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.
Response to Arguments – Deposit Rejection
Applicant's arguments regarding the breeding history filed 9 October 2025 have been fully considered and the enablement rejection of record has been withdrawn.
Reopening Prosecution
In light of the information provided 9 October 2025 regarding the breeding history of the instantly claimed variety, the finality of the action mailed 13 June 2025 is withdrawn. Prosecution has been reopened to reject the instant claims as obvious. Had Applicant provided such information earlier in prosecution, an obviousness rejection would have been made at that time.
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 is/are 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.
Conclusion
No claims are allowed.
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.
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/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663