Appeal No. 2004-2317 Page 7
Application No. 09/771,938
According to the examiner (Answer, page 36), “[t]he patentability of the method
of claim 31 does not lie in the method steps, which require the simple acts of
crossing corn plants, allowing progeny seed to be produced, and growing
progeny plants from the seed….” Therefore, as we understand this aspect of the
claimed invention (e.g., claim 31), the intent is not to claim a specific inbred corn
plant resulting from the claimed process. See claim 31. Instead, as we
understand it, claim 31 is drawn to a process wherein an inbred corn plant is
derived from the corn variety I015036.
As appellant explains (specification, page 3),
The development of uniform corn plant hybrids requires the
development of homozygous inbred plants, the crossing of these
inbred plants, and the evaluation of the crosses. Pedigree breeding
and recurrent selection are examples of breeding methods used to
develop inbred plants from breeding populations. Those breeding
methods combine the genetic backgrounds from two or more inbred
plants or various other broad-based sources into breeding pools
from which new inbred plants are developed by selfing and
selection of desired phenotypes. The new inbreds are crossed with
other inbred plants and the hybrids from these crosses are
evaluated to determine which of those have commercial potential.
We emphasize, that while “new inbreds” having commercial potential may result
from the method set forth in claim 31, the claim does not encompass any specific
plant that is produced as a result of the method. Rather the claim encompasses
only a method of producing an inbred corn plant that is “derived” from the corn
variety I015036. The examiner has indicated that a claim drawn to a corn plant
of the corn variety I015036 is allowable. See e.g., claim 5, and Answer, page 2,
wherein the examiner states that claim 5 is allowed.
Against this backdrop, we now consider the rejections of record.
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