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 .
Status of the Claims
Claims 1-12, 14-15, 17, and 20-22 are cancelled.
Claims 13, 16, 18-19, and 23 are pending.
Claims 13, 16, 18-19, and 23 are examined herein.
Claims 13, 16, and 18-19 are allowed.
Claim 23 is rejected.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 23 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fang (CN-108085320-A).
This is a modified rejection from the previous rejection set forth in the Office Action dated 03/09/2026, necessitated by Applicant’s amendments.
Claim 23 is drawn to a rice plant with early-heading without yield drag produced by the method according to claim 16.
Regarding claim 23, Fang discloses the purpose of the present invention is to provide a dominant early maturing rice gene Ef-cd and its application, which is used to promote early maturing of rice without affecting yield, thereby further increasing the yield of hybrid rice and adapting to the conditions of short growth period in high latitude regions (i.e. a breeding method) (summary of the invention. Fang discloses determining a gene associated with early heading date in early-heading line D248 compared to late-heading line SH881 by extracting total RNA of the leaves of SH881 and D248 by TRIzol (Invitrogen, USA), and 1 μg total RNA was used to synthesize cDNA by ReverTra Ace qPCR RT Master Mix (Example 1 of Fang). Fang discloses the full-length cDNA sequences of the OsSOC1 and Os03g0122500 genes of SH881 and D248 were amplified and the PCR products were recovered and sequenced (Example 1 of Fang) (i.e. Fang discloses using both a reagent and a kit for identifying or assisting in identifying the heading date of rice). Fang discloses the plants identified to have the Ef-cd gene promote early maturing of hybrid rice without affecting yield (Example 5 of Fang).
Claim 16 only requires in one embodiment, e.g. a method for rice breeding, wherein the method for rice breeding uses a specific primer pair that is two single-stranded DNAs shown in SEQ ID No. 1 and SEQ ID No. 2 for identifying or assisting in identifying the heading date of rice; and claim 23 requires a rice plant with early-heading without yield drag produced by the method according to claim 16 (i.e. any of the methods in claim 16).
The disclosure of Fang anticipates the rejected claims. Based on the
above teachings, the product that is the rice plant with early-heading without yield drag produced by the method of claim 16 is structurally identical to the rice plant disclosed by Fang. The MPEP states "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)” (MPEP 2113.I). Therefore, even though Fang does not teach the method step in claim 16 that is using a specific primer pair that is two single-stranded DNAs shown in SEQ ID No. 1 and SEQ ID No. 2 for identifying or assisting in identifying the heading date of rice (rendering the method claims allowable), the claimed rice plant produced by the method for rice breeding according to claim 16 (the product of claim 23) is structurally identical to the plant in the prior art and is therefore unpatentable. That is, even though Fang did not use the specific primers to assist in identifying a rice plant with early-heading without yield drag, Fang discloses a rice breeding method and identifying rice plant with early-heading without yield drag with and there is no limitation in the instant claims that makes the instant plant structurally distinct from the plant disclosed by Fang. For these reasons, the product of the claimed plant in claim 23 is anticipated in view of Fang.
Allowable Subject Matter
Claims 13, 16, and 18-19 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 13, 16, and 18-19 appear free of the prior art.
Regarding claims 13, 16, and 18-19, the closest prior art is Fang (CN-108085320-A). Fang teaches OsSOC1 (i.e. Os03g0122600) and Os03g0122500 (transcribed from a portion of Os03g0122600 antisense strand) are candidate genes responsible for early heading in rice line D248 as compared to SH881 (example 1). Fang teaches upon further analysis, variation was not found in the cDNA sequences of OsSOC1 (Os03g0122600) of D248 and SH881 lines, but was found in Os03g0122500 (Example 1). Fang teaches the Os03g0122500 variant in D248 is the early flowering dominant gene (Ef-cd) responsible for early heading (entire document).
Fang does not teach, disclose, or otherwise render obvious a specific primer pair that is SEQ ID No. 1 and 2 which amplifies an approximate 100 bp region within Os03g0122600 gene. Specifically, the region amplified by SEQ ID No. 1 and 2 does not appear to correspond to any mutated regions identified in Ef-cd and there is no teaching or motivation to amplify the specific, relatively short region of the Os03g0122600 gene to identify rice with an early heading date.
Response to Arguments
Applicant argues beginning on p. 4 of remarks dated 06/05/2026 the
following arguments:
Claim objections
Claims 13, 16, 18-20 and 23 are objected to because of the informalities.
In response, the formal defects in claims 13, 16, 18-19 and 23 have been corrected
according to the examiner's suggestion, and claim 20 has been deleted to overcome this defect.
Examiner’s response:
In view of Applicant’s amendments and/ or cancellation of claim(s), the previous objections to the claims have been withdrawn.
Applicant argues beginning on p. 4 of remarks dated 06/05/2026 the
following arguments:
Claim 20 is rejected under 35 U.S.C. 112 (b), second Paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
In response, the claim 20 has been canceled.
Examiner’s response:
In view of Applicant’s cancellation of claim 20, the previous rejection under 35 USC 112(b) has been withdrawn.
Applicant argues beginning on p. 4 of remarks dated 06/05/2026 the
following arguments:
Claims 16 and 23 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Fan (CN-108085320-A).
In response, applicant has canceled the solutions of "or a reagent or kit for identifying or assisting in identifying the heading date of rice;" from claim 16.
Accordingly, the specific primer pair of SEQ ID No. 1 and 2 is required in the amended claim 16.
Applicant respectfully submits that Fang is silent with respect to the specific primer pair inclined in amended claim 16.
Fang only teaches that the OsSOCl/Os03g0122500 gene is associated with early heading, but does not teach the specific primer pair of SEQ ID No. 1 and 2, nor does it provide any motivation to amplify this specific approximately 100 bp region within the Os03g0122600 gene. Therefore, the amended claim 16 possesses substantial differences from Fang.
Examiner also acknowledged that Fang only discloses using both a reagent and a kit for identifying or assisting in identifying the heading date of rice. As the solutions of "or a reagent or kit for identifying or assisting in identifying the heading date of rice;" have been canceled from claim 16, the remaining solution is not disclosed or suggested by Fang.
Accordingly, amended claim 16 is not anticipated by Fang. Claims 18-19, directly depending on claim 16, are also allowable.
Claim 23, directly depending on claim 16, is also allowable. Specifically, the amended claim 23 requires rice plants "produced by a method using the specific primer pair of SEQ ID No. 1 and 2". Fang does not disclose a method using this specific primer pair, and therefore, Fang does not disclose the complete technical solution of Claim 23.
Accordingly, claim 23 also possesses novelty.
Withdrawal of rejections is respectfully requested.
Examiner’s response:
In view of Applicant’s amendments, the rejection to claim 16 has been withdrawn. Regarding claim 23, however, Fang discloses a rice plant with early heading without yield drag. Although Fang does not disclose a method for rice breeding, wherein the method for rice breeding uses a specific primer pair that is two single-stranded DNAs shown in SEQ ID No. 1 and SEQ ID No. 2 for identifying or assisting in identifying the heading date of rice (as required by an embodiment of the method of claim 16), the plant of Fang is structurally identical to that instantly claimed rice plant (i.e. a rice plant with early heading without yield drag) despite not having used the specific primer pair to assist in identifying the heading date of rice. For this reason, claim 23 remains rejected under 35 USC 102 (see full rejection above).
Conclusion and Inquiries
Claims 13, 16, and 18-19 are allowed.
Claim 23 is rejected.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA N STOCKDALE whose telephone number is (703)756-5395. The examiner can normally be reached M-F 8:30-5:00 CT.
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JESSICA N. STOCKDALE
Examiner
Art Unit 1663
/JESSICA NICOLE STOCKDALE/Examiner, Art Unit 1663
/CHARLES LOGSDON/Primary Examiner, Art Unit 1662
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