Appeal No. 2004-2343 Page 4
Application No. 09/772,520
Claims 16 and 27-304 stand rejected under 35 U.S.C. § 112, second
paragraph as failing to limit the scope of the claims from which they depend.
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.’”
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.”
Claims 6, 11, 24-315 stand rejected under the written description provision
of 35 U.S.C. § 112, first paragraph.
Claims 27-30 stand rejected under the enablement provision of 35 U.S.C.
§ 112, first paragraph.
We reverse.
4 According to the examiner (Answer, page 4), “[c]laims … 27-30 … stand rejected under 35
U.S.C. [§] 112, second paragraph…” The examiner, however, provides no explanation as to why
claim 29 is rejected. We can only assume that since claim 29, as well as claims 28 and 30, each
depend from claim 27, they are rejected for the same reason as claim 27. Accordingly, we have
included claims 28-30 with this ground of rejection.
5 We recognize the examiner’s statement (Answer, page 3), “[c]laim 26 was objected to in the
Office Action mailed 23 September 2003, as being in improper dependent form for failing to
further limit the subject matter of previous claim. Appellant did not address this objection. An
objection to a claim, however, is the subject matter of a petition, and is not properly before us on
appeal. Nevertheless, we make the following observation regarding claim 26, and encourage the
examiner and appellant to work together to remedy this issue, prior to any further action on the
merits.
According to appellant’s specification (page 20), a F1 hybrid is “[t]he first generation progeny
of the cross of two plants.” Therefore, as we understand the prosecution history as well as the
language of the claims, claims 24 and 25 to refer to F1 hybrids. In this regard, we note that
similar claims, directed to a different corn variety, were presented for our review in Appeal Nos.
2004-1506 and 2004-2317. During the oral hearing in Appeal Nos. 2004-1506 and 2004-2317,
appellant’s representative confirmed that all claims drawn to hybrid plants or hybrid seeds (see
e.g., claims 24 and 25) refer to F1 hybrids. Accordingly, it appears that claim 26 fails to further
limit claim 25 from which it depends.
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