Appeal No. 2004-2343 Page 24
Application No. 09/772,520
the examiner has overlooked appellant’s assertion that single locus traits for yield
stability and yield enhancement are well known in the art. To this end, we direct
the examiner’s attention to, for example, United States Patent No. 5,936,145
(‘145)18, issued August 10, 1999, which is prior to the filing date of the instant
application. For clarity, we reproduce claims 8, 29 and 39 of the ‘145 patent
below:
8. A corn plant having all the physiological and morphological
characteristics of corn plant 87DIA4, a sample of the seed of said corn
plant having been deposited under ATCC Accession No. 203192.
29. The corn plant of claim 8, further comprising a single gene conversion.
39. The single gene conversion of the corn plant of claim 29, where the gene
confers enhanced yield stability.
As we understand it, claim 39 of the ‘145 patent, is drawn to a corn plant which
comprises a single gene conversion, wherein the gene confers enhanced yield
stability. Thus, contrary to the examiner’s assertion it appears, for example, that
a single gene that confers enhanced yield stability was known in the art prior to
the filing date of the instant application. We remind the examiner “a patent need
not teach, and preferably omits, what is well known in the art.” Hybritech
Incorporated v. Monoclonal Antibodies, Inc. 802 F.2d 1367, 1385, 231 USPQ 81,
94 (Fed. Cir. 1986).
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
18 We note that the assignee of the ‘145 patent is DeKalb Genetics Corporation. The assignee of
the present application is Monsanto Company, the parent of wholly-owned subsidiary DeKalb
Genetics Corporation.
Page: Previous 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 Next
Last modified: November 3, 2007