Status of the Application
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 27 April 2026 has been entered.
The Hitomi Aoike Declaration filed 27 April 2026 has been fully considered.
The Objection to the Specification for New Matter is withdrawn in view of the inventor Hitomi Aoike Declaration.
The Examiner notes that the Office Action mailed 02-05-2026 refers to claims 21-24. This is a typographic error as the claims end at claim 21. The Examiner was referencing the proposed claims amendment associated with the applicant-initiated interview of 1 October 2025 (summary mailed 3 October 2025).
The rejection of claims 12 and 14 under 35 U.S.C. 112(b) is withdrawn in view of the Hitomi Aoike Declaration.
The rejection under 35 U.S.C. 112(a) for enablement of the Deposit of Biological Material is withdrawn. The Deposit Statement was filed on 20 October 2025 along with the Deposit Receipts from the Depository.
The rejection of claims 10-15 and 21 under 35 U.S.C. 112(a) for lack of adequate written description is withdrawn in view of the Hitomi Aoike Declaration filed 27 April 2026 verifying that the deposited sunflower varieties are inbred lines.
The rejection under 35 U.S.C. 103 is withdrawn in view of the Hitomi Aoike Declaration filed 27 April 2026 verifying that the deposited sunflower varieties are inbred lines.
Claim Objections
Claims 14 and 15 is objected to because of the following informalities: At 14 step (c), “crossing” should be “backcrossing” to be consistent and to make it clear the selected progeny is backcrossed to its parental line. Claim 15 is objected to because it depends from claim 14. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 3 remains 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.
At claim 3, the limitation “derived” at line 8 renders the claim indefinite. The claim appears to be a product-by-process claim but does not set forth any process steps, hence the metes and bounds of the claim are unclear. The listed of characteristics do not appear to be unique to the listed sunflower varieties, hence it is unclear from where the characteristic is derived.
Applicant argues that the amendment to claim 3 renders moot the rejection (page 8 of the Remarks). This argument is not found to be persuasive as addressed above.
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 3 and 17 remain and claim 19 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 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.
Applicant at claim 3 claims a sunflower plant or a part thereof having physiological and morphological characteristics of a sunflower variety Takii XX and “derived” there from. Applicant further claims said sunflower plant or part thereof have some general characteristics common to sunflower plants.
Applicant describes sunflower variety Takii 23, Takii 24, Takii 25, Takii 26, Takii 27, Takii 28, Takii 29, and Takii 30 predominantly by a deposit of biological material.
Applicant does not describe sunflower plants or a part thereof derived from said sunflower varieties having the listed physiological and morphological characteristics other than by a possible method(s) of making. See also, MPEP § 2163 which states that the claimed invention as a whole may not be adequately described where an invention is described solely in terms of a method of its making coupled with its function and there is no described or art-recognized correlation or relationship between the structure of the invention and its function. A biomolecule sequence described only by a functional characteristic, without any known or disclosed correlation between that function and the structure of the sequence, normally is not a sufficient identifying characteristic for written description purposes, even when accompanied by a method of obtaining the claimed sequence.
Applicant at claim 17 claims a sunflower plant produced by the method according to claim 16 which includes “introducing a mutation…that confers at least one new characteristic”.
Applicant describes sunflower variety Takii 23, Takii 24, Takii 25, Takii 26, Takii 27, Takii 28, Takii 29, and Takii 30 predominantly by a deposit of biological material. Applicant describes possible methods of introducing a mutation, including natural mutations at paragraph [0045].
Applicant does not describe a genus of mutated sunflower plants other than by possible methods of making. Further, Applicant is not capable of adequately describing introducing natural mutations because they are processes of nature. Hence, it is unclear that Applicant was in possession of the invention as broadly claimed.
Applicant argues that the Hitomi Aoike Declaration clarifies that the deposited lines were produced by inbreeding rendering the “objections” moot (page 9 of the Remarks).
For claims 3 and 17, this argument is not found persuasive because the issues under Written Description are other than whether the deposited sunflower varieties are inbred lines.
Applicant at claim 19 claims a sunflower plant regenerated from a tissue culture produced/derived from pollen, an embryo, an anther or a seed of a progeny of variety Takii 23, Takii 24, Takii 25, Takii 26, Takii 27, Takii 28, Takii 29, or Takii 30. Applicant claims that the tissue culture includes at least 50% of alleles of the sunflower plant, this phrase appears to include a progeny line which would comprise 50% alleles of a sunflower other than variety Takii 23, Takii 24, Takii 25, Takii 26, Takii 27, Takii 28, Takii 29 or Takii 30.
Applicant describes variety Takii 23, Takii 24, Takii 25, Takii 26, Takii 27, Takii 28, Takii 29, and Takii 30, and methods of producing a tissue culture and regenerating a sunflower plant therefrom.
Applicant does not describe pollen, an embryo, an anther or a seed of a progeny of variety Takii 23, Takii 24, Takii 25, Takii 26, Takii 27, Takii 28, Takii 29, or Takii 30 other than by a means of making. Hence, it is unclear that Applicant was in possession of the invention as broadly claimed.
Conclusion
Claims 3, 17 and 19 remain rejected.
Claims 14 and 15 are objected to.
Claims 1, 2, 4-13, 16, 18 and 21 are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID H KRUSE whose telephone number is (571) 272-0799. The examiner can normally be reached Monday-Friday 7AM-3:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham can be reached on (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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/David H Kruse/
Primary Examiner, Art Unit 1663
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