Appeal No. 2004-1968 Page 17
Application No. 10/000,311
such a corn plant is not adequately described in appellant’s specification. In this
regard, we note that in the rejection under 35 U.S.C. § 112, second paragraph,
the examiner suggested adding two new claims directed at (1) a method of
producing a male sterile corn plant comprising transforming the plant of claim 2
with a nucleic acid molecule that confers male sterility, and (2) a male sterile corn
plant produced by the method set forth above. Accordingly, we are not
persuaded by the examiner’s assertion that the specification does not provide an
adequate written description of claim 6.
Further, we direct the examiner’s attention to claim 16 of related Appeal
Nos. 2005-1506 and 2004-2317, which differ from claim 6 on this record only in
the variety of corn. In addition, we note that the disclosure of Appeal Nos. 2005-
1506 and 2004-2317 and the instant application are substantially similar.
However, in both Appeal Nos. 2005-1506 and 2004-2317 the examiner
apparently found that appellant’s specification provided an adequate written
description of claim 16 as no rejection of this claim was made under the written
description provision of 35 U.S.C. § 112, first paragraph. Accordingly, we find
that the examiner has treated claim 6 in a manner that is inconsistent with the
prosecution of similar claims in related applications 09/788,334 and 09/771938,
which is the subject matter of Appeal Nos. 2004-1506 and 2004-2317
respectively.
For the foregoing reasons, we are not persuaded by the examiner’s
arguments. Accordingly, we reverse the rejection of claims 6 and 26-28 under
the written description provision of 35 U.S.C. [§] 112, first paragraph.
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