Appeal No. 2004-2343 Page 34
Application No. 09/772,520
the examiner first meets his burden. Marzocchi, 439 F.2d at 223-224, 169 USPQ
at 369-370.
We also recognize the examiner’s assertion (Answer, page 44) that claims
27-29 “encompass plants with single loci whose functions are unknown … [or
where] the effects of expression of the single locus on the traits expressed by
I026458 are unknown.” While this may be true, the examiner has not provided
any evidence to suggest that it would require undue experimentation to obtain a
single locus converted plant wherein essentially all of the desired morphological
and physiological characteristics of an inbred are recovered in addition to the
characteristics conferred by the single locus transferred into the inbred via the
backcrossing technique. See specification, page 23.
While it is not expressly stated in the text of the examiner’s rejection, it
may be that the examiner is concerned that the claims include inoperative
embodiments. If so, the examiner is directed to Atlas Powder Co. v. E.I. DuPont
De Nemours & Co., 750 F.2d 1569, 1576-77, 224 USPQ 409, 414 (Fed. Cir.
1984):
Even if some of the claimed combinations were inoperative, the
claims are not necessarily invalid. “It is not a function of the claims
to specifically exclude ... possible inoperative substances....” In re
Dinh-Nguyen, 492 F.2d 856, 859-59, 181 USPQ 46, 48 (CCPA
1974)(emphasis omitted). Accord, In re Geerdes, 491 F.2d 1260,
1265, 180 USPQ 789, 793 (CCPA 1974); In re Anderson, 471 F.2d
1237, 1242, 176 USPQ 331, 334-35 (CCPA 1971). Of course, if
the number of inoperative combinations becomes significant, and in
effect forces one of ordinary skill in the art to experiment unduly in
order to practice the claimed invention, the claims might indeed be
invalid. See e.g., In re Cook, 439 F.2d 730, 735, 169 USPQ 298,
302 (CCPA 1971).
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