Appeal No. 2004-2343 Page 31
Application No. 09/772,520
When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by the
description of the invention provided in the specification of the
application; this includes, of course, providing sufficient reasons for
doubting any assertions in the specification as to the scope of
enablement.
II. What plant is transformed in claim 28?
We recognize the examiner’s assertion (Answer, page 43) that while claim
28 requires that a single locus be stably inserted into a corn genome by
transformation, the claim does not indicate whether (1) the I026458 plant was
transformed with the single locus, or (2) some other corn plant was transformed
with the single locus and then introduced into I026458 by crossing. However, as
appellant points out (Brief, page 11), claim 28 “specifies that the single locus was
stably inserted into a corn genome. Loci that are stably inserted into a corn
genome are also stably inherited. Thus the single locus need not have been
inserted into the genome of corn variety I026458.” Accordingly, the I026458
plant may be transformed with the single locus, or another plant may be
transformed with the single locus and then introduced into I026458 by crossing.
It may be that the examiner is concerned that by transforming a non-
I026458 plant with a single locus and then introducing this locus into I026458 by
crossing would result in a plant that does not retain all of the morphological and
physiological traits, or all of the genome, of the I026458 plant. For the foregoing
reasons, however, this line of reasoning is not persuasive.
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