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 .
Amendments
The amendments received on Dec. 8, 2025, have been entered. Claims 1-20 are pending and are examined in this Office Action. Applicant has provided both a marked up and a claim copy of the specification which has been amended. In this Office Action, the Examiner will refer to the page numbers in the clean copy of the specification that was received on Dec. 8, 2025.
Objections and Rejections That Are Withdrawn
The objection to the specification is withdrawn in light of Applicant’s amendments to the specification.
The objection to claim 16 is withdrawn in light of Applicant’s amendments to the claim.
The portion of the rejections under 35 USC 112b for indefiniteness that was directed to the missing ATCC accession number is withdrawn in light of Applicant’s amendments.
The portion of the rejection under 35 USC 112b for indefiniteness that was directed to the recitation of “low pod splitting” in claim 16 is withdrawn in light of Applicant’s amendments.
The portion of the rejection under 35 USC 112b for indefiniteness that was directed to the recitation of “sufficient inbreeding” in claim 19 is withdrawn in light of Applicant’s amendments.
The portion of the written description rejection under 35 USC 112a that was directed to the missing ATCC accession number is withdrawn in light of Applicant’s amendments to the specification and claims.
The rejection of claim 17 for failure to further limit under 35 USC 112d is withdrawn in light of Applicant’s amendments to the claims which render the claim indefinite rather than non-limiting (see new indefiniteness rejection, below).
Claim Objections
Claim and 19 are objected to because of the following informalities:
Claim 10 recites “… self-pollinating the peanut plant of claim 3 with itself or a crossing with a…”. It is redundant to write self-pollinating a plant with itself, and there is an unnecessary article “a” before the word crossing. In addition there is no recitation of what plant will be used for “crossing”. Applicant is advised to delete “with itself” and delete the word “a” that appears immediately before the word “crossing” and insert - - the peanut plant of claim 3 - - between “crossing” and “with”.
Claim 19, in part b, recites “… crossing the progeny plant with itself or crossing with …”. It is redundant to write self-pollinating a plant with itself, and there is no recitation of what plant will be used for “crossing”. Applicant is advised to delete “with itself” and insert - - the progeny plant - - between “crossing” and “with”. Claim 19 part (c) has the same issue that part (b) had originally; the Examiner missed this in the last Office Action.
Appropriate correction is requested.
Warning for Potential Objection
Applicant is advised that should claim 8 be found allowable, claim 9 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). It is unclear exactly what is meant by “F1” in claim 8, however, if it is meant to require that the plant regenerated from a tissue culture of Georgia-SP/RKN cells is regenerated from the first passage of tissue culture (F1 meaning 1st generation), then such a plant would inherently possess of the morphological and physiological properties of a peanut plant grown from the deposited seeds. For this reason, the claims appear to be identical in scope. Unless F1 means something different (see rejection under 35 USC 112B, below).
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 1-20 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. All dependent claims are included in these rejections unless they include a limitation that overcomes the deficiencies of the parent claim. Applicants arguments in the response received on Dec. 8, 2025, have been fully considered but were not found to be persuasive.
Claims 1, 3, 9, and 19 each recite ATCC Accession No. PTA-127584 (NPGS PI No. PI # 700991) which is confusing because “NPGS PI No. PI # 700991” is in parentheses, and that makes it unclear if it is necessary or if it is merely exemplary. Applicant is invited to provide a declaration stating that there were no changes to the germplasm between the two accessions so they are identical in scope. In this case the accession in parentheses can be considered the same as an acronym that is identical in scope to a term in the claim (i.e. “ATCC”). In claim 3, in particular, it is unclear if the claimed plant must be grown directly from one of the deposited seeds, because claim 1 states that the deposit contains “representative seed” but claim 3 has no context between the variety name and the accessions.
For claim 8, it is unclear what “F1” is relative to. “F1” is used in the art to denote the first generation progeny after a sexual propagation. Claim 8 is directed to a plant regenerated from tissue culture, so it is unclear which parent plants would be considered the F0 parent plants.
In the response received on Dec. 8, 2025, Applicant asserts their intention is to “mean that ‘Georgia-SP/RKN’ cannot be tissue cultured so that the tissue culture version of ‘Georgia-SP/RKN’ can be used as a parent to generate an F1 hybrid plant” (Resp 8). This does not clarify the issue. It is unclear how a plant that cannot be tissue cultured will have a “tissue culture version”. Furthermore, the claim is a product-by-process claim, and the process does not have any step for crossing to generate a hybrid.
Claim 20 has the same issue as claim 8 because it is unclear what parent plants are the F0 parent plants.
In the response received on Dec. 8, 2025, Applicant asserts their intention is to mean that the F0 parent is “Georgia-SP/RKN” and the second parent can be any other peanut plant. If this is the intention, Applicant is advised to amend claim 20 to insert - - that is the progeny plant produced in part (a) of claim 19 - - , and delete “produced by the method of claim 19”.
Claim 15 recites the limitation "the physiological and morphological characteristics" in the third line of part e. There is insufficient antecedent basis for this limitation in the claim. In part d, the method requires selecting plants that have “the desired trait and physiological and morphological characteristics of peanut variety ‘Georgia-SP/;RKN’”, and this requires plants that have at least two of the characteristics of the variety, but it does not specify which two or more characteristics. Therefore when part e requires “the” characteristics, it is unknown which characteristics are required which renders the claim indefinite.
In the response received on Dec. 8, 2025, Applicant asserts their amendments to the claim have addressed the issue (Resp 8).
The amendments do not address the issue, however, and they actually introduce a new issue by reciting examples and tables. Claims are required to be stand alone and cannot recite tables or figures except for in extremely rare instance where there is no other way to claim the material (i.e. NMR spectra, mass spec data, etc.). The original issue remains, as well, because part (e) continues to recite “plants that comprise the desired trait and the physiological and morphological characteristics of peanut variety ‘Georgia-SP/RKN’”. Applicant amended part (d) to require “one or more physiological and morphological characteristics”, therefore, this provide antecedent basis for part (e) to recite the following: … to produce selected second or higher backcross progeny plants that comprise the desired trait and the one or more physiological and morphological characteristics … . Part (d) does not provide proper antecedent basis for the physiological and morphological characteristics.
Newly amended claim 17 recites the limitation "The plant of claim 6, further comprising a single locus conversion" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Claim 6 is directed to a tissue culture, it is not directed to a plant.
Lack of 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.
Claims 1-20 are 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. All dependent claims are included in these rejections unless they include a limitation that overcomes the deficiencies of the parent claim. Applicant’s arguments in the response received on Dec. 8, 2025, were fully considered but were not found to be persuasive.
The claims are directed to seeds and plants of peanut variety ‘Georgia-SP/RKN’ or plant parts derived from said variety. Since the plant 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 the plant is not so obtainable or available, the requirements of 35 USC § 112 may be satisfied by a deposit of the seeds. A deposit of 625 seeds of the cultivar is considered sufficient for most plant species to ensure public availability. The specification does not disclose a repeatable process to obtain the plant. It is noted that Applicant mentions a deposit seeds with the American Type Culture Collection (ATCC) (Spec 2) but they have not stated if the deposit will be made under the Budapest Treaty or not, and they have not made a statement stating that the seeds will be irrevocably and without restriction released to the public upon the issuance of a patent. The Examiner must know if the deposit has been accepted under the Budapest Treaty, because if it was not then Applicant will be required to provide evidence of viability testing from the depository.
(a) If a deposit is made AND ACCEPTED under the terms of the Budapest Treaty, then the Applicant must provide a statement, affidavit or declaration by Applicants, or a statement by an attorney of record over their signature and registration number, or someone empowered to make such a statement, stating that the instant invention will be irrevocably and without restriction released to the public upon the issuance of a patent, would satisfy the deposit requirement made herein.
(b) If a deposit has not been made under the Budapest Treaty, then in order to certify that the deposit meets the criteria set forth in 37 CFR 1.801-1.809 and MPEP 2402-2411.05, Applicant may provide assurance of compliance by statement, affidavit or declaration, or by someone empowered to make the same, or by a statement by an attorney of record over his or her signature and registration number showing that:
(i) during the pendency of this application, access to the invention will be afforded to the Commissioner upon request;
(ii) all restrictions upon availability to the public will be irrevocably removed upon granting of the patent in accordance with 37 CFR § 1.808(a)(2);
(iii) 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 effective life of the patent, whichever is longer, and the specification will include the street address of the depository;
(iv) a test of the viability of the biological material at the time of deposit (see 37 CFR § 1.807); and,
(v) the deposit will be replaced if it should ever become inviable.
Applicant argues that they have amended the specification with the ATCC deposit information rendering this rejection moot (Resp 9). This is not persuasive, however, because, as discussed, above, there is no statement about irrevocably removing restrictions, and there is no statement as to whether or not the deposit was accepted under the Budapest Treaty.
Inadequate Written Description
Claims 11 and 12 are 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. All dependent claims are included in these rejections unless they include a limitation that overcomes the deficiencies of the parent claim.
The claims are drawn to a seed and a plant produced by a method comprising crossing or selfing a plant of the instant variety. The method uses the open language of “comprising”, and therefore, the method can include an unlimited number of further generations of breeding. For this reason claims 11 and 12 encompass distally related peanut seeds and plants that are not adequately described.
In the response received on Dec. 8, 2025, Applicant did not provide any arguments against this portion of the rejection. It is maintained.
Failure to Further Limit
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 18 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant’s arguments in the response received on Dec. 8, 2025, have been fully considered but were not found to be persuasive.
Claim 18 depends from claim 17 and requires that “the single locus conversion is introduced into the plant by backcrossing or genetic transformation”. These are the only two methods for introducing a transgene/locus conversion that are taught in the instant specification (Spec 30, 35, 36, and 39-41). Furthermore, the claim is directed to the plant rather than the method of making the plant, therefore, if the particular method of making the plant does not change the structure of the resulting locus converted plant, then reciting two particular ways of making it do not provide a further limitation.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Applicant argues that their amendment of claim 17 render this rejection moot (Resp 10). This is not persuasive, however, because changing the claim from which claim 17 depends did not address this issue.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-5 and 8-13, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brown et al. (J. Plant Regist. (2023) Vol. 17; pp. 47-55). Applicant’s arguments in the response received on Dec. 8, 2025, have been fully considered but they were not found to be persuasive.
Brown teaches peanut variety ‘Georgia-SP/RKN’ (Brown 47, abstract). This Brown reference was published online on Nov. 29, 2022, which is before the filing date of the instant application. Brown teaches that Georgia-SP/RKN was released in 2021 by the Georgia Agricultural Experiment Station (Id.) which demonstrates that it was publicly available in 2021.
With regard to claim 1: Brown teaches that ‘Georgia-SP/RKN’ is large-seeded (Brown 47, introduction).
Claim 2: Brown teaches that Georgia-SP/RKN was selected from the parent, Georgia-17SP (Id. 48), which inherently means that Georgia-SP/RKN and Georgia-17SP were mixed.
Claim 3: Brown teaches an individual plant selection (Id.).
Claim 4: Brown teaches spreading runners which are plant parts (Id.).
Claim 5: The plants taught by Brown inherently comprise pollen, ovules, and cells.
Claims 8 and 9: a first generation plant regenerated from protoplast or cells would be indistinguishable from the original Georgia-SP/RKN, therefore, the claimed plant is anticipated (see MPEP 2113 regarding product-by-process claims).
Claims 10-11: Brown measured seed size, and this demonstrates seeds were produced by selfing or sib-crossing the plants (Brown 50).
Claim 12: a plant produced by growing a Georgia-SP/RKN seed is indistinguishable from the original Georgia-SP/RKN plant.
Claim 13: as discussed in the claim interpretation section, above, the limitation on the second plant that is recited in claim 13 does not exclude a method that relies on self-pollinating.
Applicant argues that the Brown publication was published less than one year prior to the filing of the instant application and is Applicant’s own work (Resp 10). Applicant provides a declaration from Dr. Nino Brown attesting to the fact that the publication is authored by the inventors of this application (Brown Declaration). This is only partially persuasive, because the rejection was based not only on the publication by Brown, but also by the disclosure within Brown that Georgia-SP/RKN was released in 2021 by the Georgia Agricultural Experiment Station (Id.) which demonstrates that it was publicly available in 2021. Anticipation can be by public use or sale rather than by a publication. 2021 is more than one year prior to the filing of the instant application.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Branch, W. D. (US Patent No. 11,197,449; issued on Dec. 14, 2021) in view of Brown et al. (J. Plant Regist. (2023) Vol. 17; pp. 47-55). Applicant’s arguments in the response received on Dec. 8, 2025, have been fully considered but were not found to be persuasive.
The claims are drawn to a seed, plant, or plant part of peanut variety ‘Georgia-SP/RKN’, and methods of using and making said seeds, plants, or plant parts, and products derived from said seeds, plants, or plant parts.
Branch teaches peanut variety ‘Georgia-18RU’ (entire document), and has claims that are almost identical in language compared to the instant claims with the exception of the name of the peanut variety. Compare instant claims 1-14 to Branch’s claims 1-13. Compare instant claims 15-18 to Branch’s claims 20-23. Compare instant claims 19-20 to Branch’s claims 25-26.
Branch does not teach peanut variety ‘Georgia-SP/RKN’.
Brown teaches peanut variety ‘Georgia-SP/RKN’ and teaches that the variety was released to the public in 2021 (see rejection under 35 USC 102, above).
At the time the instant application was filed, it would have been obvious and within the scope of one of ordinary skill in the art to substitute the publicly available peanut variety taught by Brown for the peanut variety claimed by Branch. This would be an obvious substitution of one peanut variety for another. One would have been motivated to do so because the Georgia Experimental Station released it to the public to make it available for public use.
Applicant argues that Brown does not qualify as prior art because it is the inventors own publication less than one year prior to the filing of the instant application (Resp 10-11). This is not persuasive, however, because Brown specifically discloses that the instant variety was released to the public in 2021. In this instant Brown is evidence of this public availability.
NOTE: this rejection is made specifically to address claims 6, 7, and 14-20, but it would apply equally to the claims covered under 35 USC 102 over public use as evidenced by Brown.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13, 20-23, 25, and 26 of U.S. Patent No. 11,197,449 in view of Brown et al. (J. Plant Regist. (2023) Vol. 17; pp. 47-55). See mapping of limitations and analysis in the rejection under 35 USC 103, above.
Applicant argues that Brown does not qualify as prior art because it is the inventors own publication less than one year prior to the filing of the instant application (Resp 10-11). This is not persuasive, however, because Brown specifically discloses that the instant variety was released to the public in 2021. In this instant Brown is evidence of this public availability.
Summary
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Examiner’s Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHY KINGDON whose telephone number is (571)272-8784. The examiner can normally be reached M-F 9:00 - 5:30 EST.
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CATHY KINGDON
Primary Examiner
Art Unit 1663
/CATHY KINGDON/Primary Examiner, Art Unit 1663