Appeal No. 2004-2343 Page 14
Application No. 09/772,520
further comprising a nuclear or cytoplasmic gene conferring male sterility. In our
opinion, the claims reasonably apprise those of skill in the art of their scope.
Amgen, As set forth in Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758
F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir. 1985), “[i]f the claims, read in the
light of the specifications, reasonably apprise those skilled in the art both of the
utilization and scope of the invention, and if the language is as precise as the
subject matter permits, the courts can demand no more.”
Accordingly we reverse the rejection of claims 16 and 27-30 under 35
U.S.C. § 112, second paragraph.
Claim 28
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.’” According to the examiner
(Answer, page 13), “[t]he recitation does not make clear if the genome is that of
I026458 or that of a different corn plant.”
According to appellant’s specification (page 23, emphasis removed), a
“Single Locus Converted (Conversion) Plant” refers to
[p]lants which are developed by a plant breeding technique called
backcrossing wherein essentially all of the desired morphological
and physiological characteristics of an inbred are recovered in
addition to the characteristics conferred by the single locus
transferred into the inbred via the backcrossing technique. A single
locus may comprise one gene, or in the case of transgenic plants,
one or more transgenes integrated into the host genome at a single
site (locus).
11 Cf. Digital Equipment Corp. v. Diamond, 653 F.2d 701, 724, 210 USPQ 521, 546 (CA 1981).
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