Appeal No. 2004-1968 Page 13
Application No. 10/000,311
described in the patent specification.” Here the method of producing an inbred
corn plant requires a plant of the inbred corn line LH321 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 the plant of the inbred corn
line LH321 is allowable, see e.g., appellant’s claim 2. Therefore, in our opinion,
there can be no doubt that appellant was in possession of this plant, 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 claims 17-19, 21, 24, 30 and 31.
In our opinion, it matters not what the other corn plants are, or what the
progeny of a cross between the LH321 inbred line and some other corn plant
represents. The inventions of claims 17-19, 21, 24, 30 and 31 are drawn to the
use of the LH321 inbred line as the starting material7 to produce an inbred corn
plant. In this regard, we emphasize, the claims are not drawn to a seed or plant
that is the result of such a cross. Therefore, we are not persuaded by the
examiner’s assertion (Answer, page 11),
[t]he product of the method of claim 31, … would contain
substantial amounts of non-LH321 genetic material [that] has not
been characterized or described, because the collection of traits
that it possesses has not been disclosed, and because it contains
substantial amounts of non-LH321 genetic material which itself has
not been described.
7 See Answer, page 12, wherein the examiner also recognizes that “LH321 may be used only in
the initial cross….”
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