Appeal No. 2004-2317 Page 34
Application No. 09/771,938
On this record, the examiner provides no evidence that the number of
inoperative embodiments is so large that a person of ordinary skill in the art
would have to experiment unduly to practice the claimed invention. To the
contrary, the examiner recognizes (Answer, page 40) 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”;
and that “[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.” Accordingly, we are not persuaded
by the examiner’s unsupported assertions.
For the foregoing reasons, we reverse the rejection of claims 27-30 under
the enablement provision of 35 U.S.C. § 112, first paragraph.
SUMMARY
We reverse the rejection of claims 3, 6, 11, 14-20, and 27-30 under 35
U.S.C. § 112, second paragraph.
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.
We reverse the rejection of claims 27-30 under the enablement provision
of 35 U.S.C. § 112, first paragraph.
REVERSED
)
Toni R. Scheiner )
Administrative Patent Judge )
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