Appeal No. 2004-2343 Page 26
Application No. 09/772,520
Nevertheless, the examiner finds (Answer, page 19), “[a] review of the
claim indicates that hybrid progeny of corn plant I026458 are required to perform
further crosses, and that progeny of subsequent generations can be further
outcrossed with different corn plants.” Therefore, the examiner concludes (id.),
“[t]he hybrid progeny of corn plant I026458, and progeny plants of subsequent
generations, are essential to operate the claimed method.” As we understand
the examiner’s argument, not only does appellant have to provide a written
description of the starting corn plant (I026458), but appellant also must look into
the future to determine every other potential corn plant that someone may wish to
cross with the I026458 corn variety, and provide written descriptive support for
not only every other corn plant that could be crossed with I026458, but also the
resulting progeny of each cross.
As set forth in Reiffin, the purpose of the written description 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 method of producing an inbred
corn plant requires a plant of the corn variety I026458 be used as the starting
material. 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. The examiner has indicated that a claim to a plant of the corn variety
I026458 is allowable, see e.g., appellant’s claim 5. Therefore, in our opinion,
there can be no doubt that appellant was in possession of a plant of the corn
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