Appeal No. 2004-1968 Page 11
Application No. 10/000,311
exemplary hybrids wherein one parent was a plant of the inbred corn line LH321,
see e.g., specification, pages 31-33. Accordingly, it is unclear to this merits
panel what additional description is necessary.
As set forth above, the purpose of the written description requirement is to
“ensure that the scope of the right to exclude, as set forth in the claims does not
overreach the scope of the inventor’s contribution to the field of art as described
in the patent specification.” Reiffin. Here the F1 hybrid seed or plant has one
parent that is a plant of the inbred line LH321. To that end, to satisfy the written
description requirement, the inventor “must convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention” [emphasis added]. Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). For the foregoing
reasons it is our opinion that appellant has provided an adequate written
description of the subject matter set forth in claims 12-16. Accordingly, we
reverse the rejection of claims 12-16 under the written description provision of 35
U.S.C. § 112, first paragraph.
Claims 17-19, 21, 24, 30 and 316
According to the examiner (Answer, page 12), “[c]laims 19, 21, 24, 30 and
31 read on processes involving the repeated outcrossing of the exemplified
inbred to multitude of genetically unrelated and uncharacterized corn plants for
5 According to appellant (Brief, page 16), “hundreds or even thousands of other maize plants …
were known at the time the application was filed….”
6 We note that while the examiner includes (Answer, page 13) claims 17 and 18 with claims 19,
21, 24, 30 and 31 in concluding that the claims are inadequately described, the examiner has
explained (Answer, pages 12-13) the basis of this rejection as it applies to claims 19, 21, 24, 30
and 31.
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