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 Claims
2. Claims 7-9 and 16-21 are pending and examined.
Election/Restrictions
3. Applicant’s election of Group III and claims 7-9 and 16-21 in the reply filed on February 9, 2026 is acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
It is noted that in the Amendments filed on February 9, 2026, Applicant canceled all non-elected claims. Accordingly, claims 7-9 and 16-21 are examined.
Claim Objections
4. Claims 16 and 19 is objected to because of the following informalities.
In claims 16 and 19, the parenthetical term “(Tall Fescue)” is redundant and should be deleted.
In claim 19, the term “hexaploidy” should be amended to recite “hexaploid.” Appropriate correction is required.
Specification
5. The specification is objected to for the following reasons. In the Brief Summary section, on pages 2-3, the specification refers to Examples 1-21 and provides a one sentence summary of each of the Examples. However, the section titled “Examples” (pages 8-9) is only 2 pages long and does not refer to any examples nor otherwise provide specifics as to how the claimed invention was reduced to practice.
On page 5, paragraphs 48-49, the term “hexaploid” is misspelled as “5exaploidy.” On pages 7-8, paragraphs 72-80, the term “hexaploid” is misspelled as “7exaploidy” and “8exaploidy.” Appropriate correction is required.
The title of the invention is not descriptive. In the instant case, the title recites “hexaploid-octoploid perennial ryegrass,” while the claims are drawn to a seed of a hexaploid American ryegrass. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections - 35 USC § 112 - Indefiniteness
6. 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.
7. Claims 7-9 and 16-21 are 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.
In claim 7, the term “hexaploid American ryegrass” renders the claim indefinite because it is unclear what plant or plants it encompasses. Paragraph 58 of the specification provides the following definition of American ryegrass: “American Ryegrass has a rich very dark green color, high tiller density and slow vertical growth rate. Previous Festulolium cultivars have been developed for forage use, and therefore have a light color, poor turf density, and a rapid vertical growth rate. American Ryegrass has a rapid germination and establishment rate, and transitions when used in overseeding with Bermuda grass (warm- season). American Ryegrass transitions better than diploid perennial ryegrass. American Ryegrass in more temperate climates, will provide a permanent turf more cold tolerance, with good winter color, and better drought tolerance and persistence than perennial ryegrass.”
The above definition does not limit the term “American ryegrass” to specific ploidy or parentage, and most of the recited characteristics are relative to those of another plant, presumably either “previous Festulolium cultivars” or “diploid perennial ryegrass.”
Paragraph 8 also teaches as follows: “Disclosed herein are various cultivated varieties of true breeding, stable, hexaploid (2n=6x=42) and octoploid (2n=8x=56) germplasm of perennial ryegrass and American ryegrass (turf-type Festulolium, described in US Patent 10,721,879 incorporated herein by reference.” The ‘879 patent (in which two of the instant Applicant’s are co-inventors) provides the definition of the term “American ryegrass” that seems identical to the one above (see col 8 of the ‘879 patent). Yet the cited patent also appears to limit the term to a “tetraploid hybrid between Festuca pratensis Huds x Lolium perenne L.” (see paragraph spanning columns 1 and 2).
This difference from the instant application and the lack of a clear definition makes it unclear to what extent the “hexaploid American ryegrass” differs from the tetraploid of the patent. Nor is it clear which morphological and physiological characteristics a hexaploid American ryegrass plant would comprise. The metes and bounds are thus unclear. Given that claims 8, 9, 16-21 depend from claim 7 and fail to recite additional limitations overcoming its indefiniteness, they are indefinite as well.
Claims 16 and 19 are indefinite for the following additional reasons. Claim 16 is drawn to “A seed of a hexaploid hybrid of the seed of claim 7 and Festuca arundinacea.” However, the “hexaploid American ryegrass” recited in claim 7 also encompasses a hybrid - the Festulolium obtained from a cross between Lolium perenne and Festuca pratensis (see Table 1; paragraph 5). It is thus unclear to which “hexaploid hybrid” claim 16 refers.
In claim 19, the term “hexaploidy hybrid” is unclear for the same reason. Moreover, in claim 19, the limitation “hybrid of the seed of a hexaploid perennial ryegrass and Festuca arundinacea (Tall Fescue) and the seed of claim 16” renders the claim indefinite as well. The run-on recitation of three different plants makes it unclear which of them need to be crossed in order to produce the sed of claim 19. This is particularly true given that claim 16, from which claim 19 depends is already directed to a seed of a hexaploid hybrid.
Claim Interpretation
8. The following is noted with regard to claim interpretation. For the purpose of examination, the term “hexaploid American ryegrass,” whose metes and bounds are not clear, is given its broadest reasonable interpretation as encompassing any hexaploid “ryegrass”, including a hexaploid Festulolium obtained from the cross between Lolium multiflorum and Festuca arundinacea. It is noted that claim 7 does not limit the ryegrass by species, and does not recite any structural limitations other than hexaploidy. Neither the definition on 6 of the specification not other portions of the disclosure limit said term to a specific Festulolium plant, such as, for example, to a hexaploid obtained from the cross between Festuca pratensis and Lolium perenne. For these reasons, the term is given its broadest reasonable interpretation as encompassing any hexaploid Festulolium plant.
Claim 16 and 19 are read as encompassing a hybrid between a Festulolium cultivar (including one obtained from Lolium multiflorum and Festuca arundinacea) and F. arundinacea. The claim could also be interpreted as encompassing a hybrid between a F. arundinacea and a Festulolium cultivar obtained from Lolium perenne and Festuca pratensis. It is noted that “a seed” of claims 16 and 19 is not actually required to be hexaploid, and will also encompass a seed of any filial generation.
Claim Rejections - 35 USC § 112 - Written Description
9. 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.
10. Claims 7-9 and 16-21 are 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 claims a seed of any hexaploid American ryegrass; hybrids of said seed; and plants produced by growing the seed of said hexaploid American ryegrass and its hybrids.
Applicant identifies, in Tables 1, 2, and 4, a hexaploid plant called “APMT017 6x”, describes its anther color as yellow, and provides several quantitative characteristics for said plant (see Tables 2 and 4).
Applicant does not describe the invention as broadly claimed. Claim 7 is not limited to a specific variety or hybrid, but would encompass any and all hexaploid ryegrass plants, including any hexaploid Festulolium plants (see Claim Interpretation above). The claimed genus will thus encompass a very large and undefined number of species. The genus is not sufficiently described.
It is well-known in the prior art that plants from the genus Festuca (600 species) and Lolium (10 species) easily form interspecific hybrids. A number of stable cultivars, including specifically, hexaploid ones, have been developed from those interspecific crosses (Humphreys et al, Biologia Plantarum (2020) 64:576-590; Abstract, pg. 578, left col. - pg. 579, pg. 580, left col.; Table 1 Suppl.; See also Akiyama et al (Breeding Science (2016) 66:234-243). The single pant identified as “APMT017 6x” is not sufficiently representative of that vast genus of hexaploid plants.
Moreover, the plants that the specification expressly identifies as hexaploid Festulolium, “APMT017 6x,” are not adequately described either. The specification and drawings merely outline, in general terms, the procedure that Applicant used to obtain the a hexaploid Festulolium (see Fig. 1), but no further information is provided. For example, it is unclear from the general schematic of Fig. 1, exactly what plant was used as a starting material for APMT017 6x or what steps were taken to stabilize the hybrid after the initial cross. Moreover, the Examples section of the specification appears to lack any details as to the development of said plant, and is silent with regard to Examples 1-21 that are briefly mentioned on pages 2-3 of the specification. However, even if said hexaploid were described (which it is not), it would still not be sufficient to describe the genus encompassed by the claims.
In addition, Applicant has not set forth a structure or structures such that one of ordinary skill in the art would be able to envision which seeds or plants belong to the claimed genus and which do not. Merely identifying the claimed seeds and plants as “hexaploid” is not sufficient. For example, the specification appears to refer to two hexaploid Festulolium plants as “AMPT017 6x” (see Table 4), and while it is unclear whether those are deemed the same cultivar by Applicant, they show substantial variability at with regard to several quantitative characteristics. Moreover, as illustrated by Humphreys et al, Akiyama et al, cited above, as well as Kopecky et al, discussed in the anticipation rejection below, there are numerous hexaploid Festulolium cultivars known in the prior art.
In addition, claims 16-21 are not limited to the hexaploid seed of claim 7, but encompass additional genera of hybrids between the plant of claims 7 and tall fescue. These further hybrids will comprise an unspecified number of progeny plants that differ from the hexaploid parent by any number of characteristics. Applicant has not described said genera either. Table 1 lists a hexaploid hybrid between Festuca arundinacea and Festulolium loliaceum, but no further information is provided, and Applicant does not appear to have reduced to practice any such hybrids.
Fort these reasons, Applicant has failed to describe the claimed genus of hexaploid American ryegrass and hybrids derived from it, and it is unclear whether at the time of filing, Applicant was in possession of the instant invention as broadly claimed.
Claim Rejections - 35 USC § 102
11. 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.
12. Claims 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kopecky et al (Plant Breeding (2005) 124:454-458).
Kopecky et al disclose a number of hexaploid Festulolium cultivars developed from a hybrid between Festuca arundinancea and Lolium multiforum, and commercially released in the Czech Republic, including “Hykor,” “Felina,” “Korina,” and “Lesana” (Abstract; Table 1).
In view of the claim interpretation above, the seed and plant of any of said cultivars of Kopecky et al will read on the seed of claim 7 and the plant of claim 8. In addition, the plants of Kopecky et al will read on the plant of claim 9, which plant comprises all of the morphological and physiological characteristics of plant 8.
Claim Rejections - 35 USC § 103
13. 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.
14. Claims 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama et al (Breeding Science (2016) 66:234-243).
Akiyama et al teach making Festulolium hybrids of varying ploidy (including 6x) by crossing Lolium multiflorum and Festuca arundinacea (Abstract; pg. 234-235; 237-238; Fig. 1). Akiyama et al teach that F1 hybrids obtained from said cross are male sterile and show low female fertility, but that it is possible to restore fertility by backcrossing (paragraph spanning pages 234-235). Akiyama et al teach that Festuca arundinacea contributes to Festuloliums’ resilience against abiotic stresses, and teaches that the species has more vigorous growth and higher tolerance to summer depression than F. pratensis (pg. 234, both col.).
Akiyama et al teach that “An important factor in breeding of festulolium cultivars is the maintenance of genomic stability, which contributes to adequate seed fertility and insures the transmission of desired characteristics to subsequent generations” (page 235, left col.).
Akiyama et al do not expressly teach a hybrid seed obtained by crossing a Festulolium and Festuca arundinancea.
At the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify a Festulolium hybrid of Akiyama, including a hexaploid one, by backcrossing it with Festuca arundinacea thus obtaining seeds. One would have been motivated to do so in order to stabilize or restore fertility to the Festulolium hybrid, as expressly suggested by Akiyama et al, or to confer additional desirable characteristics of F. arundinacea to the Festulolium.
Given the teachings of Akiyama et al and the routine nature of the methods involved, one would have had reasonable expectation of success in arriving at a seed obtained from said cross.
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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