Appeal No. 2004-2317 Page 21
Application No. 09/771,938
skilled in the art would not recognize in an applicant’s disclosure a description of
the invention defined by the claims. Wertheim, 541 F.2d at 263, 191 USPQ at
97. On this record, the examiner provides no evidence to support the assertion
that simply because appellant has not provided the sequences that make up the
loci for particular isozymes, appellant’s specification does not adequately
describe the claimed invention. Accordingly, we are not persuaded by the
examiner’s argument.
The examiner finds (Answer, page 37), claims 6 and 11 require that the
claimed plant or plant cell exhibit either the claimed SSR profile or the isozyme
profile. According to the examiner (id.), “[t]he genome of the cells of the I015036
seed deposited with the ATCC has both the SSR profile and the isozyme typing
profile shown in Tables 5 and 6 for that plant. No plant is mentioned in the
specification that has one genetic marker profile but not the other.” The
examiner’s concern appears to be misplaced. To the extent that the examiner is
concerned that the claim is open to read on a plant other than a corn plant
produced by growing a seed of the corn variety I015036, we remind the examiner
that both claims 6 and 11 ultimately depend from claim 515, which is drawn to “[a]
corn plant produced by growing a seed of the corn variety I015036….”
It appears that the examiner may have read claims 6 and 11 as drawn to a
corn plant or plant cell having only one of the recited profiles. However, as we
understand claims 6 and 11, determining whether the claimed corn plant (claim
15 The examiner has indicated that claim 5 is allowable. Answer, page 2.
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