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 .
Claim Status
Claims 1-20 are pending and examined on the merits.
Claims 1, 4, 7, 13, 16-18 are currently amended.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-20 remain rejected under 35 U.S.C. 103 as being unpatentable over Carden et al (US 10028472 B1), and further in view of Sprague et al, November 2021 (https://www.canr.msu.edu/weeds/extension/2022-Weed-Control-Guide/2022%20E-434%20Palmer%20&%20Waterhemp.pdf).
The instantly claimed soybean variety is a locus conversion of the patented variety 5PNEJ50. A stacked locus comprising 2,4D, glyphosate, and glufosinate resistance genes were added to the genome of 5PNEJ50 and the locus comprising the independent glyphosate resistance gene was removed. These steps were executed by outcrossing followed by backcrossing methods.
Carden teaches inbred soybean variety 5PNEJ50. They also claim locus conversions of 5PNEJ50 as well as associated methods including modifying herbicide resistance (claims 5,14,15). Carden also teaches that herbicide transgenes that can be included in the 5PNEJ50 genome include 2,4D, glyphosate, and glufosinate resistance genes (columns 19, 24-26).
Carden does not teach adding a stacked locus of 2,4D, glyphosate, and glufosinate resistance genes to the genome of 5PNEJ50.
Sprague teaches that the Enlist E3 trait stack comprising 2,4D, glyphosate, and glufosinate resistance genes in soybean allow for effective control of multi-herbicide resistant Palmer amaranth and waterhemp.
At the times of filing, it would have been prima facie obvious for a person of ordinary skill in the art to make a locus conversion of 5PNEJ50 to include the Enlist E3 trait stack for better management of multi-herbicide resistant weeds. Further, it would have been obvious for a person of ordinary skill in the art to segregate away independent glyphosate resistance gene during backcrossing as its presence was not useful as a glyphosate resistance gene is already present in the trait stack. As such, claims 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carden et al further in view of Sprague et al.
Response to Arguments - Claim Rejections - 35 USC § 103
Applicant's arguments filed 15 May 2026 have been fully considered but they are not persuasive.
Applicant urges that the claimed soybean line unexpectedly has an increase in charcoal rot resistance compared to the recurrent parent from 4 to 8. Applicant further urges that there would have been no way to have known that the claimed variety would have had improved charcoal root resistance prior to developing the instantly claimed line.
This argument is not persuasive, because assessment of charcoal rot resistance can be highly variable year to year as charcoal rot in disease is known to worsen in hot and dry climates. Given that the data were not gather in the same year and location, the ability to compare the scores in a meaningful way is limited. Specifically, while comparing the scores for plant varieties grown in different years and environments may suggest that one line has greater charcoal rot resistance than the other line, there is no way to conclusively determine that the differences are repeatable without a correctly designed and controlled experiment. As such, Applicant’s argument is not persuasive and claims 1-20 remain rejected.
Conclusion
No claims 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 extension fee 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 MATTHEW R KEOGH whose telephone number is (571)272-2960. The examiner can normally be reached M-Th 7-4:30, half day on Fridays.
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 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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/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663
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