DETAILED ACTION
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CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action was withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 22 October 2025 was entered.
Status
A restriction requirement was posted on 24 February 2024. Applicant elected with traverse SEQ ID NO:19 in the reply filed on 24 May 2023. Claims 1-23 as amended on 7 24 May 2023 were examined and rejected in an Office action posted 13 July 2023. Applicant responded on 10 January 2024. Claims 1-23 were examined and rejected in an Office action posted 25 April 2023. Applicant filed an RCE on 24 September 2024 entering the previous response-after-final. Applicant cancelled claim 3 and amended several claims. Claims 1-2 and 4-23 were examined and rejected in an Office action posted on 31 December 2024. Applicant responded on 31 March 2025. Claims 1-2 and 4-23 were examined and rejected in an Office action posted 24 June 2025. Applicant filed an RCE on 22 October 2025. Claims 1-2 and 4-23 are examined herein.
Examiner's Notes
Citations to Applicant's specification are abbreviated herein "Spec."
Occasionally, "SIN" is used as an abbreviation "SEQ ID NO" herein.
2.
Allowable Subject Matter
With the amendments that accompanied the RCE filed on 22 October 2025, Applicant overcame all objections and rejections made of record by the Office action posted 24 June 2025.
In view of the current scope, however, the double patenting rejection below is made.
A transgenic plant expressing SEQ ID NO::19 and the claimed sequence variants. appears free of the prior art of record.
Claims 1, 2, and 4-23 are allowed except as per the double patenting rejection below.
Applicant’s arguments are thus moot.
Double Patenting
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 obviousness-type 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); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). MPEP § 804.
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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 2, and 4-23 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 15,16, 18, 19, 20, 21, 25, 26, 27, 28, 29, 30, and 31 of copending Application No. 18/605,686 (‘686 Application). Although the conflicting claims are not identical, they are not patentably distinct from each other. This is a provisional double patenting rejection since the conflicting claims have not yet been patented.
Instant SIN:19 is the same as SIN:23 in 18/605,686 (U.S. Patent Publication No. 2024/0344078 A1; Radutoiu et al.) . There is overlap in the inventorship.
Instant claim 1 corresponds to at least the combination of the ‘696 claim 1 and claim 15 where claim 15 recites SIN:23. The other listed claims of the ‘696 encompass e.g. vectors, plants and plant parts with its SIN:23. They are obvious variants of the instant claims.
instant claims subject matter claims of ‘686
1,2 plant part with polypeptide 1,15,16,28,30
17 method 21
23 construct 25, 26,27,29
9,10,11,18,19,20 promoter 19,20,
12 plant 18,19,31
4 source of LCO
5 type of bacteria
6 where in cell
7,8 type of cell
13 type plant part
14 pollen or ovule
15,16 protoplasts
21 endogenous promoter
Other than the above listed claims, the other instant claims are obvious. For example, claim 13 reciting various plant parts, claim 14 reciting reproductive plant parts and claim 16 protoplasts.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL T BOGGS whose telephone number is (571)272-2805. The examiner can normally be reached Monday - Friday, 0800 to 1830 Mtn.
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/RUSSELL T BOGGS/Examiner, Art Unit 1663