Appeal No. 2004-2317 Page 30
Application No. 09/771,938
Accord Reply Brief, page 11), the examiner has improperly placed the burden on
appellant to demonstrate that the examiner’s unsupported assertion is not true.
We remind the examiner, as set forth in In re Wright, 999 F.2d 1557, 1561-62, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993):
When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by the
description of the invention provided in the specification of the
application; this includes, of course, providing sufficient reasons for
doubting any assertions in the specification as to the scope of
enablement.
II. What plant is transformed in claim 28?
We recognize the examiner’s assertion (Answer, page 39) that while claim
28 requires that a single locus be stably inserted into a corn genome by
transformation, the claim does not indicate whether (1) the I015036 plant was
transformed with the single locus, or (2) some other corn plant was transformed
with the single locus and then introduced into I015036 by crossing. However, as
appellant points out (Brief, page 12), claim 28 “specifies that the single locus was
stably inserted into a corn genome. Loci that are stably inserted into a corn
genome are also stably inherited. Thus the single locus need not have been
inserted into the genome of corn variety I015036.” Accordingly, the I015036
plant may be transformed with the single locus, or another plant may be
transformed with the single locus and then introduced into I015036 by crossing.
It may be that the examiner is concerned that by transforming a non-
I015036 plant with a single locus and then introducing this locus into I015036 by
crossing would result in a plant that does not retain all of the morphological and
Page: Previous 22 23 24 25 26 27 28 29 30 31 32 33 34 35 36 Next
Last modified: November 3, 2007