Appeal No. 2004-1968 Page 7
Application No. 10/000,311
understand claim it, claim 6 is drawn to a corn plant, or parts thereof, produced
by growing the seed of claim 1, wherein the plant or plant parts further comprise
a gene conferring male sterility. In our opinion, claim 6 further limits the subject
matter of claim 2, by requiring the plant of claim 2 to further comprise a gene
conferring male sterility. Accordingly, we disagree with the examiner that claim 6
fails to further limit the subject matter of claim 2, from which it depends.
In addition, we fail to understand the examiner’s statement that “claim 6
does not incorporate all elements of the parent claim [(claim 2)].” As discussed
above, claim 6 depends from claim 2, thus all the elements of claim 2 are present
in claim 6. Claim 6, however, possesses an additional limitation not found in
claim 2 – a gene conferring male sterility. Thus, the male fertile plant of claim 2,
is now male sterile as a result of the additional limitation added in claim 6. The
examiner provides no evidence that male fertile plants cannot be made male
sterile. To the contrary, we recognize the examiner’s suggestion that appellant
add two new claims drawn to (1) “[a] method of producing a male sterile corn
plant comprising transforming the plant of claim 2 with nucleic acid molecule that
confers male sterility; and (2) “[a] male sterile corn plant produced by the …”
suggested method claim above.
Notwithstanding the examiner’s assertion to the contrary, in our opinion, a
person of ordinary skill in the art would understand what is claimed. Amgen Inc.
v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1217, 18 USPQ2d 1016,
1030 (Fed. Cir. 1991). Accordingly, we reverse the rejection of claim 6 under 35
U.S.C. § 112, second paragraph.
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