Appeal No. 1999-1298
Application No. 08/667,167
examiner’s reasoning in support of the rejections. We further reference appellants’
Brief3 for the appellants’ arguments in favor of patentability.
THE REJECTION UNDER 35 U.S.C. § 103:
The test of obviousness is “whether the teachings of the prior art, taken as a
whole, would have made obvious the claimed invention.” In re Gorman, 933 F.2d
982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991). Furthermore, as set forth in In
re Antonie, 559 F.2d 618, 619, 195 USPQ 6, 8 (CCPA 1977), “[j]ust as we look to a
chemical and its properties when we examine the obviousness of a composition of
matter claim, it is this invention as a whole, and not some part of it, which must be
obvious under 35 USC 103. Cf. In re Papesch, 50 CCPA 1276, 315 F.2d 381, 137
USPQ 43 (1963).”
In evaluating appellants’ invention as a whole, we note that the claims include
a limitation of “obtaining incubated primed non-germinated seeds wherein the seed
has a moisture content of about 3 to 20% units lower than the moisture content of
nonincubated primed non-germinated seeds of the same plant species….” The
examiner recognizes this claim limitation (Answer, bridging paragraph, pages 16-
17):
While appellants’ claims may detail exactly “3-20% units” lower than
the moisture content of “non incubated primed seeds”, because the
moisture content of primed seeds is not clearly defined in any
independent claim, it is not clear how the ultimate moisture content of
the incubated seed might define over the “dried back”, primed seed
of the prior art. However, appellants’ “3-20% units” range of moisture
3 Paper No. 12, received November 7, 1997.
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