Appeal No. 2004-2317 Page 24
Application No. 09/771,938
August 10, 1999, which is prior to the filing date of the instant application. For
clarity, we reproduce claims 8, 29 and 39 of the ‘145 patent below:
8. A corn plant having all the physiological and morphological
characteristics of corn plant 87DIA4, a sample of the seed of said corn
plant having been deposited under ATCC Accession No. 203192.
29. The corn plant of claim 8, further comprising a single gene conversion.
39. The single gene conversion of the corn plant of claim 29, where the gene
confers enhanced yield stability.
As we understand it, claim 39 of the ‘145 patent, is drawn to a corn plant which
comprises a single gene conversion, wherein the gene confers enhanced yield
stability. Thus, contrary to the examiner’s assertion it appears, for example, that
a single gene that confers enhanced yield stability was known in the art prior to
the filing date of the instant application. We remind the examiner “a patent need
not teach, and preferably omits, what is well known in the art.” Hybritech
Incorporated v. Monoclonal Antibodies, Inc. 802 F.2d 1367, 1385, 231 USPQ 81,
94 (Fed. Cir. 1986).
We remind the examiner that the inquiry into whether the description
requirement is met must be determined on a case-by-case basis and is a
question of fact. Wertheim, 541 F.2d at 262, 191 USPQ at 96. A description as
filed is presumed to be adequate; unless or until sufficient evidence or reasoning
to the contrary has been presented by the examiner to rebut the presumption.
See e.g., Marzocchi. The examiner, therefore, must have a reasonable basis to
challenge the adequacy of the written description. Accordingly, it is the examiner
who has the initial burden of establishing by a preponderance of evidence that a
person skilled in the art would not recognize in an applicant’s disclosure a
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