Ex parte SECOR et al. - Page 5




          Appeal No. 94-1709                                                          
          Application 07/716,115                                                      


               virtually zero.  On information and belief, despite                    
               repeated attempts to find such a blackspot resistant                   
               Lemhi potato since introduction of the variety in                      
               1981, none has yet been found.                                         
          See the Secor Declaration, paragraphs 4 and 5.  On this point,              
          we invite attention to appellants' claims which are not                     
          restricted to the Lemhi Russet ("Lemhi") variety of potato.                 
          Where, as here, claims 9 and 18 through 20 contain no                       
          limitation serving to distinguish from naturally occurring                  
          cultivars "highly resistant to blackspot" (specification, page              
          3, second paragraph), we find it unnecessary to reach the                   
          question whether blackspot-resistant Lemhi plants and tubers                
          occur in nature.  The Secor Declaration,  and appellants'                   
          argument based on that declaration, would predicate                         
          patentability on a limitation not found in the claims.                      
                                   35 U.S.C. § 103                                    
               Considering now the prior art rejection, we find that a                
          person having ordinary skill in the art would not have a                    
          sufficient basis for the necessary predictability of success                
          to sustain a rejection under 35 U.S.C. § 103 based on the                   
          combined disclosures of Shepard and Cherry.  See In re                      
          Clinton, 527 F.2d    1226, 1228, 188 USPQ 365, 367 (CCPA                    
          1976).                                                                      
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