DETAILED ACTION
Status of the Application
1. The present application is being examined under the pre-AIA first to invent provisions.
2. Claims 16, 17, 86-107, and 112-115 are pending.
3. Claims 86-96 remain withdrawn from consideration.
4. Claims 16, 17, 97-107, and 112-115 are examined herein.
Continued Examination Under 37 CFR 1.114
5. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 13, 2026 has been entered.
Election/Restrictions
6. Applicant’s election without traverse of Group I, claims 16-18 in the reply filed on March 30, 2018 is acknowledged. Claims 86-96 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 30, 2018. In previous amendments, Applicant added claims 114 and 115 Given that the claims would have been included in the elected Group, they were examined.
Claim Rejections - 35 USC § 112 - Indefiniteness
7. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
8. Claims 16, 17, 97-107, and 112-115 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. This rejection was necessitated by Applicant’s amendments to the claims.
In claim 16, as instantly amended, the recitation “an injury level 0.8/9 or less from said rate of imazamox or imazapyr” renders the claim indefinite, because it is unclear what “injury level of 0.8/9” means. Example 5 of the specification does state that “Injury was rated on a scale from 0 to 9 where 0 = no injury to 9 = dead plant” (see page 60). However, there is no further explanation as to how one of skill in the art could use said subjective estimate of injury in the context of the claimed invention. For example, it is unclear as to what type of injury may be included, the timing after treatment, or how that injury is actually evaluated. The metes and bounds are thus unclear.
Given that claims 17, 97-107, and 112-115 depend from claim 16 and fail to overcome its indefiniteness, their metes and bounds are unclear as well.
Clams 101-103 are indefinite for the following additional reasons. Claim 101 recites “wherein said phenotype of tolerance further comprises 5% phytotoxicity or less.” Claim 102 recites “where said phenotype of tolerance further comprises a height of at least 93.7% of that of untreated control plants.” And claim 103 recites “wherein said phenotype of tolerance further comprises biomass accumulation of at least 87.8% of that of untreated control plants.” These recitations render the claims indefinite. With regard to the term “phytotoxicity,” while the specification does refer to “Phytotoxicity Index,” on page 67, as applied to a number of plants, it is unclear how “5% phytotoxicity” would be determined in the context of an individual plant. Similarly, in claims 102 and 103, it is unclear how the values for height or “biomass accumulation,” which are determined for treated “plants” (as recited in claims 102 and 103) could be applied to an individual sunflower plant (as recited in claim 16). The metes and bounds are unclear.
Claim Rejections - 35 USC § 112 - Fourth Paragraph
9. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
10. Claims 101-103 remain rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which they depend, or for failing to include all the limitations of the claim upon which they depend. Applicant's arguments filed on April 13, 2026 have been fully considered but they are not persuasive.
Claims 101-103 are drawn to method of claim 16, wherein the plant possesses a phenotype, as recited. The phenotype of tolerance is already required by claim 16 and claims 101-103 merely specify a different way of determining that phenotype. This does not introduce any structural limitations to the plant of claim 16, beyond the mutant AHASL recited in in claim 16; nor otherwise limit the active steps of the method. For these reasons, claims 101-103 fail to properly further limit the subject matter of the claim upon which they depend. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Arguments
Applicant cites PTAB Decision 2025-003055 and argues that a recitation of the property of herbicide tolerance does structurally limit a plant (page 9 of the Remarks).
Applicant’s argument remains not persuasive. The Examiner notes that the decision relates to a different application directed to a distinct plant species and there is no evidence that it is precedential legal authority. The issue of herbicide tolerance property was addressed by the Board in the context of an obviousness rejection not 35 U.S.C. 112 fourth paragraph. Moreover, Applicant’s generalization that “such language does introduce a structural limitation” is not supported by the language of the decision: as evident from page 13 of the decision, the Board expressly relied on an expert declaration specific to the facts of the case in reaching the decision.
The Examiner maintains that a dependent claim that attempts to further limit a base claim drawn to a method of using a product, must either introduce further structural limitations to said product, or otherwise limit an active method step. The dependent claims at issue here fail to do that. The rejection is maintained.
Claim Interpretation
11. The following is noted with regard to claim interpretation Claim 16 requires that the progeny plants comprise SEQ ID NO: 2, but does not limit the progeny by a filial generation. As a result, the claims are given their broadest reasonable interpretation as encompassing any sunflower plant comprising SEQ ID NO: 2 and having the resistance characteristics conferred by the A107T substitution.
Applicant describes sunflower plants of lines GM40 and GM1606 as comprising the A122T (A107T in sunflower numbering) substitution in the AHASL and being resistant to imidazolinone AHAS inhibitors as a result (Examples 3 and 7-8; Table 5). That is the only herbicide resistance characteristic of the GM40 and GM1606 described in the specification. As a result, the claims are given their broadest reasonable interpretation as encompassing any sunflower plant comprising SEQ ID NO: 2 and having the resistance characteristics conferred by the A107T substitution.
With regard to the limitation “wherein said plant or a sunflower plant grown from said seed exhibits tolerance to 300 gm active ingredient per hectare (gm ai/ha) of imazamox or 360 gm ai/ha of imazapyr, in that it would exhibit an injury of 0.8/9 or less from said rate of imazamox or imazapyr, which tolerance is greater than the tolerance of a sunflower plant that comprises in its AHASL1 protein an A190V substitution,” it recites the property of a plant used in the claimed method, and does not limit the active steps of the method. It is also noted that the limitation does not specify the level of tolerance at the recited applications rates. Thus, the method of claim 16 (in step (b)) will encompass the application of any effective amount of any imidazolinone herbicide, so long as that amount is sufficient to control weeds.
In the previous amendments, Applicant add the following limitation to claim 16, part (a)(ii): “which gene is present in said seed or progeny as a result of breeding from line GM40 or GM1606.” This is read as a product-by-process limitation, which does not introduce any structural features to the “sunflower plant or seed that is a progeny of line GM40 or GM1606” beyond the presence of the “AHASL gene encoding the AHASL1 protein having the amino acid sequence of SEQ ID NO: 2.” See MPEP 2113.
Claim Rejections - 35 USC § 103
12. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
13. Claims 16, 17, 97, 101-103 and 112-113 remain rejected under 35 U.S.C. 103(a) as being unpatentable over Jander et al (US Application No. 2003/0097692 A1, published May 22, 2003), in view of Kolkman et al (Theor. and Appl. Genet. (2004) 109:1147-1159) and Kmiec et al (U.S. Patent Application No. 2003/0236208 A1, published December 25, 2003). Applicant's arguments filed on April 13, 2026 have been fully considered but they are not persuasive.
The claims are directed to a method for controlling weeds in a field of a sunflower plant, comprising growing a sunflower plant that is a progeny of line GM40 or GM1660, comprising herbicide tolerance characteristics of said lines and comprising an AHASL gene that encodes the AHASL1 protein with the amino acid sequence of SEQ ID NO: 2.
Jander et al teach a nucleic acid molecule encoding functional AHAS that has the A122T (A107T in sunflower) substitution, and an imidazolinone-resistant sunflower plant comprising that nucleic acid (claims 1, 2, 7 and 8). Jander et al teach obtaining plants with imidazolinone resistance using EMS mutagenesis (Example 1, beginning at paragraph 71; Example 2, beginning at paragraph 78). Jander et al teach that imidazolinones, such as imazapyr, could be used alone or in combination with other herbicides for post-emergence control of weeds growing with resistant sunflower; and that a variety of imidazolinone herbicides could be used to protect resistant sunflower plants from weeds (pg. 7, paragraph 68). Jander et al teach specific application dosages of imazethapyr, including in a sprayable solution (Example 1).
Jander et al do not teach a plant comprising sunflower AHASL1 comprising a threonine at position 107.
Kolkman et al teach a sunflower plant comprising at least one copy of an AHASL polynucleotide encoding an herbicide resistance AHASL protein (Fig. 2 on pg. 1152). Kolkman et al teach that a proline to leucine mutation at position 182 and an alanine to valine mutation at position 190 of AHASL (in sunflower) confer resistance to herbicides, such as imazethapyr and chlorimuron (pg. 1153, right col; pg. 1157). Kolkman et al teach introgressing resistance genes to AHASL inhibiting herbicides from resistant populations into elite inbred lines for the purpose of developing herbicide resistant sunflower cultivars and hybrids (Kolkman et al pg. 1148, left col., second full paragraph). Kolkman et al teach that in plants, five highly conserved amino acids, A122, P197, W574, and S653 (in Arabidopsis, corresponding to A107, P182, W559, and A638 in sunflower), when mutated, confer resistance to one or more AHAS-inhibiting herbicides (pg. 1148, left col.).
Kolkman et al teach an amino acid sequence that is 99.8% identical to the instant SEQ ID NO: 2. The instant specification defines SEQ ID NO: 2 as truncated sunflower AHASL with an A107T mutation (see pg. 12). The sequence of Kolkman et al differs from the instant SEQ ID NO: 2 at a single amino acid residue: the sequence of Kolkman et al has an alanine at position 107. The sequence alignment is set forth below:
RA Kolkman J.M., Slabaugh M.B., Bruniard J.M., Berry S., Bushman B.S.,
RA Olungu C., Maes N., Abratti G., Zambelli A., Miller J.F., Leon A.,
RA Knapp S.J.;
RT "Acetohydroxyacid synthase mutations conferring resistance to
RT imidazolinone or sulfonylurea herbicides in sunflower.";
RL Theor. Appl. Genet. 109:1147-1159(2004).
DR EMBL; AY541451; AAT07322.1; -; Genomic_DNA.
SQ SEQUENCE 655 AA; 71322 MW; 3AF7DF2D81C31752 CRC64;
Query Match 99.8%; Score 2026; DB 11; Length 655;
Best Local Similarity 99.7%;
Matches 391; Conservative 0; Mismatches 1; Indels 0; Gaps 0;
Qy 1 FAYPGGTSMEIHQALTRSSTIRNVLPRHEQGGVFAAEGYARASGLPGVCIATSGPGATNL 60
|||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 101 FAYPGGASMEIHQALTRSSTIRNVLPRHEQGGVFAAEGYARASGLPGVCIATSGPGATNL 160
Qy 61 VSGLADALLDSVPMVAITGQVPRRMIGTDAFQETPIVEVTRSITKHNYLVLDVEDIPRIV 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 161 VSGLADALLDSVPMVAITGQVPRRMIGTDAFQETPIVEVTRSITKHNYLVLDVEDIPRIV 220
Qy 121 REAFYLASSGRPGPVLIDVPKDIQQQLVVPKWDEPMRLPGYLSRMPKPQYDGHLEQIVRL 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 221 REAFYLASSGRPGPVLIDVPKDIQQQLVVPKWDEPMRLPGYLSRMPKPQYDGHLEQIVRL 280
Qy 181 VGEAKRPVLYVGGGCLNSDDELRRFVELTGIPVASTLMGLGAYPASSDLSLHMLGMHGTV 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 281 VGEAKRPVLYVGGGCLNSDDELRRFVELTGIPVASTLMGLGAYPASSDLSLHMLGMHGTV 340
Qy 241 YANYAVDKSDLLLAFGVRFDDRVTGKLEAFASRAKIVHIDIDPAEIGKNKQPHVSICGDI 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 341 YANYAVDKSDLLLAFGVRFDDRVTGKLEAFASRAKIVHIDIDPAEIGKNKQPHVSICGDI 400
Qy 301 KVALQGLNKILEEKNSVTNLDFSTWRKELDEQKMKFPLSFKTFGEAIPPQYAIQVLDELT 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 401 KVALQGLNKILEEKNSVTNLDFSTWRKELDEQKMKFPLSFKTFGEAIPPQYAIQVLDELT 460
Qy 361 GGNAIISTGVGQHQMWAAQFYKYNKPRQWLTS 392
||||||||||||||||||||||||||||||||
Db 461 GGNAIISTGVGQHQMWAAQFYKYNKPRQWLTS 492
As one skilled in the art would recognize, the amino acid sequence of Kolkman et al corresponds to the non-mutated form of the instant SEQ ID NO: 2, and also makes obvious at least one nucleic acid sequence encoding it.
Kmiec et al teach methods and oligonucleotides for targeted modification of AHASL genes (Table 11 on pg. 19-28; claim 1 and 12). Kmiec et al teach making alterations at several positions of the AHASL of Arabidopsis and a number of other species (Table 11, beginning at pg. 19, paragraph 120). Kmiec et al teach using the methods of their invention in sunflower (pg. 4, paragraph 19).
At the time the invention was made, it would have been prima facie obvious to use the oligonucleotide-based mutagenesis method of Kmiec et al or the EMS-based mutagenesis method of Jander et al and introduce the A122T (A107T) substitution into the AHASL1 gene of a sunflower plant; including wherein the plant comprises the sequence of Kolkman et al. The plants thus obtained would read on sunflower line GM40 and GM1606 (the only described traits of which is the presence of the A107T substitution) as well as on the progeny of said plants. It would have been also obvious to introduce the mutant AHASL1 gene into a tolerant sunflower plant via introgression as taught by Kolkman et al. The resultant plant would also read on the plant used in the claimed method.
Given the teachings of Jander et al and Kolkman et al, one would have reasonably expected that the resultant plants would be resistant to imidazolinone herbicides, including imazamox or imazapyr. The tolerance to specific application rates would have naturally flowed from the structure of said plants, which structure would have been prima facie obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In addition, said tolerance would not be unexpected given that the A122T substitution results in tolerance to imidazolinone herbicides, as taught by Jander et al, for example.
It would have been obvious to use the resultant plants or their seeds in a method of weed control, using any appropriate imidazolinone herbicide, such as those taught by Kolkman et al and Jander et al, including imazapyr or imazethapyr, wherein the herbicide is applied to the resistant sunflower plant and the weeds, including wherein the herbicide is applied in a sprayable solution by spraying, including “atomizing,” and including wherein the weeds are killed or their growth is inhibited, as suggested by Jander and as a matter of routine industry practice.
One would have been motivated to combine said teachings given the express suggestion of Jander et al and given the agronomic desirability of sunflower plants resistant to AHAS inhibitors. Given that Jander et al and Kmiec et al successfully reduced their inventions to practice, given the limited number of known herbicide resistance AHAS mutations, and given the conserved nature of the enzyme, as taught by Kolkman et al, and well-known in the art, one would have had reasonable expectation of success of using the mutagenesis method of either Jander et al or Kmiec et al to arrive at the instant invention.
14. Claims 98-100 and 104-105 remain rejected under 35 U.S.C. 103(a) as being unpatentable over Jander et al (US Application No. 2003/0097692 A1, published May 22, 2003), in view of Kolkman et al (Theor. and Appl. Genet. (2004) 109:1147-1159) and Kmiec et al (U.S. Patent Application No. 2003/0236208 A1, published December 25, 2003), as applied to claims 16 and 97, and further in view of Alister et al (Crop Protection (2005) 14:375-379, published April 2005). Applicant's arguments filed on April 13, 2026 have been fully considered but they are not persuasive.
The teachings of Jander et al, Kolkman et al, and Kmiec et al are set forth above. The references do not expressly teach the monocot and dicot weeds recited in the instant claims 99 and 100 or applying an imidazolinone herbicide to a tolerant sunflower and said weeds. The references do not expressly teach applying an imidazolinone and another herbicide or using a detergent.
Alister et al teach that imidazolinones, including imazapyr, imazapic, imazapyr, and imazethapyr, effectively control a number of dicot weeds, including Setaria sp., Amaranthus sp., Echinochloa sp., among others (Abstract; Table 3). Alister et al teach that imidazolinones are known for their herbicidal effect at low doses and are effective at controlling a wide spectrum of weeds (pg. 375, both col.). Alister et al teach effective application doses of 19-95-39.9 g ai/ha for imazapyr and 59.85-119.7 g ai/ha for imazapic (Table 3).
Alister et al teach applying three imidazolinones herbicides, imazapyr, imazapic and imazethapyr, to imidazolinone resistant maize plants, and teach using a hydrocarbon petroleum adjuvant (“Dash”) in the herbicide mixture (page 376, right col). One of ordinary skill in the art would readily recognize that said adjuvant is a surfactant (detergent).
At the time the invention was made, it would have been prima facie obvious to one of ordinary skill in the art to further modify the method made obvious by the teachings of Jander et al, Kolkman et al, and Kmiec et al, and apply an appropriate dose of an imidazolinone herbicide to the weeds growing in the vicinity of a tolerant sunflower plant comprising the A107T AHASL1 substitution, including wherein the weeds are any of the genera taught by Alister et al. It would have been further obvious to apply more than one imidazolinone herbicide in a formulation, and to use any appropriate surfactant adjuvant, such as the hydrocarbon petroleum one taught by Alister et al.
One would have been motivated to do so, given the teachings of Alister et al, and the art-recognized property of imidazolinone herbicides to control a variety of monocot and dicot weed species. One would have been motivated to use more than one herbicide and a surfactant in order to improve the efficiency of weed control, as a matter of standard industry practice and in view of the teachings of Alister et al and Jander et al.
15. Claims 106 and 107 remain rejected under 35 U.S.C. 103(a) as being unpatentable over Jander et al (US Application No. 2003/0097692 A1, published May 22, 2003), in view of Kolkman et al (Theor. and Appl. Genet. (2004) 109:1147-1159) and Kmiec et al (U.S. Patent Application No. 2003/0236208 A1, published December 25, 2003), as applied to claim 16, and further in view of Hager et al (Postemergence Control of Volunteer Corn in Soybeans; The Bulletin, Pest Management and Crop Development Information for Illinois, June 12, 1998). Applicant's arguments filed on April 13, 2026 have been fully considered but they are not persuasive.
The claims are directed to the method of claim 16, wherein the weeds comprise crop plants growing in an undesired location, including wherein the crop is maize or soybean.
The teachings of Jander et al, Kolkman et al, and Kmiec et al are set forth above. The references do not expressly teach applying an imidazolinone to control volunteer crop plants.
Hager et al teach that “Several ALS-inhibiting soybean herbicides can also be used to control volunteer SR corn. Imazaquin (Scepter) is often applied at half rate for volunteer corn control. Imazamox (Raptor) controls or suppresses volunteer corn, and imazethapyr (Pursuit) can be used to suppress volunteer corn” (see page 1 of the document).
At the time the invention was made, it would have been prima facie obvious to modify the method of claim 16, made obvious by the teachings of Jander et al, Kolkman et al, and Kmiec et al, and apply an imidazolinone herbicide, such as those taught by Hager et al, to any volunteer crop, including maize or soybean, that is sensitive to said herbicides. This would have also been obvious as a matter of standard industry practice as well as the teachings of Jander et al regarding weed control methods.
16. Claims 114 and 115 remain rejected under 35 U.S.C. 103(a) as being unpatentable over Jander et al (US Application No. 2003/0097692 A1, published May 22, 2003), in view of Kolkman et al (Theor. and Appl. Genet. (2004) 109:1147-1159) and Kmiec et al (U.S. Patent Application No. 2003/0236208 A1, published December 25, 2003), as applied to claim 16 and further in view of Hacker et al (U.S. Patent 6,221,809, issued on April 24, 2001). Applicant's arguments filed on April 13, 2026 have been fully considered but they are not persuasive.
The teachings of Jander et al, Kolkman et al, and Kmiec et al are set forth above. The references do not expressly teach applying an imidazolinone herbicide via dusting, or wherein the herbicide is present at 0.0001% to 10% by weight.
Hacker et al teach compositions comprising AHAS inhibiting herbicides, including sulfonylureas and imidazolinones at 0.1% to 99% active ingredient by weight, wherein the formulation is a “dust” (claims 1, 24 and 25).
It would have been prima facie obvious to one of ordinary skill in the art at the time of invention to modify the method made obvious by the teachings of Jander et al, Kolkman et al, and Kmiec et al, and apply an imidazolinone in a composition taught by Hacker et al. One would have been motivated to combine said teachings given the suggestion of Hacker et al. This also would have been obvious as a matter of routine industry practice.
Response to Arguments
Applicant argues that the claims have been amended to recite “0.8/9 or less” injury level from the two herbicides; cites the PTAB decision for support of the argument that the recitation of herbicide tolerance structurally limits a plant (page 10 of the Remarks). Applicant argues as follows: “Jander reports obtaining an AHASL-A122T substitution in Arabidopsis, but provides no teaching or suggestion regarding how to attempt to obtain such a mutation in an sunflower AHASL. … Kolkman reports molecular characterization of AHASL biomolecules from wild, weedy sunflowers, discovered in naturally occurring native sunflower populations. Weedy sunflowers are not sunflower crops (domesticated sunflowers commonly grown as crop plants). For example, a weedy sunflower plant produces up to 35 flowers ("heads"), each bearing about 136 seeds per head, the seeds weighing 6.5-9 mg each. In stark contrast, a sunflower crop plant produces one flower/head bearing 1000-2000 seeds, each weighing 110-190 mg. In addition, these two belong to different Helianthus annuus subspecies: wild, weedy sunflowers belong to H. annuus ssp. lenticularis, whereas sunflower crops belong to H. annuus ssp. macrocarpus. Kolkman provides no teaching or suggestion regarding how to obtain an A122T substitution in an endogenous AHASL of a sunflower crop plant” (page 10 of the Remarks). Applicant argues that Kmiec does not teach how to introduce the A122T substitution into a sunflower plant (pages 10-12 of the Remarks).
Applicant’s argument is not found to be persuasive. In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). For example, it is not disputed that Jander does not expressly teach a sunflower plant comprising SEQ ID NO: 2. However, such a sunflower would have been obvious in view of the combined teachings of the cited art.
Moreover, Jander et al successfully used the EMS mutagenesis/herbicide selection pressure method to introduce said substitution into the Arabidopsis AHASL, and teach a sunflower cell comprising said mutated AHASL (Examples 1-2, claims 1-5). Applying said method to introduce a known substitution located in a highly conserved AHASL domain into a dicot crop like sunflower would have been predictable and readily achievable. Besides the art-standard EMS mutagenesis/herbicide selection method of Jander et al, one could have predictably used the oligonucleotide-based targeted mutagenesis method of Kmiec et al to introduce the A122T substitution into the sunflower AHASL. Introgressing the resultant mutant AHASL into another sunflower plant would have been obvious as well.
With regard to the teachings of Kolkman, the argument is not persuasive. Applicant’s statements regarding the “weedy sunflower plant” are not supported by any factual evidence, such as an expert declaration, and thus amount to attorney opinion. It is noted that arguments presented by the Applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). MPEP 716.01(c).
Moreover, it is unclear how Applicant’s statements regarding the teachings of Kolkman support the argument of non-obviousness, as no clear explanation is supplied. The “wild biotypes of cultivated sunflower” (see Kolkman, Abstract) and the cultivated varieties belong to the same species. Position A122 is located in one of the five AHASL domains that are highly conserved not only between the cultivated and “wild” sunflowers, but across all crops in which the enzyme has been studied. This is consistent with the teachings of Kolkman who teach the wild-type AHASL from a “wild biotype” of a sunflower plant that shares 99.8% sequence identity to the instant SEQ ID NO: 2, with the only difference being the A122T substitution, which would have been prima facie obvious to introduce.
Applicant’s argument directed to the operability of Kmiec et al is not persuasive either. Kmiec et al teach that their methods could be used to design oligonucleotides targeting genes and introducing substitutions not expressly listed, and Applicant provided no factual evidence to the contrary (see paragraphs 19-21 and claim 1 of Kmiec et al, for example). Moreover, as set forth in the rejection above, the method of Kmiec was not the only method one of ordinary skill in the art could have predictably used at the time of invention to introduce a known point mutation into an AHASL gene of a sunflower plant.
With regard to the cited PTAB decision, the argument is not persuasive either. As explained above, the decision relates to a different application directed to a distinct plant species and there is no evidence that it is precedential legal authority. Moreover, the Board’s reasoning does not support Applicant’s generalization that “a phenotype of tolerance does structurally limit the claims”-- as evident from page 13 of the decision, the Board expressly relied on an expert declaration specific to the facts of the case in reaching the decision. The rejection is maintained.
Double Patenting
17. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
18. Claims 16, 17, 97-107, and 112-115 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 8-13, 18, 19-21, 23, 26-28, of copending Application No. 15/670,352 (reference application).
The instant claims are directed to a method of controlling weeds comprising the use of sunflower plant or seed of line GM40 or GM1606. The claims of the co-pending application are drawn to a method of controlling weeds including the method comprises the use of sunflower plants or seed of lines GM40 or GM1606, including wherein the weeds comprise a volunteer crop plant.
Given that the plant of the co-pending application will read on the plant of the instant claims and given that the overlap in method steps, including the fact that the herbicide application rates of the instant claims will encompass the rates in the co-pending application, the claims of the co-pending application make obvious the invention of the instant claims, and the claims of the instant invention make obvious the invention of the co-pending application. It is noted that SEQ ID NO: 2 of the instant claims is identical to SEQ ID NO: 2 of the co-pending application. Harvesting the seed of the plant of the co-pending application would have been obvious as a matter of standard industry practice, given that sunflower is a seed crop. A specific manner of applying the herbicide, such as “atomizing” the herbicide or “spraying” it, as recited in the instant claims would have been obvious in view of the co-pending claim that teach applying it in a “sprayable solution,” and as a matter of standard industry practice.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
19. No claims are allowed.
20. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MYKOLA V KOVALENKO whose telephone number is (571)272-6921. The examiner can normally be reached Mon.-Fri. 9:00-5:30 PST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRATISLAV STANKOVIC can be reached at (571)270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MYKOLA V. KOVALENKO/Primary Examiner, Art Unit 1662
Prosecution Insights