Appeal No. 2006-0102 Page 6
Application No. 09/732,439
For the foregoing reasons we find that appellants’ claims, when read in
light of appellants’ specification, are definite. Accordingly, we reverse the
rejection of claims 61-63 under 35 U.S.C. § 112, second paragraph.
Written Description:
Claims 59-63, 72 and 73 stand rejected under 35 U.S.C. § 112, first
paragraph, on the basis that the specification fails to adequately describe the
claimed invention. Appellants do not separately group or provide separate
arguments for the claims under rejection. Accordingly the claims will stand or fall
together. Since all claims stand or fall together, we limit our discussion to
representative independent claim 59. Claims 60-63, 72 and 73 will stand or fall
together with claim 59. In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991).
According to appellants’ specification (page 4),
an “osmoprotectant” is an osmotically active molecule which, when
that molecule is present in an effective amount in a cell or plant
confers water stress tolerance or resistance, or salt stress tolerance
or resistance, to that cell or plant. Osmoprotectants include sugars
such as monosaccharides, disaccharides, oligosaccharides,
polysaccharides, sugar alcohols, and sugar derivatives, as well as
proline and glycine-betaine.
According to the examiner (Answer, page 7), claim 59 is “drawn to a
transformed monocot plant . . . comprising a recombinant DNA encoding any
enzyme which catalyzes the synthesis of the osmoprotectant proline.” The
examiner finds, however, that claim 59 does “not recite the specific identity of any
particular recombinant [proline] DNA” with which the plant has been transformed.
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