Appeal No. 2004-2317 Page 15
Application No. 09/771,938
locus to the claimed plant through use of the plant breeding technique known as
backcrossing.
In our opinion, the claim reasonably apprises those of skill in the art of its
scope. Amgen. Accordingly, we reverse the rejection of claim 28 under 35
U.S.C. § 112, second paragraph.
Claim 30
Claim 30 stands rejected under 35 U.S.C. § 112, second paragraph as
indefinite in the recitation of the phrases “yield enhancement,” “improved
nutritional quality,” and “enhanced yield stability.” According to the examiner the
terms “yield enhancement,” “improved nutritional quality,” and “enhanced yield
stability” are relative and have no definite meaning. Answer, page 14. The
examiner is correct (Answer, page 14), when a word of degree is used
appellant’s specification must provide some standard for measuring that degree.
Seattle Box. Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221
USPQ 568, 573-574 (Fed. Cir. 1984).
On this record, appellant asserts (Brief, page 11), it is “understood the
enhancement of yield or yield stability and improved nutritional quality is relative
to a plant lacking the single locus. The metes and bounds of the claim are thus
fully understood by one of skill in the art and the use of the terms is not
indefinite.” On reflection, we agree with appellant. The fact that some claim
language is not mathematically precise does not per se render the claim
indefinite. Seattle Box. As set forth in Shatterproof Glass, “[i]f the claims, read in
the light of the specifications, reasonably apprise those skilled in the art both of
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