Appeal No. 2004-1968 Page 15
Application No. 10/000,311
provides no evidence to support the assertion that a person of ordinary skill in the
art would not recognize that single loci for yield enhancement or yield stability are
known in the art. In this regard, we note that appellant discloses (specification,
paragraph 133), “[m]any single locus traits have been identified … examples of
these traits include, but are not limited to, … enhanced nutritional quality,
industrial usage, yield stability, and yield enhancement.” It appears that the
examiner has overlooked appellant’s assertion that single locus traits for yield
stability and yield enhancement are well known in the art. To this end, we direct
the examiner’s attention to, for example, United States Patent No. 5,936,145
(‘145)8, issued August 10, 1999, which is prior to the filing date of the instant
application. For clarity, we reproduce claims 8, 29 and 39 of the ‘145 patent
below:
8. A corn plant having all the physiological and morphological
characteristics of corn plant 87DIA4, a sample of the seed of said corn
plant having been deposited under ATCC Accession No. 203192.
29. The corn plant of claim 8, further comprising a single gene conversion.
39. The single gene conversion of the corn plant of claim 29, where the gene
confers enhanced yield stability.
As we understand it, claim 39 of the ‘145 patent, is drawn to a corn plant which
comprises a single gene conversion, wherein the gene confers enhanced yield
stability. Thus, contrary to the examiner’s assertion it appears, for example, that
a single gene that confers enhanced yield stability was known in the art prior to
the filing date of the instant application. We remind the examiner “a patent need
8 We note that the assignee of the ‘145 patent is DeKalb Genetics Corporation. The assignee of
the present application is Monsanto Company, the parent of wholly-owned subsidiary DeKalb
Genetics Corporation.
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