Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/11/2025 has been entered.
Claims 1 and 6-23 are pending. Claims 17-21 remain withdrawn as being drawn to non-elected subject matter.
Claims 1, 6-16 and 22-23 are examined herein on the merits.
Claim Rejections - 35 USC § 112
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.
Claims 1, 6-16 and 22-23 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The term “90%” in claim 1 is a relative term which renders the claim indefinite. The term “90%” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In the specification, homozygosity is determined by a function of a percent identity relative to a set number of loci as in 100, 1,000 or 10,000. However, the claim does not set forth how many loci are being considered, only that at least 20 must be different.
Accordingly, it is unclear by what measurement, and therefore unclear what the breadth of the claim is in that a wide range of homozyogosity would potentially be encompassed.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 6-16 and 22-23 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
The claims are drawn to methods comprising plants that are obtained from first and second plants that comprise a level of homozygosity at least 90%. However, the standard number of loci for comparison is not listed such that any number of homozygosity standards could be used.
In contrast, the specification provides for 100, 1,000 or 10,000 loci for establishing the percent homozygosity of the two parental lines that produce the F1 seeds of the instant invention. The specification does not describe what 90% homozygosity means in the absence of a set number of loci being specified and as such the instant claims fall outside the scope of the specification and are therefore drawn to New Matter.
Applicant must either cancel the claims, delete the New Matter from the claims, Amend the claims or explain why the claimed subject matter is not considered New Matter.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENT T PAGE whose telephone number is (571)272-5914. The examiner can normally be reached M-F 7-4 EST.
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, Amjad Abraham can be reached at 5712707058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRENT T PAGE/Primary Examiner, Art Unit 1663
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