Appeal No. 2004-1968 Page 14
Application No. 10/000,311
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). Therefore, we reverse the rejection of claims 17-19, 21, 24, 30 and 31
under the written description provision of 35 U.S.C. [§] 112, first paragraph.
Claims 6 and 26-28
According to the examiner (Answer, page 13), “[c]laims 26-28 are drawn
towards L321 plants further comprising a foreign gene (‘transgene’) which was
previously isolated as a piece of DNA, and then stably inserted into the corn
genome by transformation.” The examiner finds, however, that “the specification
does not describe identified or isolated single loci for all corn plant traits.”
Answer, page 14. More specifically, the examiner finds (id.), claims 26-28
“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 22), is
that “isolated single genes or loci that confer yield enhancement or yield stability
… have not been discovered or isolated….” In this regard, we note the
examiner’s assertion (id.), “[a]ppellant cannot be in possession of LH321 plants
transformed with gene(s) conferring these traits.” The examiner, however,
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