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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/12/2025 has been entered.
Restriction Requirements
Applicant’s amendment of claim 14 on 11/12/2025 are acknowledged. Claims 12-14, 27, 38 and 42 are pending.
Since claims 12 and 13 does not add significant search burden they are examined together in this office action. Therefore, the restriction requirement between inventions I and II, as set forth in the Office action mailed on 06/27/2024, is hereby withdrawn and claims 12 and 13 hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Claims 27 and 38 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the replies filed on 08/29/2024.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Thus claims 12-14 and 42 are examined in this Office Action.
Rejection that are withdrawn
Objection to drawing has been withdrawn in light of applicant’s amendment of Figure 1 to delete inset heading with “color codes”.
Claim Objections
Claim 12 is objected to because of the following informalities:
Regarding claim 12 claim recite the scientific name “Glycine max” and “Glycine canescens” which is advised to italicized as the convention of writing scientific name.
Appropriate correction is required.
Claim Rejections - 35 USC § 112 - Indefiniteness
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12-14 and 42 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. All dependent claims are included in these rejections unless they include a limitation that overcomes the deficiencies of the parent claim.
Regarding claim 12 claim recite a method for producing “a Glycine max plant with increased resistance to ASR” comprise “providing Glycine canescens plant” renders claim indefinites since it is not clear how providing, which would mean supplying or giving, a Glycine canescens plant would produce a distinct species of ASR resistant G. max plant.
Applicant are advised to specifically claim whether they are intending to recite providing specific genomic fragment from G. canescens in claim 12.
Claim 14 recites the limitation "the marker locus" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 112 – Written Description Requirement
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 12-14 and 42 are rejected 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. The claim(s) contains 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Following analysis is modified since applicant has amended claim 14 and furthermore claims 12 and 13 has been examined in this office action, see above.
Breadth of the Claim
The association of molecular marker and the ASR resistance allele would encompass any associations.
ASR resistance allele can have any structure.
Marker locus comprising ASR resistance allele would have any structure (claim 14).
The chromosomal interval corresponding to SEQ ID NO:2 would encompass any fragments of SEQ ID NO:2 (claim 12).
What is Described in the Specification
Applicant describes the following:
A resistant parent was crossed to a susceptible G. canescens line and an F1 plant was generated (see Table 4) (page 333, lines 4-5).
Around 200 F2 seed were sown and leaf tissue from each plant was collected for DNA preps and then the plants were inoculated with Phakopsora pachyrhizi to determine the resistance/susceptible phenotype of each F2 individual (page 333, lines 6-8).
Around 1000 SNPs were found to have possible linkage to the target locus wherein A subset of these putatively linked SNPs was used to fine map the locus using phenotyped F2 individuals (page 333, lines 29-31).
In soybean population from line PI595799 the clustering of SNPs indicates that the resistance gene is located on or near scaffold 000090F (SEQ ID NO: 2) (page 334, lines 24-27).
The context sequences associated with these SNPs were also aligned to the public G. max genome to create a chromosome-level understanding of the mapping interval (page 334, lines 27-29).
wherein the chromosomal interval corresponds with nucleotide base 1 to nucleotide base 2, 442, 980 of SEQ ID NO: 2 (page 324, lines 1-4).
Scaffold 000090F has been mapped to G. canescens chromosome 14 wherein SEQ ID NO. 2 is a chromosomal interval derived from Glycine canescens line accession PI595799 from the "Scaffold 000090F" (page3, lines 20-23).
Tables 1-3 were determined to be significantly linked with resistance or susceptibility (p<0.05) (page3, lines 31-33).
Difference Between What was Described and What is Claimed
Applicant has not described the association of molecular marker and the ASR resistance allele other than a genetic linkage between the molecular marker and the ASR resistance allele.
Applicant has not described ASR resistance allele comprises T at a position corresponding to position 570, 525 of SEQ ID NO: 2, since the structure of ASR allele is not known.
Applicant has not described any chromosomal interval corresponding to SEQ ID NO:2 from G. canescens would increase resistance to ASR when provided to G. max plant (claim 12).
Applicant has not described SEQ ID NO:2 is found in PI440935 and PI483193 other than the PI595799.
Applicant has not described providing as crossing the any G. canescens plant line would result in viable seeds to regenerate (claim 12).
Analysis
The purpose of the written description is to ensure that the inventor had possession at the time the invention was made, of the specific subject claimed. For a broad generic claim, the specification must provide adequate written description to identify the genus of the claim.
Applicant has not described marker locus comprises Glycine canescens ASR resistance allele. Applicant describes the marker “T” is significantly linked to resistance at P<0.05 (Spec, page 3, lines 30-33 and Table 2) among the large number of markers with very wide peaks of significance ranging several megabases (see Table 2). Applicant defines in specification “As used herein, the terms "marker" and "genetic marker" are used interchangeably to refer to a nucleotide and/or a nucleotide sequence that has been associated with a phenotype, trait or trait form (page 318, lines 1-3).” And “As used herein, the terms "molecular marker" or "genetic marker" may be used to refer to a genetic marker, as defined above, or an encoded product thereof (e.g., a protein) used as a point of reference when identifying a linked locus (page 319, lines 16-18).” For this since the marker are point of reference for identifying a linked locus, there is no indication in specification that the marker locus comprises the Glycine canescens ASR resistance allele associated with increased ASR resistance, instead it is only described as it is linked to the ASR resistance allele and a chromosomal segment would comprise the Glycine canescens ASR resistance allele associated with increased ASR resistance.
Applicant has not described the association of molecular marker and the ASR resistance allele other than a genetic linkage between the molecular marker and the ASR resistance allele. The recitation of term “associates” in claim 14 would mean any kind of association for example Merriam Webster dictionary (https://www.merriam-webster.com/dictionary/associate, accessed 05/01/2025) defines “associates” as to “join or connect together” or “bring together”. Thus, the molecular marker that associates with ASR allele would be joined, connected or be together by any way for example physically, functionally, or being in any networks of functions. Applicant does not claim the necessary (i.e., favorable) allele(s) associated with the particular SNP markers, such that, Applicants do not disclose a conserved structure responsible with respect to the markers and alleles as to accomplish the instantly claimed function of ASR resistance phenotype in soybean. The claims are drawn to any unspecified marker of any marker type, as long as the marker is associated with a ASR resistance allele. The claims are not limited to alleles with the SNP indicative of the claimed phenotype of ASR resistance in soybean. Instead, applicant has not described the association of molecular marker and the ASR resistance allele other than a genetic linkage between the molecular marker and the ASR resistance allele. Thus, there is dearth of description of any association of molecular marker and the ASR resistance allele.
Lee et al. (Year: 2020, Journal: Genomics, 112(2), 1481-1489) teaches in soybean, the average recombination rate for each chromosome ranges from 1.9 to 3.4 cM/Mb with a genome-wide average of 2.5 cM/Mb. Lee et al. teaches approximately 170 marker intervals with recombination rates higher than 20 cM/Mb have been reported. Suggesting that although a genetic map may provide an overall structure of chromosomes, a reliable for example 100-kb resolution would not be achieved for large parts of chromosomes even with a map density of 0.1-cM marker interval (page 1482, left paragraph 2).
Furthermore, for example applicant states in 150 backcross plants, there is a 95% chance that at least one plant will have experienced a crossover within 1 cM of the gene, based on a single meiosis map distance (page 322, lines 33-35). With one additional backcross of 300 plants, there would be a 95% chance of a crossover within 1 cM single meiosis map distance of the other side of the gene, generating a segment around the target gene of less than 2 cM based on a single meiosis map distance (page 322, lines 35-36, page 323, lines 1-2). Applicant states for example, in smaller population sizes, recombination may be expected further away from the gene, so more distal flanking markers would be required to detect the recombination (page 323, lines 5-6). Applicant states a number of SNP alleles together within a sequence, or across linked sequences, can be used to describe a haplotype for any particular genotype. Ching et al., BMC Genet. 3:19 (2002); Gupta et al., (2001), Rafalski, Plant Sci. 162:329 (2002b). Haplotypes can be more informative than single SNPs and can be more descriptive of any particular genotype. Applicant teaches for example, a single SNP may be allele "T" for a specific Disease resistant line or variety, but the allele "T" might also occur in the soybean breeding population being utilized for recurrent parents. In this case, a combination of alleles at linked SNPs may be more informative. Once a unique haplotype has been assigned to a donor chromosomal region, that haplotype can be used in that population or any subset thereof to determine whether an individual has a particular gene (page 323, lines 24-30).
For this reason, the recitation of combination of significant SNPs or haplotypes, or reference to specific marker loci sequences linked to resistance in the SEQ ID NO:2 would be more determinant of whether an individual soybean plant would have a particular ASR gene described by applicant.
Instead, applicant has not described any method of detecting marker “T” corresponding to position 570,525 of SEQ ID NO: 2 near an ASR resistance allele from G. canescens other than the marker “T” is significantly linked to resistance at P<0.05 (Spec, page 3, lines 30-33 and Table 2) among the large number of markers with very wide peaks of significance ranging several megabases (see Table 2). This would be problematic since it does not clearly show the expected mapping resolution to show that the locus is within 1cM from the ASR resistance allele. The resolutions is further unclear because such wide peaks of significance ranging several megabases is produced in a small Bulk segreant population comprising 50 resistant F2s and 50 susceptible F2s (page 333, lines 1-14). For example, Lee et al. teaches mapping resolution is limited by mapping population size (page 1487, right last paragraph). For this reason, there is dearth of description of detecting a ASR resistance allele located within 1cM of the “T” at position 570, 525 of SEQ ID NO: 2.
Applicant has not described ASR resistance allele comprises “T” at a position corresponding to position 570, 525 of SEQ ID NO: 2, since the structure of ASR allele is not known. Applicant has only described ASR resistance allele with its linkage to the molecular maker comprising “T” corresponding to position 570, 525 of SEQ ID NO: 2. Nowhere in specification applicant describes ASR resistance allele comprises T at a position corresponding to position 570, 525 of SEQ ID NO: 2, since the structure of the ASR resistance allele has not been described and its only described by linkage relation with the molecular marker locus. Therefore, there is dearth of description of ASR resistance allele comprises “T” at a position corresponding to position 570, 525 of SEQ ID NO: 2 since the ASR allele has only been described by its linkage to the molecular marker.
Accordingly, the claims are drawn to an extremely broad method of selecting soybean plant that would require to locate a ASR resistance allele within 1cM of the polymorphism “T” at position 570, 525 of SEQ ID NO: 2, which is an approximate genetic distance measured by 1% chance of recombination during meiosis. Furthermore, since the recombination is determined by many factors including a location of the marker and gene, or by number of segregating progenies screened for mapping, the distance of 1cM in a chromosome could mean any physical distance. The claims are drawn to any unspecified marker of any type and sequence, and any unspecified allele, vs. the exemplified SNPs listed in the Specification.
The chromosomal interval corresponding to SEQ ID NO:2 recited in claim 12 would encompass any fragments of SEQ ID NO:2 (claim 12). Applicant describes SEQ ID NO. 2 is a chromosomal interval derived from Glycine canescens line accession PI595799 referred to herein as "Scaffold 000090F" which is 1, 966, 948 (i.e. ~2Mb) nucleotides long, Scaffold 000090F has been mapped to G. canescens chromosome 14 (page3 , lines 21-23). The “chromosomal interval corresponding to SEQ ID NO:2” would encompass any size of fragments with any length of chromosomal interval, wherein applicant has not described providing any fragments of SEQ ID NO: 2 would cause the ASR resistance and would increase resistance to ASR in any G. max plants. Therefore there is dearth of description of any chromosomal interval corresponding to SEQ ID NO:2 from G. canescens plant would increase resistance to ASR when provided to G. max plant (claim 12).
Furthermore, Applicant has not described SEQ ID NO:2 is found in PI440935 and PI483193. Applicant describes SEQ ID NO. 2 is a chromosomal interval derived from Glycine canescens line accession PI595799 referred to herein as "Scaffold 000090F" which is 1, 966, 948 (i.e. ~2Mb) nucleotides long, and Scaffold 000090F has been mapped to G. canescens chromosome 14 (page 3, lines 21-23). Applicant described the other G. canscens lines Pl440935 and Pl483193 comprise different sequences of SEQ ID NO:1 and 3 respectively (page 3, lines 19-33). Therefore, there is dearth of description of SEQ ID NO:2 is found in PI440935 and PI483193 and when provided would increase the ASR resistance in G. max.
Relating to structure vs. function, the claims remain drawn to any unspecified ASR allele and a plant comprising any chromosomal interval of G. canescens SEQ ID NO:2, this leads to a situation where the instantly claimed allele of the claimed ASR loci would not possess the necessary structural features needed to accomplish the claimed phenotype. The Specification makes clear that the specific single nucleotide polymorphisms comprised within the marker alleles lend to the phenotype, thus it is necessary to claim the polymorphisms as such (i.e., specific favorable alleles). Furthermore, it is necessary to claim that the polymorphism “T” corresponding to position 570, 525 of SEQ ID NO: 2 is the molecular marker, since currently claim doesn’t recite the polymorphism is the marker locus.
Given Applicants have provided very vague description of the method steps or structures that would link a myriad of unspecified ASR resistance alleles that are within 1cMof the recited marker, and the alleles are determinants of ASR resistance in soybean, it remains unclear what features or method steps are capable of performing the claimed function. The Specification fails to provide an adequate written description to support the breadth of the claims. Therefore, one skilled in the art would not have recognized Applicants to be in possession of the claimed invention at the time the application was filed.
Lee et al. further showed even if the genome-wide average recombination rate is considered in the soybean plant, any marker that is farther than 3.4 cM would be in completely different place than the gene because the recombination would lead to the method not detecting the marker gene association. For this reason, the recitation of combination of SNPs or haplotypes, or reference to specific marker loci sequences linked to resistance in the SEQ ID NO:2 within the average recombination would be more determinant of whether an individual soybean plant would have a particular gene.
Applicant has not described providing as crossing the any Glycine canescens plant line would result in viable seeds to regenerate (claim 12). Singh et al. teaches the attempts to cross a hybrid between the wild perennial species G. canescens with domestic G. max results in sterile plants (col. 4, lines 30-33, lines 59-61, col. 5, lines 15-18). Therefore, it is not clear whether providing chromosomes from G. canescens would be able to pair with G. max to produce seeds for regeneration in any of the G. canescens x G. max hybrids. Instead, applicant has only described crossing lines of G. canescens to transfer the ASR genes (page 334, Table 4). Therefore, there is dearth of description of producing seeds for regeneration in any of the G. canescens x G. max hybrids by virtue of examples.
"The test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to one skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad Pharm, Inc, v EH Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Lockwood v. Amer. Airlines, ina, 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). "An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations. Lockwood, 107 F.3d at 1572, 41 USPG2d at 1966". While the written description requirement does not demand either examples or an actual reduction, actual "possession" or reduction to practice outside of the specification is not enough. Ariad Pharm, Inc. v. Eli Lilly & Co., 598 F,3d 1336,1352 (Fed. Cir. 2010). Rather, it is the specification itself that must demonstrate possession. Id.
Thus, based on the analysis above, Applicant has not met either of the two elements of the written description requirement as set forth in the court's decision in Eli Lilly. As a result, it is not clear that Applicant was has described the structure of claimed genus to have application as recited function at the time this application was filed.
Response to Argument for Rejection
Applicant's arguments 11/12/2025 have been fully considered but they are not persuasive.
Applicant asserts a list of favorable alleles located on SEQ ID NO: 2 are set forth in Table 2. Applicant asserts the table lists SNP names, their position within SEQ ID NO: 2, and for each SNP, the favorable allele (associated with rust resistance) and the unfavorable allele (associated with rust susceptibility) at that position. Applicant argues a screenshot extracted from page 142 of WIPO Pub. No. WO2021022026A2 (which is the publication of the PCT application to which the instant application claims priority) is provided below depicting a portion of Table 2, and with the recited allele highlighted. Applicant argues the depicted area clearly indicates that a T at position 570525 of SEQ ID NO: 2 is the favorable allele associated with ASR resistance. Applicant argues the same information can be extracted from the USPTO's Publication Site for Issued and Published Sequences (PSIPS) site as Lengthy Table US20220256795A 1-20220818-T0002, as referenced in Applicant's specification (Response to Rejection, page 4, second to last paragraph).
Applicant argues the alleged lack of support for the recitation of "a portion thereof" in reference to a portion of SEQ ID NO: 2 with the allele, Applicant disagrees. Applicant argues for the purposes of expediting prosecution and without acquiescing to the Examiner's remarks, Applicant has amended claim 14 to remove the recitation of "a portion thereof" (Response to Rejection, page 6, first paragraph).
Applicant argues the alleged lack of support for recitation of "a marker locus" in reference to a marker locus comprising a G. canescens ASR resistance allele associated with increased ASR resistance, Applicant disagrees. Applicant argues specification recites that a "locus" is "a position on a chromosome where a gene or marker or allele is located. Applicant argues in some embodiments, a locus may encompass one or more nucleotides (emphasis added, see paragraph [0065] of Applicant's specification). Applicant argues specification further recites that a polymorphism refers to a variation in the nucleotide sequence at a locus, wherein said polymorphism can be a single nucleotide polymorphism (SNP) (emphasis added, see paragraph [0078] of Applicant's specification). Applicant argues nonetheless, for the purposes of expediting prosecution, and without acquiescing to the Examiner's remarks, Applicant has amended claim 14 to remove the recitation of "marker locus".
Applicant's arguments have been fully considered but they are not persuasive since although the marker “T” is significantly linked to resistance at P<0.05 (Spec, page 3, lines 30-33 and Table 2) in a Bulk segregant analysis which is among the large number of markers with very wide peaks of significance ranging several megabases (see Table 2). This would be problematic since it does not clearly show the expected mapping resolution to show that the locus is within 1cM from the ASR resistance allele. The resolutions is further unclear because such wide peaks of significance ranging several megabases is produced in a small Bulk segreant population comprising 50 resistant F2s and 50 susceptible F2s (page 333, lines 1-14). For example, Lee et al. teaches mapping resolution is limited by mapping population size (page 1487, right last paragraph). For this reason there is dearth of description of detecting a ASR resistance allele located within 1cM of the “T” at position 570, 525 of SEQ ID NO: 2. Since applicant recite multiple favorable allele for rust resistance is located around the position 570, 525 of SEQ ID NO: 2, such combination of SNPs would have been more predictive to have linkage with the ASR resistance.
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Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 12 is rejected under 35 U.S.C. 102(a)(1) and/or (a) (2) as being anticipated by Singh et al. (US Patent No.: US 7,842,850 B2, Date of Patent:Nov.30, 2010).
Claim is drawn to a method for producing a Glycine max plant having increased resistance to ASR.
Regarding claim 12, Singh et al. claim 1 discloses a method of producing a hybrid between domesticated annual Glycine cultivar (i.e. G. max) with a wild perennial Glycine species which is G. calescence (claim 2) wherein the hybrid carries desirable agronomic trait (i.e. soybean rust resistance (claim 5)), obtaining seeds from a pod (claim 1 (d)), culturing seeds on seed maturation medium with growth hormones (i.e. embryo rescue) (claim 1 (h)), and producing backcross generation(claim 4) which would require producing the seeds and regenerating seeds.
Since the claim require any chromosomal internal from SEQ ID NO:2 that would comprise any fragment of SEQ ID NO:2 which is a chromosomal interval derived from G. canescens line accession PI595799 referred to herein as "Scaffold 000090F" which is 1, 966, 948 (i.e. ~2Mb) nucleotides long, and Scaffold 000090F has been mapped to G. canescens chromosome 14 (page 3, lines 21-23). The plant would have some fragment that would comprise at least dinucleotides from SEQ ID NO:2.
Therefore Sing et al. anticipates the claim 12.
Claim Rejections - 35 USC § 112 – Enablement
Claims 12-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The method of claim 12 and 13 which require Glycine canescens plant lines of “Pl440935, Pl483193, Pl595799,” but the Applicant has not shown that the parental inbred lines are accessible because it is not known and readily available to the public. The concepts of “known and readily available” are considered to reflect a level of public accessibility to a necessary component of an invention disclosure that is consistent with an ability to make and use the invention. To avoid the need for a deposit on this basis, the biological material must be both known and readily available - neither concept alone is sufficient. A material may be known in the sense that its existence has been published, but is not available to those who wish to obtain that particular known biological material. Likewise, a biological material may be available in the sense that those having possession of it would make it available upon request, but no one has been informed of its existence.
Applicants cannot rely upon a third party to enable their claims. Applicants are suggested to file a declaration stating that the inbred lines were widely known and available at the time of the invention. See Ex parte Humphreys 24 USPQ2d 1255, 1259 (BdPatApp&Int, 1992) which teaches that the ability of others to obtain material from a third party prior to and after the filing date of an application does not establish that upon issuance of a patent on such application that such material will continue to be accessible to the public.
Summary
No claim is allowed.
Claims 14 and 42 are free of prior art. The closest art is Burdon et al. (Year: 1988, Journal: Theoretical and Applied Genetics, 75, 923-928) (Cited and included in previous office action) which teaches analysis of genetic basis of resistance to the soybean rust pathogen Phakopsora pachyrhizi in a set of differential lines of the wild plant G. canescens showed that Asian soybean rust resistance caused by pathogen P. pachyrhizi was dominant and controlled by genes with major phenotypic effects (page 923, Abstract). The patentable distinction is that the Burdon et al. does not teach their method comprise their resistance allele is located within chromosomal interval comprising SEQ ID NO:2 and the resistance allele comprises a T at a position corresponding to position 570,525 of SEQ ID NO: 2 or wherein the ASR resistance allele is located within 1 cM of the T at position 570,525 of SEQ ID NO:2.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANTOSH SHARMA whose telephone number is (571)272-8440. The examiner can normally be reached Mon-Fri 8:00 AM - 5:00 PM.
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/SANTOSH SHARMA/Examiner, Art Unit 1663
/DAVID H KRUSE/Primary Examiner, Art Unit 1663