Appeal No. 2004-1968 Page 22
Application No. 10/000,311
then provides a description of various breeding methods. See e.g., specification,
paragraphs 3-13. In addition, appellant discloses (specification, ape 14), several
reference books wherein “[d]escriptions of other breeding methods that are
commonly used for different traits and crops can be found ….” In addition,
appellant provides a description of various marker genes. See e.g., specification,
paragraphs 69-75. Further, appellant discloses (specification, paragraph 91),
“[f]or the relatively small number of transgenic plants that show higher levels of
expression, a genetic map can be generated, primarily via conventional FRLP,
PCR and SSR analysis, which identifies the approximate chromosomal location
of the integrated DNA molecule.” In addition, appellant provides a reference “for
exemplary methodologies in this regard…” Id. Faced with this disclosure, the
examiner provides no evidence to support his assertion that appellant’s
specification does not provide an enabling disclosure of the invention set forth in
claim 31.
As set forth in In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370
(CCPA 1971), the burden is on
the Patent Office, whenever a rejection on this basis is made, to
explain why it doubts the truth or accuracy of any statement in a
supporting disclosure and to back up assertions of its own with
acceptable evidence or reasoning which is inconsistent with the
contested statement. Otherwise, there would be no need for the
applicant to go to the trouble and expense of supporting his
presumptively accurate disclosure.
On this record, we find only the examiner’s unsupported conclusions as to why
the specification does not enable the claimed invention. We remind the examiner
that nothing more than objective enablement is required, and therefore it is
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