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
Claims 5 and 8-9 are canceled.
Claims 1-4, 6-7, and 10-23 are pending.
Claims 1-4, 6-7, and 10-23 are examined herein.
The previous objections to claims 14, 16, and 21 have been withdrawn in view of Applicant’s amendments. However, a new objection to claim 16 has been made necessitated by Applicant’s amendments.
Claim 16 is objected to.
Claims 14 and 19-20 remain rejected under 35 USC 112(b) indefiniteness or 35 USC 112(a) enablement.
Claims 1-4, 6-7, 10-13, 15, 17-18 and 21-23 are allowed.
Priority
Application No. 18/088,899 filed on 12/27/2022 claims priority to provisional Application No. 63/294,114 filed on 12/28/2021.
Claim Objections
Claim 16 is objected to because of the following informalities:
Claim 16 has been amended to recite “The sorghum plant or seed claim 4, wherein the HPPD inhibitor herbicide is selected from benzoylpyrazole herbicides, benzoylcyclohexanedione herbicides, aroylcyclohexanedione herbicides, oxazole herbicides, cyclopropylisoxazole herbicides, pyrazolone, carbobicyclic compounds, cyclic ketone compounds, benzoylpyrazole herbicides, pyrazole herbicides, triketone herbicides, aroylcyclohexanedione herbicides, and combinations thereof.”
Applicant should address the minor issues of an extra space following “The” and before “sorghum”, and also add the word “of” (with a space on either side) after the word “seed” and before “claim”.
As such, the claim should be amended to read “The [[ ]]sorghum plant or seed of claim 4, wherein the HPPD inhibitor herbicide is selected from benzoylpyrazole herbicides, benzoylcyclohexanedione herbicides, aroylcyclohexanedione herbicides, oxazole herbicides, cyclopropylisoxazole herbicides, pyrazolone, carbobicyclic compounds, cyclic ketone compounds, benzoylpyrazole herbicides, pyrazole herbicides, triketone herbicides, aroylcyclohexanedione herbicides, and combinations thereof.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Indefiniteness
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 35 U.S.C. 112 (pre-AIA ), second paragraph:
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.
Claims 19-20 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 which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
This is a maintained rejection from the previous Office Action dated 12/29/2025.
Claims 19-20 recite the limitation "The method of claim 15, comprising applying
the herbicide at a concentration of 0.5X-5X of the recommended dose on the herbicide
label." and "The method of claim 15, comprising applying the herbicide at a
concentration of 0.5X-4X of the recommended dose on the herbicide label". Because
there is no previous recitation of a recommended dose or an herbicide label, it is
unclear what recommended dose and herbicide label the recitations are in reference to.
Therefore, there is insufficient antecedent basis for these limitations in the claim.
Further regarding claims 19-20, there is no certainty an herbicide label comprises
a recommended dose. Even if a recommended dose is present on an herbicide label,
the "recommended dose" on an herbicide label can be altered manually, e.g. by writing
a different "recommended dose" on an herbicide label, or the "recommended dose" may
be altered by a company/ manufacturer at any time. For these reasons, the metes and
bounds of claims 19-20 are unclear.
Enablement
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 14 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first
paragraph, as failing to comply with the enablement requirement. The claim(s) contains
subject matter which was not described in the specification in such a way as to enable
one skilled in the art to which it pertains, or with which it is most nearly connected, to
make and/or use the invention.
Since the seed claimed is essential to the claimed invention, it must be
obtainable by a repeatable method set forth in the specification or otherwise be readily
available to the public. If a seed is not so obtainable or available, a deposit thereof may
satisfy the requirements of 35 U.S.C. 112. The specification does not disclose a
repeatable process to obtain the exact same seed in each occurrence and it is not
apparent if such a seed is readily available to the public.
Applicant notes in the specification that a sorghum line with accession no.
NCIMB 43919 has been deposited under the Budapest Treaty (10023), however
Applicant has failed to meet the requirements set forth herein.
If the deposit of these seeds is made under the terms of the Budapest Treaty,
then an affidavit or declaration by the Applicant, or a statement by an attorney of record
over his or her signature and registration number, stating that the seeds will be
irrevocably and without restriction or condition released to the public upon the issuance
of a patent would satisfy the deposit requirement made herein. A minimum deposit of
625 seeds is considered sufficient in the ordinary case to assure availability through the
period for which a deposit must be maintained.
If the deposit has not been made under the Budapest Treaty, then in order to
certify that the deposit, meets the requirements set forth in 37 CFR 1.801-1.809, Applicant may provide assurance of compliance by an affidavit or declaration, or by a
statement by an attorney of record over his or her signature and registration number
showing that
(a) during the pendency of the application, access to the invention will be
afforded to the Commissioner upon request;
(b) all restrictions upon availability to the public will be irrevocably removed upon
granting of the patent;
(c) the deposit will be maintained in a public depository for a period of 30 years or
5 years after the last request or for the enforceable life of the patent, whichever is
longer; and
(d) the viability of the biological material at the time of deposit will be tested (see
37 CFR 1.807); and
In addition, the identifying information set forth in 37 CFR 1.809(d) should be
added to the specification. See 37 CFR 1.801 - 1.809 [MPEP 2401-2411.05] for
additional explanation of these requirements.
Closest Prior Art
Claims 1-4, 6-7 and 10-23 appear free of the prior art.
Regarding claims 1-4, 6-7 and 10-23, the closest prior art is Armstrong (PCT
Patent Application Publication No. WO-2015138394-A2). Armstrong teaches an
invention about 4-hydroxyphenylpyruvate dioxygenase (HPPD) enzymes and plants
containing them showing a full tolerance against several classes of HPPD-inhibitors,
and provides isolated polynucleotides encoding HPPD inhibitor tolerance polypeptides (abstract). More specifically, Armstrong teaches sequence identifiers with specified
amino acid mutations of particular positions (p. 8, lines 3-11, and claim 1 of Armstrong).
However, Armstrong does not disclose, teach, or otherwise render obvious an amino
acid sequence having SEQ ID NO: 3, comprising a mutation from a Tryptophan to a
Serine residue at position 445 as required in claim 1, or a sorghum plant or seed,
comprising a nucleic acid encoding a Serine residue at amino acid position 445 of SEQ
ID NO: 3 as required by claim 10. SEQ ID NO: 3 does not appear in the prior art, nor does any provide teaching, suggestion, or motivation to arrive at SEQ ID NO: 3 comprising the mutation to a Serine at position 445, or a nucleic acid encoding SEQ ID NO: 3.
Response to Arguments
Applicant argues beginning on p. 6 of remarks dated 03/30/2026 the
following arguments:
Claims 19-20 stand rejected under 35 U.S.C. § 112(b), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The Examiner is of the opinion that it is not clear what these recitations are in reference to. There would not be certainty that a label comprises the recommended dose and the label might be altered manually. However, unlike most other types of product labels, pesticide labels are legally enforceable. See: https://www.epa.gov/pesticide- labels/introduction-pesticide-labels. Herbicides are also pesticides. The label defines who may use a pesticide, as well as where, how, how much, and how often it may be used. It follows that a label in the US needs to be present on the claimed product and needs to state the recommended dose. This is in line with the specification that states in Example 3:
"All herbicidal treatment was applied as: lx, 2x and 4x, wherein lx rate was defined based on the recommended dose in the herbicide label." (See Table 2 and para 0130-0131).
Reconsideration and withdrawal of this rejection are respectfully requested.
This argument has been fully considered and is found not persuasive for
the following reason(s):
This argument is not persuasive because, regardless if pesticide labels are legally enforceable, the metes and bounds of the claim are still unclear because recommended doses may be subject to change by the company/ manufacturer at any time, or an herbicide label may not be present on the herbicide bottle/ packaging (e.g. removed, damaged, etc.).
As written, the claims do and will remain rejected under 35 USC 112(b) indefiniteness. Applicant may overcome the 112(b) rejection by amending the claims, e.g. to recite specific dose concentrations, or by cancelling the claims.
Applicant argues beginning on p. 6 of remarks dated 03/30/2026 the
following arguments:
Claim 14 stands rejected under 35 U.S.C. § 112(a), first paragraph. Examiner notes that the recited seeds are not enabled because the seeds must be obtainable by a method set forth in the specification. Examiner notes that claim 14 recites a deposit according to the Budapest treaty but that the requirements for release have not yet been met.
Attorney of record hereby states that the seeds recited in claim 14 will be irrevocably and without restriction or requirement be released to the public upon issuance of a patent on this application.
Reconsideration and withdrawal of this rejection are respectfully requested.
This argument has been fully considered and is found not persuasive for
the following reason(s):
Attorney’s statement is acknowledged. However, proof of deposit and acceptance under the Budapest Treaty are still outstanding. Also, the specification is required to include the deposit number, the date deposited, and the address of the depository. Currently, only the deposit number and the date deposited are provided (see spec., ¶0023). Applicant is required to amend the specification to also include the address of the depository.
It is further noted that no Attorneys of Record are listed on file. Applicant is required to correct this deficiency.
Conclusion
Claims 1-4, 6-7, and 10-23 appear free of the prior art.
Claim 16 is objected to.
Claims 14 and 19-20 are rejected.
Claims 1-4, 6-7, 10-13, 15, 17-18, and 21-23 are allowed.
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.
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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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JESSICA N. STOCKDALE
Examiner
Art Unit 1663
/JESSICA NICOLE STOCKDALE/Examiner, Art Unit 1663
/CHARLES LOGSDON/Primary Examiner, Art Unit 1662
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