Appeal No. 2004-2343 Page 19
Application No. 09/772,520
requirement is to “ensure that the scope of the right to exclude, as set forth in the
claims does not overreach the scope of the inventor’s contribution to the field of
art as described in the patent specification.” Here the hybrid seed or plant has
one parent that is a plant of the corn variety I026458. To that end, to satisfy the
written description requirement, the inventor “must convey with reasonable clarity
to those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention” [emphasis added]. Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). For the foregoing
reasons it is our opinion that appellant has provided an adequate written
description of the subject matter set forth in claims 24-26.15
We recognize the examiner’s argument relating to SSR and isozyme
markers (Answer, pages 28-33), as well as the examiner’s arguments concerning
a correlation between the hybrid’s genome structure and the function of the
hybrid plant (Answer, pages 24-27). However, for the foregoing reasons, we are
not persuaded by these arguments.
Claims 6 and 11
Claims 6 and 11 depend ultimately upon claim 5. On this record, the
examiner has indicated that claim 5 is allowable. Answer, page 2.
According to the examiner (Answer, page 17), while the specification
provides the locus names and allele numbers of the SSR markers, the
specification does not provide the actual nucleotide sequences that make up the
markers. According to the examiner (id.), “names of loci alone do not describe
15 Again, we note as set forth in n. 3. that claim 26 does not appear to further limit the scope of
claim 25 from which it depends.
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