Appeal No. 2004-2317 Page 22
Application No. 09/771,938
6) or plant cell (claim 11) has one of the profiles does not mean that the plant, or
plant cell would not also exhibit the other profile.
In addition, we direct the examiner’s attention to claims 6 and 11 of Appeal
No. 2005-0396. As we understand it, notwithstanding differences in the SSR and
isozyme profiles, the disclosure in the specification as well as the language of the
claims is substantially similar to that of the instant application. Nevertheless, the
examiner in Appeal No. 2005-0396 apparently found that appellant’s specification
provided an adequate written description of the claimed invention as no rejection
of claims 6 and 11 was made under the written description provision of 35 U.S.C.
§ 112, first paragraph in Appeal No. 2005-0396. Accordingly, we find that the
examiner has treated claims 6 and 11 in a manner that is inconsistent with the
prosecution of similar claims in related application 10/077,589, which is the
subject matter of Appeal No. 2005-0396.
For the foregoing reasons, we are not persuaded by the examiner’s
arguments.
Claims 27-30
According to the examiner (Answer, page 18), “[c]laims 27-30 are drawn
towards I015036 plants further comprising a single locus conversion, or wherein
the single locus was stably inserted into a corn genome by transformation.” The
examiner finds, however, that “the specification does not describe identified or
isolated single loci for all corn plant traits.” Answer, page 19. More specifically,
the examiner finds (id.), claims 27-30 “broadly encompass single loci that have
not been discovered or isolated.” To the extent that the examiner is asserting
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