Appeal No. 2004-2317 Page 26
Application No. 09/771,938
the future to determine every other potential corn plant that someone may wish to
cross with the I015036 corn variety, and provide written descriptive support for
not only every other corn plant that could be crossed with I015036, but also the
resulting progeny of each cross.
As set forth in Reiffin, the purpose of the written description requirement is
to “ensure that the scope of the right to exclude, as set forth in the claims does
not overreach the scope of the inventor’s contribution to the field of art as
described in the patent specification.” Here a method of producing an inbred
corn plant wherein a plant of the corn variety I015036 is used as the starting
material. To that end, 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. The examiner has indicated that a claim to a plant of the corn variety
I015036 is allowable, see e.g., appellant’s claim 5. Therefore, in our opinion,
there can be no doubt that appellant was in possession of a plant of the corn
variety I015036, in addition to a method of using that plant to cross with any other
corn plant to produce an inbred corn plant as set forth in appellant’s claim 31.
In our opinion, it matters not what the other corn plants are, or what the
progeny of a cross between corn variety I015036 and some other corn plant
represents. As the examiner explains (Answer, bridging paragraph, pages 20-
21), patentability of the method of claim 31 “does not lie in the method steps,
which require the simple acts of crossing corn plants, allowing progeny seed to
be produced, and growing progeny plants from the seed….” In our opinion,
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