Appeal No. 2004-2343 Page 11
Application No. 09/772,520
In addition, we direct the examiner’s attention to Appeal No. 2005-0396,
wherein a claim similar to claim 14 was presented for our review. In Appeal No.
2005-0396, the examiner of record indicated that claim 14, directed to “[a]n
essentially homogeneous population of corn plants produced by growing the
seed of the corn variety I180580….” was allowable. Accordingly, we find that the
examiner has treated claim 14 in a manner that is inconsistent with the
prosecution of claim 14 in 2005-0396. As we understand it, the only difference
between claim 14 as it appears in Appeal No. 2005-0396 and the instant appeal
is the variety of corn seed from which the plant is produced.
Accordingly we reverse the rejection of claim 14 under 35 U.S.C. § 112,
second paragraph.
Claims 6 and 11
Claims 6 and 11 stand rejected under 35 U.S.C. § 112, second paragraph
as indefinite in the recitation of the phrase “in accordance with.” According to the
examiner (Answer, page 9), it is unclear if a plant “that generally follows the trend
of the profile of Table 6, but which differs at one or a few loci, [would] be
considered in ‘conformity’ or ‘in accordance’ with the profile of Table 6.”
On this record, we understand the phrase “in accordance with” as it is
used in claims 6 and 11 to mean “the same”10 Stated differently, we understand
the claims to read:
6. The corn plant of claim 5, having:
(a) the same SSR profile as shown in Table 6; or
10 Cf. Appeal Nos. 2004-1506 and 2004-2317, which use similar language for claims directed to
different corn varieties. In this regard, we note that during the February 10, 2005 oral hearing in
Appeal Nos. 2004-1506 and 2004-2317, appellant’s representative confirmed that the phrase “in
accordance with” was intended to mean “the same”.
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