Detailed Action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 66-95 are pending.
Claims 70, 72-88 and 90-95 are withdrawn.
Claims 66-69, 71 and 89 are examined.
Election/Restrictions
Applicant’s election of Group I, claims 66-69, 71 and 89 and species anthra(1I,9-cd)pyrazo l-6(2H)-one:4-(4-F luorophenyl)-2-(4- methylsutfinylphenyl)-5-(4-pyridyl) 1H-imidazole in the reply filed on 4/6/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 66-69, 71 and 89 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11447786. Although the claims at issue are not identical, they are not patentably distinct from each other.
Applicant claims a method of generating a haploid plant embryo, the method comprising:
(a) inhibiting a kinase in a plant microspore to promote embryogenesis in the plant microspore, wherein the kinase is characterized by inhibition from the following kinase inhibitors: N-[(2R)-2,3-dihydroxypropoxy]-3,4-difluoro-2-(2-fluoro-4-iodoanilino)benzamide, anthra(1,9-cd)pyrazol-6(2H)-one:4-(4-Fluorophenyl)-2-(4- methylsulfinylphenyl)-5-(4-pyridyl)1H-imidazole, N-benzyl-2-(pyrimidin-4-ylamino)-1,3- thiazole-4-carboxamide, or a combination thereof;
(b) obtaining an embryogenic microspore from the plant microspore; and
(c) culturing the embryogenic microspore to generate the haploid plant embryo (claim 66).
Dependent claims require the method is non-transgenic (claim 67), wherein the microspore exhibits embryogenesis within 7 days of exposure to the kinase inhibitor (claim 68), wherein the plant microspore comprises a transgene (claim 69), wherein the plant microspore is obtained from maize, rice, sorghum, brassica, soybean, wheat, or cotton (claim 71) and wherein the plant microspore is wild type (claim 89).
The reference patent is drawn to a method of generating a haploid plant embryo comprising:
(a) providing a plant microspore with an embryogenesis inducing compound to promote microspore embryogenesis in the plant microspore, wherein the embryogenesis inducing compound is a kinase inhibitor selected from N-[(2R)-2,3-dihydroxypropoxy]-3,4-difluoro-2-(2-fluoro-4-iodoanilino)benzamide, anthra(1,9-cd)pyrazol-6(2H)-one:4-(4-Fluorophenyl)-2-(4-methylsulfinylphenyl)-5-(4-pyridyl)1H-imidazole, or N-benzyl-2-(pyrimidin-4-ylamino)-1,3-thiazole-4-carboxamide;
(b) isolating an embryogenic microspore from the plant microspore; and
(c) culturing the embryogenic microspore to generate the haploid plant embryo.
Dependent claims of the reference patent require the embryogenesis inducing compound is present in a tissue culture media, culturing the haploid plant embryo, contacting the haploid plant embryo with a chromosome doubling agent for a period sufficient to generate a doubled haploid plant embryo, the plant microspore is obtained from maize, rice, sorghum, brassica, soybean, wheat, or cotton.
The reference patent does not explicitly claim the method being limited to 7 days of exposure to the kinase inhibitor, the plant microspore comprising a transgene, the plant microspore being wild-type, and the method being non-transgenic.
One of ordinary skill in the art would have found it to be obvious to modify the method of the reference patent by limiting exposure of the microspore to the kinase inhibitor by 7 days because the reference patent contemplated many embodiments wherein the microspore was exposed to the kinase inhibitor for 7 days which was found to be effective (Example 1, column 45). Therefore, this would be an obvious variant of the claimed method of the reference patent.
One of ordinary skill in the art would have found it to be obvious to modify the method of the reference patent by having the microspore be either transgenic or wild-type because these encompass all possibility options, therefore any interpretation of the reference patent reads on at least one of these embodiments; further unless a specific phenotype would have a clear effect on the claimed method, one of ordinary skill in the art would not expect the microspore being transgenic or wild-type to have an effect on the method. Therefore, these would be obvious variants of the method claimed by the reference patent.
One of ordinary skill in the art would recognize that the method of the reference patent is non-transgenic because it does not encompass a transformation to a cell. Therefore, the instantly claimed limitation of the method being non-transgenic reads on the method claimed by the reference patent.
Conclusion
Claims 66-69, 71 and 89 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R BYRNES whose telephone number is (571)270-3935. The examiner can normally be reached 9:00 - 5:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bratislav Stankovic can be reached at (571) 270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID R BYRNES/Examiner, Art Unit 1662
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