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
The Office acknowledges the receipt of Applicant’s amendment filed May 26, 2026. Claims 1, 5-6, 9, 12, 18, 24, 35, 37, 40-42, 46, 48, 56, 60, 62-64, 69-70, 81 and 83-84 are pending. Claims 24, 35, 37, 40-42, 46, 48, 56, 62-64, 69 and 70 are withdrawn. Claims 1, 5-6, 9, 12, 18, 60, 81 and 83-84 are examined in the instant application to the extent of SEQ ID NO: 1 and SEQ ID NO:10.
All previous rejections not set forth below have been withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
This application claims foreign priority benefit of Application No. AU2020904574, filed December 09, 2020.
Information Disclosure Statement (IDS)
It should be noted that the references filed May 26, 2026 are not officially made of record because no IDS form was submitted.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01. For example, see page 42, line 26 and page 59, lines 22-23.
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.
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, 5-6, 9, 12, 18, 60, 81 and 84 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 claims 1, 9, 12 and 81, the recitation of “99% identity” is unclear because it is not known whether the 99% identity is determined by sequence comparison or evolutionary relatedness. It is suggested that “99% identity” be amended to “99% sequence identity”.
In claim 84, it is unclear whether the recitation within the parentheses is intended to be a claim limitation or a nonlimiting embodiment. It is suggested the parentheses be deleted.
Dependent claims are included.
Correction and/or clarification is required
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 81 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 81 does not further limit claim 1 because both claim 1 and the claim it depends from, claim 81, recite 99% identity.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 5, 6, 9, 12, 18, 60, 81 and 83-84 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mago et al. (BMC Plant Biology, 14:379, 30 Dec. 2014, p. 1-11 (Applicant’s IDS) in light of Mago et al. (UniProt Acc. No. A0A0B4SV28, BMC Plant Biology, 14:379, 30 Dec. 2014, p. 1-11 (U)) and Mago et al. (UniProt Acc. No. A0A0B4SVG8, BMC Plant Biology, 14:379, 30 Dec. 2014, p. 1-11 (V)).
With regard to claims 1, 6, 81 and 83, Applicant’s Sequence Listing discloses that SEQ ID Nos. 1 and 10 were obtained from Triticum aestivum cv. Hope. Mago teaches a T. aestivum cv. Hope plant that has resistance to stem rust (Abstract) and has sequences having 100% sequence identity to Applicant’s SEQ ID Nos. 1 and 10 (see sequence alignments (U) and (V)). A plant comprising transgenes encoding SEQ ID Nos. 1 and 10 are structurally indistinguishable from a plant comprising genes encoding SEQ ID Nos. 1 and 10.
With regard to claim 5, because the claim specifies that only SEQ ID Nos. 1 and 10 are required for powdery mildew resistance, the plant of Mago inherently has resistance to powdery mildew.
With regard to claims 9 and 12, because Mago teaches the same plant, the plant of Mago inherently has the nucleotide sequences SEQ ID Nos. 18 and 27.
With regard to claim 18, wheat is a cereal plant.
With regard to claim 60, a seed is an inherent part of the plant of Mago.
With regard to claim 84, because the claim specifies that only SEQ ID Nos. 1 and 10 are required for resistance to Puccinia graminis f. sp. tritici (Ug99) or Blumeria graminis f. sp. tritici, the plant of Mago inherently has resistance to P. graminis f. sp. tritici (Ug99) or B. graminis f. sp. tritici.
Accordingly, the claimed invention is anticipated by the prior art.
Conclusion
No claim is allowed.
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/C.J.O./Examiner, Art Unit 1663
/PHUONG T BUI/Primary Examiner, Art Unit 1663
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