Appeal No. 2004-1968 Page 23
Application No. 10/000,311
irrelevant whether this teaching is provided through broad terminology or
illustrative examples. Marzocchi, 439 F.2d at 223, 169 USPQ at 369. In the
absence of an evidentiary basis to support the rejection, the examiner has not
sustained his initial burden of establishing a prima facie case of non-enablement.
In this regard, we note that the burden of proof does not shift to appellant until
the examiner first meets his burden. Marzocchi, 439 F.2d at 223-224, 169 USPQ
at 369-370.
Accordingly, we are not persuaded by the examiner’s comments.
III. Non-exemplified breeding partners:
The examiner finds (Answer, page 27), “[n]o guidance has been provided
regarding the morphological or genetic compositions of a multitude of non-
exemplified breeding partners for crossing with LH321….” According to the
examiner this is true whether a single cross is preformed to produce a hybrid
corn plant as claimed in claims 12-16, or multiple crosses with non-LH321
parents over multiple generations as claimed in claims 19, 21, 24, 30 and 31,
with or without multiple non-disclosed parents. 10
Claims 12-16:
10 We note that the examiner includes claim 14 in a discussion of “multiple crosses with non-
LH321 parents over multiple generations.” However, as we understand the claim, claim 14 is
drawn to the seed produced by growing the corn plant of claim 13 and harvesting the resultant
corn seed. Accordingly, it appears that the examiner has inadvertently included claim 14
together with claims 19, 21, 24, 30 and 31. As we understand claim 14, it should have been
included with the rejection of claims 12, 13, 15 and 16. See e.g., Answer, page 5, wherein the
examiner’s treatment of claims 12-16 together as “drawn towards any hybrid corn seed produced
by the process of crossing the inbred corn plant LH321 with any second, distinct, inbred corn
plant; and any hybrid corn plant produced by growing said hybrid corn seed (claims 12-16).
Accordingly, we have considered the examiner’s argument regarding claim 14 together with
claims 12, 13, 15 and 16.
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