Appeal No. 2005-2178
Application 09/969,882
Appellant’s arguments are directed to appealed claims 14 and 17, and the statements with
respect to appealed claims 22 and 27 involve the limitations of these claims without substantive
argument with respect to separate patentability (brief,3 page 17). Thus, we decide this appeal
based on appealed claims 14 and 17 as representative of the ground of rejection and the claims as
argued by appellant. 37 CFR § 41.37(c)(1)(vii) (September 2004); cf. In re Baxter Travenol
Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991) (“It is not the function of this
court to examine the claims in greater detail than argued by appellant, looking for nonobvious
distinctions over the prior art.”).
We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellant, we
refer to the answer and to the brief and reply brief for a complete exposition thereof.
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner that, prima facie, the claimed
method of successively growing plants from at least two batches of seedlings or seeds during at
least two growing seasons encompassed by appealed claims 14 and 17 would have been obvious
over the combined teachings of Geraldson, Tisdale and Whisenant to one of ordinary skill in this
art at the time the claimed invention was made. Accordingly, we again evaluate all of the
evidence of obviousness and nonobviousness based on the record as a whole, giving due
consideration to the weight of appellant’s arguments and the evidence in the brief and reply brief
and in the declaration of Dr. Geraldson (Geraldson declaration)4 as relied on in the brief and
reply brief. See generally, In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
2 The examiner cited the abstract of a “Japanese Patent . . . to Moriya” in the advisory action
without including it in the statement of the ground of rejection therein, but states in the answer
that this reference is not part of the rejection (page 5). We will not consider this reference. See
In re Hoch, 428 F.2d 1341, 1342 n. 3, 166 USPQ 406, 407 n.3 (CCPA 1970); cf. Ex parte Raske,
28 USPQ2d 1304, 1304-05 (Bd. Pat. App. & Int. 1993).
3 We consider the brief filed February 22, 2005.
4 The Geraldson declaration, executed February 25, 2004, was submitted April 5, 2004.
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