Appeal No. 2004-2317 Page 25
Application No. 09/771,938
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 single loci that govern, for example, yield enhancement or
enhanced yield stability are not described.
For the foregoing reasons, we are not persuaded by the examiner’s
arguments.
Claim 31
Claim 31 is drawn to a method of producing an inbred corn plant derived
from the corn variety I015036. The claimed method begins by crossing a plant of
the corn variety I015036 with any other corn plant. The method requires that the
progeny corn plant be crossed either to itself, or with any other corn plant, and
that the progeny of this cross be further crossed to itself, or with another corn
plant, and so on throughout several generations. As we understand it, claim 31,
in its simplest form, is directed to a method of using a plant of the corn variety
I015036 to produce an inbred corn plant.
Nevertheless, the examiner finds (Answer, page 20), “[a] review of the
claim indicates that hybrid progeny of corn plant I015036 are required to perform
further crosses, and that progeny of subsequent generations can be further
outcrossed with different corn plants.” Therefore, the examiner concludes (id.),
“[t]he hybrid progeny of corn plant I015036, and progeny plants of subsequent
generations, are essential to operate the claimed method.” As we understand
the examiner’s argument, not only does appellant have to provide a written
description of the starting corn plant (I015036), but appellant also must look into
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