Appeal No. 2004-1968 Page 10
Application No. 10/000,311
information concerning the morphological and physiological characteristics that
will be expressed by the claimed hybrids.”
There is no doubt that the expressed gene products of a hybrid plant, e.g.,
the morphological and physiological traits, of LH321 and a non-LH321 corn plant
will depend on the combination of the genetic material inherited from both
parents. See Answer, page 22. Nevertheless, we disagree with the examiner’s
conclusion (id.) “[t]hat all hybrids will inherit half of their alleles from LH321 does
not provide any information concerning the morphological and physiological
characteristics that will be expressed by the claimed hybrids.”
On these facts, we find it necessary to take a step back and consider what
is claimed. As we understand the them, the claims are drawn to a F14 hybrid
seed (claims 12, 14 and 15) or plant/plant part (claim 13, and 16) resulting from a
cross between the inbred corn plant LH321 and a non-LH321 corn plant. The
claims do not require the hybrid to express any particular morphological or
physiological characteristic. Nor do the claims require that a particular non-
LH321 corn variety be used.5 All that is required by the claims is that the F1
hybrid has one parent that is a plant of corn variety LH321. Since the examiner
has indicated that the seed and the plant of the inbred line LH321 are allowable
(see claims 1 and 2), there can be no doubt that the specification provides an
adequate written description of this inbred corn line. In addition, the examiner
recognizes (Answer, page 7) that appellant’s specification describes four
4 According to appellant’s specification (page 3), “[a] single-cross hybrid is produced when two
inbred lines are crossed to produce the F1 progeny.”
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