Disclosure of Genetically Altered Tobacco Plant Did Not Enable Genetically Altered Tomato Plant

Author:Dr. Judith Toffenetti
Profession:McDermott Will & Emery

Affirming the decision of the U.S. Patent and Trademark Office (USPTO) in an interference directed to genetically altered, insect-resistant tomato plants, the U.S. Court of Appeals for the Federal Circuit found that disclosure of successful experiments with genetically altered tobacco plants would not have enabled one skilled in the art to produce tomato plants "without undue experimentation." Adang v. Fischhoff, 2002 U.S. App. LEXIS 7220, Case No. 01-1169 (Fed. Cir., April 10, 2002).

On the issue of enablement, the Board of Patent Appeals and Interferences focused on the differences between transformed tobacco plants, which were exemplified in the Adang patent, and transformed tomato plants, which were merely listed along with several other plants as potential subjects of similar genetic transformations. The Board also considered Adang's own statements made during prosecution concerning unreliability of data obtained in other species of transformed tobacco plants, as well as prior and contemporaneous art disclosing that expression of foreign genes in plants, particularly the Bt gene, was not "straightforward." The Board found that the combination of the inventor's statements during prosecution and the shortcomings of plant transformation and foreign gene expression noted in the art raised "substantial doubts" that Adang's disclosure would have enabled one of skill in the art at the time to practice the invention without undue experimentation.

The Federal Circuit, applying the substantial evidence standard, affirmed. The Court noted that Adang's arguments during prosecution that the cited prior art showing of gene expression obtained in a different strain of tobacco was not predictive of similar expression in the strain Adang used were evidence of the lack of predictability of successful transformation in any given plant. In addition, the expert witness proffered by Adang in the interference testified that gene expression is affected by the particular strain of plant used for the assays. On the basis of these statements, the Court found it "reasonable...

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