Appeal 2007-0082
Application 10/171,498
Declaration, it is clear that one of ordinary skill in the art would have had a
reasonable expectation of success in making a fertile transgenic maize plant
transformed with a nucleic acid sequence encoding PAT as claimed by
Appellants." (Answer, 6).
Appellants attempt to antedate the Günter Donn Declaration (and Strauch)
cited by the Examiner with a Declaration under 37 C.F.R. § 1.131. The Appellants
argue that a Declaration under 37 C.F.R. § 1.131 of record evidences their
invention was made prior to January 22, 1990, thus, prior to the date of the Günter
Donn Declaration. (Br. 11-12; Reply Br. 9; Response 2-4).
However, the Examiner relies on Strauch primarily for its disclosure that the
PAT gene and plasmids containing the PAT gene were known in the art as of the
January 19, 1988 or August 21, 1987 priority dates of the Strauch patent. The
Examiner relies on Tomes, not Strauch, for a description of methodology for
obtaining genetically transformed corn plants. Thus, we find antedating the Günter
Donn Declaration is of no consequence to the Examiner's obviousness rejection,
and has no bearing on the expectation of success provided by the disclosure of
Tomes as of its effective filing date. Appellants' Declaration under 37 C.F.R. §
1.131 does not antedate the filing dates of Tomes or Strauch, and therefore, Tomes
and Strauch are available as prior art as of their respective June 10, 1988, and
January 19, 1988 or August 21, 1987 filing dates.4
PGS v. DeKalb
4 The Examiner indicates on page 12 of the Answer that "[both U.S. Patent
Application 07/145, 302 filed January 1988 and U.S. Patent Application
07/088,188, filed 21 August 1987 provide sufficient evidence of priority under 35
USC §102(e) and 112, first paragraph to apply the teachings of U.S. Patent
Application 07/736.316, now U.S.Patent 5,276,268, as prior art to the instant
rejection."
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