Appeal No. 1995-2920
Application 07/999,172
Claims 20 through 23 and 33 through 36 are drawn to diploid seed propagatable
Pelargonium peltatum (P. peltatum) wherein the chromatographically determined content
of the pigments pelargonidin and paeonidin is at least 1%, 5%, 10% or 25% of the total
anthocyanidin content. The rejection of these claims under 35 U.S.C. § 112, first
paragraph, is set forth on page 4 of the Answer. If we understand the examiner’s position
correctly, it is that the specification does not adequately describe the relationship between
pigment levels expressed as percentages and the relative levels of pigments shown in the
examples. The examiner questions whether the ”preferred plants were actually obtained.”
If in making the latter comment the examiner is requiring appellants to have reduced
to practice each possible plant within the scope of the claims, such a position is legally
incorrect. The specification need only teach one skilled in the art how to make and use the
claimed invention. How the specification does so, whether by way of the written word or
actual examples, is of no moment. In the absence of a fact-based analysis from the
examiner why the specification does not enable one skilled in the art to make and use the
claimed invention, the rejection cannot be sustained.
Anticipation and Obviousness
All of the claims on appeal are directed to the annual ornamental plant Pelargonium
peltatum (commonly known as the ivy-leafed geranium), its seeds and propagating
material. Individual claims require that the plants exhibit certain characteristics, for
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