Appeal No. 2004-2317 Page 12
Application No. 09/771,938
Claims 15 and 17-20
Claims 15, and 17-20 stand rejected under 35 U.S.C. § 112, second
paragraph as indefinite in the recitation of the phrase “capable of expressing,” or
“capable of regenerating.” According to the examiner (Answer, page 11), the
claims do “not make clear if the plant actually expresses the traits, or when or
under what conditions the traits are expressed.” In this regard, the examiner
finds (Answer, page 12),
while the plant has the capacity to express the characteristics, for
some reason it may not. Certain characteristics of a plant are
expressed only at certain times of its life cycle, and are incapable of
being expressed at other times. The colors of flower parts such as
silks, or fruit parts such as husks, are examples. The promoters of
many genes conferring traits require a transcription factor to
become active. Is a plant that has such a gene, but not the
transcription factor, considered “capable of expressing” that gene,
and the trait associated with that gene, and is such a plant
encompassed by the claims?
To address the examiner’s concerns, we find it sufficient to state that if a plant
has the capacity to express the claimed characteristics it meets the requirement
of the claim regarding “capable of,” notwithstanding that due to a particular phase
of the life cycle the plant is not currently expressing a particular characteristic.
Alternatively, if a plant is incapable of expressing the claimed characteristics at
any phase of the life cycle, because it lacks, for example, the “transcription
factor” required for expression – such a plant would not meet the requirement of
the claim regarding “capable of.”
Here, we find the examiner’s extremely technical criticism to be a
departure from the legally correct standard of considering the claimed invention
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