Appeal No. 2004-2343 Page 15
Application No. 09/772,520
Accordingly, we agree with appellant (Brief, page 12) “[t]he single locus
referred to in claim 28 may or may not have been directly inserted into the
genome of the claimed plant.” As we understand the claim, and arguments of
record, claim 28 presents two possibilities: (1) the single locus is directly inserted
into the claimed plant and nothing further need be done; or (2) the single locus is
directly inserted into a different plant, which is then used to transfer the single
locus to the claimed plant through use of the plant breeding technique known as
backcrossing.
In our opinion, the claim reasonably apprises those of skill in the art of its
scope. Amgen. Accordingly, we reverse the rejection of claim 28 under 35
U.S.C. § 112, second paragraph.
Claim 30
Claim 30 stands rejected under 35 U.S.C. § 112, second paragraph as
indefinite in the recitation of the phrases “yield enhancement,” “improved
nutritional quality,” and “enhanced yield stability.” According to the examiner the
terms “yield enhancement,” “improved nutritional quality,” and “enhanced yield
stability” are relative and have no definite meaning. Answer, page 14. The
examiner is correct (Answer, page 14), when a word of degree is used
appellant’s specification must provide some standard for measuring that degree.
Seattle Box. Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221
USPQ 568, 573-574 (Fed. Cir. 1984).
On this record, appellant asserts (Brief, page 12), it is “understood the
enhancement of yield or yield stability and improved nutritional quality is relative
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