DETAILED ACTION
Claims 1-8, 10, 13, 15, 17, 23-26 and 28-29 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claims 1-2 under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention is withdrawn in light of the Calloway Declaration filed 22 January 2026.
The rejection of claims 1-8, 10, 13, 15, 17, 23-26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over public availability of FRC-23 in view of Andaya et al (2020, US Patent 10,624,292) and Andaya et al (2017, US Patent 9,693,520) is withdrawn in light of the Calloway Declaration filed 22 January 2026.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 29 is rejected under 35 U.S.C. 112(d) or 35 U.S.C. 112(pre-AIA ), fourth paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Parent claim 1 is drawn to a seed of rice cultivar FRC-23. Dependent claim 29 merely recites some morphological and physiological characteristics of FRC-23. The specification teaches that these are all inherent characteristics of FRC-23 (¶84). Thus, claim 29 fails to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim, amend the claim to place it in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements (for example, by showing not all FRC-23 plants have all these chacaterisitcs). If Applicant choses to rewrite the claim in independent form, they should be aware that if the claim scope is the same as currently in claim 29, a warning for duplicate claims will likely be given.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2, 4 and 28-29 are rejected under 35 U.S.C. 103(a) as being unpatentable over PVP No. 9000207 (1994) in view of Linquist et al (2018, https://rice.ucanr.edu/files/288552.pdf) and Li et al (2017, Plant Cell 29:1218-1231).
Due to Applicant’s amendment of the claims, the rejection is modified from the rejection reasons of record as set forth in the Office action mailed 24 October 2025, as applied to claims 1-2, 4 and 28. Applicant’s arguments filed 22 January 2026 have been fully considered but they are not persuasive.
The claims are drawn to seeds and plants of rice variety FRC-23, a plant regenerated from a tissue culture and having all the morphological and physiological characteristics of FRC-23, and a method of producing rice from the plant.
PVP No. 9000207 describes rice variety M-401; it is a smooth, late maturing, semi-dwarf plant with premium quality but chalky (white belly) kernels (pg 2, paragraph 2; pg 6, paragraph 1). PVP No. 9000207 also teaches that the milling yield of M-401 is lower (pg 9, paragraph 2). PVP No. 9000207 does not teach FRC-23.
Linquist et al teach M-401 is not suited to growing in regions other medium grain rice varieties can grow in because it is a long duration variety (pg 14, paragraph 3).
Li et al teach a method of mutagenizing rice (pg 1227, left column, paragraph 2).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to mutagenize M-401 using the methods taught by Li et al to produce rice varieties that have reduced chalkiness, increased yield, and early maturity but still have the desirable traits of M-401, like being semi-dwarf and having premium quality grain. One of ordinary skill in the art would have been motivated to do so because the resulting rice plants would have the desirable traits of M-401 but fewer of the less desirable traits.
One of ordinary skill would have mutagenized M-401, then selfed the resulting plants, at each selfing selecting for plants that have reduced chalkiness, increased yield, and early maturation, are semi-dwarf, and have premium quality grain. Pedigree selection like that taught by PVP No. 9000207 (pg 4, paragraph 2) would have been used. Selecting for with early maturation would inherently select for plants that are photoperiod insensitive because both traits are controlled by the same genes (Reig-Valiente et al, 2020, PLoS ONE 15(5):e0233120. https://doi.org/10.1371/ journal. pone.0233120; see pg 3, paragraph 2). Selection for early maturation would mean the plants could be grown in a greater number of rice growing regions (Linquist et al, pg 14, paragraph 3). Plants with reduced chalkiness would have the clear kernels required by consumers (PVP No. 9000207, pg 8, paragraph 1). Plants with increased yield would be desirable to farmers, who would want to maximize their profits. One of ordinary skill in the art would have selected for panicles with uniformity of height, maturity, and kernel characteristics, as taught in (PVP No. 9000207, pg 4, paragraph 2), as uniformity would give plants with predictable grain and other characteristics, making harvest easier and grain that can be sold to markets as rice with particular qualities; the resulting plants would have head stability. One of ordinary skill in the art would have selected for improved milling yields, as this would maximize farmers’ profits.
The resulting plants would include FRC-23; these would be indistinguishable from a plant regenerated from a tissue culture and having all the morphological and physiological characteristics of FRC-23. Seeds of the plants are what would be sold to farmers; propagating the plants or analyzing the grain qualities would produce rice.
Response to Arguments
Applicant urges that to establish obviousness, the Office must provide a reference that teaches FRC-23 germplasm (response pg 8).
This is not found persuasive because this is not an anticipation rejection; this is a rejection based on a combination of references. That combination makes FRC-23 obvious.
Applicant urges that as discussed below, an attempt to recreate FRC-23 would amount to undue experimentation (response pg 8).
This is not found persuasive. The responses that discussion is presented below.
Applicant urges that since FRC-23 is not taught by any of the asserted references, the rejection states it would be obvious to attempt to make a cultivar with its exact same characteristics (response pg 8).
This is not found persuasive because mutating M-401 and selecting for a plant with reduced chalkiness, early maturation, increased yield, and early maturation, that is semi-dwarf, and that has premium quality grain and improved milling yields is obvious for the reasons above.
Applicant urges that FRC-23 was developed in an attempt to create a rice variety with M-401’s taste quality but with earlier maturation time; however, earlier maturation time and taste quality are genetically linked, as discussed in the 2025 Calloway Declaration (response pg).
This is not found persuasive. Neither this response nor the 2025 Calloway Declaration provide evidence to back up these assertions. The examiner could also find no references teaching this.
Further, genetic linkage of these traits is not relevant; the rejection does not say it would be obvious to produce the claimed plant by backcrossing or another type of crossing scheme, which would require breaking linkage between desirable and undesirable traits. The rejection says it would be obvious to use the method routinely used to introduce changes in rice varieties, that is mutation. Mutation can readily alter one gene without affecting other genes, regardless of how closely linked they are to the altered gene.
Applicant urges that the 2025 Calloway Declaration discusses unsuccessful attempts by himself and others to make earlier maturing MPQ rice (response pg 8-9).
This is not found persuasive because the 2025 Calloway Declaration provided no evidence to back up these assertions. Anecdotes are not evidence.
Applicant urges that in view of years of failed attempts and the general understanding that the traits are linked, one of ordinary skill in the art could not reasonably expect to obtain an early maturing rice variety with premium taste quality via EMS mutagensis, let alone FRC-23 specifically (response pg 9).
This is not found persuasive. No evidence to back up the assertions of years of failed attempts. Linkage of the traits is irrelevant for the reasons above. Applicant has not pointed to any unexpected step required to obtain FRC-23or example, Applicant has not shown that an unexpected selection process or some other feature was needed.
Applicant urges that the action fails to appreciate the complexity of plant genetics or EMS mutagensis screens, much less FRC-23 exactly, citing the 2025 Calloway Declaration discussion of unsuccessful attempts by himself to make plants having a similar phenotype as FRC-23 (response pg 9).
This is not found persuasive. Nether Applicant nor the 2025 Calloway Declaration provided evidence that it would be rare for any given pool to produce FRC-23 and does not address the obviousness of selecting for the traits in FRC-23. The evidence provided in the rejection demonstrates that selection for these traits is desired and routine.
Applicant urges that here were no known mutations to uncouple maturity time and taste quality (response pg 9).
This is not found persuasive because the rejection does not say that mutation should be targeted. Instead, it says to use random mutagensis. Li et al readily produced mutations in 58% of all rice genes (abstract) in a method that “requires as most one round of backcrossing … to correlate genotype and phenotype” (pg 1223, left column, paragraph 2); the method is low cost and can readily be screen on a large scale (paragraph spanning pg 1226-1227). One of ordinary skill in the art would have a reasonable expectation of success in producing the claimed plant.
Applicant urges that one of ordinary skill in the art could not identify FRC-23 absent its description (response pg 9-10).
This is not found persuasive. One of ordinary skill in the art could readily identify a plant with reduced chalkiness, early maturation, increased yield, and early maturation, that is semi-dwarf, and that has premium quality and grain improved milling yields, where the plant was produced by mutation of M-401. Applicant has not pointed to any characteristic of FRC-23 that is unexpected.
Applicant urges that FRC-23 has superior traits compared to M-401, including earlier maturity, higher yield and higher milling yield (response pg 10).
This is not found persuasive because mutagenizing M-401 and selecting a plant with those traits is obvious for the reasons detailed in the rejection.
Applicant urges that because premium and taste and maturity are linked in rice, it was not known it was possible develop a new cultivar that matures earlier but still has premium taste, as shown by years of failed attempts by various methods, citing the 2025 Calloway Declaration (response pg 10).
This is not found persuasive. The 2025 Calloway Declaration provided no information regarding those various methods or failed attempts. Vague mentions are not evidence.
Further, as discussed above, genetic linkage of these traits, if it exists, is not relevant, as the rejection says it would be obvious to produce the claimed by mutation, not by a method involving crossing.
Applicant urges that over 30 years of research produced only 2 potential early maturing MPQ cultivars, both later deemed to not meet the MPQ standards and one of which also suffered negative traits (response pg 10).
This is not found persuasive. The 2025 Calloway Declaration provided no to back up these assertions. Table 1 of the 2025 Calloway Declaration compares FRC-23 to M-401 and Table 1 of the instant specification describes FRC-23; neither supports Applicant’s assertions regarding other lines.
Applicant urges that there are millions of random G/C to A/T mutations that can be produced by EMS mutagensis and it would be very rare to produce the exact genetics of FRC-23 by mutagensis (response pg).
This is not found persuasive. The prior art contained enabled methodology to practice the claimed invention, a strong motivation for selecting for the traits, and evidence that mutations can be readily produced. Only a reasonable expectation of success is required for determinations of obviousness, as taught in In re O’Farrell, 7 USPQ 2d 1673, 1681 (Fed. Cir. 1988).
Again, Applicant has provided no evidence to support any assertions of failure of others.
Claims 3, 5-8, 10, 13, 15, 17, and 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over PVP No. 9000207 in view of Linquist et al and Li et al as applied to claims 1-2, 4 and 28-29 above, and further in view of Andaya et al (2020, US Patent 10,624,292) and Andaya et al (2017, US Patent 9,693,520).
The rejection is repeated for the reasons of record as set forth in the Office action mailed 24 October 2025. Applicant’s arguments filed 22 January 2026 have been fully considered but they are not persuasive.
The claims are drawn to a tissue culture of FRC-23, methods of producing F1 seed from it, and seed and plants thus produced, methods of producing plants of further generations, methods of transforming FRC-23 with a transgene that confers herbicide, pest, or disease resistance or modified fatty acid or carbohydrate metabolism, and plants thus produced, method of introducing a desired trait, including herbicide, pest, disease or stress resistance or modified fatty acid or carbohydrate metabolism into rice cultivar FRC-23 and plants thus produced, a method of introducing the head rice stability trait of rice cultivar FRC-23 into another rice cultivar, and a method of mutating, gene converting, genome editing, RNA interfering, and gene silencing FRC-23.
The teachings of VP No. 9000207 in view of Linquist et al and Li et al are discussed above. VP No. 9000207 in view of Linquist et al and Li et al do not teach further manipulation of FRC-23.
Andaya et al (2020) teach seeds and plants of a medium-grain, early-maturing rice cultivar (claims 1-2), and a tissue culture of it (claim 3), methods of producing F1 seed from it, and seed and plants thus produced (claims 5-7), methods of producing plants of further generations (claims 23-24), methods of transforming FRC-23 with a transgene that confers herbicide, pest, or disease resistance or modified fatty acid or carbohydrate metabolism, and plants thus produced (claims 8-16), method of introducing a desired trait, including herbicide, pest, disease or stress resistance or modified fatty acid or carbohydrate metabolism into rice cultivar FRC-23 and plants thus produced (claims 17-23), a method of introducing the head rice stability trait of the rice cultivar into another rice cultivar (claim 25), and a method of mutating, gene converting, genome editing, RNA interfering, and gene silencing the plant (claim 26); the transgene or desired trait confers resistance to the same herbicides as listed in instant claims 8 and 19, and include genes that encode Bt endotoxins or that encode a protein listed in instant claim 15 or 21.
Andaya et al (2017) also teach seeds and plants of a medium-grain, early-maturing rice cultivar (claims 1-2), and a tissue culture of it (claim 3), methods of producing F1 seed from it, and seed and plants thus produced (claims 7-9), methods of producing plants of further generations (claims 23-24), methods of transforming FRC-23 with a transgene that confers herbicide, pest, or disease resistance or modified fatty acid or carbohydrate metabolism, and plants thus produced (claims 10-18), method of introducing a desired trait, including herbicide, pest, disease or stress resistance or modified fatty acid or carbohydrate metabolism into rice cultivar FRC-23 and plants thus produced (claims 19-24), a method of introducing the head rice stability trait of the rice cultivar into another rice cultivar (claim 25), and a method of mutating the plant (claim 27); the transgene or desired trait confers resistance to the same herbicides as listed in instant claims 8 and 19, and include genes that encode Bt endotoxins or that encode a protein listed in instant claim 15 or 21.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify FRC-23 to perform the same manipulations as done by Andaya et al (2020) and Andaya et al (2017). One of ordinary skill in the art would have been motivated to do so because these manipulations of rice cultivars are routine in the art for medium grain early maturing rice plants.
Response to Arguments
Applicant urges that M-210 and M-209 are Calrose varieties, not MPQ varieties; one or ordinary skill in the art would not expect to produce an MPQ variety by breeding M-401 with them, citing the Calloway Declaration (response pg 12).
This is not found persuasive. The rejection does not say it would be obvious to produce an MPQ variety by breeding M-401 with M-210 or M-209. ‘292 and ‘520 are cited for teaching routine applications, modifications and uses of early-maturing rice cultivars. PVP No. 90000207, Linquist, and Li make obvious FRC-23 for the reasons above. Applicant has not produced evidence that the applications, modifications and uses taught in ‘292 and ‘520 would not be routine for a MPQ cultivar.
Applicant urges thatthe early maturing time and retention of MPQ quality are unexpected (response pg 12).
This is not found persuasive for the reasons cited in the rejection over PVP No. 9000207 in view of Linquist et al and Li et al.
This is not found persuasive. The rejection does not cite ‘292 and ‘520 for teaching MPQ cultivars; the rejection cites ‘292 and ‘520 for teaching routine applications, modifications and uses of early-maturing rice cultivars.
Applicant urges that the earlier maturity time and retention of MPQ quality observed in FRC-23 remains an unexpected and superior result in view of the cited art (response pg 10).
This is not found persuasive because it would be obvious to select for these traits, as detailed in the rejection above.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham, can be reached at (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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/Anne Kubelik/Primary Examiner, Art Unit 1663