Appeal No. 2004-2343 Page 21
Application No. 09/772,520
presumed to be adequate; unless or until sufficient evidence or reasoning to the
contrary has been presented by the examiner to rebut the presumption. See
e.g., In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971).
The examiner, therefore, must have a reasonable basis to challenge the
adequacy of the written description. Accordingly, it is the examiner who has the
initial burden of establishing by a preponderance of evidence that a person
skilled in the art would not recognize in an applicant’s disclosure a description of
the invention defined by the claims. Wertheim, 541 F.2d at 263, 191 USPQ at
97. On this record, the examiner provides no evidence to support the assertion
that simply because appellant has not provided the sequences that make up the
loci for particular isozymes, appellant’s specification does not adequately
describe the claimed invention. Accordingly, we are not persuaded by the
examiner’s argument.
The examiner finds (Answer, page 21), claims 6 and 11 require that the
claimed plant or plant cell exhibit either the claimed SSR profile or the isozyme
profile. According to the examiner (id.), “[t]he genome of the cells of the I026458
seed deposited with the ATCC has both the SSR profile and the isozyme typing
profile shown in Tables 6 and 7 for that plant. No plant is described in the
specification that has one genetic marker profile but not the other.” The
examiner’s concern appears to be misplaced. To the extent that the examiner is
concerned that the claim is open to read on a plant other than a corn plant
produced by growing a seed of the corn variety I026458, we remind the examiner
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