Appeal No. 2004-2317 Page 13
Application No. 09/771,938
from the perspective of one possessing ordinary skill in the art. 10 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). We find the same to be true for the phrase “capable of” as
set forth in claims 17-20.
Accordingly we reverse the rejection of claims 15, and 17-20 under 35
U.S.C. § 112, second paragraph.
Claims 16 and 27-30
Claims 16 and 27-30 stand rejected under 35 U.S.C. § 112, second
paragraph as failing to limit the scope of the claims from which they depend.
According to the examiner (Answer, page 9), since the plant set forth in claim 16
is male sterile it cannot express all the morphological and physiological
characteristics of the male fertile corn variety I015036. Similarly, the examiner
finds it unclear whether the plant set forth in claim 27 has all the characteristics of
the plant set forth in claim 5, from which claim 27 depends. Id. In response,
appellant asserts (Brief, bridging paragraph, pages 8-9), claims 16 and 27 simply
add a further limitation to the claims from which they depend. We agree.
For example, claim 16 reads on a corn plant capable of expressing all the
physiological and morphological characteristics of the corn variety I015036,
further comprising a nuclear or cytoplasmic gene conferring male sterility. In our
opinion, the claims reasonably apprise those of skill in the art of their scope.
Amgen, As set forth in Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758
F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir. 1985), “[i]f the claims, read in the
10 Cf. Digital Equipment Corp. v. Diamond, 653 F.2d 701, 724, 210 USPQ 521, 546 (CA 1981).
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