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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12 June 2026 has been entered.
Claim Status
Claims 89-91, 96-100 are pending and examined on the merits.
Claims 89 and 97-98 are currently amended.
Response to Arguments - Specification
Applicant's amendments filed 12 June 2026 have been overcome the objection of record.
Response to Arguments – Lack of Written Description
Applicant's amendments filed 12 June 2026 have been overcome the rejection of record.
Claim Rejections - 35 USC § 112
Scope of Enablement
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.
Claim 89 remains rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for making and using the claimed hybrid plant, does not reasonably provide enablement for making the hybrid seed without access to the parent varieties of 9CN0103. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The claimed invention is not supported by an enabling disclosure taking into account the Wands factors. In re Wands, 858/F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988). In re Wands lists a number of factors for determining whether or not undue experimentation would be required by one skilled in the art to make and/or use the invention. These factors are: the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples of the invention, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claim.
The claims are broadly drawn to plant parts of Canola hybrid 9CN0103 that include seeds of Canola hybrid 9CN0103. Note that seeds are a part of the plant of Canola hybrid 9CN0103.
Applicants teach how to use the seeds of Canola hybrid 9CN0103.
Applicants do not teach how to make seeds of Canola hybrid 9CN0103.
The state-of-the-art is such that one of skill in the art cannot predict how person of ordinary skill in the art would have been able to make the claimed seeds with knowledge of the identity of and access to the inbred parents of Canola hybrid 9CN0103.
Given the lack of guidance in the instant specification, undue trial and error experimentation would have been required for one of ordinary skill in the art to make the claimed seeds within the scope of the claims.
Therefore, given the breadth of the claims; the lack of guidance and working examples; the unpredictability in the art; and the state-of-the-art as discussed above, undue experimentation would have been required to practice the claimed invention, and therefore the invention is not enabled throughout the broad scope of the claims.
Response to Arguments - Scope of Enablement - Seeds
Applicant's arguments filed 12 June 2026 have been fully considered but they are not persuasive.
Applicant urges that the canola seeds of the claimed variety (which are within the scope of “plant part” recited in claim 89) have been deposited in accordance with the deposit requirements.
This argument is not persuasive, because these scope of enablement rejections are unrelated to deposit practices. 1) The first rejection is based on the fact that hybrid seeds cannot be made without access to the inbred parent lines. Applicant is reminded that to satisfy the enablement requirement, a person of ordinary skill needs to be able to both make and use the invention as claimed. Note that being able to obtain something is not the same as being able to make something. Applicant is urged to amend claim 89 to recite “plant parts” within the claim and omit seeds and embryos from the listed plant parts.
Claim Objections
Claims 90-91 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Claims 96-100 are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R KEOGH whose telephone number is (571)272-2960. The examiner can normally be reached M-Th 7-4:30, half day on Fridays.
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 on 571-270-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663
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