Appeal No. 2004-2317 Page 14
Application No. 09/771,938
light of the specifications, reasonably apprise those skilled in the art both of the
utilization and scope of the invention, and if the language is as precise as the
subject matter permits, the courts can demand no more.”
Accordingly we reverse the rejection of claims 16 and 27-30 under 35
U.S.C. § 112, second paragraph.
Claim 28
Claim 28 stands rejected under 35 U.S.C. § 112, second paragraph as
indefinite in the recitation of “the article ‘a’ in the recitation ‘wherein the single
locus was stably inserted into a corn genome.’” According to the examiner
(Answer, page 13), “[t]he recitation does not make clear if the genome is that of
I015036 or that of a different corn plant.”
According to appellant’s specification (page 23, emphasis removed), a
“Single Locus Converted (Conversion) Plant” refers to
[p]lants which are developed by a plant breeding technique called
backcrossing wherein essentially all of the desired morphological
and physiological characteristics of an inbred are recovered in
addition to the characteristics conferred by the single locus
transferred into the inbred via the backcrossing technique. A single
locus may comprise one gene, or in the case of transgenic plants,
one or more transgenes integrated into the host genome at a single
site (locus).
Accordingly, we agree with appellant (Brief, page 10) “[t]he single locus
referred to in claim 28 may or may not have been directly inserted into the
genome of the claimed plant.” As we understand the claim, and arguments of
record, claim 28 presents two possibilities: (1) the single locus is directly inserted
into the claimed plant and nothing further need be done; or (2) the single locus is
directly inserted into a different plant, which is then used to transfer the single
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