Appeal No. 2004-1968 Page 12
Application No. 10/000,311
multiple generations.” As the examiner explains (id.), “LH321 may be used only
in the initial cross, and then the progeny of this cross may be crossed to a
multitude of unrelated and uncharacterized corn plants for up to 7 times (as
recited in claim 21) or ad infinitum (as claimed in claims 19, 24, 30 and 31).” In
this regard, the examiner finds (id.),
[t]he specification fails to disclose or describe any progeny resulting
from such crosses, wherein said progeny could contain only a small
portion of the LH321 genome, if any at all, and wherein said
progeny would contain a majority of undisclosed and
uncharacterized genetic material from a multitude of undisclosed
and uncharacterized parents. Furthermore, no description has
been provided for the progeny of such crosses with regard to even
one morphological trait of said progeny containing a majority of
non-LH321 genetic material.
Thus, the examiner concludes (Answer, page 13), “given the lack of an adequate
written description of the claimed progeny plants, any method of using said
progeny plants in further crosses, as claimed in claims 17-19, 21, 24, 30 and 31,
would also be inadequately described.
As we understand the examiner’s argument, not only does appellant have
to provide a written description of the starting corn plant (LH321), but appellant
also must look into the future to determine every other potential corn plant that
someone may wish to cross with the LH321 inbred line, and provide written
descriptive support for not only every other corn plant that could be crossed with
this line, but also the resulting progeny of each cross.
As set forth in Reiffin, 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
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