DETAILED ACTION
Claims 1-5 are pending.
The previously indicated allowability of claims 1-5 is withdrawn in view of the rejections below.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The rejection of claims 17-19, 21, and 23-24 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the subject matter that the inventor or a joint inventor, or for pre-AIA the applicant, regards as the invention is withdrawn in light of Applicant’s cancellation of the claims.
The rejection of claims 17-19, 21, and 23-24 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112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is withdrawn in light of Applicant’s cancellation of the claims.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 4-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. This judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The claims are drawn to corn plants and seeds comprising a nucleotide sequence of SEQ ID NO:26 or 29. The claims recite that the corn plants and seeds are produced from plants with the DP-910521-2 event, but the claimed plants and seeds are not required to have the event.
Corn plants and/or seeds comprising at least mRNAs comprising the sequences, aligned against GenBank Accession Nos. EU941770 (2008, www.ncbi.nlm.nih.gov/nuccore/ EU941770) and EZ106328 (2010, www.ncbi.nlm.nih.gov/nuccore/EZ106328), respectively:
EU941770/c
(NOTE: this sequence has 1 duplicate in the database searched.
See complete list at the end of this report)
LOCUS EU941770 108 bp mRNA linear PLN 29-OCT-2008
DEFINITION Zea mays clone 1470005 mRNA sequence.
ACCESSION EU941770
VERSION EU941770.1
KEYWORDS FLI_CDNA.
SOURCE Zea mays
ORGANISM Zea mays
Eukaryota; Viridiplantae; Streptophyta; Embryophyta; Tracheophyta;
Spermatophyta; Magnoliopsida; Liliopsida; Poales; Poaceae; PACMAD
clade; Panicoideae; Andropogonodae; Andropogoneae; Tripsacinae;
Zea.
REFERENCE 1 (bases 1 to 108)
AUTHORS Alexandrov,N.N., Brover,V.V., Freidin,S., Troukhan,M.E.,
Tatarinova,T.V., Zhang,H., Swaller,T.J., Lu,Y.P., Bouck,J.,
Flavell,R.B. and Feldmann,K.A.
TITLE Insights into corn genes derived from large-scale cDNA sequencing
JOURNAL Plant Mol. Biol. 69 (1-2), 179-194 (2009)
PUBMED 18937034
REFERENCE 2 (bases 1 to 108)
AUTHORS Alexandrov,N.N., Brover,V.V., Freidin,S., Troukhan,M.E.,
Tatarinova,T.V., Zhang,H., Swaller,T.J., Lu,Y.-P., Bouck,J.,
Flavell,R.B. and Feldmann,K.A.
TITLE Direct Submission
JOURNAL Submitted (04-AUG-2008) Ceres, Inc., 1535 Rancho Conejo Blvd.,
Thousand Oaks, CA 91320, USA
FEATURES Location/Qualifiers
source 1..108
/organism="Zea mays"
/mol_type="mRNA"
/db_xref="taxon:4577"
/clone="1470005
Query Match 100.0%; Score 10; Length 108;
Best Local Similarity 100.0%;
Matches 10; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 AAGAGGGTAC 10
||||||||||
Db 17 AAGAGGGTAC 8
EZ106328/c
LOCUS EZ106328 96 bp mRNA linear TSA 09-JUN-2010
DEFINITION TSA: Zea mays contig41986, mRNA sequence.
ACCESSION EZ106328
VERSION EZ106328.1
DBLINK BioProject: PRJNA36555
Sequence Read Archive: SRX003329
KEYWORDS TSA; Transcriptome Shotgun Assembly.
SOURCE Zea mays
ORGANISM Zea mays
Eukaryota; Viridiplantae; Streptophyta; Embryophyta; Tracheophyta;
Spermatophyta; Magnoliopsida; Liliopsida; Poales; Poaceae; PACMAD
clade; Panicoideae; Andropogonodae; Andropogoneae; Tripsacinae;
Zea.
REFERENCE 1 (bases 1 to 96)
AUTHORS Vega-Arreguin,J.C., Ibarra-Laclette,E., Jimenez-Moraila,B.,
Martinez,O., Vielle-Calzada,J.P., Herrera-Estrella,L. and
Herrera-Estrella,A.
TITLE Deep sampling of the Palomero maize transcriptome by a high
throughput strategy of pyrosequencing
JOURNAL BMC Genomics 10, 299 (2009)
PUBMED 19580677
REMARK Publication Status: Online-Only
REFERENCE 2 (bases 1 to 96)
AUTHORS Vega-Arreguin,J.C., Ibarra-Laclette,E., Jimenez-Moraila,B.,
Martinez,O., Vielle-Calzada,J.P., Herrera-Estrella,L. and
Herrera-Estrella,A.
TITLE Direct Submission
JOURNAL Submitted (23-MAR-2009) Cinvestav Campus Guanajuato, Laboratorio
Nacional de Genomica para la Biodiversidad, Km 9.6 Libramiento
Norte, Carretera Irapuato-Leon, Irapuato, Guanajuato 36821, Mexico
FEATURES Location/Qualifiers
source 1..96
/organism="Zea mays"
/mol_type="mRNA"
/db_xref="taxon:4577
Query Match 100.0%; Score 10; Length 96;
Best Local Similarity 100.0%;
Matches 10; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 GCGCCAGTAG 10
||||||||||
Db 47 GCGCCAGTAG 38
The claims recite no other element. Thus, these claims are not directed to significantly more than products of nature.
Claim Rejections - 35 USC § 112
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.
Claims 4-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for seeds comprising the DP-910521-2 event, does not reasonably provide enablement for seeds comprising only SEQ ID NO:26 or 29. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
The claims are broadly drawn to seeds comprising SEQ ID NO:26 or 29 and plants grown therefrom.
SEQ ID NOs:26 and 29 are each 10-base long sequences made up of 5 bases from the genomic flanking sequences of the DP-910521-2 event and 5 bases from the very ends of the event itself. Neither encode anything.
The specification teaches no use for seeds or plants comprising only SEQ ID NO:26 or 29. It would require undue experimentation to find a use tailored for such seeds and plants, if it is even possible.
Given the claim breath and lack of guidance in the specification as discussed above, the instant invention is not enabled throughout the full scope of the claims.
Claim Rejections - 35 USC §§ 102, 103
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 –
(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.
The following is a quotation of 35 U.S.C. 103(a), which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
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 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.
Claims 4-5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over GenBank Accession No. EU941770 (2008, www.ncbi.nlm.nih.gov/nuccore/ EU941770).
The claims are drawn to corn plants and seeds produced from plants with the DP-910521-2 event, wherein the claimed plants and seeds comprise a nucleotide sequence of SEQ ID NO:26. As the claimed plants and seeds are not required to have the event, these claims are treated as products by process.
Corn plants and/or seeds comprising at least mRNAs comprising the sequences (see alignment in the rejection under 35 USC 101 above). It is not clear if the mRNA was taken from plants or seeds and if the corn genome comprises DNA comprising SEQ ID NO:26.
Claims 4-5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over GenBank Accession No. EZ106328 (2010, www.ncbi.nlm.nih.gov/nuccore/EZ106328).
The claims are drawn to corn plants and seeds produced from plants with the DP-910521-2 event, wherein the claimed plants and seeds comprise a nucleotide sequence of SEQ ID NO:29. As the claimed plants and seeds are not required to have the event, these claims are treated as products by process.
Corn plants and/or seeds comprising at least mRNAs comprising the sequences (see alignment in the rejection under 35 USC 101 above). It is not clear if the mRNA was taken from plants or seeds and if the corn genome comprises DNA comprising SEQ ID NO:29.
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 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-13, 16-23, 26-28 and 62 of copending Application No. 18,710,321. Although the claims at issue are not identical, they are not patentably distinct from each other.
Plants, seed, and plants parts of corn plants comprising the DP-910521-2 event, as claimed in ‘321, make obvious corn plants comprising the DP-910521-2 event, as claimed in the instant application. SEQ ID NOs:26-31 are all part of the DP-910521-2 event. Further methods of using plants, seed, and plants parts of corn plants comprising the DP-910521-2 event, as claimed in ‘321, make obvious corn plants comprising the DP-910521-2 event, as claimed in the instant application. Seed produced from corn plants comprising the DP-910521-2 event and plants grown therefrom, as claimed in ‘321, make obvious seeds produced from corn plants comprising the DP-910521-2 event and plants grown therefrom, as claimed in the instant application; SEQ ID NOs:26 and 29 are part of the DP-910521-2 event.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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/Anne Kubelik/Primary Examiner, Art Unit 1663