Appeal No. 2004-2343 Page 13 Application No. 09/772,520 factor” required for expression – such a plant would not meet the requirement of the claim regarding “capable of.” Here, we find the examiner’s extremely technical criticism to be a departure from the legally correct standard of considering the claimed invention from the perspective of one possessing ordinary skill in the art. 11 In our opinion, a person of ordinary skill in the art would understand what is claimed. Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1217, 18 USPQ2d 1016, 1030 (Fed. Cir. 1991). We find the same to be true for the phrase “capable of” as set forth in claims 17-20. Accordingly we reverse the rejection of claims 15, and 17-20 under 35 U.S.C. § 112, second paragraph. Claims 16 and 27-30 Claims 16 and 27-30 stand rejected under 35 U.S.C. § 112, second paragraph as failing to limit the scope of the claims from which they depend. According to the examiner (Answer, page 11), since the plant set forth in claim 16 is male sterile it cannot express all the morphological and physiological characteristics of the male fertile corn variety I026458. Similarly, the examiner finds it unclear whether the plant set forth in claim 27 has all the characteristics of the plant set forth in claim 5, from which claim 27 depends. Id. In response, appellant asserts (Brief, pages 9-10), claims 16 and 27 simply add a further limitation to the claims from which they depend. We agree. For example, claim 16 reads on a corn plant capable of expressing all the physiological and morphological characteristics of the corn variety I026458,Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 NextLast modified: November 3, 2007