Appeal No. 2004-2317 Page 23
Application No. 09/771,938
that appellant has not provided an enabling disclosure of single loci that have not
been identified, we note that to satisfy the written description requirement, the
inventor “must convey with reasonable clarity 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.
Nevertheless, it may be that the examiner’s concern (Answer, page 31), is
that “single loci that alone govern ‘yield enhancement’ or ‘enhanced yield stability’
have not been discovered.” In this regard, the examiner asserts (Answer, page
32), “the references cited in the specification do not describe isolated single
genes or loci that confer yield enhancement or yield stability.” Therefore, the
examiner concludes (id.), “[a]ppellant cannot be in possession of plants further
comprising single loci that have yet to be identified.” The examiner, however,
provides no evidence to support the assertion that a person of ordinary skill in the
art would not recognize that single loci for yield enhancement or yield stability are
known in the art. In this regard, we note that appellant discloses (specification,
page 31), “[m]any single locus traits have been identified … examples of these
traits include, but are not limited to, … enhanced nutritional quality, industrial
usage, yield stability, and yield enhancement.” It appears that the examiner has
overlooked appellant’s assertion that single locus traits for yield stability and yield
enhancement are well known in the art. To this end, we direct the examiner’s
attention to, for example, United States Patent No. 5,936,145 (‘145)16, issued
16 We note that the assignee of the ‘145 patent is DeKalb Genetics Corporation. The assignee of
the present application is Monsanto Company, the parent of wholly-owned subsidiary DeKalb
Genetics Corporation.
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