Detailed Action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-18 are pending.
Claims 16-18 are withdrawn.
Claims 1-15 are examined.
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.
Claims 1-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Orf (Orf et al. Crop Science. 39(6):1642-1651. 1999) taken with evidence from Tischner (Tischner et al. Crop Science. 43(2):464-473. 2003) and Jeong (Jeong et al. The Plant Cell. 24:4807-4818. 2012).
Applicant claims a method of obtaining a soybean plant with decreased seed weight by crossing one plant with another that has a lower seed weight and selfing the resulting plant sufficiently to produce an elite inbred soybean plant having decreased seed weight compared to the first seed weight. Claim 2 includes embodiments that the seed weight is selected from weight per number of seeds or seeds per pound.
Claim 3 specifies that decreased seed weight is statistically significant.
Claim 4 specifies that the steps of inbreeding are repeated sufficiently to produce an elite inbred soybean plant with decreased seed weight compared to the second (lower seed weight) plant of claim 1.
Claim 5 specifies that the stigma on the first soybean is crossed with anthers from the second.
Claim 6 specifies that the seed size distribution of the elite inbred soybean and first plant are substantially the same.
Claim 7 specifies that the average seed size of the elite inbred soybean and first plant are substantially the same.
Claim 8 specifies that the seed size distribution of the elite, first and second plants are substantially the same.
Claim 9 specifies that the elite soybean plant has 1-10% less seed weight than the first soybean plant.
Claim 10 specifies that step (d) of claim 1 includes phenotypic evaluation and selection for decreased seed weight or size.
Claim 11 specifies that step (d) of claim 1 includes marker assisted selection.
Claim 12 specifies that step (d) of claim 1 includes using genetic markers to compare a complement of a progeny plant with the first or second variety.
Claim 13 specifies the selection of step (d) of claim 1 is performed in at least two progeny generations from any of F3-F8.
Claim 14 specifies the selection of step (d) of claim 1 is performed in at least three progeny generations.
Claim 15 specifies that the second soybean plant does not comprise a loss-of-function mutation in the GmJAG1 or GmJAG2 gene conferring decreased seed weight.
Regarding claims 1-4, Orf discloses a method of obtaining a soybean plant with decreased seed weight by crossing one plant with another that has a lower seed weight and selfing the resulting plant sufficiently to produce an elite inbred soybean plant having decreased seed weight compared to the first seed weight. Orf discloses producing homozygous inbred lines from three reciprocal crosses (Abstract; paragraph bridging left and right columns of page 1642). Orf discloses that the mean seed weight (SW, as mg/seed) of the Noir1-Archer inbred population is 147 mg/seed, which is below the first soybean plant, Archer, which has a mean of 161 mg/seed. The lowest in individual in the Noir1-Archer inbred population is 108 mg/seed with a standard deviation of 15, the difference in seed weight is statistically significant. (Table 1). This is also lower than the second plant, Noir1, which has a mean of 138 mg/seed.
Regarding claim 5, Tischner provides that the crosses of Orf are reciprocal (page 465, first paragraph of “Materials and Methods”).
Regarding claim 6, the seed size distribution of the elite inbred soybean of Orf and first plant are substantially the same. The range of seed weight of the inbred progeny population is 108-189 mg/seed, which encompasses the mean seed weight of Archer, 161 mg/seed (Table 1).
Regarding claim 7, the average seed size of the elite inbred soybean and first plant are substantially the same given that the mean seed weight of the Noir1-Archer population is 147 mg/seed with a SD of 15, which includes the mean of each parent line (Table 1).
Regarding claim 8, the inbred population of Noir 1-Archer comprises a range of 108-189 mg/seed, which includes individuals which are not substantially different from the means of each parent line (Table 1).
Regarding claim 9, the mean seed weight of the inbred population of Noir 1-Archer is 147 mg/seed, which is within 10% of a decrease from the mean seed weight of the first parent line, Archer, 161 mg/seed (Table 1).
Regarding claim 10, Orf discloses phenotypic evaluation of seed size and an observation of decreased seed weight in individuals of the Noir 1-Archer, which reads on selection.
Regarding claims 11 and 12, Orf discloses identification of markers associated with seed weight across the three populations of inbred lines (Table 2). This reads on using genetic markers to compare a complement of a progeny plant with the first and second varieties.
Regarding claims 13 and 14, Orf discloses producing progeny to the F7 generation (page 1642, right column, first paragraph of “Materials and Methods”). Individuals within the inbred population of Noir 1-Archer therefore read on the claimed embodiments of selection being performed in at least three progeny generations of the elite inbreed plant.
Regarding claim 15, Jeong provides that the ln allele is associated with an amino acid substitution in the EAR motif encoded by GmJAGGED1 (Abstract). Jeong provides that the single mutation at the EAR motif leads to a loss of JAG activity (page 4815, left column). Jeong provides that the ln mutant has an increase in number of seeds per plant (page 4815, left column, last sentence of first paragraph). Noir 1, the second plant of the parent varieties of the Noir 1-Archer population disclosed by Orf does not have an increased number of seeds compared to the other parent line, Archer, nor to the mean inbred population (Table 1, YD/SW), which it would have if comprising a loss of function of the ln allele. The claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes. Therefore, a prima facie case of anticipation has been established.
Conclusion
Claims 1-15 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R BYRNES whose telephone number is (571)270-3935. The examiner can normally be reached 9:00 - 5:00 M-F.
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/DAVID R BYRNES/Examiner, Art Unit 1662