Appeal No. 2004-2343 Page 23
Application No. 09/772,520
the single locus was stably inserted into a corn genome by transformation.” The
examiner finds, however, that “the specification does not describe identified or
isolated single loci for all corn plant traits.” Id. More specifically, the examiner
finds (id.), claims 27-30 “broadly encompass single loci that have not been
discovered or isolated.” To the extent that the examiner is asserting that
appellant has not provided an enabling disclosure of single loci that have not
been identified, we note that 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.
Nevertheless, it may be that the examiner’s concern (Answer, page 35), is
that “single genes that alone govern ‘yield enhancement’ or ‘enhanced yield
stability’ have not been discovered.” In this regard, the examiner asserts
(Answer, page 36), “the references cited in the specification do not describe
isolated single genes or loci that confer yield enhancement or yield stability.”
Therefore, the examiner concludes (id.), “[a]ppellant cannot be in possession of
plants further comprising single loci that have yet to be identified.” The examiner,
however, provides no evidence to support the assertion that a person of ordinary
skill in the art would not recognize that single loci for yield enhancement or yield
stability are known in the art. In this regard, we note that appellant discloses
(specification, page 31), “[m]any single locus traits have been identified …
examples of these traits include, but are not limited to, … enhanced nutritional
quality, industrial usage, yield stability, and yield enhancement.” It appears that
Page: Previous 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 Next
Last modified: November 3, 2007