CTFR 18/023,397 CTFR 99546 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 Claims 7, 9-10, and 17 are cancelled. Claims 1-6, 8, 11-16, and 18 are pending. Claims 1-6, 8, 11-16, and 18 are examined herein. The rejection to claim 17 under 35 USC 112(b) has been withdrawn in view of Applicant’s cancellation of claim 17. The previous rejection to claims 1 and 3-5 under 35 USC 102(a)(1) has been withdrawn in view of Applicant’s amendments to the claims. However, a modified rejection under 35 USC 102(a)(1) has been made to the claims in view of Applicant’s amendments. The previous rejections to claims 6, 8, and 12-16, and 18 under 35 USC 103 has been withdrawn in view of Applicant’s amendments to the claims. However, a modified rejection under 35 USC 103 has been made to the claims in view of Applicant’s amendments. A modified provisional NSDP rejection has been made to claims 1-6, 8, 11-16, and 18 in view of Applicant’s amendments to the claims. Claims 1-6, 8, 11-16, and 18 are rejected. Priority Application No. 18/023,397 filed on 02/27/2023 is a 371 of PCT Application No. PCT/EP2021/073904 filed on 08/30/2021 which claims priority to provisional Application No. 63/072,742 filed 08/31/2020 . Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-12-aia AIA (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. 07-15 AIA Claim s 1, 3-6, and 12-16 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Schultheiss (US-20140208460-A1) . This is a modified rejection from the previous rejection set forth in the Office action dated 11/03/2025, necessitated by Applicant’s amendments to the claims. Claim 1 is drawn to method for improving the yield produced by a plant relative to a control plant, comprising providing a plant comprising a heterologous expression cassette comprising a gene selected from Pti5 and RLK2, and ii) cultivating the plant, wherein the gene of the heterologous expression cassette is operably linked to a constitutively active promoter. Claim 3 is drawn to method according to claim 1, wherein the yield is one or more of - biomass per area,- grain mass per area,- seed mass per area. Claim 4 is drawn to method according to claim 1, wherein the yield is increased in the presence of a pest relative to a control plant. Claim 5 is drawn to method according to claim 4, wherein the pest is or comprises at least a fungal pest. Claim 6 is drawn to method according to claim 1, wherein the plant is a crop plant. Claim 12 is drawn to the method according to claim 5, wherein the pest is or comprises at least a biotrophic or heminecrotrophic fungus. Claim 13 is drawn to the method according to claim 12, wherein the pest is or comprises at least a rust fungus. Claim 14 is drawn to the method according to claim 6, wherein the plant is a dicotyledon. Claim 15 is drawn to the method according to claim 6, wherein the plant is a plant of order Fabales. Claim 16 is drawn to the method according to claim 6, wherein the plant is a plant of family Fabaceae. Regarding claim 1 , Schlutheiss discloses cloning an overexpression vector construct wherein Pti5 is overexpressed under control of the parsley ubiquitin promoter (PcUbi) (i.e. a constitutive active promoter) (¶0196). Schlutheiss discloses transforming the expression vector into soybean (¶0198), regenerating soybean shoots from the transformed soybean explants (¶0219-0220), and transferring the regenerated plants to a growth chamber then a greenhouse (¶0222) (i.e. cultivating the plant comprising the heterologous expression cassette comprising the Pti5 gene operably linked to the constitutively active promoter). Regarding claims 3-4 , Schlutheiss discloses disease markedly reduces yield of crop plants (¶0003), then discloses constitutive overexpression of Pti5 reduces diseased leaf area in soybean plants inoculated with Phakopsora pachyrhizi (soybean-rust fungus) compared to controls (¶0236-0237). The increased yield as recited in claims 3-4 is inherent to the claimed method steps which is further supported by Schultheiss’s disclosure that the instantly claimed methods enhance soybean resistance to soybean rust disease which is known to negatively impact yield (¶0003, 0236-0237). Regarding claims 5 and 12-13 , Schlutheiss discloses the pest is soybean rust fungus/ Phakopsora pachyrhizi (¶0236-0237). Regarding claims 6 and 14-16 , Schlutheiss discloses the plant is soybean (title, abstract, ¶0198) . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-22-aia AIA Claim s 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Schultheiss as applied to claim 1 above, and further in view of Lindsey (Lindsey, L (2018) Soybean Planting Date, Seeding Rate, and Row Width, C.O.R.N Newsletter , https://agcrops.osu.edu/newsletter/corn-newsletter/2018-11/soybean-planting-date-seeding-rate-and-row-width) . This is a modified rejection from the previous rejection set forth in the Office action dated 11/03/2025, necessitated by Applicant’s amendments to the claims. Claim 8 is drawn to the method according to claim 1, wherein the cultivation is performed on an ensemble of at least 1000 plants. Claim 18 is drawn to the method according to claim 8, wherein the plants are cultivated on a field or in a greenhouse. Regarding claims 8 and 18 , Schultheiss teaches the limitations of claim 1 as set forth in the previous anticipation rejection. The teachings of Schultheiss as they are applied to claim 1 are set forth previously herein and are incorporated by reference. However, Schultheiss does not explicitly teach the limitations of claims 8 and 18 as recited above. In analogous art Lindsey teaches a final (harvest) population of 100,000 to 120,000 soybean plants per acre is generally adequate for maximum yield ( section titled seeding rate, and Figure) (i.e. cultivation of at least 1,000 plants in a field). It would therefore have been obvious to a person of ordinary skill in the art to modify the invention taught by Schultheiss to include the limitations of Lindsey to arrive at the instantly claimed method with a reasonable expectation of success because the 100,000-120,000 soybean plants per acre is commonly planted to achieve maximum yield. One having ordinary skill in the art would have been motivated to do so because Lindsey teaches a final (harvest) population of 100,000 to 120,000 plants per acre is generally adequate for maximum yield, and it would be prima facie obvious to plant the taught soybean population size for the purpose of achieving maximum yield . 07-21-aia AIA Claim s 2 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Schultheiss (US-20140208460-A1) and Ascenzi (WO-2009027539-A2), and as evidenced by Fernandez-Cornejo (Fernandez-Cornejo et al. (2014). Pesticide use in US agriculture: 21 selected crops, 1960-2008. USDA-ERS Economic Information Bulletin, (124)) . This is a modified rejection from the previous rejection set forth in the Office action dated 11/03/2025, necessitated by Applicant’s amendments to the claims. Claim 2 is drawn to a farming method for improving the yield produced by a plant relative to a control plant, comprising cultivation of a plant comprising a heterologous expression cassette comprising a gene selected from Pti5 and RLK2, wherein during cultivation of the plant the number of pesticide treatments per growth season is reduced by at least one relative to the control plant, and wherein the gene of the heterologous expression cassette is operably linked to a constitutively active promoter. Claim 11 is drawn to the method of claim 2, wherein during cultivation of the plant the number of pesticide treatments per growth season is reduced by at least two relative to the control plant. Regarding claim 2 , Schlutheiss teaches cloning an overexpression vector construct wherein Pti5 is overexpressed under control of the parsley ubiquitin promoter (PcUbi) (i.e. a constitutive active promoter) (¶0196). Schlutheiss teaches transforming the expression vector into soybean (¶0198), regenerating soybean shoots from the transformed soybean explants (¶0219-0220), and transferring the regenerated plants to a growth chamber then a greenhouse (¶0222) (i.e. cultivating the plant comprising the heterologous expression cassette comprising the Pti5 gene operably linked to the constitutively active promoter). However, Schultheiss does not explicitly teach: wherein during cultivation of the plant the number of pesticide treatments per growth season is reduced by at least one relative to the control plant (remaining limitation of claim 2) The method of claim 2, wherein during cultivation of the plant the number of pesticide treatments per growth season is reduced by at least two relative to the control plant (claim 11). In analogous art, Ascenzi teaches the enhancement of disease resistance in crops can contributed significantly to increasing the productivity of crops and decreasing the application of pesticides, which can adversely affect human health and the environment when applicated in excess (¶0004.1.1.1). It is also known that pesticide quantity and use are also dependent on many factors including pest infestation levels, integrated pest management strategies, conservation practices, changes in planted acreage, crop and input prices, weather, pesticide regulations, and the introduction of new pesticides and genetically engineered (GE) seed, as evidenced by Fernandez-Cornejo (p. iii and 6-7). Additionally, there is no calculation provided by Applicant or calculation found in the art that considers all possible factors to determine what constitutes requiring at least one or two less applications of pesticide per growth season. Because Schlutheiss teaches enhanced resistance to fungal pathogens (title, ¶0015, 0236-0237), and Ascenzi teaches the enhancement of disease resistance in crops can significantly contribute to decreased application of pesticides (¶0004.1.1.1), any reduction would be a reduction of one pesticide treatment. Regarding claim 11 , the limitation of reducing the pesticide treatment by at least two relative to the control plant (i.e. claim 11) is an obvious range of “at least one” in view of Schlutheiss and Ascenzi. It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Applicant is advised that MPEP 716.01(c) makes clear that “[t]ne arguments of counsel cannot take the place of evidence in the record” (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, Applicant should not merely rely upon counsel's arguments in place of evidence in the record. It would therefore have been obvious to a person of ordinary skill in the art to have combined the method as taught by Schlutheiss with the teachings of Ascenzi to arrive at the instantly claimed method with a reasonable expectation of success for the purpose of decreasing the application of pesticides which can adversely affect human health and the environment as explicitly taught by Ascenzi (¶0004.1.1.1) . Double Patenting 08-33 AIA 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. The rejections below are modified from the previous rejections in the Office action dated 11/03/2025, necessitated by Applicant’s amendments to the claims. 08-35 Claim s 1-6, 8, and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-8 of copending Application No. 18/569,926 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the copending application are encompassed by the claim language of the instant application . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. 08-37 AIA Claim s 12-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-8 of copending Application No. 18/569,926 in view of Schultheiss (US-20140208460-A1). Copending Application No. 18/569,926 teaches the limitations of claims 1-8 set forth in the previous double patenting rejection. However, copending Application No. 18/569,926 does not explicitly teach the limitations of instant claims 12-16. In analogous art, Schlutheiss discloses cloning an overexpression vector construct wherein Pti5 is overexpressed under control of the parsley ubiquitin promoter (PcUbi) (i.e. a constitutive active promoter) (¶0196). Schlutheiss discloses transforming the expression vector into soybean (¶0198), regenerating soybean shoots from the transformed soybean explants (¶0219-0220), and transferring the regenerated plants to a growth chamber then a greenhouse (¶0222) (i.e. cultivating the plant comprising the heterologous expression cassette comprising the Pti5 gene operably linked to the constitutively active promoter). Schlutheiss discloses the pest is soybean rust fungus/ Phakopsora pachyrhizi (¶0236-0237), and the plant is soybean (title, abstract, ¶0198). It would therefore have been obvious to a person of ordinary skill in the art to modify the invention taught by copending Application No. 18/569,926 to include the limitations of to Schultheiss to arrive at the instantly claimed method with a reasonable expectation of success because Schultheiss teaches successfully teaches soybean plants overexpressing Pti5 have resistance against soybean rust, and one having ordinary skill in the art could replicate the invention of Schlutheiss without encountering any special technical obstacles. One having ordinary skill in the art would have been motivated to combine the teachings because Schlutheiss teaches overexpressing Pti5 in soybean enhances resistance to soybean rust . This is a provisional nonstatutory double patenting rejection. 08-37 AIA Claim s 18 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-8 of copending Application No. 18/569,926 , in view of Lindsey (Lindsey, L (2018) Soybean Planting Date, Seeding Rate, and Row Width, C.O.R.N Newsletter , https://agcrops.osu.edu/newsletter/corn-newsletter/2018-11/soybean-planting-date-seeding-rate-and-row-width). Copending Application No. 18/569,926 teaches the limitations of claims 1-8 set forth in the previous double patenting rejection. However, copending Application No. 18/569,926 does not explicitly teach: The method according to claim 8, wherein the plants are cultivated on a field or in a greenhouse. In analogous art, Lindsey teaches a final (harvest) population of 100,000 to 120,000 soybean plants per acre (i.e. in a field, see Figure) is generally adequate for maximum yield ( section titled seeding rate, and Figure) (i.e. cultivation of at least 1,000 plants in a field). It would therefore have been obvious to a person of ordinary skill in the art to modify the invention taught by Lee to include the limitations of Lindsey to arrive at the instantly claimed method with a reasonable expectation of success because the 100,000-120,000 soybean plants per acre in a field is commonly planted to achieve maximum yield. One having ordinary skill in the art would have been motivated to do so because Lindsey teaches a final (harvest) population of 100,000 to 120,000 plants per acre is generally adequate for maximum yield, and it would be prima facie obvious to plant the taught soybean population size for the purpose of achieving maximum yield . This is a provisional nonstatutory double patenting rejection. Response to Arguments Applicant argues beginning on p. 4 of remarks dated 02/03/2026 the following arguments: Claim 17 was rejected as being indefinite because it depends from claim 7, which was previously cancelled. As indicated above, claim 17 has been cancelled, thus making this rejection moot. Examiner’s response: In view of Applicant’s cancellation of claim 17, the 112(b) rejection has been withdrawn. Applicant argues beginning on p. 4 of remarks dated 02/03/2026 the following arguments: Claims 1 and 3-5 were rejected as being anticipated by Lee (Lee et al. Plant Molecular Biology, 61(1) 95-109). Applicant respectfully traverses based on the amended claims. The Office Action indicates Lee discloses generating and growing transgenic Arabidopsis plants overexpressing the coding sequence of the SAR8.2 gene under the control of a constitutive 35S promoter. As indicated above, independent claims 1 and 2 now recite that the gene is selected from Pti5 and RLK2 (i.e., SAR8.2 is no longer listed). Lee does not disclose Pti5 or RLK2. In view thereof, Lee does not anticipate the claims, and Applicant respectfully requests that the rejection be withdrawn. Examiner’s response: In view of Applicant’s amendment to the claims, the previous 102 rejection has been withdrawn. However, Applicant’s argument is not persuasive because a new 102 rejection has been made, necessitated by Applicant’s amendment’s to the claims (see 102 rejection(s) above). Applicant argues beginning on p. 4 of remarks dated 02/03/2026 the following arguments: Various claims were rejected as being obvious, as follows: " Claims 6 and 12-17 were rejected as being unpatentable over Lee as applied to claim 1 above and further in view of Schultheiss (US 20140137283). " Claims 8 and 18 were rejected as being unpatentable over Lee as applied to claim 1 above, and further in view of Lindsey (Lindsey, C.O.R.N. Newsletter (2018)). " Claims 2 and 11 were rejected as being unpatentable over Lee and Ascenzi (WO 2009027539-A2), and as evidenced by Fernandez-Cornejo (Fernandez-Cornejo et al. USDA-ERS Economic Information Bulletin, 124 (2014)). Applicant respectfully traverses the rejections based on the amended claims. The Office Action indicates Lee discloses generating and growing transgenic Arabidopsis plants overexpressing the coding sequence of the SAR8.2 gene under the control of a constitutive 35S promoter. As indicated above, independent claims 1 and 2 now recite that the gene is selected from Pti5 and RLK2 (i.e., SAR8.2 is no longer listed). There is no motivation in Lee or any of the other cited references to substitute Pti5 or RLK2 for the SAR8.2 gene in Lee. Examiner’s response: In view of Applicant’s amendment to the claims, the previous 103 rejection(s) have been withdrawn. However, Applicant’s argument is not persuasive because new 103 rejection(s) have been made, necessitated by Applicant’s amendment’s to the claims (see 103 rejection(s) above). Applicant argues beginning on p. 5 of remarks dated 02/03/2026 the following arguments: In addition, a person of ordinary skill in the art would have understood that genes conferring resistance to plant pathogens generally are not correlated with improvements in yield, and that such genes are in the best case independent from each other, but often are counteracting. For example, Ning et al. 1 states that "[h]igh yield and immunity to pathogens are important objectives in plant breeding" but that "plant qrowth and immunity pathwavs are intertwined and usually antaqonistic." Ning et al. at p. 1069 (emphasis added). Ning et al. further explains that "High Yield and Immunity to Pathogens Are Important Objectives in Plant Breeding, but Immunity Often Comes with Yield Penalties." Id. 1 Ning et al., Balancing Immunity and Yield in Crop Plants, Trends in Plant Science 22(12), 1069-1079 (2017). Chang (WO 03/000898 A1) (which discloses RLK2 and Pti5, among other genes) teaches that genes encoding proteins for protecting from pathogen attack may impact yield in the plant if expressed constitutively: Proteins that are useful for protectinq plants from pathoqen attack may have deleterious effects on plant growth if expressed constitutively. Consequently, it is desirable to have promoter sequences that control gene expression in such a way that expression is absent or very low in the absence of pathogens, and high in the presence of pathogens. Chang et al., p. 135, line 31-p.136, line 2 (emphasis added). Thus, Chang teaches a person of ordinary skill in the art to not express the protein constitutively, but rather to use promoters "that control gene expression in such a way that expression is absent or very low in the absence of pathoqens, and high in the presence of pathogens." Thus, there was no motivation in any of the cited art to substitute Pti5 or RLK2 for the SAR8.2 gene in Lee and, based on the knowledge in the art (such as Ning and Chang), a person of ordinary skill in the art would not have been motivated to substitute Pti5 or RLK2 for the SAR8.2 gene in Lee or to use a constitutively active promoter. In addition, based on such knowledge, a person of ordinary skill in the art would have had no expectation of success in increasing plant yield using any pathogen resistance gene under the control of a constitutively active promoter. Thus, the claimed subject matter is not obvious over the cited art. Examiner’s response: Applicant’s argument is not persuasive because the claims are currently rejected under 35 USC 102 in view of Schlutheiss (US-20140208460-A1) who discloses constitutive overexpression of Pti5 in soybean plants. This disclosure alone is sufficient to reject the instantly claimed method. Schlutheiss further discloses disease markedly reduces yield, and discloses the Pti5-overexpressing soybean plants had enhanced resistance to the disease of soybean rust compared to controls (see full 102 rejection above). In view of the disclosure of Schlutheiss, Applicant’s argument that one of ordinary skill would not be motivated to overexpress Pti5 in plants or have a reasonable expectation of increasing plant yield in plants constitutively overexpressing Pti5 is not persuasive. Applicant argues beginning on p. 6 of remarks dated 02/03/2026 the following arguments: Finally, the claimed invention was surprising and unexpected based on the knowledge in the art. That is, as explained in the application, "[i]t has now surprisingly been found that these genes can convey improved yield both under standard growth conditions established in the respective region of plantation and under pathogen challenged growth conditions, in particular under fungal pathogen prevalence in the general area where the plants are grown." Application as filed, p. 11, lines 50-53. As shown in Example 5 of the instant application, there is a very weak negative correlation of yield vs. resistance, which means higher resistance often results in lower yield. As shown in Example 4, overexpression of resistance genes Ein2 and ACD did not show any increase in yield, and actually showed a reduction in yield. However, Example 4 also shows the surprising results that overexpression of Pti5 and RLK2 significantly increased the yield generated by soybean when infected by soybean rust disease. Thus, in view of the above, the recited methods of improving the yield of a plant and producing a hybrid plant having improved yield would not have been obvious over Lee et al. (alone or in combination with any or all of the other cited art). In view thereof, Applicant respectfully requests that all of the rejections be withdrawn. Examiner’s response: This is not found persuasive. With regard to Applicant’s argument that Applicant has offered evidence of unexpected and unobvious results, pursuant to MPEP 716.02(b), the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with regard to the claimed soybean plant, however there was no basis for judging the practical significance of data with regard to maturity date, flowering date, flower color, or height of the plant.). In the instant case, Applicant alleges the surprising result that overexpression of Pti5 and RLK2 significantly increased the yield generated by soybean when infected with soybean rust (it is interpreted this statement is meant to be in comparison to controls plants). The alleged result does not appear unexpected or unobvious in view of Schlutheiss who discloses disease markedly decreases soybean yield, and constitutive overexpression of Pti5 can enhance soybean resistance to the fungus that causes the soybean rust disease (see 102 rejection above). Therefore, it would be obvious to use the invention of Schlutheiss to enhance soybean resistance to soybean rust disease to prevent yield loss (i.e. to increase yield). Given what is known in the art, the alleged evidence does not appear unexpected or unobvious. Further, even if Applicant can make such a showing, MPEP 716.02(c) provides that the evidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. MPEP 716.02(c) directs the examiner to MPEP 716.01(d), which establishes that although the record may establish evidence of secondary considerations which are indicia of nonobviousness, the record may also establish such a strong case of obviousness that the objective evidence of nonobviousness is not sufficient to outweigh the evidence of obviousness. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 769, 9 USPQ2d 1417, 1427 (Fed. Cir. 1988), cert. denied, 493 U.S. 814 (1989); Richardson-Vicks, Inc., v. The Upjohn Co., 122 F.3d 1476, 1484, 44 USPQ2d 1181, 1187 (Fed. Cir. 1997) (showing of unexpected results and commercial success of claimed ibuprofen and pseudoephedrine combination in single tablet form, while supported by substantial evidence, held not to overcome strong prima facie case of obviousness). The showing, when made, must outweigh the rationale in support of a finding of prima facie obviousness provided in the 103 rejection(s). Here, Schlutheiss teaches a method of constitutively overexpressing Pti5 in soybean plants to enhance resistance to soybean rust (see 102 rejection above) which anticipates the claimed limitations of “providing a plant comprising a heterologous expression cassette comprising a gene selected from Pti5 and RLK2, and cultivating the plant, wherein the gene of the heterologous expression cassette is operably linked to a constitutively active promoter”. Thus, the prior art discloses all limitations of claim 1 and many depending claims without the need to reference another document. In view of the foregoing, Applicant’s evidence is not deemed to outweigh the basis for the rejection. Finally, MPEP 716.02(d) provides that whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In this case, the scope of the claims is not commensurate with the evidence. The scope of the claims encompasses any plant comprising a heterologous expression cassette comprising a gene selected from Pti5 and RLK2, and cultivating the plant, wherein the gene of the heterologous expression cassette is operably linked to a constitutively active promoter. Applicant also provides an intended outcome in the preamble that is improved yield produced by a plant relative to a control plant. Because Applicant only teaches transformation of soybean plants with Pti5 and RLK2 (example 1, p. 19-20), the scope of the claims are not commensurate with the evidence. Applicant argues beginning on p. 7 of remarks dated 02/03/2026 the following arguments: All of the pending claims were provisionally rejected on the ground of nonstatutory double patenting. All of the provisional rejections are based on the claims of U.S. Application No. 18/569,926. Applicant respectfully asserts that, in accordance with MPEP 804 1.B.1.(b)(i), the provisional double patenting rejections should be withdrawn in the current application because the current application has an earlier effective U.S. filing date compared to copending U.S. Patent Application No. 18/569,926. Accordingly, Applicant requests reconsideration and withdrawal of the obviousness-type double patenting rejection. Examiner’s response: As previously stated, MPEP 804 |.B.1.(b)(i) recites “if a provisional nonstatutory double patenting rejection is the only rejection remaining in an application having the earlier patent term filing date, the examiner should withdraw the rejection in the application having the earlier patent term filing date and permit that application to issue as a patent, thereby converting the provisional nonstatutory double patenting rejection in the other application into a nonstatutory double patenting rejection upon issuance of the patent”. Because other rejections remain in the current application, which has an earlier effective filing date, the provisional double patenting rejections are maintained. Conclusion No claims are allowed. 07-39 AIA 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 JESSICA N STOCKDALE whose telephone number is (703)756-5395. The examiner can normally be reached M-F 8:30-5:00 CT. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. JESSICA N. STOCKDALE Examiner Art Unit 1663 /JESSICA NICOLE STOCKDALE/ Examiner, Art Unit 1663 /CHARLES LOGSDON/ Primary Examiner, Art Unit 1662 Application/Control Number: 18/023,397 Page 2 Art Unit: 1663 Application/Control Number: 18/023,397 Page 3 Art Unit: 1663 Application/Control Number: 18/023,397 Page 4 Art Unit: 1663 Application/Control Number: 18/023,397 Page 5 Art Unit: 1663 Application/Control Number: 18/023,397 Page 6 Art Unit: 1663 Application/Control Number: 18/023,397 Page 7 Art Unit: 1663 Application/Control Number: 18/023,397 Page 8 Art Unit: 1663 Application/Control Number: 18/023,397 Page 9 Art Unit: 1663 Application/Control Number: 18/023,397 Page 10 Art Unit: 1663 Application/Control Number: 18/023,397 Page 11 Art Unit: 1663 Application/Control Number: 18/023,397 Page 12 Art Unit: 1663 Application/Control Number: 18/023,397 Page 13 Art Unit: 1663 Application/Control Number: 18/023,397 Page 14 Art Unit: 1663 Application/Control Number: 18/023,397 Page 15 Art Unit: 1663 Application/Control Number: 18/023,397 Page 16 Art Unit: 1663 Application/Control Number: 18/023,397 Page 17 Art Unit: 1663 Application/Control Number: 18/023,397 Page 18 Art Unit: 1663 Application/Control Number: 18/023,397 Page 19 Art Unit: 1663 Application/Control Number: 18/023,397 Page 20 Art Unit: 1663 Application/Control Number: 18/023,397 Page 21 Art Unit: 1663 Application/Control Number: 18/023,397 Page 22 Art Unit: 1663 Application/Control Number: 18/023,397 Page 23 Art Unit: 1663 Application/Control Number: 18/023,397 Page 24 Art Unit: 1663
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