Appeal No. 2004-2343 Page 8
Application No. 09/772,520
We emphasize, that while “new inbreds” having commercial potential may result
from the method set forth in claim 31, the claim does not encompass any specific
plant that is produced as a result of the method. Rather the claim encompasses
only a method of producing an inbred corn plant that is “derived” from the corn
variety I026458. The examiner has indicated that a claim drawn to a corn plant
of the corn variety I026458 is allowable. See e.g., claim 5, and Answer, page 2,
wherein the examiner states that claim 5 is allowed.
Against this backdrop, we now consider the rejections of record.
DISCUSSION
Definiteness:
Claims 3, 6, 11, 14-20 and 27-30 stand rejected under 35 U.S.C. § 112,
second paragraph. For the following reasons we reverse.
Claim 3
Claim 3 depends from independent claim 2, and stands rejected under 35
U.S.C. § 112, second paragraph as indefinite in the recitation of the phrase “an
essentially homogeneous population of seed….” Answer, page 4. According to
the examiner (id.), claim 2 is drawn to “‘[a] population of seed of the corn variety
I026458, wherein a sample of the seed of the corn variety I026458 was
deposited under ATCC Accession No. PTA-3228.” Thus, the examiner finds
(Answer, page 5), the population of seed set forth in claim 2 “is a homogeneous
population of seed of corn variety I026458.” Accordingly, the examiner finds (id.),
“[t]he recitation, ‘essentially homogeneous,’ in claim 3 … appear[s] to be
superfluous.”
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