Ex Parte Garing

Board of Patent Appeals and Interferences

Mar 31, 2005

09772520 (B.P.A.I. Mar. 31, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte Francis L. Garing
__________

Appeal No. 2004-23431
Application No. 09/772,520
__________

ON BRIEF2
__________

Before SCHEINER, ADAMS and GREEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 3, 6, 11, 14-20 and 24-31. The examiner has
indicated that claims 1, 2, 5, 7-10, 12, 13 and 21-23 are allowable. Claim 4 is
cancelled.

1 This appeal is substantially similar to Appeal No. 2004-1503, Application No. 09/606,808;
Appeal No. 2004-1506, Application No. 09/788,334; Appeal No. 2004-1968, Application No.
10/00,0311; Appeal No. 2004-2317, Application No. 09/771,938; and Appeal No. 2005-0396,
Application No. 10/077,589, which all share the same assignee, Monsanto Company, the parent
of wholly-owned subsidiary DeKalb Genetics Corporation. Accordingly we have considered
these appeals together.

2 We note that appellant waived his request for Oral Hearing. See Paper received December 3,
2004.
Appeal No. 2004-2343 Page 2
Application No. 09/772,520

Claims 3, 6, 15, 16, 17, 27, 28 and 30 are illustrative of the subject matter
on appeal and are reproduced below. In addition, for convenience, we have
reproduced allowable claims 2 and 5 below:
2. A population of seed of the corn variety I026458, wherein a sample of the
seed of the corn variety I026458 was deposited under ATCC Accession
No. PTA-3228.

3. The population of seed of claim 2, further defined as an essentially
homogeneous population of seed.

5. A corn plant produced by growing a seed of the corn variety I026458,
wherein a sample of the seed of the corn variety I026458 was deposited
under ATCC Accession No. PTA-3228.

6. The corn plant of claim 5, having:
(a) an SSR profile in accordance with the profile shown in Table 6; or
(b) an isozyme typing profile in accordance with the profile shown in
Table 7.

15. A corn plant capable of expressing all the physiological and
morphological characteristics of the corn variety I026458, wherein a
sample of the seed of the corn variety I026458 was deposited under
ATCC Accession No. PTA-3228.

16. The corn plant of claim 15, further comprising a nuclear or cytoplasmic
gene conferring male sterility.

17. A tissue culture of regenerable cells of a plant of corn variety I026458,
wherein the tissue is capable of regenerating plants capable of
expressing all the physiological and morphological characteristics of the
corn variety I026458, wherein a sample of the seed of the corn variety
I026458 was deposited under ATCC Accession No. PTA-3228.

27. The corn plant of claim 5, further defined as having a genome comprising
a single locus conversion.

28. The corn plant of claim 27, wherein the single locus was stably inserted
into a corn genome by transformation.

30. The corn plant of claim 27, wherein the locus confers a trait selected from
the group consisting of herbicide tolerance; insect resistance; resistance
to bacterial, fungal, nematode or viral disease; yield enhancement; waxy
Appeal No. 2004-2343 Page 3
Application No. 09/772,520

starch; improved nutritional quality; enhanced yield stability; male sterility
and restoration of male fertility.

The references relied upon by the examiner are:
Hunsperger et al. (Hunsperger) 5,523,520 Jun. 4, 1996
Eshed et al. (Eshed), “Less-Than-Additive Epistatic lnteractions of Quantitative
Trait Loci in Tomato,” Genetics, Vol. 143, pp. 1807-17 (1996)

Kraft et al. (Kraft), “Linkage Disequilibrium and Fingerprinting in Sugar Beet,”
Theoretical and Applied Genetics, Vol. 101, pp. 323-36 (2000)

GROUNDS OF REJECTION
Claim 3 stands rejected under 35 U.S.C. § 112, second paragraph as
indefinite in the recitation of the phrase “an essentially homogeneous population
of seed.”
Claim 14 stands rejected under 35 U.S.C. § 112, second paragraph as
indefinite in the recitation of the phrase “[a]n essentially homogeneous population
of corn plants produced by growing the seed of the corn variety I026458.”
Claims 6 and 11 stand rejected under 35 U.S.C. § 112, second paragraph
as indefinite in the recitation of the phrase “in accordance with.”
Claims 15, and 17-203 stand rejected under 35 U.S.C. § 112, second
paragraph as indefinite in the recitation of the phrase “capable of expressing.”

3 According to the examiner (Answer, pages 12 and 13), since claims 18 and 19 depend from
claim 17 they are included in this rejection.

Appeal No. 2004-2343 Page 4
Application No. 09/772,520

Claims 16 and 27-304 stand rejected under 35 U.S.C. § 112, second
paragraph as failing to limit the scope of the claims from which they depend.
Claim 28 stands rejected under 35 U.S.C. § 112, second paragraph as
indefinite in the recitation of “the article ‘a’ in the recitation ‘wherein the single
locus was stably inserted into a corn genome.’”
Claim 30 stands rejected under 35 U.S.C. § 112, second paragraph as
indefinite in the recitation of the phrases “yield enhancement,” “improved
nutritional quality,” and “enhanced yield stability.”
Claims 6, 11, 24-315 stand rejected under the written description provision
of 35 U.S.C. § 112, first paragraph.
Claims 27-30 stand rejected under the enablement provision of 35 U.S.C.
§ 112, first paragraph.
We reverse.

4 According to the examiner (Answer, page 4), “[c]laims … 27-30 … stand rejected under 35
U.S.C. [§] 112, second paragraph…” The examiner, however, provides no explanation as to why
claim 29 is rejected. We can only assume that since claim 29, as well as claims 28 and 30, each
depend from claim 27, they are rejected for the same reason as claim 27. Accordingly, we have
included claims 28-30 with this ground of rejection.

5 We recognize the examiner’s statement (Answer, page 3), “[c]laim 26 was objected to in the
Office Action mailed 23 September 2003, as being in improper dependent form for failing to
further limit the subject matter of previous claim. Appellant did not address this objection. An
objection to a claim, however, is the subject matter of a petition, and is not properly before us on
appeal. Nevertheless, we make the following observation regarding claim 26, and encourage the
examiner and appellant to work together to remedy this issue, prior to any further action on the
merits.
According to appellant’s specification (page 20), a F1 hybrid is “[t]he first generation progeny
of the cross of two plants.” Therefore, as we understand the prosecution history as well as the
language of the claims, claims 24 and 25 to refer to F1 hybrids. In this regard, we note that
similar claims, directed to a different corn variety, were presented for our review in Appeal Nos.
2004-1506 and 2004-2317. During the oral hearing in Appeal Nos. 2004-1506 and 2004-2317,
appellant’s representative confirmed that all claims drawn to hybrid plants or hybrid seeds (see
e.g., claims 24 and 25) refer to F1 hybrids. Accordingly, it appears that claim 26 fails to further
limit claim 25 from which it depends.
Appeal No. 2004-2343 Page 5
Application No. 09/772,520

BACKGROUND
The present “invention relates to inbred corn seed and plants of the variety
designated I026458, and derivatives and tissue cultures thereof.” Specification,
page 2. According to appellant (specification, page 28), “[a] description of the
physiological and morphological characteristics of corn plant I026458 is
presented in Table 3” of the specification, pages 28-29. On this record the
examiner has indicated that claims drawn to plants, plant parts, and seed of the
corn variety designated I026458 are allowable. See e.g., claims 1, 2, 5, 7-10, 12
and 13, and Answer, page 2, wherein the examiner states “[c]laims 1, 2, 5, 7-10,
12 [and] 13 … are allowed.”
A second aspect of the present invention comprises hybrid plants and
processes “for producing [first generation (F1) hybrid6] corn seeds or plants,
which … generally comprise crossing a first parent corn plant with a second
parent corn plant, wherein at least one of the first or second parent corn plants is
a plant of the variety designated I026458.” Specification, pages 7-9. On this
record the examiner has indicated that claims drawn to a process of producing
corn seed wherein the process comprises crossing a first parent corn plant with a
second parent corn plant are allowable. See e.g., claims 21-23 and Answer,
page 2, wherein the examiner states claims “21-23 are allowed.”

6 According to the specification (page 21), a F1 hybrid is “[t]he first generation progeny of the
cross of two plants.” During oral hearing, appellant confirmed that all claims drawn to hybrid
plants or hybrid seeds (see e.g., claims 24 and 25) refer to F1 hybrids.
Appeal No. 2004-2343 Page 6
Application No. 09/772,520

A third aspect of the present invention comprises single locus converted
plants of the corn variety I026458. Specification, page 6. As appellant explains
(specification, page 23, emphasis added), single locus converted (conversion)
plants are those plants
which are developed by a plant breeding technique called
backcrossing wherein essentially all of the desired morphological
and physiological characteristics of an inbred are recovered in
addition to the characteristics conferred by the single locus
transferred into the inbred via the backcrossing technique. A single
locus may comprise one gene, or in the case of transgenic plants,
one or more transgenes integrated into the host genome at a single
site (locus).

As appellant explains (specification, page 31):
Many single locus traits have been identified that are not regularly
selected for in the development of a new inbred but that can be
improved by backcrossing techniques. Single locus traits may or
may not be transgenic; examples of these traits include, but are not
limited to, male sterility, waxy starch, herbicide resistance,
resistance for bacterial, fungal, or viral disease, insect resistance,
male fertility, enhanced nutritional quality, industrial usage, yield
stability, and yield enhancement. These genes are generally
inherited through the nucleus, but may be inherited through the
cytoplasm. Some known exceptions to this are genes for male
sterility, some of which are inherited cytoplasmically, but still act as
single locus traits.

A final aspect of the present invention is directed to a process of
producing an inbred corn plant derived from a plant of the corn variety I026458.
See e.g., claim 31. According to appellant’s specification (bridging paragraph,
pages 10-11),
the present invention provides a method of producing an inbred
corn plant derived from the corn variety I026458, the method
comprising the steps of: (a) preparing a progeny plant derived from
corn variety I026458, wherein said preparing comprises crossing a
plant of the corn variety I026458 with a second corn plant, and
wherein a sample of the seed of corn variety I026458 has been
Appeal No. 2004-2343 Page 7
Application No. 09/772,520

deposited under ATCC Accession No. PTA-3228; (b) crossing the
progeny plant with itself or a second plant to produce a seed of a
progeny plant of a subsequent generation; (c) growing a progeny
plant of a subsequent generation from said seed of a progeny plant
of a subsequent generation and crossing the progeny plant of a
subsequent generation with itself or a second plant; and (d)
repeating steps (c) and (d) for an addition 3-10 generations to
produce an inbred corn plant derived from the corn variety I026458.
In the method, it may be desirable to select particular plants
resulting from step (c) for continued crossing according to steps (b)
and (c). By selecting plants having one or more desirable traits, an
inbred corn plant derived from the corn variety I026458 is obtained
which possesses some of the desirable traits of corn variety
I026458 as well potentially other selected traits.

According to the examiner (Answer, page 36), “[t]he patentability of the method
of claim 31 does not lie in the acts of the process, which are the simple acts of
crossing corn plants, allowing progeny seed to be produced, and growing
progeny plants from the seed….” Therefore, as we understand this aspect of the
claimed invention (e.g., claim 31), the intent is not to claim a specific inbred corn
plant resulting from the claimed process. See claim 31. Instead, as we
understand it, claim 31 is drawn to a process wherein an inbred corn plant is
derived from the corn variety I026458.
As appellant explains (specification, page 3),
The development of uniform corn plant hybrids requires the
development of homozygous inbred plants, the crossing of these
inbred plants, and the evaluation of the crosses. Pedigree breeding
and recurrent selection are examples of breeding methods used to
develop inbred plants from breeding populations. Those breeding
methods combine the genetic backgrounds from two or more inbred
plants or various other broad-based sources into breeding pools
from which new inbred plants are developed by selfing and
selection of desired phenotypes. The new inbreds are crossed with
other inbred plants and the hybrids from these crosses are
evaluated to determine which of those have commercial potential.

Appeal No. 2004-2343 Page 8
Application No. 09/772,520

We emphasize, that while “new inbreds” having commercial potential may result
from the method set forth in claim 31, the claim does not encompass any specific
plant that is produced as a result of the method. Rather the claim encompasses
only a method of producing an inbred corn plant that is “derived” from the corn
variety I026458. The examiner has indicated that a claim drawn to a corn plant
of the corn variety I026458 is allowable. See e.g., claim 5, and Answer, page 2,
wherein the examiner states that claim 5 is allowed.
Against this backdrop, we now consider the rejections of record.
DISCUSSION
Definiteness:
Claims 3, 6, 11, 14-20 and 27-30 stand rejected under 35 U.S.C. § 112,
second paragraph. For the following reasons we reverse.
Claim 3
Claim 3 depends from independent claim 2, and stands rejected under 35
U.S.C. § 112, second paragraph as indefinite in the recitation of the phrase “an
essentially homogeneous population of seed….” Answer, page 4. According to
the examiner (id.), claim 2 is drawn to “‘[a] population of seed of the corn variety
I026458, wherein a sample of the seed of the corn variety I026458 was
deposited under ATCC Accession No. PTA-3228.” Thus, the examiner finds
(Answer, page 5), the population of seed set forth in claim 2 “is a homogeneous
population of seed of corn variety I026458.” Accordingly, the examiner finds (id.),
“[t]he recitation, ‘essentially homogeneous,’ in claim 3 … appear[s] to be
superfluous.”
Appeal No. 2004-2343 Page 9
Application No. 09/772,520

However, as disclosed in appellant’s specification (page 5),
[e]ssentially homogeneous populations of inbred seed are those
that consist essentially of the particular inbred seed, and are
generally free from substantial numbers of other seed, so that the
inbred seed forms between about 90% and about 100% of the total
seed, and preferably, between about 95% and about 100% of the
total seed.

Accordingly, we disagree with the examiner’s assertion (Answer, page 6)
that claim 3 is unclear simply because it may contain seed other than the seed of
the corn variety I026458. We remind the examiner that claim language must be
analyzed “not in a vacuum, but always in light of the teachings of the prior art and
of the particular application disclosure as it would be interpreted by one
possessing the ordinary skill in the pertinent art.” In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971). Here, notwithstanding appellant’s
comments7, it is our opinion that a person of ordinary skill in the art would
recognize that an essentially homogeneous population of seed of the corn variety
I026458 is a population of seed that is generally free from substantial numbers of
other seed, e.g., wherein corn variety I026458 seed forms between about 90%
and about 100% of the total seed in the population.8
Accordingly, we reverse the rejection of claim 3 under 35 U.S.C. § 112,
second paragraph.
Claim 14

7 According to appellant (Brief, page 7), an essentially homogeneous population of seed, is a
population of seed that could be of non-uniform size and shape.

8 Cf. the examiner’s statement (Answer, page 6), “amending claim 3 to read ‘[a]n essentially
homogeneous population of corn seeds consisting essentially of seed of claim 1’, would obviate
this rejection.”
Appeal No. 2004-2343 Page 10
Application No. 09/772,520

Claim 14 stands rejected under 35 U.S.C. § 112, second paragraph as
indefinite in the recitation of the phrase “[a]n essentially homogeneous population
of corn plants produced by growing the seed of the corn variety I026458.”
Answer, page 6. According to the examiner (id.), “[t]he I026458 seed can only
produce I026458 plants. … [Therefore,] [t]he population can … only consist of
I026458 plants.” Accordingly, the examiner finds it unclear “why the population is
referred to as ‘essentially homogeneous,’ since such populations can comprise
more than one variety of plant.” Answer, bridging sentence, pages 6-7.
As appellant discloses (specification, page 6), “[t]he population of inbred
corn seed of the invention can further be particularly defined as being essentially
free from hybrid seed. The inbred seed population may be separately grown to
provide an essentially homogeneous population of inbred corn plants designated
I026458.” As we understand the claim, growing the seed of claim 3, for example,
would produce an essentially homogeneous population of corn plants of the corn
variety I026458.9

9 Cf. The examiner’s statement (Answer, page 8), amending claim 14 “to read, ‘[a]n essentially
homogeneous population of corn plants produced by growing a population of corn seed
consisting essentially of the seed of corn plant I026458…’ would obviate the rejection.”
Appeal No. 2004-2343 Page 11
Application No. 09/772,520

In addition, we direct the examiner’s attention to Appeal No. 2005-0396,
wherein a claim similar to claim 14 was presented for our review. In Appeal No.
2005-0396, the examiner of record indicated that claim 14, directed to “[a]n
essentially homogeneous population of corn plants produced by growing the
seed of the corn variety I180580….” was allowable. Accordingly, we find that the
examiner has treated claim 14 in a manner that is inconsistent with the
prosecution of claim 14 in 2005-0396. As we understand it, the only difference
between claim 14 as it appears in Appeal No. 2005-0396 and the instant appeal
is the variety of corn seed from which the plant is produced.
Accordingly we reverse the rejection of claim 14 under 35 U.S.C. § 112,
second paragraph.
Claims 6 and 11
Claims 6 and 11 stand rejected under 35 U.S.C. § 112, second paragraph
as indefinite in the recitation of the phrase “in accordance with.” According to the
examiner (Answer, page 9), it is unclear if a plant “that generally follows the trend
of the profile of Table 6, but which differs at one or a few loci, [would] be
considered in ‘conformity’ or ‘in accordance’ with the profile of Table 6.”
On this record, we understand the phrase “in accordance with” as it is
used in claims 6 and 11 to mean “the same”10 Stated differently, we understand
the claims to read:
6. The corn plant of claim 5, having:
(a) the same SSR profile as shown in Table 6; or

10 Cf. Appeal Nos. 2004-1506 and 2004-2317, which use similar language for claims directed to
different corn varieties. In this regard, we note that during the February 10, 2005 oral hearing in
Appeal Nos. 2004-1506 and 2004-2317, appellant’s representative confirmed that the phrase “in
accordance with” was intended to mean “the same”.
Appeal No. 2004-2343 Page 12
Application No. 09/772,520

(b) the same isozyme typing profile as shown in Table 7.

11. The plant part of claim 10, wherein said cell is further defined as having:
(a) The same SSR profile as shown in Table 6; or
(b) The same isozyme typing profile as shown in Table 7.

Accordingly we reverse the rejection of claims 6 and 11 under 35 U.S.C.
§ 112, second paragraph.
Claims 15 and 17-20
Claims 15, and 17-20 stand rejected under 35 U.S.C. § 112, second
paragraph as indefinite in the recitation of the phrase “capable of expressing,” or
“capable of regenerating.” According to the examiner (Answer, page 9), the
claims do “not make clear if the plant actually expresses the traits, or when or
under what conditions the traits are expressed.” In this regard, the examiner
finds (Answer, page 10),
while the plant has the capacity to express the characteristics, for
some reason it may not. Certain characteristics of a plant are
expressed only at certain times of its life cycle, and are incapable of
being expressed at other times. The colors of flower parts such as
silks, or fruit parts such as husks, are examples. The promoters of
many genes conferring traits require a transcription factor to
become active. Is a plant that has such a gene, but not the
transcription factor, considered “capable of expressing” that gene,
and the trait associated with that gene, and is such a plant
encompassed by the claims?

To address the examiner’s concerns, we find it sufficient to state that if a plant
has the capacity to express the claimed characteristics it meets the requirement
of the claim regarding “capable of,” notwithstanding that due to a particular phase
of the life cycle the plant is not currently expressing a particular characteristic.
Alternatively, if a plant is incapable of expressing the claimed characteristics at
any phase of the life cycle, because it lacks, for example, the “transcription
Appeal No. 2004-2343 Page 13
Application No. 09/772,520

factor” required for expression – such a plant would not meet the requirement of
the claim regarding “capable of.”
Here, we find the examiner’s extremely technical criticism to be a
departure from the legally correct standard of considering the claimed invention
from the perspective of one possessing ordinary skill in the art. 11 In our opinion,
a person of ordinary skill in the art would understand what is claimed. Amgen
Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1217, 18 USPQ2d 1016,
1030 (Fed. Cir. 1991). We find the same to be true for the phrase “capable of” as
set forth in claims 17-20.
Accordingly we reverse the rejection of claims 15, and 17-20 under 35
U.S.C. § 112, second paragraph.
Claims 16 and 27-30
Claims 16 and 27-30 stand rejected under 35 U.S.C. § 112, second
paragraph as failing to limit the scope of the claims from which they depend.
According to the examiner (Answer, page 11), since the plant set forth in claim
16 is male sterile it cannot express all the morphological and physiological
characteristics of the male fertile corn variety I026458. Similarly, the examiner
finds it unclear whether the plant set forth in claim 27 has all the characteristics of
the plant set forth in claim 5, from which claim 27 depends. Id. In response,
appellant asserts (Brief, pages 9-10), claims 16 and 27 simply add a further
limitation to the claims from which they depend. We agree.
For example, claim 16 reads on a corn plant capable of expressing all the
physiological and morphological characteristics of the corn variety I026458,
Appeal No. 2004-2343 Page 14
Application No. 09/772,520

further comprising a nuclear or cytoplasmic gene conferring male sterility. In our
opinion, the claims reasonably apprise those of skill in the art of their scope.
Amgen, As set forth in Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758
F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir. 1985), “[i]f the claims, read in the
light of the specifications, reasonably apprise those skilled in the art both of the
utilization and scope of the invention, and if the language is as precise as the
subject matter permits, the courts can demand no more.”
Accordingly we reverse the rejection of claims 16 and 27-30 under 35
U.S.C. § 112, second paragraph.
Claim 28
Claim 28 stands rejected under 35 U.S.C. § 112, second paragraph as
indefinite in the recitation of “the article ‘a’ in the recitation ‘wherein the single
locus was stably inserted into a corn genome.’” According to the examiner
(Answer, page 13), “[t]he recitation does not make clear if the genome is that of
I026458 or that of a different corn plant.”
According to appellant’s specification (page 23, emphasis removed), a
“Single Locus Converted (Conversion) Plant” refers to
[p]lants which are developed by a plant breeding technique called
backcrossing wherein essentially all of the desired morphological
and physiological characteristics of an inbred are recovered in
addition to the characteristics conferred by the single locus
transferred into the inbred via the backcrossing technique. A single
locus may comprise one gene, or in the case of transgenic plants,
one or more transgenes integrated into the host genome at a single
site (locus).

11 Cf. Digital Equipment Corp. v. Diamond, 653 F.2d 701, 724, 210 USPQ 521, 546 (CA 1981).
Appeal No. 2004-2343 Page 15
Application No. 09/772,520

Accordingly, we agree with appellant (Brief, page 12) “[t]he single locus
referred to in claim 28 may or may not have been directly inserted into the
genome of the claimed plant.” As we understand the claim, and arguments of
record, claim 28 presents two possibilities: (1) the single locus is directly inserted
into the claimed plant and nothing further need be done; or (2) the single locus is
directly inserted into a different plant, which is then used to transfer the single
locus to the claimed plant through use of the plant breeding technique known as
backcrossing.
In our opinion, the claim reasonably apprises those of skill in the art of its
scope. Amgen. Accordingly, we reverse the rejection of claim 28 under 35
U.S.C. § 112, second paragraph.
Claim 30
Claim 30 stands rejected under 35 U.S.C. § 112, second paragraph as
indefinite in the recitation of the phrases “yield enhancement,” “improved
nutritional quality,” and “enhanced yield stability.” According to the examiner the
terms “yield enhancement,” “improved nutritional quality,” and “enhanced yield
stability” are relative and have no definite meaning. Answer, page 14. The
examiner is correct (Answer, page 14), when a word of degree is used
appellant’s specification must provide some standard for measuring that degree.
Seattle Box. Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221
USPQ 568, 573-574 (Fed. Cir. 1984).
On this record, appellant asserts (Brief, page 12), it is “understood the
enhancement of yield or yield stability and improved nutritional quality is relative
Appeal No. 2004-2343 Page 16
Application No. 09/772,520

to a plant lacking the single locus. The metes and bounds of the claim are thus
fully understood by one of skill in the art and the use of the terms is not
indefinite.” On reflection, we agree with appellant. The fact that some claim
language is not mathematically precise does not per se render the claim
indefinite. Seattle Box. As set forth in Shatterproof Glass, “[i]f the claims, read in
the light of the specifications, reasonably apprise those skilled in the art both of
the utilization and scope of the invention, and if the language is as precise as the
subject matter permits, the courts can demand no more.” In our opinion, a
person of ordinary skill in the art would have understood the enhancement of
yield or yield stability and improved nutritional quality is relative to a plant lacking
the single locus.
Accordingly we reverse the rejection of claim 30 under 35 U.S.C. § 112,
second paragraph.

Written Description:
Claims 6, 11, 24, 25 and 27-31 stand rejected under 35 U.S.C. § 112, first
paragraph, as the specification fails to adequately describe the claimed invention.
For the following reasons, we reverse.
Claims 24-2612
Claims 24-26 ultimately depend from claim 23. On this record, the
examiner has indicated that claim 23 is allowable. Answer, page 2. The
examiner finds (Answer, page 16), claims 24-26 are drawn to a hybrid plant or

12 We recognize, as does the examiner (Answer, page 22) that appellant’s reference to claims
22-26 (Brief, page 14) was intended to be a reference to claims 24 and 25.
Appeal No. 2004-2343 Page 17
Application No. 09/772,520

seed “produced by crossing inbred corn plant I026458 with any second, distinct
inbred corn plant.”
As we understand it, based on this construction of claims 24-26, the
examiner is of the opinion that since the hybrids inherit only ½ of their diploid13
set of chromosomes from the plant of corn variety I026458, a person of skill in
the art would not have viewed the teachings of the specification as sufficient to
demonstrate that appellant was in possession of the genus of hybrid seeds and
plants encompassed by claims 24-26. According to the examiner (Answer, page
22), “[t]he fact that any hybrid plant will inherit half of its alleles from I026458 then
does not provide sufficient description of the morphological and physiological
characteristics expressed by the claimed hybrid plants.”
There is no doubt that the expressed gene products of a hybrid plant, e.g.,
the morphological and physiological traits, of I026458 and a non-I026458 corn
plant will depend on the combination of the genetic material inherited from both
parents. See Answer, page 23. Nevertheless, we disagree with the examiner’s

13 According to appellant’s specification (page 21), diploid means “a cell or organism having two
sets of chromosomes.”

Appeal No. 2004-2343 Page 18
Application No. 09/772,520

conclusion (id.) that “[t]he fact that any hybrid plant will inherit half of its alleles
from I026458 then does not provide sufficient description of the morphological
and physiological characteristics expressed by the claimed hybrid plants.”
On these facts, we find it necessary to take a step back and consider what
is claimed. The claims are drawn to a F1 hybrid seed (claim 24) or plant (claim
25) resulting from a cross between a plant of corn variety I026458 and a non-
I026458 corn variety. The claims do not require the hybrid to express any
particular morphological or physiological characteristic. Nor do the claims require
that a particular non-I026458 corn variety be used.14 All that is required by the
claims is that the hybrid has one parent that is a plant of corn variety I026458.
Since the examiner has indicated that the seed and the plant of the corn variety
I026458 are allowable (see claims 1 and 5), there can be no doubt that the
specification provides an adequate written description of this corn variety. In
addition, the examiner appears to recognize (Answer, pages 24-25) that
appellant’s specification describes an exemplary hybrid wherein one parent was
a plant of the corn variety I026458, see e.g., specification, pages 53-57.
Accordingly, it is unclear to this merits panel what additional description is
necessary.
As set forth in Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345, 54
USPQ2d 1915, 1917 (Fed. Cir. 2000), the purpose of the written description

14 According to appellant (Brief, page 16), “hundreds or even thousands of different inbred corn
lines were well known to those of skill in the art prior to the filing [date] of the instant application,
each of which could be crossed to make a hybrid plant with in the scope of the claims.”
Appeal No. 2004-2343 Page 19
Application No. 09/772,520

requirement is to “ensure that the scope of the right to exclude, as set forth in the
claims does not overreach the scope of the inventor’s contribution to the field of
art as described in the patent specification.” Here the hybrid seed or plant has
one parent that is a plant of the corn variety I026458. To that end, to satisfy the
written description requirement, the inventor “must convey with reasonable clarity
to those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention” [emphasis added]. Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). For the foregoing
reasons it is our opinion that appellant has provided an adequate written
description of the subject matter set forth in claims 24-26.15
We recognize the examiner’s argument relating to SSR and isozyme
markers (Answer, pages 28-33), as well as the examiner’s arguments concerning
a correlation between the hybrid’s genome structure and the function of the
hybrid plant (Answer, pages 24-27). However, for the foregoing reasons, we are
not persuaded by these arguments.
Claims 6 and 11
Claims 6 and 11 depend ultimately upon claim 5. On this record, the
examiner has indicated that claim 5 is allowable. Answer, page 2.
According to the examiner (Answer, page 17), while the specification
provides the locus names and allele numbers of the SSR markers, the
specification does not provide the actual nucleotide sequences that make up the
markers. According to the examiner (id.), “names of loci alone do not describe

15 Again, we note as set forth in n. 3. that claim 26 does not appear to further limit the scope of
claim 25 from which it depends.
Appeal No. 2004-2343 Page 20
Application No. 09/772,520

the structures of the markers themselves. Without a description of the
sequences of the markers, one cannot confirm their presence.” In response,
appellant points out (Brief, page 13), “the SSR markers were from Celera AgGen,
Inc., which provides a commercial service for genotyping of maize varieties.” In
other words, a person of ordinary skill in the art could use the commercially
available service provided by Celera AgGen, Inc. to determine whether a corn
plant produced by growing a seed of the corn variety I026458 has an SSR profile
which is the same as that shown in Table 6. Therefore, it is unclear to this panel
why the examiner believes that such a disclosure fails to provide adequate
written descriptive support for the claimed invention.16 Accordingly, we are not
persuaded by the examiner’s argument.
Regarding the isozyme typing profile, the examiner finds (Answer, page
17), “Table 7 provides names of loci where isozyme markers reside, for three
different corn plants, and a numerical value that represents the numbers of
alleles at isozyme loci types. The nucleotide sequences that make up these loci
are not described.” In response, appellant points out (Brief, page 13), the
isozyme “markers are well known and isozyme analysis in general [is] very well
known having been used for decades.” In this regard, we remind the examiner
that the inquiry into whether the description requirement is met must be
determined on a case-by-case basis and is a question of fact. In re Wertheim,
541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). A description as filed is

16 We are not persuaded by the examiner’s assertion (Answer, page 31) “that the [commercially
available] service used to detect SSR markers is currently available is not a guarantee that it will
remain so for the life of a patent issuing from the application.” Cf. In re Metcalfe, 410 F.2d 1378,
1382, 161 USPQ 789, 792-3 (CCPA 1969).
Appeal No. 2004-2343 Page 21
Application No. 09/772,520

presumed to be adequate; unless or until sufficient evidence or reasoning to the
contrary has been presented by the examiner to rebut the presumption. See
e.g., In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971).
The examiner, therefore, must have a reasonable basis to challenge the
adequacy of the written description. Accordingly, it is the examiner who has the
initial burden of establishing by a preponderance of evidence that a person
skilled in the art would not recognize in an applicant’s disclosure a description of
the invention defined by the claims. Wertheim, 541 F.2d at 263, 191 USPQ at
97. On this record, the examiner provides no evidence to support the assertion
that simply because appellant has not provided the sequences that make up the
loci for particular isozymes, appellant’s specification does not adequately
describe the claimed invention. Accordingly, we are not persuaded by the
examiner’s argument.
The examiner finds (Answer, page 21), claims 6 and 11 require that the
claimed plant or plant cell exhibit either the claimed SSR profile or the isozyme
profile. According to the examiner (id.), “[t]he genome of the cells of the I026458
seed deposited with the ATCC has both the SSR profile and the isozyme typing
profile shown in Tables 6 and 7 for that plant. No plant is described in the
specification that has one genetic marker profile but not the other.” The
examiner’s concern appears to be misplaced. To the extent that the examiner is
concerned that the claim is open to read on a plant other than a corn plant
produced by growing a seed of the corn variety I026458, we remind the examiner

Appeal No. 2004-2343 Page 22
Application No. 09/772,520

that both claims 6 and 11 ultimately depend from claim 517, which is drawn to “[a]
corn plant produced by growing a seed of the corn variety I026458….”
It appears that the examiner may have read claims 6 and 11 as drawn to a
corn plant or plant cell having only one of the recited profiles. However, as we
understand claims 6 and 11, determining whether the claimed corn plant (claim
6) or plant cell (claim 11) has one of the profiles does not mean that the plant, or
plant cell would not also exhibit the other profile.
In addition, we direct the examiner’s attention to claims 6 and 11 of Appeal
No. 2005-0396. As we understand it, notwithstanding differences in the SSR and
isozyme profiles, the disclosure in the specification as well as the language of the
claims is substantially similar to that of the instant application. Nevertheless, the
examiner in Appeal No. 2005-0396 apparently found that appellant’s specification
provided an adequate written description of the claimed invention as no rejection
of claims 6 and 11 was made under the written description provision of 35 U.S.C.
§ 112, first paragraph in Appeal No. 2005-0396. Accordingly, we find that the
examiner has treated claims 6 and 11 in a manner that is inconsistent with the
prosecution of similar claims in related application 10/077,589, which is the
subject matter of Appeal No. 2005-0396.
For the foregoing reasons, we are not persuaded by the examiner’s
arguments.
Claims 27-30

According to the examiner (Answer, page 18), “[c]laims 27-30 are drawn
towards I026458 plants further comprising a single locus conversion, or wherein

17 The examiner has indicated that claim 5 is allowable. Answer, page 2.
Appeal No. 2004-2343 Page 23
Application No. 09/772,520

the single locus was stably inserted into a corn genome by transformation.” The
examiner finds, however, that “the specification does not describe identified or
isolated single loci for all corn plant traits.” Id. More specifically, the examiner
finds (id.), claims 27-30 “broadly encompass single loci that have not been
discovered or isolated.” To the extent that the examiner is asserting that
appellant has not provided an enabling disclosure of single loci that have not
been identified, we note that to satisfy the written description requirement, the
inventor “must convey with reasonable clarity to those skilled in the art that, as of
the filing date sought, he or she was in possession of the invention” [emphasis
added]. Vas-Cath.
Nevertheless, it may be that the examiner’s concern (Answer, page 35), is
that “single genes that alone govern ‘yield enhancement’ or ‘enhanced yield
stability’ have not been discovered.” In this regard, the examiner asserts
(Answer, page 36), “the references cited in the specification do not describe
isolated single genes or loci that confer yield enhancement or yield stability.”
Therefore, the examiner concludes (id.), “[a]ppellant cannot be in possession of
plants further comprising single loci that have yet to be identified.” The examiner,
however, provides no evidence to support the assertion that a person of ordinary
skill in the art would not recognize that single loci for yield enhancement or yield
stability are known in the art. In this regard, we note that appellant discloses
(specification, page 31), “[m]any single locus traits have been identified …
examples of these traits include, but are not limited to, … enhanced nutritional
quality, industrial usage, yield stability, and yield enhancement.” It appears that
Appeal No. 2004-2343 Page 24
Application No. 09/772,520

the examiner has overlooked appellant’s assertion that single locus traits for yield
stability and yield enhancement are well known in the art. To this end, we direct
the examiner’s attention to, for example, United States Patent No. 5,936,145
(‘145)18, issued August 10, 1999, which is prior to the filing date of the instant
application. For clarity, we reproduce claims 8, 29 and 39 of the ‘145 patent
below:
8. A corn plant having all the physiological and morphological
characteristics of corn plant 87DIA4, a sample of the seed of said corn
plant having been deposited under ATCC Accession No. 203192.

29. The corn plant of claim 8, further comprising a single gene conversion.

39. The single gene conversion of the corn plant of claim 29, where the gene
confers enhanced yield stability.

As we understand it, claim 39 of the ‘145 patent, is drawn to a corn plant which
comprises a single gene conversion, wherein the gene confers enhanced yield
stability. Thus, contrary to the examiner’s assertion it appears, for example, that
a single gene that confers enhanced yield stability was known in the art prior to
the filing date of the instant application. We remind the examiner “a patent need
not teach, and preferably omits, what is well known in the art.” Hybritech
Incorporated v. Monoclonal Antibodies, Inc. 802 F.2d 1367, 1385, 231 USPQ 81,
94 (Fed. Cir. 1986).
We remind the examiner that the inquiry into whether the description
requirement is met must be determined on a case-by-case basis and is a
question of fact. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA

18 We note that the assignee of the ‘145 patent is DeKalb Genetics Corporation. The assignee of
the present application is Monsanto Company, the parent of wholly-owned subsidiary DeKalb
Genetics Corporation.
Appeal No. 2004-2343 Page 25
Application No. 09/772,520

1976). A description as filed is presumed to be adequate; unless or until
sufficient evidence or reasoning to the contrary has been presented by the
examiner to rebut the presumption. See e.g., In re Marzocchi, 439 F.2d 220,
224, 169 USPQ 367, 370 (CCPA 1971). The examiner, therefore, must have a
reasonable basis to challenge the adequacy of the written description.
Accordingly, it is the examiner who has the initial burden of establishing by a
preponderance of evidence that a person skilled in the art would not recognize in
an applicant’s disclosure a description of the invention defined by the claims.
Wertheim, 541 F.2d at 263, 191 USPQ at 97. On this record, the examiner
provides no evidence to support the assertion that single loci that govern, for
example, yield enhancement or enhanced yield stability are not described.
For the foregoing reasons, we are not persuaded by the examiner’s
arguments.
Claim 31
Claim 31 is drawn to a method of producing an inbred corn plant derived
from the corn variety I026458. The claimed method begins by crossing a plant of
the corn variety I026458 with any other corn plant. The method requires that the
progeny corn plant be crossed either to itself, or with any other corn plant, and
that the progeny of this cross be further crossed to itself, or with another corn
plant, and so on throughout several generations. As we understand it, claim 31,
in its simplest form, is directed to a method of using a plant of the corn variety
I026458 to produce an inbred corn plant.
Appeal No. 2004-2343 Page 26
Application No. 09/772,520

Nevertheless, the examiner finds (Answer, page 19), “[a] review of the
claim indicates that hybrid progeny of corn plant I026458 are required to perform
further crosses, and that progeny of subsequent generations can be further
outcrossed with different corn plants.” Therefore, the examiner concludes (id.),
“[t]he hybrid progeny of corn plant I026458, and progeny plants of subsequent
generations, are essential to operate the claimed method.” As we understand
the examiner’s argument, not only does appellant have to provide a written
description of the starting corn plant (I026458), but appellant also must look into
the future to determine every other potential corn plant that someone may wish to
cross with the I026458 corn variety, and provide written descriptive support for
not only every other corn plant that could be crossed with I026458, but also the
resulting progeny of each cross.
As set forth in Reiffin, the purpose of the written description requirement is
to “ensure that the scope of the right to exclude, as set forth in the claims does
not overreach the scope of the inventor’s contribution to the field of art as
described in the patent specification.” Here the method of producing an inbred
corn plant requires a plant of the corn variety I026458 be used as the starting
material. To that end, to satisfy the written description requirement, the inventor
“must convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention” [emphasis added].
Vas-Cath. The examiner has indicated that a claim to a plant of the corn variety
I026458 is allowable, see e.g., appellant’s claim 5. Therefore, in our opinion,
there can be no doubt that appellant was in possession of a plant of the corn
Appeal No. 2004-2343 Page 27
Application No. 09/772,520

variety I026458, in addition to a method of using that plant to cross with any other
corn plant to produce an inbred corn plant as set forth in appellant’s claim 31.
In our opinion, it matters not what the other corn plants are, or what the
progeny of a cross between corn variety I026458 and some other corn plant
represents. As the examiner explains (Answer, page 20), patentability of the
method of claim 31 “does not lie in the method steps, which require the simple
acts of crossing corn plants, allowing progeny seed to be produced, and growing
progeny plants from the seed….” In our opinion, patentability of the method of
claim 31 does not lie in the various other or second corn plants either. In our
opinion, patentability of the method of claim 31 lies in the use of the corn variety
I026458. Accordingly, for the foregoing reasons, it is our opinion that appellant
has “convey[ed] with reasonable clarity to those skilled in the art that, as of the
filing date sought, [they were] in possession of the invention,” Vas-Cath
(emphasis omitted).
Appeal No. 2004-2343 Page 28
Application No. 09/772,520

Summary
For the foregoing reasons, we reverse the rejection of claims 6, 11, 24, 25
and 27-31 under the written description provision of 35 U.S.C. § 112, first
paragraph.

Enablement:
Claims 27-30 stand rejected under the enablement provision of 35 U.S.C.
§ 112, first paragraph. The examiner finds (Answer, page 41), claims 27-30 “are
broadly drawn towards inbred corn plant I026458 further defined as having a
genome comprising any single locus conversion, encoding any trait; or wherein
the single locus was stably inserted into a corn genome by transformation.” The
examiner presents several lines of argument under this heading. We take each
in turn.
I. Retaining all the morphological and physiological traits of I026458:
According to the examiner (Answer, page 41, emphasis added),
appellant’s specification “does not teach any I026458 plants comprising a single
locus conversion produced by backcrossing, wherein the resultant plant retains
all of its morphological and physiological traits in addition to exhibiting the single
trait conferred by the introduced single locus. With reference to Hunsperger,
Kraft, and Eshed the examiner asserts (Answer, bridging sentence, pages 44-
45), “[t]he rejection raises the issue of how linkage drag hampers the insertion of
single genes alone into a plant by backcrossing, while recovering all of the
original plant’s genome.”
Appeal No. 2004-2343 Page 29
Application No. 09/772,520

We note, however, that claims 27-30 do not require that the single locus
conversion plant retain all of the morphological and physiological traits of the
parent plant in addition to exhibiting the single trait conferred by the introduction
of the single loci. Nor do claims 27-30 require that the resultant plant retain all of
the original plant’s genome in addition to the single locus transferred into the
inbred via the backcrossing technique. As appellant explains (specification, page
30, emphasis added),
[t]he term single locus converted plant as used herein refers to
those corn plants which are developed by a plant breeding
technique called backcrossing wherein essentially all of the desired
morphological and physiological characteristics of an inbred are
recovered in addition to the single locus transferred into the inbred
via the backcrossing technique.

See also appellant’s definition of single locus converted (conversion) plant at
page 23 of the specification. We find nothing in the appellant’s specification to
indicate that the single locus converted plant retains all of the morphological and
physiological traits, or all of the genome, of the parent plant in addition to the
single locus transferred via the backcrossing technique. Accordingly, we
disagree with the examiner’s construction of claims 27-30 as “directed to exactly
plant I026458 further comprising the single locus,” which appears to disregard
appellant’s definition of a single locus converted plant. See Answer, page 46,
emphasis added.
The examiner appears to appreciate (Answer, page 46) that appellant’s
specification provides an example of a converted plant. See e.g., specification,
pages 35-36. However, for the foregoing reasons, we are not persuaded by the
examiner’s assertion (Answer, page 46) that the specification provides “no
Appeal No. 2004-2343 Page 30
Application No. 09/772,520

indication that all of the morphological and physiological traits of [this converted]
… corn plant were recovered, and that only one single locus was transferred
from the donor plant.” To the contrary, the examiner provides no evidence that
the converted plant exemplified in appellant’s specification did not retain
essentially all of the desired morphological and physiological characteristics of
the inbred in addition to the characteristics conferred by the single locus
transferred into the inbred via the backcrossing technique.
Further, we recognize appellant’s argument (Brief, page 29) that the
examiner failed to establish a nexus between Hunsperger’s discussion of
petunias; Kraft’s discussion of sugar beets; and Eshed’s discussion of tomatoes,
and the subject matter of the instant application - corn. Absent evidence to the
contrary, we agree with appellant (id.), “[t]he [examiner’s] indication[19] that the
references concerning petunias, sugar beets and tomatoes apply to corn is made
without any support.” That the examiner has failed to identify (Answer, page 45)
an example “in the prior art of plants in which linkage drag does not occur,” does
not mean that linkage drag is expected to occur in corn breeding, which
according to appellant (Reply Brief, page 11) “is extremely advanced and well
known in the art….” In this regard, we agree with appellant (Brief, page 30;
Accord Reply Brief, page 11), the examiner has improperly placed the burden on
appellant to demonstrate that the examiner’s unsupported assertion is not true.
We remind the examiner, as set forth in In re Wright, 999 F.2d 1557, 1561-62, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993):

19 See Answer page 45, wherein the examiner asserts “[l]inkage drag appears to be a
phenomenon that occurs in all plant types.”
Appeal No. 2004-2343 Page 31
Application No. 09/772,520

When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by the
description of the invention provided in the specification of the
application; this includes, of course, providing sufficient reasons for
doubting any assertions in the specification as to the scope of
enablement.

II. What plant is transformed in claim 28?
We recognize the examiner’s assertion (Answer, page 43) that while claim
28 requires that a single locus be stably inserted into a corn genome by
transformation, the claim does not indicate whether (1) the I026458 plant was
transformed with the single locus, or (2) some other corn plant was transformed
with the single locus and then introduced into I026458 by crossing. However, as
appellant points out (Brief, page 11), claim 28 “specifies that the single locus was
stably inserted into a corn genome. Loci that are stably inserted into a corn
genome are also stably inherited. Thus the single locus need not have been
inserted into the genome of corn variety I026458.” Accordingly, the I026458
plant may be transformed with the single locus, or another plant may be
transformed with the single locus and then introduced into I026458 by crossing.
It may be that the examiner is concerned that by transforming a non-
I026458 plant with a single locus and then introducing this locus into I026458 by
crossing would result in a plant that does not retain all of the morphological and
physiological traits, or all of the genome, of the I026458 plant. For the foregoing
reasons, however, this line of reasoning is not persuasive.
Appeal No. 2004-2343 Page 32
Application No. 09/772,520

III. The single locus to be introduced:
The examiner finds (Answer, page 43), “the claims do not place any limit
on the single locus to be introduced” into I026458 plants. The examiner
recognizes, however, that “[t]he prior art shows that hundreds of nucleotide
sequences encoding products that confer various types of plant traits have been
isolated at the time the instant invention was filed.” Id. In addition, the examiner
recognizes (id.), “[o]ne skilled in the art can transform any of these isolated
nucleotide sequences known in the prior art into a corn plant cell, and regenerate
a transgenic plant from the transformed cell.”
Nevertheless, the examiner finds (Answer, bridging sentence, pages 43-
44), “[u]ndue experimentation would be required by one skilled in the art to
isolate single loci that govern the traits encompassed by the claims.” In this
regard, the examiner asserts (Answer, page 45) that the claims broadly
encompass corn plants comprising any type of single loci, including those that
have not yet been identified or isolated. To the extent that the examiner is
asserting that appellant has not provided an enabling disclosure of single loci that
have not been identified, we note that enablement under 35 U.S.C. § 112, first
paragraph is evaluated as of appellant’s filing date. As set forth in Chiron Corp.
v. Genentech Inc., 363 F.3d 1247, 1254, 70 USPQ2d 1321, 1325-26 (Fed. Cir.
2004), “a patent document cannot enable technology that arises after the date of
application. The law does not expect an applicant to disclose knowledge
invented or developed after the filing date. Such disclosure would be impossible.
See In re Hogan, 559 F.2d 595, 605-06 [194 USPQ 527] (CCPA 1977).”
Appeal No. 2004-2343 Page 33
Application No. 09/772,520

The examiner’s comment, however, may be directed to his assertion
(Answer, page 43) that “isolated loci whose products confer yield enhancement
or enhanced yield stability (recited in claim 30), are not known in the prior art.”
However, as discussed, supra, it appears that contrary to the examiner’s
assertion a single locus that confers the trait of, for example, yield enhancement
was known in the art prior to the filing date of the instant invention. In addition,
as discussed, supra, appellant’s specification asserts that such traits were known
in the art. See specification, page 31. Accordingly, as set forth in In re
Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971), the burden is
on
the Patent Office, whenever a rejection on this basis is made, to
explain why it doubts the truth or accuracy of any statement in a
supporting disclosure and to back up assertions of its own with
acceptable evidence or reasoning which is inconsistent with the
contested statement. Otherwise, there would be no need for the
applicant to go to the trouble and expense of supporting his
presumptively accurate disclosure.

On this record, we find only the examiner’s unsupported conclusions as to
why the specification does not enable the claimed invention. We remind the
examiner that nothing more than objective enablement is required, and therefore
it is irrelevant whether this teaching is provided through broad terminology or
illustrative examples. Marzocchi, 439 F.2d at 223, 169 USPQ at 369. In the
absence of an evidentiary basis to support the rejection, the examiner has not
sustained his initial burden of establishing a prima facie case of non-enablement.
In this regard, we note that the burden of proof does not shift to appellant until
Appeal No. 2004-2343 Page 34
Application No. 09/772,520

the examiner first meets his burden. Marzocchi, 439 F.2d at 223-224, 169 USPQ
at 369-370.
We also recognize the examiner’s assertion (Answer, page 44) that claims
27-29 “encompass plants with single loci whose functions are unknown … [or
where] the effects of expression of the single locus on the traits expressed by
I026458 are unknown.” While this may be true, the examiner has not provided
any evidence to suggest that it would require undue experimentation to obtain a
single locus converted plant wherein essentially all of the desired morphological
and physiological characteristics of an inbred are recovered in addition to the
characteristics conferred by the single locus transferred into the inbred via the
backcrossing technique. See specification, page 23.
While it is not expressly stated in the text of the examiner’s rejection, it
may be that the examiner is concerned that the claims include inoperative
embodiments. If so, the examiner is directed to Atlas Powder Co. v. E.I. DuPont
De Nemours & Co., 750 F.2d 1569, 1576-77, 224 USPQ 409, 414 (Fed. Cir.
1984):
Even if some of the claimed combinations were inoperative, the
claims are not necessarily invalid. “It is not a function of the claims
to specifically exclude ... possible inoperative substances....” In re
Dinh-Nguyen, 492 F.2d 856, 859-59, 181 USPQ 46, 48 (CCPA
1974)(emphasis omitted). Accord, In re Geerdes, 491 F.2d 1260,
1265, 180 USPQ 789, 793 (CCPA 1974); In re Anderson, 471 F.2d
1237, 1242, 176 USPQ 331, 334-35 (CCPA 1971). Of course, if
the number of inoperative combinations becomes significant, and in
effect forces one of ordinary skill in the art to experiment unduly in
order to practice the claimed invention, the claims might indeed be
invalid. See e.g., In re Cook, 439 F.2d 730, 735, 169 USPQ 298,
302 (CCPA 1971).

Appeal No. 2004-2343 Page 35
Application No. 09/772,520

On this record, the examiner provides no evidence that the number of
inoperative embodiments is so large that a person of ordinary skill in the art
would have to experiment unduly to practice the claimed invention. To the
contrary, the examiner recognizes (Answer, page 43) that “[t]he prior art shows
that hundreds of nucleotide sequences encoding products that confer various
types of plant traits have been isolated at the time the instant invention was filed”;
and that “[o]ne skilled in the art can transform any of these isolated nucleotide
sequences known in the prior art into a corn plant cell, and regenerate a
transgenic plant from the transformed cell.” Accordingly, we are not persuaded
by the examiner’s unsupported assertions.
For the foregoing reasons, we reverse the rejection of claims 27-30 under
the enablement provision of 35 U.S.C. § 112, first paragraph.

Appeal No. 2004-2343 Page 36
Application No. 09/772,520

SUMMARY

We reverse the rejection of claims 3, 6, 11, 14-20, and 27-30 under 35
U.S.C. § 112, second paragraph.
We reverse the rejection of claims 6, 11, 24, 25 and 27-31 under the
written description provision of 35 U.S.C. § 112, first paragraph.
We reverse the rejection of claims 27-30 under the enablement provision
of 35 U.S.C. § 112, first paragraph.
For the reasons set forth in n. 5 infra, we have not considered the merits
of the rejection of claim 26 under the written description provision of 35 U.S.C.
§ 112, first paragraph.
REVERSED

)
Toni R. Scheiner )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
Donald E. Adams ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
Lora M. Green )
Administrative Patent Judge )
Appeal No. 2004-2343 Page 37
Application No. 09/772,520

Robert E. Hanson
FULBRIGHT & JAWORSKI L.L.P.
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