Appeal 2007-0082
Application 10/171,498
(Tomes, col. 3, ll. 36-60.) Thus, it appears that Tomes described solutions to
these problems as of June 10, 1988.
Appellants have presented no evidence showing that the methodology
described in Tomes would not have been viewed as providing an expectation of
success in obtaining a fertile, genetically transformed corn plant and seed with
herbicide resistance as of 1988. We have considered each of the publications
attached to the Somers Declaration. None, however, provides a comparison with,
or critique of Tomes, the closest prior art. Appellants have not addressed Tomes’
methodology at all, and have not established that there would not have been a
reasonable expectation of success of obtaining a fertile, transgenic maize plant and
seed using the methodology of Tomes. Nor do the articles attached to the Somers
Declaration represent a specific peer reviewed assessment of the state of the
technology or failures of the technology or methodology in 1988, the original filing
date of the Tomes patent. Thus, we do not find the Declaration of Somers
evidences a lack of expectation of success in 1988 of obtaining transformed corn
plants and seeds using a gene gun to infect germ line cells of corn and using the
plasmid and promoter of Tomes.
Declaration under 37 C.F.R. § 1.131
The Examiner had additionally relied on a Declaration of Günter Donn,
submitted during prosecution of the Strauch patent, as evidence of an expectation
of success of obtaining a seed and corn plant genetically transformed with a gene
for herbicide resistance, such as PAT. (Answer 6.) The Günter Donn Declaration
indicated that in 1990, corn plants had been transformed with the PAT gene and
that seeds were expected in March 1990. (Günter Donn Declaration, Table I, page
2.) The Examiner concluded that "[g]iven the teachings of the Günter Donn
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