DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 26 August 2025 has been entered.
Claims 1-17 and 19-20 are pending.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 1-17 and 19-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Mason (4 May 2021, US 10,993,402) in view of Eby (2009, US 7,838,736).
The rejection is modified from the rejection set forth in the Office action mailed 27 May 2025. Applicant’s arguments and the 2nd Mason Declaration, both filed 26 August 2025, have been fully considered but they are not persuasive.
The claims are drawn to plants and seeds of soybean cultivar 14430202, the plant and seeds comprising single locus conversion or transgene, methods of producing them, methods of breeding with 14430202, and methods of producing a commodity product.
The instant specification provides a description of soybean cultivar 14430202 that shows it is a genus of plants, as it segregates for two alleles of each of two single gene traits, flower and hilum color (Table 1). The value range for quantitative traits like lodging, height, seed size, percent protein and oil, and relative maturity is not provided in Table 1, but for purposes of this rejection it is assumed that 14430202 also segregates for at least some of the QTLs affecting each of these traits.
One of the parents of 14430202 is 14517211-09 (¶68).
Mason teaches 14517211-09, which was renamed 87390112 (column 6, line 46; Table 1). Like the instant genus of plants, 14517211-09 has yellow, dull seed coats, yellow cotyledons, ovate leaves, indeterminate growth, gray pubescence, tan pods, the DAS-44406-6 herbicide resistance event, and the Rps1c Phytophthora root rot resistance gene (Table 1). Like some members of the instant genus, 14517211-09 has purple flowers and imperfect black hila (Table 1). The values for quantitative traits like lodging, height, seed size, percent protein and oil, and relative maturity are similar to those for the instant cultivar.
Mason claims a cell and tissue culture of 14517211-09 (claims 3-4), methods of crossing 14517211-09 with itself or another soybean plant (claims 5-6), F1 progeny seeds (claim 7), introducing transgenes into 14517211-09, including those conferring male sterility, herbicide resistance, insect or pest resistance, disease resistance, modified fatty acid metabolism, abiotic stress tolerance, or modified carbohydrate metabolism, and plants thereby produced (claims 8-10), a method of introducing a single locus conversion into 14517211-09, including one conferring male sterility, herbicide resistance, insect or pest resistance, disease resistance, modified fatty acid metabolism, abiotic stress tolerance, or modified carbohydrate metabolism, and plants thereby produced (claims 11-13), a method of using the plant to produce a different inbred soybean plant (claims 14-16), a method of mutagenizing 14517211-09 and plant thereby produced (claims 17-18), and methods of producing commodity products, including protein isolates, protein concentrate, hulls, meal, flour and oil (claims 19-20). The claims are identical to the instant claims except for the name of the variety.
Mason claims 14517211-09 further comprising a single locus conversion (claim 13) and a method of making it by backcrossing (claim 11), including where the conversion confers pest resistance (claim 12). To understand the scope of those claims, Mason’s specification is reviewed below.
Mason defines a single locus conversion as follows (column 6, lines 16-25):
Single Locus Converted (Conversion). Single locus converted (conversion), also known as coisogenic plants, refers to plants which are developed by a plant breeding technique called backcrossing and/or by genetic transformation to introduce a given locus that is transgenic in origin, wherein essentially all of the morphological and physiological characteristics of a soybean variety are recovered in addition to the characteristics of the locus transferred into the variety via the backcrossing technique or by genetic transformation.
Mason tells us that converted plants produced by backcrossing will have essentially all of the morphological and physiological characteristics of the recurrent parent, in addition to the single transferred gene from the nonrecurrent parent (column 24, lines 15-30):
The resulting progeny from this cross are then crossed again to the recurrent parent and the process is repeated until a soybean plant is obtained wherein essentially all of the morphological and physiological characteristics of the recurrent parent are recovered in the converted plant, in addition to the single transferred gene from the nonrecurrent parent (column 24, lines 31-55).
Mason provides a definition of “essentially all” in a paragraph where he tells us that converted plants will have “occasional variant traits” and are part of his invention (column 24, lines 13-30):
When the term "soybean plant" is used in the context of the present invention, this also includes any single gene conversions of that cultivar. The term single gene converted plant as used herein refers to those soybean plants which are developed by a plant breeding technique called backcrossing wherein essentially all of the morphological and physiological characteristics of a cultivar are recovered in addition to the single gene transferred into the cultivar via the backcrossing technique. By "essentially all" as used herein in the context of morphological and physiological characteristics it is meant that the characteristics of a plant are recovered that are otherwise present when compared in the same environment, other than occasional variant traits that might arise during backcrossing or direct introduction of a transgene. It is understood that a locus introduced by backcrossing may or may not be transgenic in origin, and thus the term backcrossing specifically includes backcrossing to introduce loci that were created by genetic transformation.
Mason further tells us backcross converted plants will have traits that vary from those of 14517211-09 (column 26, lines 54-61):
The modified soybean cultivar 87390112 may be further characterized as having the morphological and physiological characteristics of soybean cultivar 87390112 listed in Table 1 as determined at the 5% significance level when grown in the same environmental conditions and/or may be characterized by percent similarity or identity to soybean cultivar 87390112 as determined by SSR markers.
Mason tells us to introduce single locus conversions into 14517211-09 by backcrossing (column 25, lines 23-29):
Cultivar 87390112 represents a new base genetic cultivar into which a new locus or trait may be introgressed. Direct transformation and backcrossing represent two important methods that can be used to accomplish such an introgression. The term backcross conversion and single locus conversion are used interchangeably to designate the product of a backcrossing program.
Mason’s specification teaches that with the help of marker-assisted selection a backcross conversion can be made in as few as two backcrosses (column 25, lines 37-41).
Mason teaches that “it is understood by those of ordinary skill in the art that for single gene traits that are relatively easy to classify, the backcross method is effective and relatively easy to manage” (column 25, lines 55-58) and pest resistance is listed as such a trait (column 25, lines 10-16). Resistance to soybean cyst nematode is desirable (column 16, lines 22-26).
Mason does not teach 14517211-09 with the rhg1 soybean cyst nematode resistance gene.
Eby teaches a soybean variety with the rhg1 soybean cyst nematode resistance gene (Table 1).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to backcross the rhg1 soybean cyst nematode resistance gene from Eby’s soybean plant into 14517211-09. One of ordinary skill in the art would have been motivated to do so because doing so would confer soybean cyst nematode resistance to 14517211-09, allowing the plant to survive in a field infested with soybean cyst nematodes. Additionally, Mason suggests introducing soybean cyst nematode resistance into 14517211-09 (column 16, lines 22-26).
14517211-09 and the instant 14430202 have different values for relative maturity, lodging, plant height, seeds/lb, and % seed oil and protein. Given that instant 14430202 is a genus of plants and that the data in the instant Table 1 does not provide ranges and/or standard deviation for the values, it is not clear if these differences are merely a difference in degree that would be expected by one of ordinary skill in the art introgressing one trait from one plant into another or if they are differences in kind. It is also not clear how much any differences are due to growth of 14517211-09 and the instantly claimed genus of plants in different environments.
In light of Mason’s specification discussed above, one of ordinary skill in the art would interpret Mason’s claims 11-13 as encompassing a backcrossing method with as few as two backcrosses, where the trait backcrossed in is soybean cyst nematode resistance, and would interpret the single locus converted plant of Mason’s claim 13 as encompassing plants that are not invariant from 14517211-09’s traits, other than the conversion, but that differ from 14517211-09 to some undefined extent and have “occasional” variant traits relative to it.
Thus, one of ordinary skill in the art would have expected variant traits to be encompassed within the single locus converted plant claimed in Mason’s claim 13 or produced by Mason’s methods of claims 11 and 12. One of ordinary skill in the art would have expected the single locus converted plant to not be otherwise identical to 14517211-09 because Mason tells us that converted plants produced by backcrossing will have essentially all of the morphological and physiological characteristics of the recurrent parent, in addition to the single transferred gene from the nonrecurrent parent (column 24, lines 13-30), and that backcross converted plants will have traits that vary from those of 14517211-09 (column 26, lines 54-61).
One of ordinary skill in the art would have introduced transgenes and single locus conversions into the plant, including those conferring male sterility, herbicide resistance, insect or pest resistance, disease resistance, modified fatty acid metabolism, abiotic stress tolerance, or modified carbohydrate metabolism, as taught by Mason. One of ordinary skill in the art would have been motivated to do so because would introduce further desired traits; for example, insect resistance would allow the plants to grown in areas with pests.
One of ordinary skill in the art would have crossed the resulting soybean with itself or another soybean plant, including a series of crosses to produce a soybean plant derived from the original line, including F1 progeny seeds and plants, as taught by Mason. One of ordinary skill in the art would have been motivated to do so because this would allow one to introduce 114517211-09’s traits into other, new soybean lines.
One of ordinary skill in the art would have mutagenized the resulting soybean, as taught by Mason. One of ordinary skill in the art would have been motivated to do so because this would allow one to introduce new traits into 14517211-09.
One of ordinary skill in the art would have produced commodity products, including protein isolates, protein concentrate, hulls, meal, flour and oil from the soybean, as taught by Mason. One of ordinary skill in the art would have been motivated to do so because these are the economically important products from soybeans and ones of the main reasons farmers grow soybeans.
Response to Arguments
Applicant urges that the 1st Mason Declaration provided a comparative analysis that demonstrated that the phenotypes of 14430202 and the instant plant differ significantly in at least yield, relative maturity, and height (response pg 6).
This is not found persuasive. Instant 14430202 is a genus of plants; the specification shows it segregates for two single gene traits, flower and hilum color (Table 1). One of ordinary skill in the art would not expect this segregation to be limited to these two genes, but would expect 14430202 to segregate for other genes, including at least some of the QTLs affecting quantitative traits like lodging, height, seed size, percent protein and oil, and relative maturity.
The 1st Mason Declaration did not show that no plants that are part of the genus that is 14430202 do not have yield, relative maturity, and height values that differ significantly from 114517211-09 or from 114517211-09 into which rhg1 has been backcrossed.
All the 1st Mason Declaration did was compare the average values for yield, relative maturity, and height for the genus of 14430202 plants with the average values for yield, relative maturity, and height for 114517211-09. A comparison of averages does not show that 114517211-09 + rhg1 plants are not species of the genus that is 14430202.
The Declaration states the data in the 1st Mason Declaration is a valid means to compare the yield, lodging resistance, relative maturity, and height of soybean cultivar 14430202 and 87390112 without confounding environmental influence (Declaration ¶5).
This is not found persuasive.
The data the 1st Mason Declaration only compared the average values for yield, relative maturity, and height for the genus of 14430202 plants with the average values for yield, relative maturity, and height for 114517211-09, which does not appear to be a genus of plants. A comparison of these averages does not show that 114517211-09 + rhg1 plants are not species of the genus that is 14430202.
Applicant urges and the Declaration states that a two-tailed t-test relies on the variability within each sample to determine whether the observed difference between sample means is statistically significant, incorporating the variability within each group; more within-group variation means less certainty about the difference between group and increased variation within a sample makes it harder to achieve statistical significance (response pg 6, Declaration ¶6).
This is not found persuasive. The data produced from the instantly claimed genus of 14430202 plants will have greater variability than the data produced from 114517211-09, which does not appear to be a genus of plants. Applicant has not shown that 14430202 does not segregate for alleles that contribute to yield, relative maturity, and height like it does for qualitative traits like flower and hilum color. The statistical analysis does not show that 114517211-09 + rhg1 plants are not species of the genus that is 14430202.
Applicant urges and the Declaration states that that the results reflect not just the difference between group means, but also how much variability exists within each group (response pg 7, Declaration ¶6).
This is not found persuasive because the comparison is not between two groups with similar variability. The comparison was between a group that is a genus with greater variability than the species that is the other group.
Applicant urges and the Declaration states that any alleged variation within plants of soybean cultivar 14430202 is already accounted for in Exhibit A and the Action’s assertions regarding segregating traits within soybean cultivar 14430202 are not pertinent to the claimed cultivar’s significantly increased yield, significantly decreased relative maturity, and significantly decreased height and data and statistical analysis that incorporates sample variance is a reliable indicator of the performance traits that can be used to unambiguously distinguish the claimed and referenced varieties (response pg 7, Declaration ¶7).
This is not found persuasive. Segregating traits within soybean cultivar 14430202 are most definitely pertinent to its phenotype. One of ordinary skill in the art would not expect 14430202 to not segregate for other genes, including alleles that contribute to yield, relative maturity, and height, like it does for flower and hilum color. Applicant has not shown that the segregating alleles for flower and hilum color are outliers in the genetics of 14430202 and that it does not segregate for other alleles.
Applicant urges and the Declaration states that Exhibit A indicates that the phenotype of soybean cultivar 14430202 significantly differs from 87390112 in at least yield, relative maturity, and height, and a soybean farmer presented with that data would conclude the same (response pg 7, Declaration ¶8).
This is not found persuasive. The data shows that the average phenotype of a genus of plants differ from the phenotype of a species of plants, but it does not show that that species or that species plus an obvious gene are not members of that genus. For example, envision a genus comprising the numbers 7 and 8 and 9; this genus has an average of 8. The species 7 has an average of 7, which differs from the average of the genus. However, this difference in average does not show that 7 is not a member of the genus comprising 7, 8 and 9. The extent of overlap of the ranges for yield, maturity, and height data for 14430202 and 14517211-09 is critical information in determining if 14430202 is non-obvious over the cited references.
14430202 is a genus of plants, as reflected in its segregating for flower and hila colors. One of ordinary skill in the art would expect it to segregate for numerous other traits. Providing the ranges for yield, maturity, and height is critical for determining whether plants produced by backcrossing rhg1 into 14517211-09 are species of the genus of plants that are 14430202.
Further, a soybean farmer is not one of ordinary skill in the soybean breeding art.
The Declaration states that the soybean yield exhibited by the claimed cultivar provides a significant improvement over the referenced cultivar 87390112; this difference is practically significant and highly valued by breeders and farmers alike and the real-world impact of a significant increase in yield is critically important in view of the millions of acres of soybeans planted in the US every year. The practical, real world impact planting earlier maturing varieties can help soybean farmers reduce the potential for detrimental delays during harvest; and short plants can reduce crop loss due to lodging (Declaration ¶9).
This is not found persuasive. As discussed above, Applicant has not shown that the plant made obvious by the prior art is not a species of the genus that is the claimed plant. Any difference in yield, maturity or height for a genus of plants does not demonstrate that a plant made obvious by the prior art is not be a species in that genus. Applicant has not provided any evidence to back up their assertions regarding potential for detrimental delays during harvest, the real-world impact of a significant increase in yield, or even height.
The Declaration states that the significant performance differences, including a significant increase in yield, would not be expected; significant improvements to existing soybean cultivars are not routine and there would have been no expectation that introducing a rhg1 allele would yield significant improvements in key agronomic traits, including yield and 14430202 would not be produced (Declaration ¶10).
This is not found persuasive. 14430202 has the rhg1 allele, not present in 114517211-09. rhg1 confers soybean cyst nematode resistance. Plants with this allele will have reduced impact from soybean cyst nematode predation; one of ordinary skill in the art would expect plants with this allele to have increased yield because they would be less weakened by soybean cyst nematode feeding on roots.
The Declaration concludes that one of ordinary skill in the art could not have predicted or expected the results of these performance trials, even with prior knowledge of the initial cross and subsequent breeding paradigms that generated each cultivar, or the production of 14430202 (Declaration ¶11)
This is not found persuasive. Because no ranges are provided for the data and because 14430202 is a genus of plants, the provided data cannot determine if 14430202 is non-obvious over the cited references. Without data that reflects 14430202 being a genus of plants, it cannot be determined if plants produced by backcrossing rhg1 into 14517211-09 are species of the genus of plants that are 14430202.
Applicant can also overcome the rejection by providing Declaratory evidence that 14430202 has genetic material from CE1500087 that could not come from backcrossing rhg1 into 14517211-09.
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 1-17 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,993,402 in view of Eby (2009, US 7,838,736).
The rejection is modified from the rejection set forth in the Office action mailed 27 May 2025. Applicant’s arguments and the 2nd Mason Declaration, both filed 26 August 2025, have been fully considered but they are not persuasive.
The claims are drawn to plants and seeds of soybean cultivar 14430202, the plant and seeds comprising single locus conversion or transgene, methods of producing them, methods of breeding with 14430202, and methods of producing a commodity product.
The instant specification provides a description of soybean cultivar 14430202 that shows it is a genus of plants, as it segregates for two alleles of each of two single gene traits, flower and hilum color (Table 1). The value range for quantitative traits like lodging, height, seed size, percent protein and oil, and relative maturity is not provided in Table 1, but for purposes of this rejection it is assumed that 14430202 also segregates for at least some of the QTLs affecting each of these traits.
One of the parents of 14430202 is 14517211-09 (¶68).
‘402 claims 14517211-09 (claims 1-2), which was renamed 87390112 (column 6, line 46; Table 1). Like the instant plant, 87390112 has yellow, dull seed coats, yellow cotyledons, ovate leaves, indeterminate growth, gray pubescence, tan pods, the DAS-44406-6 herbicide resistance event, and the Rps1c Phytophthora root rot resistance gene (Table 1). Like some members of the instant genus, 87390112 has purple flowers and imperfect black hila (Table 1). The values for quantitative traits like lodging, height, seed size, percent protein and oil, and relative maturity are similar to those for the instant plant.
‘402 claims a cell and tissue culture of 14517211-09 (claims 3-4), methods of crossing 14517211-09 with itself or another soybean plant (claims 5-6), F1 progeny seeds (claim 7), introducing transgenes into 14517211-09, including those conferring male sterility, herbicide resistance, insect or pest resistance, disease resistance, modified fatty acid metabolism, abiotic stress tolerance, or modified carbohydrate metabolism, and plants thereby produced (claims 8-10), a method of introducing a single locus conversion into 14517211-09, including one conferring male sterility, herbicide resistance, insect or pest resistance, disease resistance, modified fatty acid metabolism, abiotic stress tolerance, or modified carbohydrate metabolism, and plants thereby produced (claims 11-13), a method of using the plant to produce a different inbred soybean plant (claims 14-16), a method of mutagenizing 14517211-09 and plant thereby produced (claims 17-18), and methods of producing commodity products, including protein isolates, protein concentrate, hulls, meal, flour and oil (claims 19-20). The claims are identical to the instant claims except for the name of the variety.
‘402 does not claim 14517211-09 with the rhg1 soybean cyst nematode resistance gene.
Eby teaches a soybean variety with the rhg1 soybean cyst nematode resistance gene (Table 1).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to backcross the rhg1 soybean cyst nematode resistance gene from Eby’s soybean plant into 14517211-09. One of ordinary skill in the art would have been motivated to do so because doing so would confer soybean cyst nematode resistance to 14517211-09, allowing the plant to survive in a field infested with the pest soybean cyst nematode.
14517211-09 and the instant 14430202 have different values for relative maturity, lodging, plant height, seeds/lb, and % seed oil and protein. Given that 14430202 is a genus of plants and that the data in the instant Table 1 does not provide ranges and/or standard deviation for the values, it is not clear if these differences are merely a difference in degree and not in kind that would be expected by one of ordinary skill in the art introgressing one trait from one plant into another.
One of ordinary skill in the art would have introduced transgenes and single locus conversions into the plant, including those conferring male sterility, herbicide resistance, insect or pest resistance, disease resistance, modified fatty acid metabolism, abiotic stress tolerance, or modified carbohydrate metabolism, as claimed in ‘402. One of ordinary skill in the art would have been motivated to do so because would introduce further desired traits; for example, insect resistance would allow the plants to grown in areas with pests.
One of ordinary skill in the art would have crossed the resulting soybean with itself or another soybean plant, including a series of crosses to produce a soybean plant derived from the original line, including F1 progeny seeds and plants, as claimed in ‘402. One of ordinary skill in the art would have been motivated to do so because this would allow one to introduce 114517211-09’s traits into other, new soybean lines.
One of ordinary skill in the art would have mutagenized the resulting soybean, as claimed in ‘402. One of ordinary skill in the art would have been motivated to do so because this would allow one to introduce new traits into 14517211-09.
One of ordinary skill in the art would have produced commodity products, including protein isolates, protein concentrate, hulls, meal, flour and oil from the soybean, as claimed in ‘402. One of ordinary skill in the art would have been motivated to do so because these are the economically important products from soybeans and ones of the main reasons farmers grow soybeans.
Response to Arguments
Applicant urges and the Declaration states that the claimed cultivar exhibits significant phenotypic differences in yield, relative maturity, and height, each of which has real-world impact (response pg 8-9; Declaration ¶9).
This is not found persuasive. Because no ranges are provided for the data and because 14430202 is a genus of plants, the provided data cannot determine if 14430202 is non-obvious over the cited references. Without data that reflects 14430202 being a genus of plants, it cannot be determined if plants produced by backcrossing rhg1 into 14517211-09 are species of the genus of plants that are 14430202. Applicant has also not provided evidence of significant genetic differences between 14430202 and 14517211-09 that could not come from backcrossing rhg1 into 14517211-09.
Applicant urges and the Declaration states that there would be expectation that introducing rhg1 would lead to significant improvements in key agronomic traits, including yield (response pg 9; Declaration ¶10).
This is not found persuasive. 14430202 has the rhg1 allele, not present in 114517211-09. rhg1 confers soybean cyst nematode resistance. Plants with this allele will have reduced impact from soybean cyst nematode predation; one of ordinary skill in the art would expect plants with this allele to have increased yield because they would be less weakened by soybean cyst nematode feeding on roots.
Because no ranges are provided for the data and because 14430202 is a genus of plants, the provided data cannot determine if 14430202 is non-obvious over the cited references. Without data that reflects 14430202 being a genus of plants, it cannot be determined if plants produced by backcrossing rhg1 into 14517211-09 are species of the genus of plants that are 14430202.
Applicant urges and the Declaration states that even assuming that a skilled artisan would be motivated to introduce a rhg1 soybean cyst nematode resistance allele into soybean cultivar 87390112, there would have been no expectation that doing so would yield soybean cultivar 14430202 (response pg 9; Declaration ¶10).
This is not found persuasive. One of ordinary skill in the art would have been motivated to introduce rhg1 into 14517211-09 (aka 87390112) because doing so would confer soybean cyst nematode resistance to the plant, allowing it to survive in a field infested with the pest soybean cyst nematode. The plant produced appears to be a species of a genus of plants claimed in the instant application.
Conclusion
No claim is allowed.
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, Shubo (Joe) Zhou, can be reached at (571) 272-0724. 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 1662