Appeal No. 2004-2343 Page 18
Application No. 09/772,520
conclusion (id.) that “[t]he fact that any hybrid plant will inherit half of its alleles
from I026458 then does not provide sufficient description of the morphological
and physiological characteristics expressed by the claimed hybrid plants.”
On these facts, we find it necessary to take a step back and consider what
is claimed. The claims are drawn to a F1 hybrid seed (claim 24) or plant (claim
25) resulting from a cross between a plant of corn variety I026458 and a non-
I026458 corn variety. The claims do not require the hybrid to express any
particular morphological or physiological characteristic. Nor do the claims require
that a particular non-I026458 corn variety be used.14 All that is required by the
claims is that the hybrid has one parent that is a plant of corn variety I026458.
Since the examiner has indicated that the seed and the plant of the corn variety
I026458 are allowable (see claims 1 and 5), there can be no doubt that the
specification provides an adequate written description of this corn variety. In
addition, the examiner appears to recognize (Answer, pages 24-25) that
appellant’s specification describes an exemplary hybrid wherein one parent was
a plant of the corn variety I026458, see e.g., specification, pages 53-57.
Accordingly, it is unclear to this merits panel what additional description is
necessary.
As set forth in Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345, 54
USPQ2d 1915, 1917 (Fed. Cir. 2000), the purpose of the written description
14 According to appellant (Brief, page 16), “hundreds or even thousands of different inbred corn
lines were well known to those of skill in the art prior to the filing [date] of the instant application,
each of which could be crossed to make a hybrid plant with in the scope of the claims.”
Page: Previous 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Next
Last modified: November 3, 2007