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.” AppellantPage: Previous 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 NextLast modified: November 3, 2007