Appeal No. 2004-2343 Page 32
Application No. 09/772,520
III. The single locus to be introduced:
The examiner finds (Answer, page 43), “the claims do not place any limit
on the single locus to be introduced” into I026458 plants. The examiner
recognizes, however, that “[t]he prior art shows that hundreds of nucleotide
sequences encoding products that confer various types of plant traits have been
isolated at the time the instant invention was filed.” Id. In addition, the examiner
recognizes (id.), “[o]ne skilled in the art can transform any of these isolated
nucleotide sequences known in the prior art into a corn plant cell, and regenerate
a transgenic plant from the transformed cell.”
Nevertheless, the examiner finds (Answer, bridging sentence, pages 43-
44), “[u]ndue experimentation would be required by one skilled in the art to
isolate single loci that govern the traits encompassed by the claims.” In this
regard, the examiner asserts (Answer, page 45) that the claims broadly
encompass corn plants comprising any type of single loci, including those that
have not yet been identified 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 enablement under 35 U.S.C. § 112, first
paragraph is evaluated as of appellant’s filing date. As set forth in Chiron Corp.
v. Genentech Inc., 363 F.3d 1247, 1254, 70 USPQ2d 1321, 1325-26 (Fed. Cir.
2004), “a patent document cannot enable technology that arises after the date of
application. The law does not expect an applicant to disclose knowledge
invented or developed after the filing date. Such disclosure would be impossible.
See In re Hogan, 559 F.2d 595, 605-06 [194 USPQ 527] (CCPA 1977).”
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