Appeal No. 2004-1968 Page 9
Application No. 10/000,311
Claims 12-16
According to the examiner (Answer, page 7),
A review of the Ianguage of claims 12-16 indicates that the claims
are drawn to a genus, i.e., any and all hybrid corn seeds, and the
hybrid corn plants produced by growing said hybrid seeds, wherein
the hybrid seeds are produced by crossing inbred corn plant LH321
with any second, distinct inbred corn plant. Variation is expected in
the complete genomes and phenotypes of the different hybrid
species of the genus, since each hybrid has one non-LH321 parent
that is not shared with the other hybrids. Each of the hybrids would
inherit a different set of alleles from the non-LH321 inbred parent.
As a result, the complete genomic structure of each hybrid, and
therefore the morphological and physiological characteristics
expressed by each hybrid, would differ.
Accordingly the examiner finds (Answer, page 13),
[g]iven the Iack of written description in the specification regarding
any of a multitude of non-LH321 parents to be used in a
backcrossing breeding method or any other classical breeding
method, one skilled in the art would not have recognized Appellant
to have been in possession of the claimed hybrids or progeny
plants as recited in claims … 12-16.
As we understand it, the examiner’s concern (see e.g., Answer, pages 15-
16) is that since the hybrids inherit only ½ of their diploid3 set of chromosomes
from the plant of corn variety LH321, a person of skill in the art would not have
viewed the teachings of the specification as sufficient to demonstrate that
appellant was in possession of the genus of hybrid seeds and plants
encompassed by claims 12-16. According to the examiner (Answer, page 16),
“[t]hat all hybrids will inherit half of their alleles from LH321 does not provide any
3 According to appellant’s specification (page 21), “[i]n a diploid cell or organism, the two alleles
of a given gene occupy corresponding loci on a pair of homologous chromosomes.” Stated
differently, diploid means a cell or organism having two sets of chromosomes.
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