Appeal No. 2004-1968 Page 8
Application No. 10/000,311
Claims 26-28
According to the examiner (Answer, page 4), the recitation in claim 26 that
the claimed corn plant be “‘transformed so that its genetic material contains one
or more transgenes’ … appears to broaden the scope of claim 2, or raises some
doubt as to whether the plant has all of the traits expressed by the plant of claim
2.” According to the examiner (id.), “[s]ince claim 2 is drawn to a plant with
defined characteristics and genotypes which exclude the presence of introduced
transgenes, it is confusing to characterize these plants as comprising additional
genes.” In addition, the examiner finds (id.), “[d]ependent claims 27-28 fail to
remedy the deficiency of claim 26.
As with the discussion of claim 6 above, claim 26 simply adds a further
limitation to claim 2. Specifically, that the plant or plant parts of claim 2 “have
been transformed so that its genetic material contains one or more transgenes
operably linked to one or more regulatory elements.” Accordingly,
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 claims 26-28 under 35
U.S.C. § 112, second paragraph.
Written Description:
Claims 6, 12-19, 21, 24, 26-28, 30 and 31 stand rejected under the written
description provision of 35 U.S.C. § 112, first paragraph.
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