Appeal No. 2004-2317 Page 18
Application No. 09/771,938
specification provides an adequate written description of this corn variety. In
addition, the examiner appears to recognize (Answer, page 25) that appellant’s
specification describes an exemplary hybrid wherein one parent was a plant of
the corn variety I015036, see e.g., specification, pages 53-59. Accordingly, it is
unclear to this merits panel what additional description is necessary.
As set forth in Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345, 54
USPQ2d 1915, 1917 (Fed. Cir. 2000), the purpose of the written description
requirement is to “ensure that the scope of the right to exclude, as set forth in the
claims does not overreach the scope of the inventor’s contribution to the field of
art as described in the patent specification.” Here the hybrid seed or plant has
one parent that is a plant of the corn variety I015036. To that end, to satisfy the
written description requirement, the inventor “must convey with reasonable clarity
13 According to appellant (Brief, page 15), “hundreds or even thousands of different inbred corn
lines were well known to those of skill in the art prior to the filing [date] of the instant application,
each of which could be crossed to make a hybrid plant with in the scope of the claims.”
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