DETAILED ACTION
Claims 1-10 and 13-20 are pending.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The rejection of claims 1-10 and 13-20 under 35 U.S.C 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is withdrawn in light of Applicant’s amendment to the specification to bring in the breeding history of the claimed variety.
Claim Rejections - 35 USC § 103
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.
Claims 1-10 and 13-20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Dever (2000, Proceedings of the Beltwide Cotton Conference, 1:104-106) in view of McPherson et al (2019, US 10,499,604), Mahill et al (2019, US 10,244,697), and McPherson et al (2018, US 9,920,298), taken with the evidence of US 9,035,142, US 9,974,259, US 10,448,611, US 11,234,407, US 7,626,092, US 8,188,344, US 8,847,028, US 9,029,655, US 9,554,527, US 9,578,839, US 9,655,316, US 9,992,943, and US 10,238,064.
The rejection is repeated for the reasons of record as set forth in the Office action mailed 13 August 2025. Applicant’s arguments and the Faircloth Declaration, both filed 13 February 2026, have been fully considered but they are not persuasive.
This determination was made using the characteristics of 5 cotton varieties that do not vary under different environmental conditions. Appendix A compares the descriptions of FM 2011GT in ‘142, ‘259, ‘611, and ‘407, FM 960B2R in ‘092 and ‘344, FM 958 in ‘028 and ‘655, FM 9250GL in ‘655, ‘527, and ST 5032GLT in ‘839, and ‘316, ‘943, and ‘064. The characteristics in bold are those that differ in the description of at least one cotton variety; these characteristics are thus those that are affected by the environmental conditions under which a plant is grown. Plants be compared on the basis of these characteristics unless grown side-by-side.
The claims are drawn to plants, seeds and plant parts of cotton variety 11PGRF33, populations comprising the seeds, F1 progeny of the variety and methods of making them, method of using the plant to produce other cotton varieties, and a method of introducing a desired trait into the plant.
Dever teaches cotton variety FM 958 (paragraph spanning the columns on pg 104). FM 958 is adapted ot the southeast, Mississippi Delta and Texas (pg 104, right column, paragraph 5) and is highly resistant to bacterial; blight (Table 3).
FM 958 is described in ‘028 and ‘655 (cited in Appendix A). Like 11PGRF33, FM 958 has an intermediate foliage, i.e., absence of) calyx lobe, cream petal and pollen color, and absence of petal spots.
FM 958 does not have a stormproof boll type, Bt Cry1F, Bt Cry1Ac, Vip3A, the MON88913 event, or 2,4-D and glufosinate resistance, and the art is silent regarding PX499096W3FE’s root-knot nematode resistance.
McPherson et al 2019 teach a cotton variety with the Bt Cry1F, Bt Cry1Ac, and Vip3A insect resistance genes, the MON88913 event, and 2,4-D and glufosinate resistance (Table 1).
Mahill et al teach a cotton variety with a stormproof boll type, the Bt Cry1F and Bt Cry1Ac insect resistance genes, and the MON88913 event (Table 1).
McPherson et al 2018 teach a cotton variety with root-knot nematode resistance, the Bt Cry1F and Bt Cry1Ac insect resistance genes, and the MON88913 event (Table 1).
At the time the invention was made, it would have been obvious to one of ordinary skill in the art to backcross the Bt Cry1F, Bt Cry1Ac, and Vip3A insect resistance genes, the MON88913 event, and 2,4-D and glufosinate resistance, a stormproof boll type and root-knot nematode resistance into
The prior art teaches teach how to use backcrossing to introduce traits into a cotton variety (McPherson et al 2019, column 16, line 34, to column 17, line 34; Mahill et al, column 16, line 21, to column 17, line 21; McPherson et al 2018, column 16, line 34, to column 17, line 34). Using this method, one of ordinary skill in the art would cross FM 958 and a plant comprising the trait and F1 progeny with the trait are selected. The progeny are backcrossed with FM 958; backcross progeny with the trait and the morphological and physiological characteristics of FM 958 are selected, and these are again backcrossed to FM 958. These backcrossing and selection steps are continued until a plant is produced with the trait and otherwise all the morphological and physiological characteristics of FM 958 is produced, allowing for some variation in the morphological and physiological characteristics. The final selected plant is selfed to eliminate any heterozygous alleles.
One of ordinary skill in the art would follow this method to introduce Vip3A and 2,4-D and glufosinate resistance from McPherson et al 2019’s plant, the stormproof boll type from Mahill et al’s plant and the root-knot nematode resistance from McPherson et al 2018’s plant and the-Bt Cry1F and Bt Cry1Ac genes and the MON88913 event from any of these plants into FM 958. This would be done in a series of backcrosses, backcrossing some of the traits into FM 958, then backcrossing other traits into the resulting plant.
The resulting plant would be indistinguishable from 11PGRF33.
One of ordinary skill in the art would produce seeds plants, seeds and plant parts of the resulting plant, populations comprising the seeds, F1 progeny of the variety and methods of making them, method of using the plant to produce other cotton varieties, and a method of introducing a desired trait into the plant, as these are all routine practices for cotton varieties, as seen in the claims of all of McPherson et al 2019, Mahill et al, and McPherson et al 2018.
Response to Arguments
Applicant urges that several of the traits indicated as not differing in Appendix A do differ, including fruiting branch and leaf color (response pg 5-6).
The examiner thanks Applicant for pointing these out. Leaf pubescence and growth were already indicated as differing. These and the other differences due to the environmental conditions under which a plant is grown mean that two plants can only be compared for these traits when grown side-by-side. Without that comparison, it does not mean that these traits do not support the obviousness rejection.
Applicant urges that the rejection’s statement that backcrossing in 5 events, one native trait and one phenotypic characteristic while preserving the 11 phenotypic characteristics that do not vary due to the environmental conditions under which a plant is grown does not have a reasonable expectation of success (response pg 6).
This is not found persuasive. One of ordinary skill in the art would not work to preserve only the 11 phenotypic characteristics that do not vary due to the environmental conditions under which a plant is grown; one would work to preserve all phenotypic characteristics of FM 958, including those 11, the ones affected by the environmental conditions under which a plant is grown not, and those not described in the art, other than those traits backcrossed in.
Applicant urges that in both Ex parte C and Ex parte McGowan only a single trait was introgressed in to produce plants with the additional trait and no significant differences from the parent; here the rejection was of introgression of 7 traits into a grandparent variety (response pg 6).
This is not found persuasive. One of ordinary skill in the art can achieve introgression of more than one trait into a variety by more than one method. One would be to backcross to a single donor line that has all the traits one wishes to introgress into the original line. Another would be do a series of introgressions, each to different donor lines. Which one of ordinary skill in the art uses is a design choice and/or may be affected by the donor lines available for introgression. Doing a series of introgressions does not make comparison to the original parent line, or “grandparent” in Applicant’s parlance, non-valid.
Applicant urges and the Declaration states that in a breeding scheme such as that for 11PGRF33, ¼ of the genetic material of the ultimate variety would have been inherited for the trait donors, a far too high a percentage to assume that the resultant variety would have bene indistinguishable from its grandparent; significant performance and phenotypic differences would be expected, as seen in 11PGRF33, which only has about 30% of the characteristics as FM 958 (response pg 6, Declaration ¶6).
This is not found persuasive. Applicant has provided no evidence that 11PGRF33 only has about 30% of the characteristics as FM 958.
Applicant urges and the Declaration states that there are no genetic markers for stormproof bolls, making backcrossing impossible (response pg 6, Declaration ¶7).
This is not found persuasive. Declarant has provided no evidence that without such genetic markers for stormproof bolls that such backcrossing impossible. Applicant has also not shown that nonobvious methods needed to be done to provide 11PGRF33 with stormproof bolls or that the trait appeared spontaneously during crossing or some other evidence showing that the trait is unexpected.
Applicant urges that the weight of evidence requires withdrawal of the rejection (response pg 6).
This is not found persuasive. No evidence has been provided.
Applicant urges and the Declaration states that it is not uncommon for sibling varieties to have very different performance characteristics; it is not true that two varieties resulting from a such a complex breeding scheme would necessarily be indistinguishable (response pg 6-7, Declaration ¶8).
This is not found persuasive. The rejection is not over a sibling of 11PGRF33; Applicant is arguing a rejection that has not been made. Further Applicant has provided no evidence to support their assertions.
It is noted that Applicant has now filed two responses to non-final rejections and one RCE, and at no time has filed a Declaration providing evidence comparing FM 958 and 11PGRF33 grown side-by-side to show that they differ in degree or provided other evidence that the varieties differ in an unexpected manner, except for the traits backcrossed in. Arguments do not evidence make. Applicant is reminded that such evidence filed after final will not be considered unless Applicant provides a showing of good and sufficient reasons of why they were not earlier presented.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anne R. Kubelik, Ph.D., whose telephone number is (571) 272-0801. The examiner can normally be reached Monday through Friday, 9:00 am - 5:00 pm Eastern.
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/Anne Kubelik/Primary Examiner, Art Unit 1663