DETAILED ACTION
1. Claims 1-7, 9, 16-18, and 20 are pending.
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
3. The provisional rejection of claims 12 and 21-22 on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of copending Application No. 18/852,076 is withdrawn in light of Applicant’s cancellation of the claims.
4. Claim interpretation
In the remarks filed 7 October 2025, Applicant stated “that as provided in the specification, ‘field pea plant’ and ‘field pea cultivar’ are interchange terms”, and” as provided in the specification, ‘field pea plant’ and ‘field pea cultivar’ may include ‘Single Gene Conversions’ (response pg 9).
Thus, “field pea plant” and “field pea cultivar” are interpreted as in the definition of “field pea plant” in (¶93 in the amended specification filed 5 February 2026), and taken with definition in ¶38, “field pea cultivar 4004781” is interpreted as encompassing a genus of plants with a large amount of variation in traits and large number of gene conversions.
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.
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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.
5. Claims 1-7, 9, 16-18, and 20 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 that the inventor or a joint inventor, or for pre-AIA the applicant, regards as the invention. Dependent claims are included in all rejections.
The rejection is modified from the rejection set forth in the Office action mailed 7 November 2025. Applicant’s arguments filed 5 February 2026 have been fully considered but they are not persuasive.
The specification indicates that "field pea plant" and "pea plant" include any single gene conversions of that variety:
[0093] When the term "field pea plant" or "pea plant" is used in the context of an embodiment, this also includes any single gene conversions of that variety. The term single gene converted plant as used herein refers to those field pea plants which are developed by a plant breeding technique called backcrossing wherein essentially all of the desired morphological and physiological characteristics of a variety are recovered in addition to the single gene transferred into the variety via the backcrossing technique. Backcrossing methods can be used with one embodiment to improve or introduce a characteristic into the variety. The term "backcrossing" as used herein refers to the repeated crossing of a hybrid progeny back to the recurrent parent, i.e., backcrossing 1, 2, 3, 4, 5, 6, 7, 8, or more times to the recurrent parent. The parental field pea plant that contributes the gene for the desired characteristic is termed the nonrecurrent or donor parent. This terminology refers to the fact that the nonrecurrent parent is used one time in the backcross protocol and therefore does not recur. The parental field pea plant to which the gene or genes from the nonrecurrent parent are transferred is known as the recurrent parent as it is used for several rounds in the backcrossing protocol (Poehlman &Sleper (1994); Fehr, Principles of Cultivar Development, pp. 261-286 (1987)). In a typical backcross protocol, the original variety of interest (recurrent parent) is crossed to a second variety (nonrecurrent parent) that carries the single gene of interest to be transferred. The resulting progeny from this cross are then crossed again to the recurrent parent and the process is repeated until a field pea plant is obtained wherein essentially all of the desired 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.
The specification defines single gene converted conversion as follows:
[0038]Single Gene Converted (Conversion). Single gene converted (conversion) plants refers to plants which are developed by a plant breeding technique called backcrossing wherein essentially all of the desired morphological and physiological characteristics of a variety are recovered in addition to the single gene transferred into the variety via the backcrossing technique or via genetic engineering. By essentially all of the 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 an occasional variant trait that might arise during backcrossing or direct introduction of a transgene.
The definition of "essentially all of the phenotypic characteristics or morphological and physiological characteristics" in ¶38 indicates that plants with variant traits are encompassed by "single gene conversions" as well as by " field pea plant", and under the interpretation above, "field pea cultivar".
It is not clear what is meant by "occasional variant traits", as it is not clear how the time word "occasional" applies to a product. It is also not clear how many "variant traits" are encompassed by the phrase.
These definitions along with Applicant’s statement in the remarks filed 7 October 2025 that ‘field pea plant’ and ‘field pea cultivar’ are interchange terms” and that ‘field pea plant’ and ‘field pea cultivar’ may include ‘Single Gene Conversions’ mean that “field pea plant” and “field pea cultivar 4004781” encompass plants that differ from pea cultivar 4004781.
¶38 indicates that single gene converted plants are only required to have “essentially all of the desired morphological and physiological characteristics of a variety”, but does not define by how many morphological and physiological characteristics these plants may differ from the seeds in the deposit.
“field pea cultivar 4004781” in claim 1 thus encompasses plants with single gene conversions and plants with “essentially all of the desired morphological and physiological characteristics” of “field pea cultivar 4004781”, i.e., plants with single gene conversions.
Given the definitions in ¶93 and ¶38, and Applicant’s statement in the remarks filed 7 October 2025 that “field pea plant encompasses field pea cultivar” it is not clear how many of these variations and conversions it takes for the plant to no longer be a member of the genus of plants encompassed by “field pea plant” or named “field pea cultivar 4004781”.
Response to arguments
Applicant urges that claims 8, 10, 14-15, and 19-20 have been cancelled (response pg 4)
This not persuasive because it is not clear what plants are encompassed by “field pea cultivar 4004781” given the definitions in ¶93 and ¶38, and Applicant’s statement in the remarks filed 7 October 2025.
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
6. Claims 1-7, 9, 16-18, and 20 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The rejection is modified from the rejection set forth in the Office action mailed 7 November2025, as applied to claims 1-22. Applicant’s arguments filed 5 February 2026 have been fully considered but they are not persuasive. Portions of Part A of the previous rejection were overcome by Applicant’s cancellation of claims, and Part B of the previous rejection was overcome by Applicant’s amendment of the specification.
A. The instant claims are broadly drawn to plants and seeds of field pea cultivar 4004781, and plants and seed derived from said cultivar, and methods of using said cultivar.
The interpretation of ‘field pea plant’, ‘field pea cultivar’ and “field pea cultivar 4004781” presented in the rejection under 35 USC 112(b) above is incorporated herein.
As “field pea cultivar 4004781” encompasses “any single gene conversions of that variety”` (¶93), the specification does not describe the full scope of 4004781 plants with locus conversions relative to the plant described in Table 1 or the seeds that are deposited. The specification does not describe field pea plants with an unspecified number of variant traits” relative to “field pea cultivar 4004781”.
Given plants of “field pea cultivar 4004781” can have an unspecified number of “variant traits”, the specification describes no structural features that distinguish plants of “field pea cultivar 4004781” from other field pea plants. The specification does not describe the structural features and/or morphological and physiological characteristics that are required for a plant to be of “field pea cultivar 4004781”.
The specification describes no structural features that distinguish plants of plants produced introducing a desired trait, gene edits or mutations into a plant of field pea cultivar 4004781 from other field pea plants. The specification does not describe the structural features and/or morphological and physiological characteristics that are required for a plant to be of plants produced by introducing a desired trait into a plant of field pea cultivar 4004781.
The specification describes no structural features that distinguish field pea plants that differ in any number of morphological and physiological characteristics from field pea cultivar 4004781 from other field pea plants.
The specification describes no plants that differ from morphological and physiological characteristics of field pea cultivar 4004781 in an unspecified number of traits. The specification only describes field pea cultivar 4004781 (Table 1).
Hence, Applicant has not, in fact, described the claimed field pea plants over the full scope of the claims, and the specification fails to provide an adequate written description of the claimed invention.
Therefore, given the lack of written description in the specification with regard to the structural and functional characteristics of the claimed compositions, Applicant does not appear to have been in possession of the claimed genus at the time this application was filed.
Response to arguments
Applicant urges that claims 8, 10-11, 15, and 19 have been cancelled (response pg 5).
This not persuasive because although the claims encompass plants that differ from morphological and physiological characteristics of field pea cultivar 4004781 in an unspecified number of traits, the full scope of these plants have not been described.
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.
7. Claims 1-2, 4-6 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 11, and 15-16 of copending Application No. 18/852,076. Although the claims at issue are not identical, they are not patentably distinct from each other.
The copending application is drawn to a method of producing a protein-enriched pea composition from peas of cultivars that include pea cultivar 4004781. This makes obvious the instant claims to seeds (“peas”) of pea cultivar 4004781. It also makes obvious pea cultivar 4004781 plants, as these would be necessary to produce the peas, and methods of making the peas by growing 4004781 plants and harvesting the peas; it would be obvious to one of ordinary skill in the art to fertilize those plants as that would help them grow more vigorously and produce more peas. The method makes obvious any peas produced by self-fertilization as well as those produced by crossing to other plants growing in the field or greenhouse. Tt would be obvious to one of ordinary skill in the art to treat the seeds used to grow the plants so as to prevent disease, particularly soil-borne diseases.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
8. No claim is allowed.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anne R. Kubelik, Ph.D., whose telephone number is (571) 272-0801. The examiner can normally be reached Monday through Friday, 9:00 am - 5:00 pm Eastern.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham, can be reached at (571) 270-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Anne Kubelik/
Primary Examiner, Art Unit 1663