
Transformed," Vol. 249, p. 630 (August 10, 1990), discussed at paragraph 7 of the
Declaration.3 This publication notes years of frustration and problems associated
with obtaining genetically transformed fertile corn plants. In particular, the article
discusses "two formidable obstacles" to obtaining fertile corn plants. The first
noted obstacle was how to get novel genes into plant cells, particularly monocot
plant cells. The second obstacle was the lack of appropriate cell culture techniques
3 We acknowledge that we have considered each of the publications attached to the
Somers Declaration as evidence of long-felt need, but find the Science publication
as cumulative to and most relevant of the other cited publications.
- 7 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013