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 .
Election/Restrictions
Applicant’s election of PAIR1, REC8 and OSD1 in the reply filed on 09/22/2025 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)).
Claim Objections
Claims 1-10 are objected to because of the following informalities: The claims are replete with numerous grammatical errors. For example in claim the phrase “characterized in that” appears to be superfluous and hampers the clear meaning of the claim. Similarly, the phrase “creating a heterozygous MiMe material” appears to be indicate just that mutated genes are heterozygous but the introduction of the term “material” which is broad, hampers a clear understanding of the scope of the claim. Claim 1 recites in step 1 “screening lines with heterozygous at regulated loci” wherein it appears screening lines ---that are--- heterozygous at regulated loci is the intended meaning. Similarly, in step 2 using the word “hybridizing” instead of ---crossing--- is confusing since hybridization has several other meanings within the context of breeding methods.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 112
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.
Claims 1-10 are rejected under 35 U.S.C. 112(b) 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.
Claim 1 recites the term “preferably” followed by what appear to be intended claim limitations. However, it is unclear if the limitation following the term is required, is preferred or intended to be an example for the purposes of determining the scope of the claim. Accordingly, the metes and bounds of the claim is indefinite.
Claim 2 recites the term “preferably” followed by what appear to be intended claim limitations. However, it is unclear if the limitation following the term is required, is preferred or intended to be an example for the purposes of determining the scope of the claim. Accordingly, the metes and bounds of the claim is indefinite.
Claim 1 recited the phrase “technical means for mutating” without including the means for mutating within the body of the claim, therefore it is unclear what limitation the recited “means” are imparting to the claim.
Claim 1 recites “inducing by using Fix plants and preserve homozygous MiMe material”. This phrase is confusing as it is not clear how the “Fix” plants are used and how they induce anything. Although the specification describes what Fix induced pollen it is not clear how it is induced or what the process is for this part of the method.
Claim 4 recites the phrase “such as” followed by examples. However, it is unclear if the limitation following the term is required, is preferred or intended to be an example for the purposes of determining the scope of the claim. Accordingly, the metes and bounds of the claim is indefinite.
Claims 2-9 depend either directly or indirectly from claim 1 and are rejected on the same basis.
Claim Rejections - 35 USC § 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 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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Mieulet et al (2016 Cell Research 26:1242-1254).
The claims are drawn to the mutation of MiMe key genes which make meiosis into like mitosis cell division, wherein 3 key genes are mutated, screened and maintained within several types of plants, but represented by rice, wherein the mutation and maintaining of these 3 genes is used for polyploid heterosis in plant breeding wherein the plants are selected from a group of species including rice wherein the asexual propagation is conducted by tillering bending, stem node culture or anther culture, wherein the mutagenesis is carried out by gene editing or mutagenesis such as EMS or ionizing radiation, wherein the genes are selected from genes including PAIR1, REC8 and OSD1 further comprising screening lines that meet the requirements of the Agriocultural Production SeedLaw for stability, consistency, and specificity.
Mieulet et al teach the mutation of PAIR1, REC8 and OSD1 in rice for the purpose of polyploid heterosis for the purposes of increasing yield in rice breeding (see page 1248 in particular) wherein the mutations are screened through crossing as well as selfing (see figure 7). It is noted that the crosses were made with heterozygous materials (see page 1250), wherein insertional mutagenesis was used and given that the mutagenesis methods are not limited as discussed above, mee the limitations of the claims.
Mieulet et al teach their methods which follows all of the instantly claimed methods but for the asexual propagation of material. Although this step is not expressly taught it is mentioned in mentioning apomixis, and is common for propagation of plant material and would have been a design choice readily apparent to one of ordinary skill at the time of filing. It is further noted that screening plants that meet a standard does not appear to impart or add a limitation to the method itself, but is rather a description of the plants, rather than the method and accordingly, this limitation as an intended result does not limit the method.
No claims are allowed.
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/BRENT T PAGE/Primary Examiner, Art Unit 1663