Appeal No. 2004-2317 Page 8
Application No. 09/771,938
DISCUSSION
Definiteness:
Claims 3, 6, 11, 14-20 and 27-30 stand rejected under 35 U.S.C. § 112,
second paragraph. For the following reasons we reverse.
Claim 3
Claim 3 depends from independent claim 2, and stands rejected under 35
U.S.C. § 112, second paragraph as indefinite in the recitation of the phrase “an
essentially homogeneous population of seed….” Answer, bridging paragraph,
pages 4-5. According to the examiner (Answer, page 4), claim 2 is drawn to “‘[a]
population of seed of the corn variety I015036, wherein a sample of the seed of
the corn variety I015036 was deposited under ATCC Accession No. PTA-3225.”
Thus, the examiner finds (Answer, page 5), the population of seed set forth in
claim 2 “is a homogeneous population of seed of corn variety I015036.”
Accordingly, the examiner finds (id.), “[t]he recitation, ‘essentially homogeneous,’
in claim 3 … appear[s] to be superfluous.”
However, as disclosed in appellant’s specification (page 5),
[e]ssentially homogeneous populations of inbred seed are those
that consist essentially of the particular inbred seed, and are
generally free from substantial numbers of other seed, so that the
inbred seed forms between about 90% and about 100% of the total
seed, and preferably, between about 95% and about 100% of the
total seed.
Accordingly, we disagree with the examiner’s assertion (Answer, page 6)
that claim 3 is unclear simply because it may contain seed other than the seed of
the corn variety I015036. We remind the examiner that claim language must be
analyzed “not in a vacuum, but always in light of the teachings of the prior art and
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