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). -5-Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007