Ex Parte Garing - Page 13


                     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,                                                







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