Appeal No. 2004-2317 Page 27
Application No. 09/771,938
patentability of the method of claim 31 does not lie in the various other or second
corn plants either. In our opinion, patentiblity of the method of claim 31 lies in the
use of the corn variety I015036. Accordingly, for the foregoing reasons, it is our
opinion that appellant has “convey[ed] with reasonable clarity to those skilled in
the art that, as of the filing date sought, [they were] in possession of the
invention,” Vas-Cath (emphasis omitted).
Summary
For the foregoing reasons, we reverse the rejection of claims 6, 11, 24, 25
and 27-31 under the written description provision of 35 U.S.C. § 112, first
paragraph.
Enablement:
Claims 27-30 stand rejected under the enablement provision of 35 U.S.C.
§ 112, first paragraph. The examiner finds (Answer, page 39), claims 27-30 “are
broadly drawn towards inbred corn plant I015036 further defined as having a
genome comprising any single locus conversion, encoding any trait; or wherein
the single locus was stably inserted into a corn genome by transformation.” The
examiner presents several lines of argument under this heading. We take each
in turn.
I. Retaining all the morphological and physiological traits of I015036:
According to the examiner (Answer, page 38, emphasis added), “the
specification does not teach any I015036 plants comprising a single locus
conversion produced by backcrossing, wherein the resultant plant retains all of its
morphological and physiological traits in addition to exhibiting the single trait
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