Appeal No. 2004-2317 Page 31
Application No. 09/771,938
physiological traits, or all of the genome, of the I015036 plant. For the foregoing
reasons, however, this line of reasoning is not persuasive.
III. The single locus to be introduced:
The examiner finds (Answer, page 40), “the claims do not place any limit
on the single locus to be introduced” into I015036 plants. The examiner
recognizes, however, that “[t]he prior art shows that hundreds of nucleotide
sequences encoding products that confer various types of plant traits have been
isolated at the time the instant invention was filed.” Id. In addition, the examiner
recognizes (id.), “[o]ne skilled in the art can transform any of these isolated
nucleotide sequences known in the prior art into a corn plant cell, and regenerate
a transgenic plant from the transformed cell.”
Nevertheless, the examiner finds (id.), “[u]ndue experimentation would be
required by one skilled in the art to isolate single loci that govern the traits
encompassed by the claims.” In this regard, the examiner asserts (Answer, page
44) that the claims broadly encompass corn plants comprising any type of single
loci, including those that have not yet been identified or isolated. To the extent
that the examiner is asserting that appellant has not provided an enabling
disclosure of single loci that have not been identified, we note that enablement
under 35 U.S.C. § 112, first paragraph is evaluated as of appellant’s filing date.
As set forth in Chiron Corp. v. Genentech Inc., 363 F.3d 1247, 1254, 70 USPQ2d
1321, 1325-26 (Fed. Cir. 2004), “a patent document cannot enable technology
that arises after the date of application. The law does not expect an applicant to
disclose knowledge invented or developed after the filing date. Such disclosure
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