DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
2. Claims 1-22 are pending.
3. Claims 1-22 are examined herein.
4. The objections to the claims are withdrawn in view of Applicant’s amendments to the claims.
5. The objection to the specification is withdrawn in view of Applicant’s amendments to the disclosure.
6. The rejection of claims 1-22 under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s amendments to the claims.
7. The rejection of claims 1-22 under 35 U.S.C. 112(a) for lack of enablement is withdrawn in view of Applicant’s amendments to the claims and specification, statements in the Remarks, and evidence of the deposit.
8. The rejection of claims 1, 2, 4-6, 8, and 10-12 under 35 U.S.C. 102(a)(1) as being anticipated by PVP Certificate for Kentucky bluegrass variety Midnight Star is withdrawn in view of Applicant’s Remarks and amendment to the specification providing the breeding history for the claimed variety “Starr.” The rejection under 35 U.S.C. 103(a) in which said PVP Certificate was a primary reference is withdrawn as well.
9. The rejection of claims 11 and 12 under 35 U.S.C. 102(a)(1) as being anticipated by 2017 National Kentucky Bluegrass Test, National Turfgrass Evaluation Program is withdrawn in view of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 102
10. 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.
11. Claims 1, 2, 4-6, and 8 remain rejected under 35 U.S.C. 102(a)(1) as being anticipated by 2017 National Kentucky Bluegrass Test, National Turfgrass Evaluation Program, (2020 Data, Progress Report; available at https://www.ntep.org/data/kb17/kb17_21-5/kb17_21-5.pdf). This rejection was modified in view of Applicant’s amendments to the claims. Applicant’s arguments submitted on January 15, 2026 have been fully considered but they are not persuasive.
The 2017 National Kentucky Bluegrass Test document discloses that a Kentucky bluegrass variety called “Starr” (also referred to as “GO-2628”) was an entry at the 2017 National Kentucky Bluegrass Test, and was commercially available in the US in 2021 (see page 2, including the footnote; see also Table 1 on pages 7-8 and the footnote on page 8, indicating commercial availability). The variety “Starr” disclosed in the 2017 National Kentucky Bluegrass Test document appears to refer to the variety of the instant claims 1 and 2. The seed and plant part would be inherent in said disclosure. The plant of the document would also read on a plant regenerated from the tissue culture and the progeny plant of the instant claims 4 and 5, as well as on a “clone” of said plant, as recited in claim 8. Moreover, since the data disclosed in the document would have necessarily entailed planting of the seed of Starr, a “sod” comprising the plant (instant claim 6) would also be inherently disclosed.
For these reasons, the disclosure of the 2017 National Kentucky Bluegrass Test document anticipates the invention of the instant claims.
Response to Arguments
Applicant argues as follows: “As explained in paragraph 3 of the Hall Declaration, the National Turfgrass Evaluation Program is a tool used by the grass seed industry to evaluate and trial Kentucky Bluegrass varieties. Once a variety designation is added to an entry (e.g., 'Starr'), the variety is labeled as "commercially available" in the National Turfgrass Evaluation Program (NTEP) database. However, being labeled "commercially available" in the NTEP database does not mean that the variety is or was commercially available. In this case, the variety 'Starr' was labeled "commercially available" on the cited National Kentucky Bluegrass Test, National Turfgrass Evaluation Program reference simply because the variety was named. However, 'Starr' was not offered for sale or otherwise made publicly available until August 11, 2022, which is within one year of the effective filing date of this application (August 9, 2023)” (page 10 of the Remarks).
Applicant’s argument is not found to be persuasive. The Declaration of Jerald Lee Hall filed under 37 C.F.R. 1.132 on January 15, 2026 was fully considered but it is not sufficient to overcome the instant rejection.
The Declaration presents no objective, factual evidence supporting the assertion that the phrase “commercially available” in the 2017 National Kentucky Bluegrass Test document “does not mean that the variety is actually commercially available” (paragraph 3 of the Declaration). Mr. Hall’s statements thus amount to opinion evidence.
In assessing the probative value of an expert opinion, the examiner must consider the nature of the matter sought to be established, the strength of any opposing evidence, and the presence or absence of factual support for the expert’s opinion. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986). See also In re Oelrich, 579 F.2d 86, 198 USPQ 210 (CCPA 1978).
In the instant case, the Declaration contradicts the plain language of the cited art yet supplies no evidence in support. At the same time, the opposing evidence weighs against Mr. Hall’s opinion: the 2017 National Kentucky Bluegrass Test document expressly states that variety Starr and was commercially available in the US in 2021 (see page 2, including the footnote; see also Table 1 on pages 7-8 and the footnote on page 8, indicating commercial availability). For these reasons, the statements in the Declaration are not sufficient to overcome the rejection.
Claim Rejections - 35 USC § 103
12. 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.
13. Claims 3, 7, and 9-22 are rejected under 35 U.S.C. 103 as being unpatentable over PVP Certificate for Kentucky bluegrass variety Midnight Star (issued on July 16, 2008) in view of Van Binsbergen et al (US Patent 9,247,707, issued on February 2, 2016).
Claims 1-3, 7, and 9-23 are rejected under 35 U.S.C. 103 as being unpatentable over 2017 National Kentucky Bluegrass Test, National Turfgrass Evaluation Program, (2020 Data, Progress Report; available at https://www.ntep.org/data/kb17/kb17_21-5/kb17_21-5.pdf) in view of Van Binsbergen et al (US Patent 9,247,707, issued on February 2, 2016).
The teachings of the 2017 National Kentucky Bluegrass Test document are set forth above. The reference does not teach a tissue culture, a plant comprising a transgene, an F1 hybrid of said plant, or methods of crossing the plant with a transgenic plant, or introducing a transgene or a desired trait into a Kentucky bluegrass plant, including wherein the trait or transgene confers insect or disease resistance.
Van Binsbergen et al teach a seed of Kentucky bluegrass variety called “Barvette,” tissue culture of cells obtained from said plant; a plant produced by introducing a transgene into said variety by backcrossing or genetic transformation, and said plant wherein the plant is planted in a lawn (claims 1-3, 5 and 9). Van Binsbergen et al teach obtaining F1 hybrids of the plant; a method of producing an herbicide resistant plant by introducing a gene conferring herbicide resistance into “Barvette,” including wherein the gene confers resistance to glyphosate or imidazolinone, among others (claims 13, 14, and 17-18). Van Binsbergen et al teach a method of producing a pest or insect resistant plant comprising introducing a gene conferring said resistant into “Barvette,” including wherein the gene encodes a Bt endotoxin; and teaches a pest or disease resistant plant produced by said method (claims 18-22). Van Binsbergen et al teach a method of introducing a desired trait into “Barvette” by backcrossing, including wherein the desired trait is a phenotypic trait, a gene or a molecular marker; and teaches a plant produced by said method (claims 23-25).
At the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the Bluegrass variety taught by the 2017 National Kentucky Bluegrass Test document, using the teachings of Van Binsbergen et al, by introducing a desired trait, such as Bt-conferred insect tolerance, or an herbicide resistance, into said variety. It would have been also obvious to obtain an F1 hybrid, as well as tissue culture of said variety or use it as a lawn grass.
One would have been motivated to select Starr given its desirable characteristics, and given that the resultant plant would possess the added benefit of being resistant to a common herbicide, such as glyphosate, and would have enhanced insect or disease resistance. Given the fact that Van Binsbergen et al successfully reduced their invention to practice and given the routine nature of the methods, one would have had reasonable expectation of success.
Conclusion
15. No claims are allowed.
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MYKOLA V KOVALENKO whose telephone number is (571)272-6921. The examiner can normally be reached Mon.-Fri. 9:00-5:30 PST.
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/MYKOLA V. KOVALENKO/Primary Examiner, Art Unit 1662
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