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 .
Second Non-final Office Action
In order to address obviousness due to the backcrossing breeding method of the instant soybean variety this action is a second non-final office action.
Claim Status
Claims 1-20 are pending.
Claim 5 is newly amended.
Claims 1-20 are examined on the merits.
Response to Applicant Arguments - 35 USC § 112 – Enablement
In response to applicant’s arguments and amendments to the claims the enablement rejections of record are withdrawn. Specifically, applicant’s assurances that all restrictions upon the deposit will be irrevocably be removed perfected the deposit and therefore the enablement rejections of record are withdrawn.
Response to Applicant Arguments - 35 USC § 112 – Written Description
In response to applicant’s arguments and amendments to the claims the written description rejections of record are withdrawn. Specifically, applicant’s argument that the breeding history provides adequate written description is found to be persuasive. Particularly in light of Applicant’s amendment to the specification to make clear that parental line MKZ310A1-T5LNN is a nonpublic proprietary line. Additionally this name is found in one other patent document demonstrating the use of this name elsewhere in the prior art. Finally, applicant’s disclosure of the patent drawn to the other parent in the IDS dated 10/11/2024 completes the breeding history and therefore the written description rejections of record are withdrawn.
Response to Applicant Arguments - 35 USC § 112 – Indefiniteness
In response to applicant’s arguments and amendments to the claims the indefiniteness rejections of record are withdrawn. Specifically, applicant’s perfection of the deposit limits the scope of soybean variety 01094753 to a definite scope, further applicant’s amendment of claim 5 to remove dependence on claim 4 overcomes the indefiniteness rejections against claims 5 and 16 and therefore the indefiniteness rejections of record are withdrawn.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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 1-20 are newly rejected under 35 U.S.C. 103 as being unpatentable over Wohleser, US 10,932,428 B2 patented March 2, 2021 in view of De Beuckeleer, US 8,017,756 B2, Patented September 13, 2011.
The instant claims all require plants of soybean variety 01094753 which the transmittal letter dated 10/11/2024 makes clear was produced using a backcrossing method with Soybean Variety 01072749 (Variety taught in Wohleser) as the recurrent parent. The instant specification states that “Backcross breeding has been used to transfer genetic loci for simply inherited or highly inheritable traits into a homozygous variety that is used as the recurrent parent. The source of the trait to be transferred is called the donor or nonrecurrent parent. The resulting plant is expected to have the attributes of the recurrent parent and the trait transferred from the donor parent” (Specification, page 10, Paragraph 0032).
This disclosure is helpful because it clearly defines the expected result of backcrossing breeding methods and when applied to the instant variety it allows the A5547-127 event which confers tolerance to glufosinate herbicides because this is the single trait which appears in the instant variety (Soybean Variety 01094753) but not in the recurrent parent (Soybean Variety 01072749). Given that the backcrossing method is used to introduce a trait while retaining all of the characteristics of the recurrent parent any donor parent comprising the trait appears to be interchangeable.
As such the instantly claimed soybean is a soybean variety produced by backcrossing with Soybean Variety 01094753 as the recurrent parent and a donor carrying the A5547-127 event conferring glufosinate tolerance to produce a variety having all of the characteristics of the recurrent parent (Soybean Variety 01094753) and further comprising the A5547-127 event.
With respect to the instant claims, Wohleser teaches soybean variety 01094753, the recurrent parent used to produce the instantly claimed variety (Wohleser, Page 1, Abstract; Transmittal Letter instant Application Dated 10/11/2024, Pages 2-3).
Further, in column 2, Wohleser teaches a soybean plant comprising a single locus conversion which adds a trait conferring glufosinate herbicide resistance to the variety which otherwise is capable of expressing all of the morphological and physiological characteristics of a plant grown from the soybean seed designated 01072749 (Wohleser, Column 2, Lines 14-19; Wohleser, Column 2, Lines 29-40).
For clarity and to demonstrate that Wohleser teaches a generic variety of the instantly claimed variety, it is important to note that Wohleser teaches plants of soybean variety 01072749 which are modified using backcrossing to produce a plant which further comprises at least a first heritable trait and Wohleser continues by providing specific traits including herbicide tolerance which can be added to an inbred line by backcrossing in order to improve that inbred line (Wohleser, Column 14, Line 65-Column 15, Line 14; Wohleser, Column 15, Lines 54-62). Additionally, Wohleser teaches that backcrossing can be used to produce a single locus conversion of soybean variety 01072749 (Wohleser, Column 6, Lines 50-53).
As such Wohleser teaches a generic soybean variety produced by introducing glufosinate resistance into the plant of soybean variety 01072749 using backcrossing methods to produce a single locus converted plant.
Additionally, Wohleser teaches all of the limitations of the instant dependent claims because the claims of Wohleser are identical to the instant claims with the exception of the specific name of the claimed variety and a claim 5 which in the instant case was amended to depend on claim 1 while claim 5 of the reference remains dependent on claim 4 and through claim 4 claim 1.
With respect to the instant claims Wohleser does not teach the specific A5547-127 conferring glufosinate tolerance.
With respect to the instant claims De Beuckeleer teaches the A5547-127 glufosinate tolerance event and further teaches that this elite event confers glufosinate tolerance which includes tolerance to the herbicide Liberty (Column 24, Line 48-Column 25, Line 4).
At the time of filing it would have been obvious to modify the glufosinate tolerant single locus converted soybean variety 01072749 by using the A5547-127 glufosinate resistance allele of De Beuckeleer to produce this variety. This would have been obvious because Wohleser is drawn to generic glufosinate tolerant single locus converted soybean variety 01072749 plants while De Beuckeleer is drawn to an elite soybean event (A5547-127) which confers resistance to glufosinate herbicides including copyrighted Liberty herbicide.
The ordinary artisan would have been motivated to make this modification because the event of De Beuckeleer is an elite event which confers an agronomically valuable glufosinate trait which Wohleser suggests would be a beneficial trait to add to the variety of 01072749 using backcrossing to produce a single locus-converted plant. Further, adding this trait would allow end users to treat soybean fields growing this converted variety with glufosinate to remove any unwanted plants while the soybean plants were unaffected reducing competition and increasing yields. For producers of this seed this would be beneficial because the agronomic benefits would create a demand for this seed which could be sold at a higher rate or convert farmers from using other varieties to growing this soybean variety.
As such it would have been obvious to modify the plant of Wohleser by using backcrossing to introduce the A5547-127 event into soybean variety 01072749 to produce a soybean variety having all of the characteristics of Soybean variety 01072749 and further comprising A5547-127 derived glufosinate tolerance.
All claims are rejected as obvious under Wohleser in view of De Beuckeleer.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN JAMES SULLIVAN whose telephone number is (571)272-0561. The examiner can normally be reached 7:30 to 5:00.
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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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/BRIAN JAMES SULLIVAN/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663