Appeal 2007-0082
Application 10/171,498
Appellants cite PGS v. DeKalb, 315 F.3d 1335, 1338, 65 USPQ2d 1452,
1460 (Fed. Cir. 2003) for the proposition that "no methodology existed in 1987
that could transform monocots with Agrobacterium to produce plants capable of
regeneration." (Reply Br. 5-6; Response 5). Thus, Appellants argue DeKalb
further supports their position that Tomes would not have provided an expectation
of success in obtaining a fertile transgenic corn plant and seed as of its filing date.
The issue in DeKalb, however, was whether U.S. Patent No. 5, 561,236 had an
enabling disclosure for fertile transformed monocots as of its March 11, 1987 filing
date. The court held it did not.
Again, DeKalb reflects the state of the art as of March 1987, but Tomes has
an effective filing date of June 1988, and indicates that the two main hurdles to
obtaining genetically transformed monocots were overcome by its methodology.
Thus, we do not find that Dekalb evidences that those of ordinary skill in the art as
of the 1988 filing date of Tomes would not have had an expectation of success in
obtaining fertile, transformed corn plants with a gene for herbicide resistance, such
as the PAT gene. It is noteworthy that Tomes claims both corn plants transformed
with genes for herbicide resistance and antibiotics. (Tomes, claims 2, 14-18 and
28-32).
We find no holding in DeKalb which addresses methods of monocot
transformation other than with Agrobacterium, and no holding addressing the issue
of monocot transformation at a date later than March 11, 1987, such as the June 10,
1988 filing date of the Tomes patent, or the January 19, 1988 filing date of a parent
application of Strauch. Thus, while DeKalb may reflect the lack of an expectation
of success in 1987 based on the evidence before that court, we do not find it
reflects upon the specific time frame at issue in the present case.
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