Appeal No. 2004-2317 Page 19
Application No. 09/771,938
to those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention” [emphasis added]. Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). For the foregoing
reasons it is our opinion that appellant has provided an adequate written
description of the subject matter set forth in claims 24 and 25.
We recognize the examiner’s argument relating to SSR and isozyme
markers (Answer, pages 25-29), as well as the examiner’s arguments concerning
a correlation between the hybrid’s genome structure and the function of the
hybrid plant (Answer, pages 23-25). However, for the foregoing reasons, we are
not persuaded by these arguments.
Claims 6 and 11
Claims 6 and 11 depend ultimately upon claim 5. On this record, the
examiner has indicated that claim 5 is allowable. Answer, page 2.
According to the examiner (Answer, page 8), while the specification
provides the locus names and allele numbers of the SSR markers, the
specification does not provide the actual nucleotide sequences that make up the
markers. According to the examiner (Answer, page 18), “names of loci alone do
not describe the structures of the markers themselves. Without a description of
the sequences of the markers, one cannot confirm their presence.” In response,
appellant points out (Brief, page 26), “the SSR markers were from Celera AgGen,
Inc., which provides a commercial service for genotyping of maize varieties.” In
other words, a person of ordinary skill in the art could use the commercially
available service provided by Celera AgGen, Inc. to determine whether a corn
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