Appeal No. 2004-2343 Page 33
Application No. 09/772,520
The examiner’s comment, however, may be directed to his assertion
(Answer, page 43) that “isolated loci whose products confer yield enhancement
or enhanced yield stability (recited in claim 30), are not known in the prior art.”
However, as discussed, supra, it appears that contrary to the examiner’s
assertion a single locus that confers the trait of, for example, yield enhancement
was known in the art prior to the filing date of the instant invention. In addition,
as discussed, supra, appellant’s specification asserts that such traits were known
in the art. See specification, page 31. Accordingly, as set forth in In re
Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971), the burden is
on
the Patent Office, whenever a rejection on this basis is made, to
explain why it doubts the truth or accuracy of any statement in a
supporting disclosure and to back up assertions of its own with
acceptable evidence or reasoning which is inconsistent with the
contested statement. Otherwise, there would be no need for the
applicant to go to the trouble and expense of supporting his
presumptively accurate disclosure.
On this record, we find only the examiner’s unsupported conclusions as to
why the specification does not enable the claimed invention. We remind the
examiner that nothing more than objective enablement is required, and therefore
it is irrelevant whether this teaching is provided through broad terminology or
illustrative examples. Marzocchi, 439 F.2d at 223, 169 USPQ at 369. In the
absence of an evidentiary basis to support the rejection, the examiner has not
sustained his initial burden of establishing a prima facie case of non-enablement.
In this regard, we note that the burden of proof does not shift to appellant until
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