Appeal No. 2004-2343 Page 22
Application No. 09/772,520
that both claims 6 and 11 ultimately depend from claim 517, which is drawn to “[a]
corn plant produced by growing a seed of the corn variety I026458….”
It appears that the examiner may have read claims 6 and 11 as drawn to a
corn plant or plant cell having only one of the recited profiles. However, as we
understand claims 6 and 11, determining whether the claimed corn plant (claim
6) or plant cell (claim 11) has one of the profiles does not mean that the plant, or
plant cell would not also exhibit the other profile.
In addition, we direct the examiner’s attention to claims 6 and 11 of Appeal
No. 2005-0396. As we understand it, notwithstanding differences in the SSR and
isozyme profiles, the disclosure in the specification as well as the language of the
claims is substantially similar to that of the instant application. Nevertheless, the
examiner in Appeal No. 2005-0396 apparently found that appellant’s specification
provided an adequate written description of the claimed invention as no rejection
of claims 6 and 11 was made under the written description provision of 35 U.S.C.
§ 112, first paragraph in Appeal No. 2005-0396. Accordingly, we find that the
examiner has treated claims 6 and 11 in a manner that is inconsistent with the
prosecution of similar claims in related application 10/077,589, which is the
subject matter of Appeal No. 2005-0396.
For the foregoing reasons, we are not persuaded by the examiner’s
arguments.
Claims 27-30
According to the examiner (Answer, page 18), “[c]laims 27-30 are drawn
towards I026458 plants further comprising a single locus conversion, or wherein
17 The examiner has indicated that claim 5 is allowable. Answer, page 2.
Page: Previous 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 Next
Last modified: November 3, 2007