DETAILED ACTION
Status of the Application
1. The present application is being examined under the pre-AIA first to invent provisions.
2. Claims 1, 2, 7, 8, 15, 16, 18, 19, and 21-27 are pending.
3. Claims 15, 16, 18, 19, and 21 remain withdrawn from consideration.
4. Claims 1, 2, 5, 7, 8, and 22-27 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 16, 2025 has been entered.
Election/Restrictions
6. Applicant's election with traverse of Group I in the reply filed on October 23, 2020 is acknowledged. In the subsequent Office Action, the traversal was found unpersuasive and the requirement was deemed proper and therefore made FINAL.
Claims 15, 16, 18, 19, and 21 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on October 23, 2020. Given that the previously added claims 26 and 27 would have been included in the elected Group, they were examined herein.
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 1, 2, 7, 8, and 22-27 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.
In claim 1, the newly added limitation “wherein the AHASL polynucleotide comprises the AHASL polynucleotide of a plant of line IMINTA 15, the AHASL polynucleotide of said plant of line IMINTA 15 encoding the entirety of SEQ ID NO: 26 including said leucine substitution at a position corresponding to position 171 of SEQ ID NO: 26” renders the claim indefinite. First, the recitation of SEQ ID NO: 26 as a reference sequence in both part (a) and the above “wherein” clause renders the claim indefinite because said clause appears to also require that the rice plant actually comprise the full-length SEQ ID NO: 26. Similarly, the recitation “the sequence from position 165 to position 177 of SEQ ID NO: 26,” which appears to refer to the portion of SEQ ID NO: 26 and not to relative positions, makes it ambiguous as to what SEQ ID NO the plant is, in fact, required to comprise. Second, the phrase “the AHASL polynucleotide of a plant of line IMINTA 15” introduces further ambiguity into the claim language because it does not recite any structure for the polynucleotide “of a plant of line IMINTA 15” and it is unclear how the limitation is meant to limit said polynucleotide beyond the requirement that it encodes the full-length SEQ ID NO: 26. It is noted that “IMINTA 15” is common name that can and do change over time. The metes and bounds are thus unclear.
Given that claims 2, 7, 8, and 22-27 depend from claim 1 and fail to introduce limitations overcoming its indefiniteness, these claims are indefinite as well.
Claim Interpretation
9. The following is noted with regard to claim interpretation. Claim 1, as previously amended, recites the following: “the sequence from position 165 to 177 of SEQ ID NO: 26, which comprises a leucine substitution at position 171, the sequence of said AHASL polypeptide having been obtained by random chemical mutagenesis and being free of site-directed mutation.” The clause “having been obtained by random chemical mutagenesis and being free of site-directed mutation” is interpreted as a product-by-process limitation that does not limit the structure of the recited polynucleotide - including the oligonucleotide corresponding to positions 165-177 of SEQ ID NO: 26, which represents the conserved Domain A of the enzyme) or that of any mutant AHASL comprising said domain.
The structure of a polynucleotide is determined by its nucleotide sequence. A mutant nucleic acid comprising a specific nucleotide substitution wherein said substitution was made using a site-directed mutagenesis and a mutant nucleic acid comprising the same substitution that was obtained using a different method would have identical nucleotide sequences and thus would not be patentably distinguishable.
The Examiner notes that the “determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
The “wherein” clause that was newly added to claim 1 in the instant amendments, which renders the claim indefinite, is interpreted as requiring that the AHASL polynucleotide recited in step (a) encode the full-length SEQ ID NO: 26. However, since the clause does not place any limitations on the polynucleotide itself, beyond it’s encoding SEQ ID NO: 26.
Claim Rejections - 35 USC § 103
10. The following is a quotation of pre-AIA 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.
11. Claims 1, 2, 7, 22, 24, and 25 remain rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Croughan (U.S. Patent Application Publication 2003/0217381 A1, issued as US Patent 6,943,280) in view of Sibony et al (Weed Res. (2001) 41:509-522), and Okuzaki et al (Plant Cell Rep. (2004) 22:509-512). Applicant’s argument submitted on September 16, 2025 was fully considered but it is not persuasive.
The claims are directed to a method of treating rice, wherein the rice comprises an AHASL polynucleotide encoding an herbicide-tolerant AHASL polypeptide comprising a leucine substitution at a position corresponding to position 171 of SEQ ID NO: 26 (equivalent to position 197 in the Arabidopsis numbering).
Croughan teaches a method of controlling weeds in the vicinity of a rice plant comprising an AHAS nucleic acid encoding an AHAS (AHASL1) protein with a S627N substitution, said process comprising applying a herbicide to the weeds and to the rice plant, wherein the herbicide normally inhibits the growth of a rice plant (claims 8, 15-16). Croughan teaches applying, post-emergence, sulfonylurea and imidazolinone herbicides to resistant rice plants, including wherein said herbicides are nicosulfuron, imazapyr and imazethapyr; and teaches obtaining seeds of resistant plants (paragraphs 0079-0082; 0088; Tables 1-4). Croughan teaches applying imazapic and rimsulfuron, post-emergence to a field comprising said herbicide tolerant rice plants (paragraphs 0119-0121, Tables 7-8).
In addition, Croughan teaches mutant nucleotide sequences encoding an imidazolinone and sulfonylurea resistant AHASL, isolated from mutant rice plants (Abstract; paragraph 0044 on pg. 4). Croughan teaches using said nucleotide sequences to transform rice plants to render them tolerant to AHAS-inhibiting herbicides. Croughan teaches rice plants comprising said nucleotide sequences (Abstract; paragraph 0045 on pg. 5; see also Table 8 on page 18).
Croughan teaches, at SEQ ID NO: 17, a wild-type AHAS sequence from the rice cultivar Cypress, which has 99.8% sequence identity to the instant SEQ ID NO: 26 (see paragraph 0144). The sequence alignment is set forth below.
; Sequence 17, Application US/10258842
; Patent No. 6943280
; GENERAL INFORMATION:
; APPLICANT: Board of Supervisors of Louisiana State University and Agricultural and
; APPLICANT: Mechanical College
; APPLICANT: Croughan, Timothy
; TITLE OF INVENTION: RESISTANCE TO ACETOHYDROXYACID SYNTHASE-INHIBITING HERBICIDES
; FILE REFERENCE: 98A9.2-PCT Croughan
; CURRENT APPLICATION NUMBER: US/10/258,842
; CURRENT FILING DATE: 2002-10-28
; PRIOR APPLICATION NUMBER: US 60/203,434
; PRIOR FILING DATE: 2000-05-10
; NUMBER OF SEQ ID NOS: 25
; SOFTWARE: PatentIn version 3.0; and WordPerfect version 8
; SEQ ID NO 17
; LENGTH: 644
; TYPE: PRT
; ORGANISM: Oryza sativa
; FEATURE:
; NAME/KEY: misc_feature
; OTHER INFORMATION: Inferred complete AHAS sequence, wild type var. Cypress
US-10-258-842-17
Query Match 99.8%; Score 3317; DB 4; Length 644;
Best Local Similarity 99.8%;
Matches 643; Conservative 0; Mismatches 1; Indels 0; Gaps 0;
Qy 1 MATTAAAAAATLSAAATAKTGRKNHQRHHVLPARGRVGAAAVRCSAVSPVTPPSPAPPAT 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MATTAAAAAATLSAAATAKTGRKNHQRHHVLPARGRVGAAAVRCSAVSPVTPPSPAPPAT 60
Qy 61 PLRPWGPAEPRKGADILVEALERCGVSDVFAYPGGASMEIHQALTRSPVITNHLFRHEQG 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 PLRPWGPAEPRKGADILVEALERCGVSDVFAYPGGASMEIHQALTRSPVITNHLFRHEQG 120
Qy 121 EAFAASGYARASGRVGVCVATSGPGATNLVSALADALLDSVPMVAITGQVLRRMIGTDAF 180
|||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||
Db 121 EAFAASGYARASGRVGVCVATSGPGATNLVSALADALLDSVPMVAITGQVPRRMIGTDAF 180
Qy 181 QETPIVEVTRSITKHNYLVLDVEDIPRVIQEAFFLASSGRPGPVLVDIPKDIQQQMAVPV 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 QETPIVEVTRSITKHNYLVLDVEDIPRVIQEAFFLASSGRPGPVLVDIPKDIQQQMAVPV 240
Qy 241 WDTSMNLPGYIARLPKPPATELLEQVLRLVGESRRPILYVGGGCSASGDELRRFVELTGI 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 WDTSMNLPGYIARLPKPPATELLEQVLRLVGESRRPILYVGGGCSASGDELRRFVELTGI 300
Qy 301 PVTTTLMGLGNFPSDDPLSLRMLGMHGTVYANYAVDKADLLLAFGVRFDDRVTGKIEAFA 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 301 PVTTTLMGLGNFPSDDPLSLRMLGMHGTVYANYAVDKADLLLAFGVRFDDRVTGKIEAFA 360
Qy 361 SRAKIVHIDIDPAEIGKNKQPHVSICADVKLALQGLNALLDQSTTKTSSDFSAWHNELDQ 420
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 361 SRAKIVHIDIDPAEIGKNKQPHVSICADVKLALQGLNALLDQSTTKTSSDFSAWHNELDQ 420
Qy 421 QKREFPLGYKTFGEEIPPQYAIQVLDELTKGEAIIATGVGQHQMWAAQYYTYKRPRQWLS 480
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 421 QKREFPLGYKTFGEEIPPQYAIQVLDELTKGEAIIATGVGQHQMWAAQYYTYKRPRQWLS 480
Qy 481 SAGLGAMGFGLPAAAGASVANPGVTVVDIDGDGSFLMNIQELALIRIENLPVKVMVLNNQ 540
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 481 SAGLGAMGFGLPAAAGASVANPGVTVVDIDGDGSFLMNIQELALIRIENLPVKVMVLNNQ 540
Qy 541 HLGMVVQWEDRFYKANRAHTYLGNPECESEIYPDFVTIAKGFNIPAVRVTKKSEVRAAIK 600
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 541 HLGMVVQWEDRFYKANRAHTYLGNPECESEIYPDFVTIAKGFNIPAVRVTKKSEVRAAIK 600
Qy 601 KMLETPGPYLLDIIVPHQEHVLPMIPSGGAFKDMILDGDGRTMY 644
||||||||||||||||||||||||||||||||||||||||||||
Db 601 KMLETPGPYLLDIIVPHQEHVLPMIPSGGAFKDMILDGDGRTMY 644
As the sequence alignment shows, the protein of Croughan comprises a proline at position 171, and thus represents a wild-type AHASL with respect to said position. One would recognize that that the above amino acid sequence of Croughan represents the wild-type version of the instant SEQ ID NO: 26. Croughan teaches a nucleic acid sequence that encodes SEQ ID NO: 17 (paragraph 0144).
Croughan teaches an art-standard method of making mutant rice plants and selecting such for herbicide tolerance (Example 28, beginning at paragraph 0075). Croughan teaches isolating nucleic acids encoding mutated, herbicide-resistant AHASL (comprising a substitution at position 627) from a plant derived by mutating said Cypress rice (Example 36 beginning at paragraph 0147 on pg. 20). Croughan teaches isolating AHAS enzyme from the herbicide resistant rice plants (paragraphs 0112-0113 and Table 5 on pg. 15). Croughan teaches using said isolated AHAS DNA sequences, under the control of an appropriate promoter, to transform crop plants (paragraphs 0171-0175). Croughan teaches that plants suitable for transformation are both monocots and dicots; such as rice, maize, wheat, rye, barley, sunflower, alfalfa, canola, soybean, peanut, tobacco, tomato and potato (paragraph 0185).
Croughan teaches methods of producing transformed plants and cells, comprising transforming plant cells with a transformation vector comprising said resistant AHASL nucleic acids, using selection media to select for AHAS-inhibitor resistant cells, and subsequently regenerating herbicide-resistant plants from those cells (paragraphs 0176-0180). Croughan teaches obtaining seeds from AHASL-inhibitor resistant rice plants (Examples 1-15, paragraphs 0061-0068).
Croughan teaches imidazolinone and sulfonylurea herbicides by trade names, generic names and chemical names, including for example, imazethapyr, imazapyr, imazamox, metsulfuron methyl, and nicosulfuron, among others (Abstract; paragraph 0225; see also paragraphs 0044; 0213-0214). Croughan teaches applying an imidazolinone herbicide as a pre-emergence application (paragraphs 0061-0063). Croughan teaches a process for controlling weeds in the vicinity of rice plants comprising resistant AHAS, comprising applying a herbicide to the weeds and to the plant, wherein the herbicide normally inhibits AHAS at the levels of the herbicides that would normally inhibit the growth of a plant of the same species (claim 14).
Croughan teaches that red rice, which belongs to the same species as cultivated rice, Oryza sativa, is a common weed of rice, teaches that while red rice can be controlled by a number of commercial herbicides, but the simultaneous herbicide sensitivity of cultivated rice makes using said herbicides impossible with wild-type cultivars; and teaches that AHAS inhibiting herbicides could be used to control red rice (paragraphs 0003-0007). Croughan teaches that besides controlling red rice, many AHAS-inhibiting herbicides effectively control other weeds commonly found in rice field (paragraph 0046). Croughan teaches using non-ionic surfactants in a herbicidal spray solution (paragraph 0076). One of ordinary skill in the art will readily recognize that a
Croughan does not teach a rice crop comprising the AHASL with the proline to leucine substitution at a position corresponding to position 171 of the instant SEQ ID NO: 26.
Sibony et al teach that the P197L substitution in the AHAS of Amaranthus retroflexus confers high resistance sulfonylureas and moderate resistance to imidazolinones (Abstract; Table 4; pg. 517 under “Discussion”). Sibony et al teach that P197 is located in one of the enzyme’s five conserved domains, Domain A. Sibony et al teach that all of the potential nucleotide substitutions that lead to an amino acid change at P197 have been observed (including to serine, leucine, glutamine, alanine, threonine, arginine or histidine) and that all led to resistance to AHAS inhibitors (pg. 510, paragraphs 3-4). Sibony et al teach sequencing the portions of the AHAS gene comprising the five conserved domains, and teach the sequence of the mutant allele and protein (Figure 4; pg. 520). Sibony et al teach applying various commercial formulations of sulfonylureas and imidazolinones to resistant plants. Sibony et al teach applying nicosulfuron, post-emergence, at a rate of 0.47-480 g ai/ha, and teach that the P197L substitution resulted in resistance ratio of 13 for said herbicide (Tables 1 and 2). Sibony et al teach that the highest resistance ratios of 118 and 127 were observed for chlorsulfuron. Sibony et al teach resistance ratios of 58 and 63 for imazethapyr (Tables 2 and 3).
Okuzaki et al teach successfully using site-specific oligonucleotide-based mutagenesis to introduce point mutations into the rice AHAS gene (Abstract and Introduction). Okuzaki et al teach specifically targeting P171 (in rice numbering) and successfully introducing a mutation that resulted in the P171A substitution into said gene (pg. 510, right col). Okuzaki et al teach that the oligonucleotide-directed gene targeting is thought to be less complicated in rice than in tobacco or maize (pg. 512, right col).
At the time the invention was made, it would have been prima facie obvious to one having ordinary skill in the art to modify the teaching of Croughan and introduce, using the method of Okuzaki et al, a mutation into a rice AHASL, which would result in a substitution at a position corresponding to P171, as taught by Okuzaki et al and Sibony et al, including wherein the substitution is P171L taught by Sibony et al. It would have been obvious to apply said method to any cultivated rice variety including the rice variety taught by Croughan. The resultant plant would comprise a nucleic acid encoding a mutant AHASL, wherein said mutant AHASL comprising the leucine at the relative position 171 would have 100% sequence identity to the instant SEQ ID NO: 26.
It would have been obvious to use the resultant rice plants in a method of weed control, such as the methods taught by Croughan wherein said method comprises applying an appropriate sulfonylurea and/or imidazolinone herbicide to which the P197L confers tolerance, including, for example, imazethapyr or chlorsulfuron, as taught by Sibony et al. It would have been obvious to apply the herbicidal composition by spraying and wherein the composition comprises a surfactant (detergent), as taught by Croughan. The steps of the resultant method would read on the steps of the method for treating rice of the instant claims 1, 5, and 7. It would have been obvious to apply the herbicide in a “sprayable solution” (instant claim 22), in view of express teachings of Croughan or Sibony et al. Harvesting seed from the treated plant would have been obvious given that rice is a seed crop (instant claim 2).
One would have been motivated to combine said teachings given the desirability of AHAS-inhibitor tolerance rice and given the express suggestions of Croughan and Okuzaki et al. Given that Okuzaki et al successfully introduced a substitution at P197 into a rice AHASL, and given the highly conserved nature of P197, one would have had reasonable expectation of success in arriving at the instantly claimed method.
12. Claim 8 remains rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Croughan (U.S. Patent Application Publication 2003/0217381 A1, issued as US Patent 6,943,280) in view of Sibony et al (Weed Res. (2001) 41:509-522), and Okuzaki et al (Plant Cell Rep. (2004) 22:509-512), as applied to claims 1 and 7, and further in view of The Arable Farming publication (New SU for Grass Weed Control in Cereals, Arable Framing, December 8, 2001). Applicant’s argument submitted on September 16, 2025 was fully considered but it is not persuasive.
The claim is directed to the method of claim 7, wherein the sulfonylurea herbicide is mesosulfuron.
The teachings of Croughan, Sibony et al, and Okuzaki et al are set forth above. The references do not teach using mesosulfuron.
The Arable Farming publication teaches that mesosulfuron-methyl is a sulfonylurea herbicide that is effective at controlling a range of grass weeds in several grass cereal crops that included wheat, triticale and rye (see the entire single-page document).
At the time the invention was made, it would have been prima facie obvious to further modify the method of treating rice made obvious by the teachings of Croughan, Sibony et al, and Okuzaki et al, and use mesosulfuron in said method. One would have been motivated to do so given the advantages of mesosulfuron taught by the Arable Farming publication. Given that the P197L substitution confers tolerance to a wide range of herbicides from several classes, including various sulfonylureas, one would have had reasonable expectation of success.
13. Claim 23, 26, and 27 remain rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Croughan (U.S. Patent Application Publication 2003/0217381 A1, issued as US Patent 6,943,280) in view of Sibony et al (Weed Res. (2001) 41:509-522), and Okuzaki et al (Plant Cell Rep. (2004) 22:509-512), as applied to claim 1, above, and further in view Landes et al (US Patent Publication 2002/0198106). Applicant’s argument submitted on September 16, 2025 was fully considered but it is not persuasive.
The teachings of Croughan, Sibony et al, and Okuzaki et al have been set forth above. The references do not expressly teach applying an AHAS-inhibiting herbicide in a formulation comprising an auxiliary comprising a mineral oil fraction, a dispersant or a paraffin.
Landes et al teach applying AHAS-inhibiting herbicides in a mixture comprising additives such as mineral oil fractions of medium to high boiling point, paraffin, or a dispersant (paragraphs 0284 and 0285).
At the time the invention was made, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of claim 1, made obvious by the teachings of Croughan, Sibony et al, and Okuzaki et al, and apply an AHAS inhibiting herbicide in a formulation comprising mineral oil, a paraffin, or a dispersant, such as those taught by Landes et al, in order to ensure adhesion and dispersion of the herbicide composition.
Response to Arguments
Applicant reiterates the previously submitted arguments, including the arguments directed to the teachings of Croughan; the motivation; and he product-by-process limitations “having been obtained by random chemical mutagenesis and being free of site-directed mutation.” Applicant reiterates the argument that the teachings of Okuzaki “are irrelevant to the field of art to which the claimed subject-matter belongs” (pages 5-8 of the Remarks). Applicant also argues as follows: “there is nothing in Croughan to teach or suggest that the plant line being IMINTA 15. The Action relies on Sibony for teaching the P197L substitution in the AHAS of Amaranthus retroflexus. However, there is nothing in the prior art of record to teach "the AHASL polynucleotide of said plant of line IMINTA 15 encoding the entirety of SEQ ID NO: 26 including said leucine substitution at a position corresponding to position 171 of SEQ ID NO:26" as claimed” (page 6 of the Remarks).
Applicant’s arguments were fully considered in the previous Office Actions and remain not persuasive for the reasons of record. This includes the arguments directed to the motivation, hindsight reasoning, the teachings of Croughan and Okuzaki, and reasonable expectation of success. The product-by-process limitations at issue were expressly addressed in the rejection above and in the previous Office Actions.
The Examiner maintains that the number of known herbicide tolerance conferring AHAS substitutions would not have taught away from the invention, because the art would have directed one, specifically, to the substitution at issue, whose herbicide tolerance properties were well characterized at the time of invention. With regard to tolerance to imidazolinones it would not have been unexpected either: Sibony et al teach that the P197L substitution in the AHAS of Amaranthus retroflexus confers high resistance sulfonylureas and moderate resistance to imidazolinones.
The fact that Sibony et al teach the P197L substitution in Amaranthus and not in rice does not make the argument persuasive, because P197 is located in one of the enzyme’s five domains that are highly conserved in all plant species in which the enzyme was studied. This is well-known in the art and illustrated by the teachings of Sibony et al. Applicant’s argument fails to address the conserved nature of P197. Introducing a substitution at said position into a rice AHASL would not only have been an obvious way to achieve an agronomically desirable result, but doing so was actually reduced to practice by Okuzaki et al.
Whether or not Applicant characterizes the teachings of Okuzaki et al as being from the same “field of art” as the claimed invention does not affect the patentability of the claimed methods, and Applicant has not explained why it would. At issue here is the patentability of a method of using a product having the structure that is characterized by the presence of the AHAS substitution recited in the claims, Pro171Leu (in rice numbering). Okuzaki et al expressly teach introducing a substitution into a rice AHAS at Pro171, while the leucine substitution at said position is taught by Sibony et al. A plant thus obtained would read on the structure of the plant used in the claimed methods.
With regard to the argument based on the instant amendments to claim 1, it is not found to be persuasive either. The claim, including the “wherein” clause added in the instant amendments, do not place any structural limitations on the “AHASL polynucleotide” beyond the requirement that it encode the full-length SEQ ID NO: 26. Such a polynucleotide as well as the encoded protein identical to SEQ ID NO: 26, would have been made prima facie obvious by the cited art. The rejection is maintained.
Double Patenting
14. 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 § 2146 et seq. 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.
15. Claims 1, 2, 7-8, and 22-25 remain provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5-8, 12-16, 19-27 and 30-31 of copending Application No. 15/591,390 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. This rejection has been modified in view of the amendments to the instant claims and the claims of the co-pending application.
The instant claims are drawn to a method for treating rice comprising applying a sulfonylurea herbicide to rice, wherein the plant comprises an AHASL with the P197L substitution, including wherein the AHASL comprises the polynucleotide of a plant of IMINTA 15, and wherein said method further comprises applying an imidazolinone herbicide to said plant. It is noted that the claims do not require or recite a specific sequence for the limitation “polynucleotide of a plant of line IMINTA 15.”
The claims of the co-pending application are drawn to a method for treating rice comprising applying to said rice at least one AHAS inhibiting herbicide, including wherein the herbicide is sulfonylurea and/or imidazolinone, wherein said rice comprises a rice AHASL polypeptide comprising the P197L substitution. The claims of the co-pending application thus make obvious the method of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Applicant argues that “Applicant will consider the filing of a terminal disclaimer upon indication that the claims are otherwise in condition for allowance” (page 8). This is not persuasive as no claims are currently allowance and no terminal disclaimer has been filed.
Conclusion
16. No claims are allowed.
17. 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.
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/MYKOLA V. KOVALENKO/Primary Examiner, Art Unit 1662