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 .
Status of the Claims
The claims filed 17December2025 are acknowledged and have been fully considered. Claims 1-20 are pending and examined on the merits herein. Claims 1-8, 12-20 are currently amended. Claims 9-11 are original.
Priority
No priority claim is of record. Claims 1-20 MAINTAIN an effective filing date of 10November2022 (the actual filing date of this nonprovisional application).
Withdrawn Objections and/or Rejections
Objections and/or rejections made of record in the nonfinal office action dated 29September2025 that are not discussed herein are withdrawn. In particular:
RE ¶ 6: The objection to the specification is withdrawn in view of the amendment thereto;
RE ¶¶ 7-16: The objections are withdrawn in view of the amendments to the claims;
RE ¶ 17: The rejection of claims 3-4 for failing to further limit a claim to which it refers/depends is withdrawn in view of the amendments to claim 3; and
RE ¶¶ 18-24: The indefiniteness rejections are withdrawn in view of the amendments to the claims. With respect to ¶21 and the rejection of claim 8, the Office interprets the language of claim 8 in the following way (please note that the reference to all of seeds, plants, plant parts, and plant cells in claim 8 makes the meaning of the claim hard to discern): the Office interprets the “representative seed” referred to at line 2 as representative of the “maize variety GAQ2007” and not representative of the converted seed/plant/part/cell (because, as said of record, it doesn’t make sense to say, and is not possible for, the deposited seed to “represent” the converted seed/plant/part/cell); also that the “plants” referred to at line 5 are converted plants (read as “… wherein the [converted] plant, or a [converted] plant grown from the converted seed/part/cell”) and that the [converted] plants referred to at line 5 all (1) comprise the locus conversion and (2) otherwise comprise all of the physiological and morphological characteristics of a plant of maize variety GAQ2007 when grown under the same environmental conditions.
Claim Rejections - 35 USC § 112 – Written Description
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 5 REMAINS rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 5 recites “A maize seed produced by the plant of claim 2.” Please note that this claim is not limited to a particular generation of seed (= claim 5 encompasses F1, F5, F15, and F50 seed) and this claim is not limited to a seed that grows into a plant having any particular characteristics.
The specification only describes inbred maize variety GAQ2007 and the characteristics/traits thereof (Table 1).
A skilled artisan could not reasonably expect, with reasonable certainty, what the physiological and morphological characteristics of the claimed seed may be (= the claimed subject matter is so far removed from the inbred maize variety GAQ2007 that the characteristics of the claimed seeds (or plants grown therefrom) cannot be reasonably surmised). Said another way, the claimed subject matter is not tethered to novel starting materials (MPEP § 2116) by either (1) being limited to the F1 generation or (2) explicitly requiring that the claimed products otherwise “comprise all of the physiological and morphological characteristics of the inbred maize variety GAQ2007” (i.e., comprise at least the characteristics listed in Table 1 with a reasonable degree of variation around the quantitative traits). These claims encompass any downstream seed having any physiological and morphological characteristics (= the characteristics of those downstream seeds (or plants grown therefrom) cannot be reasonably known until after they are actually made).
Put simply, a skilled artisan (in view of the specification and knowledge in the art) would have absolutely no idea what characteristics/traits the claimed seeds would have and, in that way, could not meaningfully distinguish the claimed seeds from any other maize seed.
Without more information from Applicant, a skilled artisan at the time this application was filed would not reasonably recognize Applicant as being in possession of the full metes and bounds of these claims.
It would be remedial of this rejection to (I) explain (on the record, e.g., in remarks) how the specification (in view of the prior art) evidences possession of the full metes and bounds of the claimed seeds; or (II) to amend the claims so that they only encompass, or use, products that (a) grow into a plant that comprises all of the physiological and morphological characteristics of a plant of inbred maize variety GAQ2007 when grown in the same environmental conditions and/or (b) are limited to the F1 generation produced from the novel starting material of a plant of inbred maize variety GAQ2007 (MPEP § 2116). Alternatively, and in view of the subject matter already covered by claims 9-11, perhaps claim 5 may be canceled?
Response to Applicant’s Remarks:
Applicant states the following in the Remarks (top of page 7):
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Claim 5 is amended, but not in a manner that addresses this Written Description rejection. Applicant’s comments appear to suggest that Applicant interprets claim 5 as being limited to the F0 and F1 generations, but that is not stated clearly and, in any event, not stated within the actual claim. The Office was not able to readily identify the contact information for Applicant’s representative to call and clarify. It seems like Applicant is amenable to option “(b)” from the rejection of record (i.e., reciting “F1 generation” within claim 5)—please just amend claim 5 to that effect (e.g., via After-final amendment).
Conclusion
The following is a statement of reasons for the indication of allowable subject matter: a plant/part of inbred maize variety GAQ2007 appears to have a structure (genetic composition, as evidenced by its parentage/breeding history) and function (traits/characteristics as set forth in Table 1) that are not taught or suggested by the prior art. The closest prior art may be identified as Applicant’s US20210337759 (Appl. No. 17218258 published 04November2021) teaching at least maize variety GIE2002, but that materially differs from the presently claimed maize variety GAQ2007 in at least ear height and anther color (Munsell value).
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rebecca STEPHENS whose telephone number is (571)272-0070. The examiner can normally be reached Monday through Friday 8:30-4:30.
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/REBECCA STEPHENS/Examiner, Art Unit 1663
/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663