BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE STEVEN D. TANKSLEY AND ROBERT BERNATZKY Appeal No. 91-1446

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)



Appeal No. 91-1446

December 30, 1991



 Application for Patent filed March 10, 1986, Serial No. 841,594. Tomato Chromosome Map and cDNA Library.



Diane H. McClearn et al. for appellants



Primary Examiner--Elizabeth C. Weimar



Before Goldstein, Tarring and W. Smith














 This is a request for reconsideration of our decision of October 10, 1991, wherein we affirmed the rejection of all of the claims. We have carefully considered the arguments advanced by appellants but find nothing therein to convince us that there was substantial error in our decision. Appellants' request has, however, convinced us that additional comments to clarify our previous decision would be in order.



 We erred in using the terminology "genes" where we should have used "clones." It should be understood, however, that the expression "clones" may be generic to and include full length "genes." It should also be noted that appellants have argued (page 2 of the request) only that it is "unlikely" that any of the claimed clones represents a full length gene. However, assuming arguendo that none of the clones recited in appellants' claim 4 represents a complete gene, no change in our decision of the appeal of the examiner's rejections is necessitated.



 We note specifically that Alexander discloses (page 87, right hand column), in addition to essentially full length genes, the preparation of clones having between 550 and 650 bp, a range which includes some of the Rbc clones claimed by appellants. Since appellants have not chosen to identify their clones in any art recognized manner, the burden would appear to be on them to prove a distinction over the prior art relied on in the examiner's rejection, regardless of whether the rejection is considered to be one for inherency under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103. In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA1977).



 We further note that appellants' attempted distinction over the disclosure of Alexander based on the asserted fact that appellants' clones map uniquely to a single locus, whereas the Alexander clones do not, is not supported (and is perhaps directly contradicted) on this record. There is no evidence as to the behavior of the Alexander clones, and appellants' own specification clearly discloses that a significant number of their clones do not map uniquely to a single locus. See, merely for example, pages 22 and 33.



 With regard to the rejection for indefiniteness, we recognize that appellants are working in a relatively new area of technology, which involves a newly evolving system of nomenclature. However, in the present case, it would have been possible to characterize the claimed subject matter in already well known terms, two of which the examiner has suggested, i.e., base sequence (at least partial) and/or function. Since we have assumed arguendo that no whole genes are represented, this would a fortiori require the designation of the function of the gene the clone represents.



  *2 We note that appellants have strongly expressed the opinion that our restatement of the examiner's rejection under 35 U.S.C. 112 should have constituted a new ground of rejection. We note as well, however, that they have elected to argue that assertedly new ground of rejection on the same record before us in this request for reconsideration. Our understanding of appellants' position is that this opportunity to present these arguments satisfies their right to due process, and we consider that our comments above reflect our consideration of these new arguments.



 Appellants have mischaracterized our comments beginning at the last paragraph on page 8 of our original decision as new grounds of rejection. These comments were simply suggestions to the examiner of issues that should be raised in the event that this subject matter should come before her again, e.g., in a continuating application. In light of appellants' comments, however, we will take this opportunity to modify those suggestions.



 The Pichersky disclosure appears to relate to significantly larger clones than those recited in appellants' claims, each of the former apparently embodying one or more entire genes. This reference itself would not appear to be any more relevant than the Alexander article. However, we note that many quite relevant prior art disclosures are discussed in appellants' specification and the most significant of these were made of record formally and supplied for the record physically by appellants (Paper No. 5). These articles appear to be absent from the file as it reached the Board of Patent Appeals and Interferences. It would be incumbent upon the examiner, in the event of further prosecution, to reconstitute this file, either by herself or by requesting submission of copies from appellants, and to make appropriate findings of fact on the record as to the obviousness or unobviousness of appellants' claimed subject matter over the acknowledged state of the prior art represented by these references. These references at least superficially appear to be more closely related to the claimed subject matter than the reference relied on by the examiner and those discussed in our original decision. In this regard, we take particular note of our comment in our original decision that the claimed subject matter here appears to be "an extension of earlier, similar investigations, which developed less complete tomato genome maps, by application of similar if not identical procedures to those used earlier."



 With respect to the issue of enablement or undue experimentation, the comment presented in the final substantive paragraph of our original decision is not rendered inapplicable by assuming arguendo that all of appellants' claimed clones are gene fragments. The difficult "identification" referred to would still apply equally to the processes in which the claimed clones are intended to be used. No working examples of these processes appear in appellants' specification. This fact is not itself fatal to enablement but, when taken together with other considerations, such as the complexity and unpredictability of the field of technology in question and the lack of guidance in the specification, it may lead to a conclusion that undue experimentation would be required on the part of one of ordinary skill in the art in using the claimed invention. See, e.g., Ex parte Kung, 17 USPQ2d 1545 (BPAI1989); Ex parte Forman, 230 USPQ 546 (BPAI1986); Ex parte Jackson, 217 USPQ 804 (BPAI1982).



  *3 With respect to both the grounds of rejection of record and the issues we have suggested to be considered upon further prosecution, we would emphasize the following fact.



 Appellants' claim 4 does not require a full set of mapped clones representing the tomato genome. It reads on any one of a number of single clones. To a certain extent, appellants' arguments as to all of the issues on this appeal seem to have overlooked this fact.



 As a final matter, we note that a decision denying appellants' petition under 37 C.F.R. 1.181(a)/183 was mailed by the office of the director of Group 180 on August 14, 1991. Since it appears that appellants never received that paper (Paper No. 32 in this file), we are attaching a copy to this decision.



 The request has been carefully considered and granted to the extent that we have added extensive comments in clarification of our original decision, but it is denied with respect to making any substantive changes therein.









Melvin Goldstein






Henry W. Tarring, II






William F. Smith





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