Appeal No. 2004-2343 Page 20
Application No. 09/772,520
the structures of the markers themselves. Without a description of the
sequences of the markers, one cannot confirm their presence.” In response,
appellant points out (Brief, page 13), “the SSR markers were from Celera AgGen,
Inc., which provides a commercial service for genotyping of maize varieties.” In
other words, a person of ordinary skill in the art could use the commercially
available service provided by Celera AgGen, Inc. to determine whether a corn
plant produced by growing a seed of the corn variety I026458 has an SSR profile
which is the same as that shown in Table 6. Therefore, it is unclear to this panel
why the examiner believes that such a disclosure fails to provide adequate
written descriptive support for the claimed invention.16 Accordingly, we are not
persuaded by the examiner’s argument.
Regarding the isozyme typing profile, the examiner finds (Answer, page
17), “Table 7 provides names of loci where isozyme markers reside, for three
different corn plants, and a numerical value that represents the numbers of
alleles at isozyme loci types. The nucleotide sequences that make up these loci
are not described.” In response, appellant points out (Brief, page 13), the
isozyme “markers are well known and isozyme analysis in general [is] very well
known having been used for decades.” In this regard, we remind the examiner
that the inquiry into whether the description requirement is met must be
determined on a case-by-case basis and is a question of fact. In re Wertheim,
541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). A description as filed is
16 We are not persuaded by the examiner’s assertion (Answer, page 31) “that the [commercially
available] service used to detect SSR markers is currently available is not a guarantee that it will
remain so for the life of a patent issuing from the application.” Cf. In re Metcalfe, 410 F.2d 1378,
1382, 161 USPQ 789, 792-3 (CCPA 1969).
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