Appeal No. 2004-1968 Page 16
Application No. 10/000,311
not teach, and preferably omits, what is well known in the art.” Hybritech
Incorporated v. Monoclonal Antibodies, Inc. 802 F.2d 1367, 1385, 231 USPQ 81,
94 (Fed. Cir. 1986).
We remind the examiner that the inquiry into whether the description
requirement is met must be determined on a case-by-case basis and is a
question of fact. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA
1976). A description as filed is presumed to be adequate; unless or until
sufficient evidence or reasoning to the contrary has been presented by the
examiner to rebut the presumption. See e.g., In re Marzocchi, 439 F.2d 220,
224, 169 USPQ 367, 370 (CCPA 1971). The examiner, therefore, must have a
reasonable basis to challenge the adequacy of the written description.
Accordingly, it is the examiner who has the initial burden of establishing by a
preponderance of evidence that a person skilled in the art would not recognize in
an applicant’s disclosure a description of the invention defined by the claims.
Wertheim, 541 F.2d at 263, 191 USPQ at 97. On this record, the examiner
provides no evidence to support the assertion that single loci that govern, for
example, yield enhancement or enhanced yield stability are not described.
Furthermore, we recognize the examiner’s assertion (Answer, page 13)
that “one skilled in the art would not have recognized [a]ppellant to have been in
possession of the claimed hybrids or progeny plants as recited in claim[ ] 6….”
As we understand it, claim 6 is drawn to a corn plant produced by growing the
seed of corn inbred line LH321 further defined as comprising a gene conferring
male sterility. The examiner has provided no evidence on this record as to why
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