Appeal No. 2004-1968 Page 21
Application No. 10/000,311
the examiner, as set forth in In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d
1510, 1513 (Fed. Cir. 1993):
When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by the
description of the invention provided in the specification of the
application; this includes, of course, providing sufficient reasons for
doubting any assertions in the specification as to the scope of
enablement.
II. Corn molecular genetic markers:
According to the examiner (Answer, page 27),
[n]o guidance has been provided for the identification of any
molecular genetic markers such as restriction fragment length
polymorphisms [RFLPs] as claimed in claim 31, wherein said
genetic molecular markers have been demonstrated to be inked to
corn genes conferring agronomically desirable traits, or their use to
breed and obtain improved corn genotypes using LH321 as the
starting material.
Admittedly, we find the examiner’s statement less than clear. However, as
we understand it the examiner finds that the specification fails to enable claim 31
because a link between genes conferring agronomically desirable traits and
RFLPs has not been established. However, as we understand claim it, claim 31
is drawn to a method of using a plant from the LH321 inbred corn line as the
source of plant breeding material in the development of a corn plant in a corn
plant breeding program using plant breeding techniques which are selected from
the group consisting of: recurrent selection, backcrossing, pedigree breeding,
RFLP enhanced selection, genetic marker enhanced selection, and
transformation. As appellant discloses (specification, paragraph 3), “[t]he
complexity of inheritance influences choice of the breeding method.” Appellant
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