Appeal No. 93-4108
Application 07/552,880
example, where does the prior art teach that “male parent plants are resistant to a
phytotoxic chemical”?
As a further example of the lack of detail presented by the examiner in rejecting the
claims on appeal, we point to claims 43 through 45. As a final step, these claims require
the determination of the percentage of seedlings resistant to a phytotoxic chemical. The
examiner’s consideration of claims 43 through 45 is set forth at page 6 of the Examiner’s
Answer as follows:
Finally, regarding the limitations presented in claims 43-45, the application
of the technique of herbicide selection to identify and determine the
percentage of hybrid seed in a population through sub-sampling of hybrids
produced as above is clearly evident from the prior art of record. No
distinction is seen from the method of producing the hybrid seed via
elimination of unwanted self or sib pollination presented in claims 19-42 and
the additional step of determining the percentage of seed resistant to the
herbicide.
From this statement, it appears that the examiner has ignored or read out of claims 42
through 45 the requirement of determining the percentage of seedlings resistant to a
phytotoxic chemical. This is clear error. 35 U.S.C. § 103 requires that an obviousness
determination be made on the basis of the subject matter of a claim as a whole. On this
record, it is not clear on what basis the examiner has concluded that the subject matter of
claims 43 through 45 would have been obvious to one of ordinary skill in the art.
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