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.
Claims 13 and 18 are newly amended.
Claims 1-20 remain rejected.
Copending Applications
Applicants must bring to the attention of the Examiner, or other Office official involved with the examination of a particular application, information within their knowledge as to other copending United States applications, which are "material to patentability" of the application in question. MPEP 2001.06(b). See Dayco Products Inc. v. Total Containment Inc., 66 USPQ2d 1801 (CA FC 2003).
Response to Applicant Arguments – Objections to the Specification
In response to applicant’s arguments dated 11/24/2025 the objections to the specification of record are withdrawn.
Specifically, applicant asserts that a deposit will be made in accordance with 37 CFR §§ 1.801-1.809 upon allowance and further that both the specification and claims will be updated to reflect that deposit information (Applicant Remarks, Section F, Pages 8-9).
Response to Applicant Arguments – Claim Objections
In response to applicant’s arguments dated 11/24/2025 the claim objections of record are withdrawn.
Specifically, applicant asserts that a deposit will be made in accordance with 37 CFR §§ 1.801-1.809 upon allowance and further that both the specification and claims will be updated to reflect that deposit information (Applicant Remarks, Section F, Pages 8-9).
Response to Applicant Arguments – 35 USC § 101
In response to applicant’s arguments and amendments to the claims dated 11/24/2025 the 35 USC 101 rejections of record are withdrawn.
Response to Applicant Arguments – 35 USC § 112 (Indefiniteness)
In response to applicant’s arguments dated 11/24/2025 the indefiniteness rejections of record are withdrawn.
Specifically with respect to the indefiniteness rejections drawn to the lack of deposit information in the claims, applicant asserts that a deposit will be made in accordance with 37 CFR §§ 1.801-1.809 upon allowance and further that both the specification and claims will be updated to reflect that deposit information (Applicant Remarks, Section F, Pages 8-9).
The information provided in the Affidavit Traversing Rejections dated 11/24/2025 necessitates new indefiniteness rejections, which are presented below.
Claim Rejections - 35 USC § 112 (Indefiniteness)
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.
Claims 1-20 are newly 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.
The claims are drawn to plants, seeds, cells, tissues and methods of using soybean cultivar 24220850. As such it is clear that the claims all rely on soybean cultivar 24220850, however given the information provided in the specification and the data from applicant’s Affidavit traversing rejections dated 11/24/2025 the scope encompassed by soybean cultivar 24220850 is not clear.
In the instant case the Office has made a finding of fact that for the instant variety the minimum description of this variety is the combination of the phenotype and genotype which the applicant has presented in the form of the trait table (Specification, Pages 9-10, Table 1) and the breeding history used to produce the claimed cultivar (Specification, Page 9, Paragraph 0069). on (breeding history).
In table 1, applicant has provided information on the phenotypic characteristics of the instant cultivar which applicant states shows uniformity and stability. This table includes qualitative traits including seed coat color and luster, cotyledon color and several others as well as quantitative traits which include relative maturity. The relative maturity value for the instant cultivar which applicant states shows uniformity and stability for the traits described in table 1 is 1.4.
Applicant emphasizes the importance of small differences in relative maturity in the affidavit stating that the “Claimed cultivar exhibits a significant increase in relative maturity as compared to soybean cultivar 85010111” (Affidavit, Page 2, Paragraph 5). To support this assertion, applicant has provided Exhibit A on page 6 of the Affidavit. In Table 1 of exhibit A applicant has provided relative maturity values for the instantly claimed cultivar and its parent cultivar 85010111. These values are 2.4 for the instantly claimed cultivar and 2.3 for the parent cultivar. Therefore, the relative maturity values for these two varieties differ by .1 which applicant states earlier in the affidavit is a significant difference.
If relative maturity difference of 0.1 is significant when comparing the instant cultivar and its parent variety, how does applicant address the 1.0 relative maturity difference between the value for relative maturity presented in table 1 of the specification and the value presented in table 1 of exhibit A?
Table 1 is relied on to present the phenotypic characteristics of the claimed cultivar and as such the values presented in this table define the metes and bounds of the claimed cultivar and as such it is important that these values are representative uniform and stable. However, even though applicant states that the cultivar shows uniformity and stability in paragraph 0071 on page 9 of the instant specification, in exhibit A, applicant presents a relative maturity value for the claimed cultivar that differs from the previously presented value by a value of 1.0, 10 times the difference that applicant urges is significant in the affidavit.
Given this difference between the phenotypic data describing the claimed cultivar in the specification and in exhibit A the phenotypic characteristics of the claimed cultivar are not clear and as such the metes and bounds of the term “soybean cultivar 24220850” are not clear and therefore claims 1, 6, 10-11, 13 and 16-17 are rejected as indefinite. Dependent claims are included for depending on indefinite claims and failing to limit the scope of the claims to definite subject matter.
Response to Applicant Arguments – 35 USC § 112 (Enablement)
In response to applicant’s arguments dated 11/24/2025 the enablement rejections of record are withdrawn.
Specifically, applicant asserts that a deposit will be made in accordance with 37 CFR §§ 1.801-1.809 upon allowance and further that both the specification and claims will be updated to reflect that deposit information (Applicant Remarks, Section F, Pages 8-9).
Under 37 CFR 1.809(c)-(d) an applicant is required to make a deposit of seeds within three months after the mailing date of the Notice of Allowance and Issue Fee Due. The time period for making a biological deposit, and an amendment to add the depository information to the specification and claims, is no longer extendable. See 37 CFR 1.136(c) and 1.809(c), revised in Changes to the Time Period for Making any Necessary Deposit of Biological Material, 66 Fed. Reg. 21090 (April 27, 2001), 1246 Off. Gaz. Pat. Office 104 (May 22, 2001), effective for Notices of Allowability mailed on or after May 29, 2001. Amendments are no longer permitted to be filed after the payment of the issue fee. See 37 CFR 1.312, revised in Changes to Application Examination and Provisional Application Practice, 65 Fed. Reg. 14865, 14869 and 14873 (March 20, 2000), 1233 Off. Gaz. Pat. Office 47, 50 and 54 (April 11, 2000), effective on May 29, 2000. Failure to make the needed deposit of seeds of the claimed soybean line will result in ABANDONMENT of the application for failure to prosecute. The deposit statement in the specification and all claims that refer to the instant seeds by name must be amended to include the deposit accession numbers, if they are not already present. These amendments should be submitted before the payment of the issue fee as an Amendment After Allowance under 37 CFR 1.312. The statement of deposit in the specification shall contain:
(1) The accession number for the deposit(s);
(2) The date of the deposit(s);
(3) A description of the deposited biological material sufficient to specifically identify and to permit examination; and
(4) The name and address of the depository. (See 37 CFR 1.809(d)).
Applicant is reminded to update the specification and claims as necessary to include the deposit information.
Response to Applicant Arguments – 35 USC § 112 (Indefiniteness)
In response to applicant’s arguments dated 11/24/2025 the written description rejections of record are withdrawn.
Specifically, applicant urges that the scope of the claimed genus is clear because the claims are not indefinite as was asserted by the office in the non-final office action dated, 06/03/2025. This argument is persuasive, given that the indefiniteness rejections of record have been withdrawn and therefore the written description rejections of record are withdrawn.
However, applicant has provided data in exhibit A which requires new written description rejections which are presented below.
Several of applicant’s arguments with respect to the newly withdrawn written description rejections remain relevant and are drawn to the following concept:
A person of ordinary skill in the art, viewing the specification as filed, would readily understand that the claimed cultivar exhibits the characteristics described in table 1 and paragraphs 0071 and 0072 of the specification.
This argument is not found to be persuasive because while applicant urges that the ordinary artisan would understand that the claimed cultivar exhibits the characteristics described in table 1, given the data presented in exhibit A found on the last two pages of the Affidavit traversing the rejections this does not appear to be the case.
As made clear in the indefiniteness analysis above, applicant urges that a 0.1 difference in relative maturity value is sufficient to distinguish varieties, yet in exhibit A applicant reports a relative maturity value that is 1.0 higher than that reported in table 1 of the instant specification. As such it is appears that the cultivar does not exhibit the characteristics described in table 1 or at the very least does not always exhibit these traits.
As such the phenotypic characteristics of the claimed cultivar are not clear and therefore applicants arguments with respect to the ability of table 1 to adequately describe the characteristics of the claimed cultivar are not found to be persuasive and new written description rejections are presented below.
Claim Rejections - 35 USC § 112 (Written Description)
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.
Claims 1-20 are newly 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.
The claims are drawn to plants, seeds, cells, tissues and methods of using soybean cultivar 24220850 and therefore the claims all rely on soybean cultivar 24220850. However, given the information provided in the specification and the data from applicant’s Affidavit traversing rejections dated 11/24/2025 the phenotypic characteristics encompassed by soybean cultivar 24220850 are not clear.
The best starting point for a written description analysis is not interpretation of the patent law by courts, but the law itself. With respect to written description, the first 10 words of 35 USC § 112(a) are very important:
“The specification shall contain a written description of the invention…” (emphasis supplied).
Accordingly, the strict interpretation of the law is clear. Applicant must provide in the specification a written description. The only question is what is an “adequate written description”. This is a fact-based inquiry done by the factfinder (the USPTO examiner) when analyzing the nature of the instant invention.
In the instant case the Office has made a finding of fact that for the instant variety the minimum description of this variety is the combination of the phenotype and genotype which the applicant has presented in the form of the trait table (Specification, Pages 9-10, Table 1) and the breeding history used to produce the claimed cultivar (Specification, Page 9, Paragraph 0069). on (breeding history).
Applicant provides table 1 on pages 9-10 which includes information on the phenotypic characteristics of the instant cultivar which applicant states shows uniformity and stability. This table includes qualitative traits including seed coat color and luster, cotyledon color and several others as well as quantitative traits which include relative maturity. The relative maturity value for the instant cultivar which applicant states shows uniformity and stability for the traits described in table 1 is 1.4.
Applicant emphasizes the importance of small differences in relative maturity in the affidavit stating that the “Claimed cultivar exhibits a significant increase in relative maturity as compared to soybean cultivar 85010111” (Affidavit, Page 2, Paragraph 5). To support this assertion, applicant has provided Exhibit A on page 6 of the Affidavit. In Table 1 of exhibit A applicant has provided relative maturity values for the instantly claimed cultivar and its parent cultivar 85010111. These values are 2.4 for the instantly claimed cultivar and 2.3 for the parent cultivar. Therefore, the relative maturity values for these two varieties differ by .1 which applicant states earlier in the affidavit is a significant difference.
If relative maturity difference of 0.1 is significant when comparing the instant cultivar and its parent variety, how does applicant address the 1.0 relative maturity difference between the value for relative maturity presented in table 1 of the specification and the value presented in table 1 of exhibit A?
Table 1 is relied on to present the phenotypic characteristics of the claimed cultivar and as such the values presented in this table define the metes and bounds of the claimed cultivar. Even though applicant states that the cultivar shows uniformity and stability in paragraph 0071 on page 9 of the instant specification, in exhibit A, applicant presents a relative maturity value for the claimed cultivar that differs from the previously presented value 1.0, a difference 10 times greater than the difference that applicant urges is significant and distinguishes the instant cultivar from the reference.
Given this difference between the phenotypic data describing the claimed cultivar in the specification and in exhibit A the phenotypic characteristics of the claimed cultivar are not clear. Further, it does not appear that table 1 can be relied on to adequately describe the phenotypic characteristics of the claimed cultivar.
Without the phenotypic data normally provided in a trait table the instant specification fails to describe structural features that distinguish plants of “soybean cultivar 24220850” from other soybean plants. Given that the data presented in table 1 appears to be unreliable the specification does not describe the structural features and/or morphological and physiological characteristics that are required for a plant to be of “soybean cultivar 24220850”.
Hence, Applicant has not, in fact, described the claimed soybean plants over the full scope of the claims, and the specification fails to provide an adequate written description of the claimed invention.
Therefore, given the lack of written description in the specification with regard to the structural and functional characteristics of the claimed compositions, Applicant does not appear to have been in possession of the claimed genus at the time this application was filed.
Response to Applicant Arguments – 35 USC § 102 and 103
Applicant’s arguments dated 11/24/2025 have been fully considered but are not found to be persuasive.
Applicant’s arguments are summarized as follows:
Exhibit A demonstrates that the claimed cultivar exhibits a significant increase in relative maturity as compared to soybean cultivar 85010111.
These data indicate that the phenotype of soybean cultivar differs significantly in at least relative maturity as compared to soybean cultivar 85010111 when grown under the same environmental conditions.
These differences are significant and can allow for optimized growing seasons in different areas of the US and the real world impact of such differences are agronomically important.
The claimed cultivar is a result of the serendipitous combination of the initial cross of soybean cultivars 15EN304531-11-01and (15EN304531-11-01 x 16EN304331-22), the selection and advancing methods applied during breeding and the complex nature of genetic inheritance.
The claimed and referenced soybean cultivars are distinct and display intrinsic physiological differences that one of skill in the art would recognize as both agronomically significant and unexpected and as such the referenced art does not teach or suggest a plant with all of the phenotypic traits of the claimed cultivar.
With respect to the arguments summarized in 1. above, applicant’s arguments are not found to be persuasive because given the data presented in exhibit A there does not appear to be any practical difference between the instant and reference variety.
Specifically, exhibit A shows that when grown side by side the instant and reference cultivar have relative maturity values of 2.4 and 2.3 respectively. These values alone demonstrate the similarity of the two cultivars rather than the differences.
The specification in paragraph 0045 on page 6 defines Relative maturity as follows:
The term relative maturity is a numerical value that is assigned to a soybean cultivar based on comparisons with the maturity values of other varieties. The number preceding the decimal point in the RM refers to the maturity group. The number following the decimal point refers to the relative earliness or lateness within each maturity group. For example, a 3.0 is an early group III cultivar, while a 3.9 is a late group III cultivar.
This definition is helpful in understanding the similarity of the instant and reference cultivar based on the data presented in exhibit A. The definition makes clear that the instant and reference varieties are both maturity group II soybeans that are early group II cultivars. Further, this definition makes clear that the two varieties could not be more similar without having the exact same value for relative maturity. Therefore, rather than being significantly distinct from one another these values appear to indicate that the two cultivars are nearly identical.
With respect to the term “significant increase in relative maturity” which is central to applicant’s arguments, it appears that this term is being used according to the statistical definition of significant, because in a practical sense the difference between the relative maturity values of these two cultivars does not appear to be significant. Applicant’s definition of relative maturity teaches that the first digit defines the maturity group of the cultivar and then the second digit represents where within that broader maturity group the cultivar falls. Given that the two cultivars differ by only 0.1 rather than being significantly distinct these values indicate that the two cultivars are remarkably similar and can be used interchangeably.
This can be seen in the disclosure of Conley, Crop Protection Network, Published 2/01/2018. Figure 2. of Conley provides a map illustrating optimum soybean maturity group throughout the United States. The map divides the country into bands and assigns relative maturity to each band. Importantly the relative maturity jumps 0.5 between each band. This indicates for example that in Southern Wisconsin that a soybean having a relative maturity between 2.0 and 2.5 is best suited for the growing conditions in that region. Therefore based on the relative maturity maps guiding farmers on which varieties to plant and in view of the data presented in exhibit A the instant and reference cultivars are interchangeable with respect to relative maturity.
Therefore, while applicant urges that this “significant increase in relative maturity” will have agronomic real world implications it is clear that these differences are only significant statistically and the guidance provided to farmers makes clear that there is no real world difference between the instant and reference cultivars with respect to relative maturity. In fact these cultivars could not be more similar without having identical values and are practically interchangeable.
Finally, while applicant urges that a 0.1 difference in relative maturity is a significant difference that distinguishes the instant variety from the reference variety applicant’s relative maturity value presented in exhibit A (2.4) has a value that is 1.0 higher than that presented for the same cultivar in table 1 of the specification (1.40). Therefore, given that applicant has provided evidence that the same variety can have relative maturity values that differ by 1.0 leading the cultivar to be characterized as falling into two distinct maturity groups a difference of 0.1 relative maturity between the instant and reference cultivars does not seem to be significant and is in fact an order of magnitude smaller than the difference exhibited by the instant cultivar.
In light of the analysis presented above, the arguments summarized in 1. are not found to be persuasive.
With respect to applicant’s arguments summarized in 2. above, these arguments are not found to be persuasive because while applicant urges that because breeding steps were taken to produce the instant cultivar from the parent reference cultivar which would produce a distinct cultivar, they continue this argument by stating that the referenced soybean cultivars are distinct and display intrinsic physiological differences that one of skill in the art would recognize as agronomically significant and unexpected.
This argument is not persuasive. See above response to arguments about the significance of a 0.1 difference in relative maturity value between the instant and reference cultivar for an analysis on why this evidence demonstrates remarkable similarity rather than significant difference, however, to summarize, the relative maturity difference between the instant and reference cultivar presented in exhibit A is 0.1 which is an order of magnitude less than the relative maturity difference for the instant cultivar presented in table 1 of the specification and table 1 of exhibit A.
Therefore given that the difference between the instant and reference cultivar is 0.1, which Conley makes clear means that with respect to relative maturity these cultivars are practically interchangeable, the ordinary artisan would not see that the two cultivars have intrinsic differences that distinguish them, instead given the date presented in the instant disclosure the ordinary artisan would have found the two cultivars to be functionally indistinct. Therefore, given that the two cultivars appear to be identical, with only slight differences in quantitative traits which at least with respect to relative maturity are an order of magnitude smaller than the difference within the instant cultivar, applicant’s arguments are not found to be persuasive.
Claim Rejections - 35 USC § 102 and 103
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.
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.
Due to Applicant’s amendment of the claims, the rejection is modified from the rejection as set forth in the Office action mailed 06/03/2025 as applied to claims 1-20. Applicant’s arguments filed on 11/24/2025 have been fully considered but they are not persuasive.
Claims 1-20 remain rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mason (2021, US 10,980,204).
As discussed above, based upon the differences in relative maturity values presented for the instant cultivar in table 1 of the specification and table 1 of exhibit A, the amount of variation in the morphological and physiological characteristics of soybean variety 24220850 as described in table 1 of the instant specification is not clear.
The prior art (‘204) teaches soybean cultivar 85010111 (Table 1).
85010111 shares morphological and physiological characteristics with a representative species of the instant variety. The reference variety is described in table 1 of the reference while the characteristics of a member of the claimed genus can be found in table 1 of the instant specification.
The soybean lines described in the instant application and reference have identical values reported for the following characteristics: purple flowers, imperfect black hila, gray pubescence, tan pod walls, yellow seed coat color, dull seed coat luster, yellow cotyledons, ovate leaflets, indeterminate growth habit, the DAS-44406-6 herbicide resistance event, the Rps1C Phytophthora Root Rot resistance gene and the rhg1 soybean cyst nematode resistance gene (Table 1 and the two paragraphs immediately following in both the instant specification and the reference).
The varieties have similar values for relative maturity, lodging, height, seeds/lb., seed protein % and seed oil % and have different names.
These differences can be attributed to environmental variability and grader subjectivity. In fact, with respect to relative maturity the difference between the instant and reference variety is far smaller than the difference between the values reported for the instant cultivar in table 1 of the specification and in table 1 of exhibit A.
Additionally, the instant variety name appears to be generic and without deposit information this could be the same variety as the reference. The prior art further discloses all of the claimed methods of use, methods of producing other soybean plants, methods of producing commodity plant products, and methods of isolating nucleic acids (claims).
Accordingly, the claimed invention is anticipated by, or in the alternative, is obvious in view of the prior art. See In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985), which teaches that a product-by-process claim may be properly rejected over prior art teaching the same product produced by a different process, if the process of making the product fails to distinguish the two products. Since the Patent Office does not have the facilities to examine and compare the plant and seed of Applicant's with that of the prior art, the burden of proof is upon the Applicant to show an unobvious distinction between the claimed plant/seed and the plant/seed of the prior art. See In re Best, 562F.2d 1252, 195 USPQ 430 (CCPA 1977).
Response to Applicant Arguments – Double Patenting
Applicant’s arguments dated 11/24/2025 have been fully considered but are not found to be persuasive.
Specifically applicant urges that the instant and reference cultivar are distinct based on a comparative analysis presented in the Affidavit traversing rejection which includes exhibit A. This argument is not found to be persuasive for the same reason that applicant’s arguments with respect to the anticipation/obviousness rejections were not persuasive. In fact, the same reference is used in the anticipation/obviousness rejections of record and double patenting rejections of record.
For an analysis on how the data presented in exhibit A demonstrates that the instant and reference cultivars are practically interchangeable and do not differ significantly in a real world setting see the response to applicants arguments (102/103) section above.
A careful comparison between the traits reported for the instant and reference cultivars makes clear that the cultivars are remarkably similar, only differing slightly in several quantitative traits. These differences can be accounted for by differences in growing conditions or microenvironmental effects. In fact the difference in relative maturity value between the instant and reference cultivar is much smaller than the difference between the two relative maturity values presented for the instant cultivar in the specification and in exhibit 1. Stated differently the variation in relative maturity between the instant and reference cultivar is smaller than the variation within the claimed cultivar.
As such, the cultivars do not present phenotypic differences which were not predictable or expected. The only unexpected aspect of the phenotypic data presented for the instant and reference cultivar in exhibit A is how close the two values are and how much the two values differ from values presented in the specification of the instant and reference patent.
Applicant’s arguments are not found to be persuasive and the rejections of record are maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of Mason (2021, US 10,980,204).
‘204 claims soybean cultivar 85010111 (claims 1-2).
85010111 shares morphological and physiological characteristics with a representative species of the instant variety. The reference variety is described in table 1 of the reference while the characteristics of a member of the claimed genus can be found in table 1 of the instant specification. The soybean lines described in the instant application and reference are identical in the following characteristics: purple flowers, imperfect black hila, gray pubescence, tan pod walls, yellow seed coat color, dull seed coat luster, yellow cotyledons, ovate leaflets, indeterminate growth habit, the DAS-44406-6 herbicide resistance event, the Rps1C Phytophthora Root Rot resistance gene and the rhg1 soybean cyst nematode resistance gene (Table 1 and the two paragraphs immediately following in both the instant specification and the reference).
The varieties differ slightly in relative maturity, lodging, height, seeds/lb, seed protein % and seed oil % and have different names.
These differences can be attributed to environmental variability and grader subjectivity. Additionally, the instant variety name appears to be generic and without deposit information this could be the same variety as the reference. The prior art further discloses all of the claimed methods of use, methods of producing other soybean plants, methods of producing commodity plant products, and methods of isolating nucleic acids (claims).
Claims 1-17 and 19 in ‘204 are identical to instant claims 1-17 and 20 except for the name of the variety. As the name of the instant variety appears to be generic because it is not known in the art and the deposit information is not included in the instant disclosure the instant and reference varieties appear to be the same.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to determine the genotype of the resulting soybean plant by detecting at least one polymorphism and recording the data, as this is a routine step in breeding with a soybean plant, such as in the methods claimed in ‘204’s claims 11-12 and 14-16.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN JAMES SULLIVAN whose telephone number is (571)272-0561. The examiner can normally be reached 7:30 to 5:00.
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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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/BRIAN JAMES SULLIVAN/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663