Appeal No. 2004-1968 Page 20
Application No. 10/000,311
related applications 09/788,334 and 09/771,938, the subject matter of Appeal
Nos. 2004-1506 and 2004-2317 respectively. Claim 16 of related applications
09/788,334 and 09/771,938, differs from claim 6 of the instant application only
with regard to the corn variety. Nevertheless, while the disclosure in these
related applications is substantially similar to the disclosure of the instant
application, claim 16 was not rejected under the enablement provision of 35
U.S.C. § 112, first paragraph, in either of related applications 09/788,334 or
09/771,938.
Further, we recognize appellant’s argument (Brief, page 16) that the
examiner failed to establish a nexus between Hunsperger’s discussion of
petunias; Kraft’s discussion of sugar beets; and Eshed’s discussion of tomatoes,
and the subject matter of the instant application - corn. Absent evidence to the
contrary, we agree with appellant (id.), “the [examiner’s] indication[9] that the
references concerning petunias, sugar beets and tomatoes apply to corn is made
without any support.” That the examiner has failed to identify (Answer, page
Answer, page 38) an example “in the prior art of plants in which linkage drag
does not occur,” does not mean that linkage drag is expected to occur in corn
breeding, which according to appellant (Brief, page 16) “is extremely advanced
and well known in the art.” In this regard, we agree with appellant (Brief, pages
16-17), the examiner has improperly placed the burden on appellant to
demonstrate that the examiner’s unsupported assertion is not true. We remind
9 See Answer page 38, wherein the examiner asserts “[l]inkage drag appears to be a
phenomenon that occurs in all plant types.”
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