Appeal 2007-0862
Application 10/680,675
reasoning used to support the written description rejection: After explaining
the rejection for lack of adequate description, the Examiner concludes that
[i]t follows logically that the entire claimed invention has not
been enabled by the instant specification because applicant has
not taught how to apply the instant invention such that one of
skill in the art could predict using applicants’ classification
model . . . whether or not any embryo would germinate or have
one of the other “characteristics” as in claim 14.
(Answer 7.) The Examiner also argues that the “specification has not
enabled the use of ‘embryo organs of’ an embryo as the means for creating a
classification model” (id.).
Although we have some quibbles, we agree with the thrust of the
Examiner’s reasoning and his conclusion that the Specification does not
enable practice of the full scope of the claimed method without undue
experimentation.
First, the quibbles: the Examiner has not adequately supported his
conclusion that more than routine experimentation would be required to use
the claimed method to classify embryos on the basis of germination
potential. The Examiner has acknowledged that “[u]sing morphology as a
basis for selecting embryos is old and well known – embryos of a certain
morphology tend to germinate better than others” (Answer 5).
The Specification states that embryos “that are most likely to
successfully germinate into normal plants are preferentially selected using a
number of visually evaluated screening criteria . . . [including] axial
symmetry, cotyledon development, surface texture, [and] color”
(Specification 2: 6-9). The Specification also provides working examples of
the claimed method to classify embryos “using the usual zygotic embryo
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