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 .
Claim Status
Claims 1-15 are currently pending and under exam herein.
Claims 1-15 are rejected.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55 for EP20174872.0 filed on 05/15/2020. Acknowledgment is made of applicant's claim for foreign priority based on EP19208777.3 filed on 11/13/2019. It is noted, however, that applicant has not filed a certified copy of EP19208777.3 as required by 37 CFR 1.55. Receipt is acknowledged of PCT/EP2020/080623 (Filing Date: 11/02/2020).
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 05/11/2022, 11/26/2024, and 07/21/2025 were in compliance with the provisions of 37 CFR 1.97. One reference (Patent Application 20190174739) was lined through on the IDS filed on 07/21/2025 as this reference was previously listed in the IDS filed on 05/11/2022. Accordingly, the information disclosure statements were considered by the examiner.
Claim Rejections - 35 USC § 112
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.
Claims 4, 6, and 12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 4 recites the limitation "the suitable sensor arrangement". There is insufficient antecedent basis for this limitation because claim 2 recites the limitation “the sensor arrangement”. It is unclear if these claims (both dependent on Claim 1) are referring to the same or different sensor arrangements, in a state of pre or post selection. If claims 2 and 4 are referring to the same sensor, “suitable” may be removed from claim 4 to overcome this rejection. No claim is dependent on claim 4.
Claim 6 recites the limitation "the at least one benign organism". There is insufficient antecedent basis for this limitation in the claim because there is no prior reference to a benign organism. No claim is dependent on claim 6.
Claim 12 recites the limitation " the user". There is insufficient antecedent basis for this limitation in the claim because there is no prior reference to a user. No claim is dependent on claim 12.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In accordance with MPEP § 2106, claims found to recite statutory subject matter (Step 1: YES) are then analyzed to determine if the claims recite any concepts that equate to an abstract idea (Step 2A, Prong 1). In the instant application, the claims recite the following limitations that equate to an abstract idea:
Claim 1 recites the limitation - selecting from a database, using the electronic device, a sensor arrangement suitable for selectively genotyping at least one relevant harmful organism. Based on the broadest reasonable interpretation, selecting from a database could include picking a sensor arrangement from a list, which can practically be done by a human mind. This draws the limitation to a mental process and classifies the limitation as an abstract idea.
Claim 5 recites the limitation - processing the result signal, using the electronic device, for determining whether the one or more of the at least one relevant harmful organism is present in the environmental sample. Based on the broadest reasonable interpretation, determining whether an organism is present in a sample could include viewing a data output, which can practically be done by a human mind. This draws the limitation to a mental process and classifies the limitation as an abstract idea.
Claim 6 recites the limitation - processing the result signal, using the electronic device processing means, for also determining whether the at least one benign organism is present in the environmental sample. Based on the broadest reasonable interpretation, determining whether an organism is present in a sample could include viewing a data output, which can practically be done by a human mind. This draws the limitation to a mental process and classifies the limitation as an abstract idea.
Claim 8 recites the limitation - wherein the method further comprises determining, by analyzing the field map via the electronic device, at least one site where another measurement or detection is required. Based on the broadest reasonable interpretation, determining a site based on a map could include pointing to a location on a map, which could practically be done by a human mind. This draws the limitation to a mental process and classifies the limitation as an abstract idea.
Claim 9 recites the limitation - determining using the electronic device, in response to any of the crop data, the region data, and the selected sensor arrangement; a sampling method for collecting the environmental sample. Based on the broadest reasonable interpretation, determining a sampling method could include picking a method from a list, which can practically be done by a human mind. This draws the limitation to a mental process and classifies the limitation as an abstract idea.
Claim 10 recites the limitation - determining, in response to the result signal or the processed result signal, a treatment method for controlling at least one of the at least one relevant harmful organism present on the crop site. Based on the broadest reasonable interpretation, determining a treatment method could include picking a method from a list, which can practically be done by a human mind. This draws the limitation to a mental process and classifies the limitation as an abstract idea.
Claim 11 recites the limitation - determining, by analyzing the field map via the electronic device, a treatment method for controlling at least one or more harmful organisms present on the crop site. Based on the broadest reasonable interpretation, determining a treatment method could include picking a method from a list, which can practically be done by a human mind. This draws the limitation to a mental process and classifies the limitation as an abstract idea.
Claims 14 and 15 are drawn to the same limitations and abstract idea as claim 1.
Claims 2-15 are dependent on claim 1.
Claims 6-13 are dependent on claim 5.
Claims 12-13 are dependent on claim 11.
These limitations recite concepts of analyzing, organizing and identifying information that are so generically recited that they can be practically performed in the human mind as claimed, which falls under the “Mental processes” grouping of abstract ideas. These recitations are similar to the concepts of collecting information, analyzing it and displaying certain results of the collection and analysis in Electric Power Group, LLC, v. Alstom (830 F.3d 1350, 119 USPQ2d 1739 (Fed. Cir. 2016)), organizing and manipulating information through mathematical correlations in Digitech Image Techs., LLC v Electronics for Imaging, Inc. (758 F.3d 1344, 111 U.S.P.Q.2d 1717 (Fed. Cir. 2014)) and comparing information regarding a sample or test to a control or target data in Univ. of Utah Research Found. v. Ambry Genetics Corp. (774 F.3d 755, 113 U.S.P.Q.2d 1241 (Fed. Cir. 2014)) and Association for Molecular Pathology v. USPTO (689 F.3d 1303, 103 U.S.P.Q.2d 1681 (Fed. Cir. 2012)) that the courts have identified as concepts that can be practically performed in the human mind or mathematical relationships. Therefore, these limitations fall under the “Mental process” groupings of abstract ideas. As such claims 1-15 recite an abstract idea (Step 2A, Prong 1: YES).
Claims found to recite a judicial exception under Step 2A, Prong 1 are then further analyzed to determine if the claims as a whole integrate the recited judicial exception into a practical application or not (Step 2A, Prong 2). These judicial exceptions are not integrated into a practical application because the claims do not recite an additional element that reflects an improvement to technology (MPEP § 2106.04(d)(1)). Rather, the claims provide insignificant extra-solution activity (MPEP § 2106.05(g)) and provide mere instructions to apply a judicial exception (MPEP § 2106.05(f)). Specifically, the claims recite the following additional elements:
Claim 1 recites receiving, at an electronic device, a crop data indicative of the type of a crop. Claim 1 also recites receiving, at the electronic device, a region data indicative of at least one harmful organism that may be present at or around the location of the crop. Claim 1 also recites wherein the at least one relevant harmful organism is among the at least one harmful organism, and wherein the selection is performed in response to the crop data and the region data.
Claim 2 recites wherein the sensor arrangement is suitable for in-situ genotyping the at least one relevant harmful organism.
Claim 3 recites wherein the method is applied for detecting a DNA-sequence that is indicative of a pesticide resistance, and wherein the sensor arrangement is configured to detect the DNA-sequence that is indicative of the pesticide resistance.
Claim 4 recites wherein the method further comprises outputting, via a human-machine interface functionally coupled to the electronic device, information related to the suitable sensor arrangement.
Claim 5 recites wherein the method further comprises performing, in-situ using the sensor arrangement connected at a sensor interface, genotyping of the at least one relevant harmful organism from an environmental sample obtained from a crop site, and generating a result signal via the sensor arrangement at the sensor interface.
Claim 7 recites generating a site result data, using the electronic device processing means, by combining the processed result signal and the location data of the crop site where the environmental sample was collected; storing, in at least one database, the site result data; combining data from a plurality of the site result data to obtain a field map representative of the territorial spread of any of the one or more relevant organisms.
Claim 12 recites providing, using the electronic device, the information on the treatment method as a recommendation to the user.
Claim 13 recites performing a treatment in accordance to the treatment method to control the at least one of the at least one relevant harmful organism detected on the crop site.
Claims 14 recites an electronic device configured to perform the steps of claim 1.
Claims 15 recites a non-transitory computer-readable medium having instructions encoded thereon that, when executed by a processing device, cause the processing device to carry out the method steps of claim 1.
There are no limitations that indicate that the claims require anything other than generic computing systems. As such, these limitations equate to mere instructions to implement the abstract idea on a generic computer that the courts have stated does not render an abstract idea eligible in Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984. There is no indication that these steps are affected by the judicial exception in any way and thus do not integrate the recited judicial exception into a practical application. Additionally, the steps for treating the harmful organism do not recite a “particular” treatment as there is no indication of the type treatment that is applied that would have more than a nominal or insignificant relationship to the exception. Rather, these limitations equate to a step of “administering a suitable medication” that merely apply the exception in a generic way and do no integrate the recited exception into a practical application (see MPEP 2106.04(d)(2)). As such, claims 1-15 are directed to an abstract idea (Step 2A, Prong 2: NO).
Claims found to be directed to a judicial exception are then further evaluated to determine if the claims recite an inventive concept that provides significantly more than the judicial exception itself (Step 2B). The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims recite additional elements that equate to mere instructions to apply the recited exception in a generic way or in a generic computing environment. The claims also recite additional elements that represent insignificant extra-solution activities. The claims also recite additional elements that represent well-understood, routine, and conventional activities. The instant claims recite the following additional elements:
Claim 1 recites receiving, at an electronic device, a crop data indicative of the type of a crop. Claim 1 also recites receiving, at the electronic device, a region data indicative of at least one harmful organism that may be present at or around the location of the crop. Claim 1 also recites wherein the at least one relevant harmful organism is among the at least one harmful organism, and wherein the selection is performed in response to the crop data and the region data.
Claim 2 recites wherein the sensor arrangement is suitable for in-situ genotyping the at least one relevant harmful organism.
Claim 3 recites wherein the method is applied for detecting a DNA-sequence that is indicative of a pesticide resistance, and wherein the sensor arrangement is configured to detect the DNA-sequence that is indicative of the pesticide resistance.
Claim 4 recites wherein the method further comprises outputting, via a human-machine interface functionally coupled to the electronic device, information related to the suitable sensor arrangement.
Claim 5 recites wherein the method further comprises performing, in-situ using the sensor arrangement connected at a sensor interface, genotyping of the at least one relevant harmful organism from an environmental sample obtained from a crop site, and generating a result signal via the sensor arrangement at the sensor interface.
Claim 7 recites generating a site result data, using the electronic device processing means, by combining the processed result signal and the location data of the crop site where the environmental sample was collected; storing, in at least one database, the site result data; combining data from a plurality of the site result data to obtain a field map representative of the territorial spread of any of the one or more relevant organisms.
Claim 12 recites providing, using the electronic device, the information on the treatment method as a recommendation to the user.
Claim 13 recites performing a treatment in accordance to the treatment method to control the at least one of the at least one relevant harmful organism detected on the crop site.
Claims 14 recites an electronic device configured to perform the steps of claim 1.
Claims 15 recites a non-transitory computer-readable medium having instructions encoded thereon that, when executed by a processing device, cause the processing device to carry out the method steps of claim 1.
As discussed above, there are no additional limitations to indicate that the claims require anything other than generic computer components in order to carry out the recited abstract idea in the claims. Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984. MPEP 2106.05(f) discloses that mere instructions to apply the judicial exception cannot provide an inventive concept to the claims. As specified in MPEP 2106.05(g), extra-solution activities can be understood as incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Insignificant extra-solution activities include mere data gathering, selecting a particular data source or type of data to be manipulated, and insignificant application. The additional elements also contain limitations recognized as well-understood, routine, and conventional activities. Genetic sequencing and sequence detection are well-established practices in the art (Shendure et al. 2017. Nature, 550: 345–353. DOI: 10.1038/nature24286, Published October 11, 2017). Additionally, the courts have recognized detecting DNA in a sample as a well‐understood, routine, and conventional laboratory technique when claimed in a merely generic manner (MPEP 2106.05(d)).
The additional elements do not comprise an inventive concept when considered individually or as an ordered combination that transforms the claimed judicial exception into a patent-eligible application of the judicial exception. Therefore, the claims do not amount to significantly more than the judicial exception itself (Step 2B: No). As such, claims 1-15 are not patent eligible.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8, 10-12, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Bilodeau et al. (2019, Journal of Pest Science, 92:71–82. DOI: 10.1007/s10340-018-1001-1. Published July 6, 2018), hereafter referred to as Bilodeau et al., in view of Roe et al. (2019, Journal of Pest Science, 92: 51-70. DOI: 10.1007/s10340-018-1027-4. Published August 20, 2018), hereafter referred to as Roe et al.
Claim 1 is directed to a method drawn to the following limitations via an electronic device:
i. receive crop data indicative of a type of crop
ii. receive region data indicative of a harmful organism
iii. select a sensor arrangement from a database to genotype the harmful organism in response to the crop and region data
Claim 2, which is dependent on claim 1, contains an additional limitation - the sensor arrangement is suitable for in-situ genotyping the at least one relevant harmful organism.
Claim 3, which is dependent on claim 1, contains an additional limitation - the DNA sequencing method and sensor arrangement is applied for detecting pesticide resistance.
Claim 4, which is dependent on claim 1, contains an additional limitation - output information related to the suitable sensor arrangement.
Claim 5, which is dependent on claim 1, contains the additional limitations:
i. perform in situ genotyping of the harmful organism from an environmental sample obtained from a crop site using the sensor arrangement
ii. generate a result signal
iii. process the result signal to determine if the harmful organism was present in the sample
Claim 6, which is dependent on claim 5, contains an additional limitation - process the result signal to determine if a benign organism was present in the sample.
Claim 7, which is dependent on claim 5, contains the additional limitations:
i. generate site result data by combining the processed result signal and the location data of the crop site where the environmental sample was collected
ii. store the site result data in a database
iii. combine multiple site result data to form a field map representative of the spread of a relevant organism
Claim 8, which is dependent on claim 7, contains an additional limitation -analyze the field map to determine where more sampling is needed.
Claim 10, which is dependent on claim 5, contains an additional limitation - determine a treatment method for controlling the harmful organism based on the result or processed result signal.
Claim 11, which is dependent on claim 7, contains an additional limitation - determine a treatment method based on the field map.
Claim 12, which is dependent on claim 11, contains an additional limitation - provide the recommended treatment information to a user.
Claim 14 is drawn to an electronic device implementing the limitations of Claim 1.
Claim 15 is drawn to a non-transitory computer-readable medium implementing the limitations of Claim 1 when executed by a processing device.
Bilodeau et al. teaches an electrical device capable of receiving data, including crop data (Phenotype, origin) (Claims 1, 14, 15, Limitation i) and region data indicative of at least one harmful organism (Geographical data) (Claims 1, 14, 15, Limitation ii), and a user interface for making a selection (Claims 1, 14, 15, Limitation iii) (Page 76, Figure 2). Bilodeau et al. also teaches a sensor arrangement suitable for in-situ genotyping if a harmful organism (Page 75, Column 1, Paragraph 1) (Claim 2). Bilodeau et al. also teaches an electronic device to output the sensor information (Page 76, Figure 2) (Claim 4). Bilodeau et al. also teaches genotyping from an environmental sample can be done in-situ (within a few hours, Page 74, Column 2, Paragraph 3) (Claim 5). Bilodeau et al. also teaches processing the genotyping signal from an environmental sample to determine if a benign (non-target) organism was present in the sample (Page 75, Figure 1) (Claim 6). Bilodeau et al. also teaches combining the sequence/identification information and location information from multiple sites to form a map (risk map) (Page 73, Column 2, Paragraphs 2 and 3) which is stored in a database (Page 76, Figure 2) (Claim 7). Bilodeau et al. also teaches using a map to determine (identify high risk areas) where more sampling or detection is needed (target surveillance efforts) (Page 76, Figure 2) (Claim 8). Bilodeau et al. also teaches using a result or processed result signal (genotype/identity data) to determine a treatment method (identify optimal management option) (Page 76, Figure 2) (Claim 10). Bilodeau et al. also teaches using a map to determine a treatment method (identify optimal management option) (Page 76, Figure 2) (Claim 11). Bilodeau et al. also teaches using an electronic device with a display to provide the recommended treatment method (optimal management option) to a user (Page 76, Figure 2) (Claim 12).
Bilodeau et al. does not teach a database of sensor arrangement suitable for selectively genotyping at least one relevant harmful organism where a selection is made based on crop and region data (Claims 1, 14, 15, Limitation iii). Bilodeau et al. also does not teach the DNA sequencing method and sensor arrangement is applied for detecting pesticide resistance (Claim 3). Bilodeau et al. also does not teach performing genotyping of a harmful organism from an environmental sample to determine if the harmful organism was present in the sample (Claim 5).
Roe et al. teaches linking data, including crop (habitat) and region (location)/species information to a multitude of sensor types (tools) to collect sequence information from a harmful organism (Page 53, Figure 1) (Claims 1, 14, 15, Limitation iii). Roe et al. also teaches the sequencing method and sensor arrangement applied to the detection of pesticide (insecticide) resistance (Page 57, Table 3, Biological Context) (Claim 3). Roe et al. also teaches performing genotyping of a harmful organism from an environmental sample to determine if the harmful organism was present in the sample (Page 56, Column 2, First Paragraph) (Claim 5).
An invention would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date of the invention if some motivation or suggestion in the prior art would have led that person to combine the prior art teachings to arrive at the claimed invention. Roe et al. is directly suggested by Bilodeau et al. as it is prominently cited (8 times). Bilodeau et al. (part 2) and Roe et al. (part 1) are also two pieces of a pair published to cover a single topic (biosurveillance). The first part focuses on integration and application of genomic tools for surveillance while the second part considers adoption of genomic tools for surveillance by end user communities and barriers to integration. Someone of ordinary skill in the art the time of the effective filling date would have been motivated to combine these references in order to understand and utilize the genomic tools, techniques, and principles that these references provide to aid the detection, identification, and management of harmful organisms (biosurveillance) within cropping systems. Therefore, it would have been obvious to someone of ordinary skill in the art the time of the effective filling date to combine the methods from both of the references indicated above.
Furthermore, one of ordinary skill in the art would predict that the methods taught by Roe et al. could be readily added to the methods of Bilodeau et al. with a reasonable expectation of success because the articles cover complementally aspects of one technology (genomic tools used for biosurveillance). Also, as the articles are two parts of a pair, they are intended to be interpreted in combination. Accordingly, claims 1-8, 10-12, and 14-15 taken as a whole would have been prima facie obvious before the effective filing date.
Claims 9 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Bilodeau et al. (2019, Journal of Pest Science, 92:71–82. DOI: 10.1007/s10340-018-1001-1. Published July 6, 2018), hereafter referred to as Bilodeau et al., in view of Roe et al. (2019, Journal of Pest Science, 92: 51-70. DOI: 10.1007/s10340-018-1027-4. Published August 20, 2018), hereafter referred to as Roe et al. and in further view of Valentin et al. (2018, Frontiers in Ecology and the Environment, 1-17. Doi: 10.1002/fee.1811. Author Manuscript Preprint used and Published May 7, 2018), hereafter referred to as Valentin et al.
Claim 9, which is dependent on claim 5, contains an additional limitation – determine, in response to any of the crop, region, and the selected sensor arrangement data, a method for collecting an environmental sample.
Claim 13, which is dependent on claim 11, contains an additional limitation – determine a treatment method for controlling the harmful organism based on the field map.
Bilodeau et al., in view of Roe et al., teaches claims 5 and 11. However, Bilodeau et al. and Roe et al. fail to disclose determining, in response to any of the crop, region, and the selected sensor arrangement data, a method for collecting an environmental sample (Claim 9). Bilodeau et al. and Roe et al. also fail to disclose determining a treatment method for controlling the harmful organism based on the field map (Claim 13).
Valentin et al. teaches determining a sampling method to collect an environmental sample (eDNA from rinsing leaf litter in water) based on crop (host plant), region (anticipated harmful organism was brown marmorated stink bug), and selected sensor (genetic tool) data (Page 4, Paragraphs 1 and 2) (Claim 9). Valentin et al. also teaches performing the recommended treatment method to control the at least one harmful organism detected at the crop site (only infected locations would need treatment to control) (Page 13, Panel 1, Paragraph 2) (Claim 13).
An invention would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date of the invention if some motivation in the prior art would have led that person to combine the prior art teachings to arrive at the claimed invention. Valentin et al., Roe et al., and Bilodeau et al. each describe the use of environmental DNA (eDNA) for identifying and monitoring harmful organisms. Someone of ordinary skill in the art at the time of the effective filling date would have been motivated to combine these references in order to implement advances to sequencing technology to identify harmful organisms from eDNA collected from an environmental sample. Therefore, it would have been obvious to someone of ordinary skill in the art the time of the effective filling date to combine the methods from both of the references indicated above.
Furthermore, one of ordinary skill in the art would predict that the methods taught by Valentin et al. could be readily added to the methods Roe et al. and Bilodeau et al. with a reasonable expectation of success because the articles cover complementary tactics for the utilization of DNA to detect and identify organisms present in a sample. Accordingly, claims 9 and 13 taken as a whole would have been prima facie obvious before the effective filing date.
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 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); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5, and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of copending Application No. 18036122 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Instant claim 1 is directed to a method drawn to the following limitations via an electronic device:
i. receive crop data indicative of a type of crop
ii. receive region data indicative of a harmful organism
iii. select a sensor arrangement from a database to genotype the harmful organism in response to the crop and region data
Instant claim 5, which is dependent on Instant claim 1, contains the additional limitations:
i. perform in situ genotyping of the harmful organism from an environmental sample obtained from a crop site using the sensor arrangement
ii. generate a result signal
iii. process the result signal to determine if the harmful organism was present in the sample
Instant claim 10, which is dependent on Instant claim 5, contains an additional limitation - determine a treatment method for controlling the harmful organism based on the result or processed result signal.
The reference patent application (Application No. 18036122) contains the following claims that anticipate the instant application claims:
Reference claim 1 is directed to a computer-implemented method for determining at least one treatment parameter selected from the group including at least one method for a treatment parameter in an agricultural field (instant claim 10). Reference claim 1 is also directed to initiating taking at least one sample of at least one organism which existed or is existing or is expected to exist, in the agricultural field, conducting genetic analysis using the at least one sample of the at least one organism, obtaining therefrom genetic information of the at least one organism (instant claim 5.i), wherein the genetic analysis is based on at least one of the technologies selected from the group (instant claim 1.iii). Reference claim 1 is also directed to receiving the genetic information of the at least one organism which existed or is existing or is expected to exist in the agricultural field (instant claim 5.ii and 5.iii). Reference claim 1 is also directed to the genetic analysis of the at least one organism is conducted using a portable device operated in the agricultural field (instant claim 5.i).
Reference claim 2, which is dependent on refence claim 1, is directed to the method further comprising the receiving genetic information of the at least one organism which existed or is existing or is expected to exist in the agricultural field includes agricultural crop data comprising information about an agricultural crop species grown (instant claim 1.i) or geographical data relating to a location of the agricultural field (instant claim 1.ii).
All limitations of instant claims 1, 5, and 10 are therefore anticipated by reference claims 1 and 2. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blake Elkins whose telephone number is (571)272-2649. The examiner can normally be reached Monday-Friday 8-4PM.
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/B.H.E./Examiner, Art Unit 1687
/Karlheinz R. Skowronek/Supervisory Patent Examiner, Art Unit 1687