Appeal No. 2004-2317 Page 17
Application No. 09/771,938
the art would not have viewed the teachings of the specification as sufficient to
demonstrate that appellant was in possession of the genus of hybrid seeds and
plants encompassed by claims 24 and 25. According to the examiner (Answer,
page 22), “[t]he fact that any hybrid plant will inherit half of its alleles from
I015036 then does not provide sufficient description of the morphological and
physiological characteristics expressed by the claimed hybrid plants.”
There is no doubt that the expressed gene products of a hybrid plant, e.g.,
the morphological and physiological traits, of I015036 and a non-I015036 corn
plant will depend on the combination of the genetic material inherited from both
parents. See Answer, page 23. Nevertheless, we disagree with the examiner’s
conclusion (id.) that “[t]he fact that any hybrid plant will inherit half of its alleles
from I015036 then does not provide sufficient description of the morphological
and physiological characteristics expressed by the claimed hybrid plants.”
On these facts, we find it necessary to take a step back and consider what
is claimed. The claims are drawn to a F1 hybrid seed (claim 24) or plant (claim
25) resulting from a cross between a plant of corn variety I015036 and a non-
I015036 corn variety. The claims do not require the hybrid to express any
particular morphological or physiological characteristic. Nor do the claims require
that a particular non-I015036 corn variety be used.13 All that is required by the
claims is that the hybrid has one parent that is a plant of corn variety I015036.
Since the examiner has indicated that the seed and the plant of the corn variety
I015036 are allowable (see claims 1 and 5), there can be no doubt that the
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