Status of the Application
This Office Action is in response to the Amendment and Remarks filed 16 January 2025.
The objections to the Specification are withdrawn in view of Applicant’s amendments.
The objection to the claims is withdrawn in view of Applicant’s amendments to claims 1, 9 and 17.
The rejection of claims 5, 8 and 18 under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s amendments to said claims. The Examiner notes that claim 18 was rejected for the phrase “preferably” but the rejection was not explained in the previous Office action.
The rejection under 35 U.S.C. 102(a)(1) is withdrawn in view of Applicant’s amendment to claim 17.
Election/Restrictions
Claims 31, 32, 38 and 39 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 14 July 2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 9, 11 and 25 remain 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.
Claim 9 remains indefinite because it is unclear where the “desiccating”, “adding”, “removing” and “growing” steps are practice in the method of claim 1. Hence, the metes and bounds of the claim are unclear.
Applicant argues that Claim 9 specifies that desiccating is performed "prior to incubation". Claim 9 further recites that adding granular top-dressing material on top of the substrate is done to at least partially cover the plant embryo and as such must be performed after transferring of the embryo onto the substrate. Removing of excess fluid is recited in claim 9 as being from the selected plant embryo, and, thus, must take place after selection in claim. Finally growing and acclimating the plantlet ex vitro is clearly a step after incubating in claim as the step requires the plantlet which is produced as a result of the incubating step (page 11 of the Remarks).
Applicant’s argument is not found to be persuasive. The last three method steps at claim 1 appear to be optional. No where in Claim 1 is there a explicit reference to a “selected plant embryo” so it is unclear where the “removing” step is practiced. It is unclear if the “growing” step is also an optional step since it would appear to be practiced after the “incubating” steps of claim 1.
Claims 11 and 25 remain rejected because the repeated use of “and/or” renders the claim indefinite because it is unclear which combinations are required and which are optional.
Applicant argues that the recitation of and/or does not render the claim indefinite per se. Applicant argues that the skilled person could clearly identify the options and various combinations encompassed through the use of "and/or" within these claims. Applicant argues that the with such options and combinations being clearly identifiable, it cannot be concluded that the claims are indefinite (page 11 of the Remarks).
Applicant’s argument is not found persuasive because the very wide variability of combinations does not put the public on notice as to what the metes and bounds of the claim are. This (referring to the 112(b) rejection) is supported by the recent Supreme Court decision Nautilus Inc., v. Biosig Instruments, Inc., which held that “that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus Inc., v. Biosig Instruments, Inc., 1314 S.Ct. 2120, 189 L.Ed. 37, 1190 USPQ2d 1688, 1690 (2014). The purpose of this requirement is to provide a “clear notice of what is claimed, “to apprise the public of what is still open to them.” Nautilus Inc., v. Biosig Instruments, Inc., 1190 USPQ2d, 1693 (quoting Markman v. Westview Instruments, Inc., 517 U.S. 370, 373, 116 S.Ct. 1384, 38 USPQ2d 1461, 1463 (1996), (quoting McClain v. Ortmayer, 141 U.S. 419, 424 (1891)).
Claim 25 is indefinite because it depends from cancelled claim 24. Hence, the metes and bounds of the claim are unclear.
Claim Rejections - 35 USC § 103
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 1-5, 7-9, 11, 17, 18, 22, 23 and 25 remain rejected under 35 U.S.C. 103 as being unpatentable over Megargel et al (WO 2017/192257) in view of Timmis et al (US 7,530,197), Hirahara (US 6,684,564) and Indian Council of Agricultural Research publication IN293KOL2014 (2016).
Megargel et al teach a system for obtaining a plantlet from a plurality of somatic plant embryos at figure 1 and page 1, paragraph 0003. Megargel et al teach using a first nozzle assembly to apply suction through the vacuum nozzle to retain an object against the distal end of the vacuum nozzle and producing an image of the object using a camera to determine orientation of the object using a controller on page 2, paragraph 0006. Megargel et al teach that if the cameras and/or optical visualization equipment identifies embryos in a petri dish that have selected characteristics, the robot can be activated to retrieve those selected embryos from the petri dish and transfer the embryos to a second location for further processing (page 20, paragraph 00057). Megargel et al teach that the selected embryos can be transferred from the petri dish to a growth container so that germination can begin (page 20, paragraph 0059), and that the growth container can comprise a selected growth medium (page 21, paragraph 0060).
Megargel et al teach that the processor of the controller can identify singulated embryos on the screen by applying one or more threshold parameters to the image. Such threshold parameters can include size parameters, shape parameters, color parameters, and the like. In various aspects, the processor of the controller can identify singulated embryos in an automated manner by identifying the embryos on the screen and applying the threshold parameters to determine the locations of singulated embryos (page 10, paragraph 00035). It would be apparent in the instant art that “and the like” would include viability of plant embryos, especially since color parameters are used in the instant art to identify non-viable plant embryos.
Timmis et al teach an automated system and method for classifying a plant embryo in Figure 1A. Timmis et al teach a system for image analysis of a plant embryo in Figure 2. Timmis et al teaches that the system uses an imaging camera which sends images to a computer which classifies the embryos according to their likelihood to germinate and grow into normal plants (i.e. viable) at column 2, 3rd paragraph.
Hirahara teach an embryo delivery system wherein a selected embryo into a germination substrate, particularly a well as shown in Figure 9.
IN293KOL2014 teaches use of a compressible and resilient solid substrate composted of non-woven natural fiber-based fabric comprising a plurality of hydrophilic and biodegradable polymer fibers as a germination substrate in a method for germination of a plant embryo. The term “resilient” implies that the solid substrate is compressible.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant claims to modify the teachings of Megargel et al to use an imaging system known in the art such as that taught by Timmis et al as required by the instant claims as a whole. The placement of the selected plant embryo would have been a design choice as taught by Hirahara, and the germination substrate would have also been a design choice as taught by IN293KOL2014. Given the high skill in the instant art before the effective filing date of the instant claims, one of ordinary skill in the art would have had a reasonable expectation of success by modifying the teachings of Megargel et al. While Megargel et al did not specifically teach distinguishing between a viable or non-viable embryo, Timmis et al had taught that the differences between the instant claims and Megargel et al would have been obvious. The use of a compressible and resilient solid substrate was taught by IN293KOL2014, the specific characteristics of such a solid substrate would be would have been a design choice given that Megargel et al had taught that the growth container can comprise a selected growth medium.
Applicant argues that NK293KOL2014 does not teach germination substrate that is compressible and resilient, as claimed. Applicant argues that The Office asserts that the term resilient implies that the solid substrate is compressible. Applicant argues that the Applicant respectfully disagrees. Applicant argues that a substrate can be resilient (i.e., have the ability to spring back to its original shape under an applied force) yet not be compressible in an application, which may not reasonable involve applying a significant amount of force to compress the substrate. Applicant argues that nowhere in INK293KOL2014 is the substrate descried as resilient or compressible. Applicant argues that The Office points to no teaching in this reference of resilience and simply states that resilient implies compressibility. Applicant argues that even to the extent such interpretation is accurate, INK293KOL2014 does not make any mention of the substrate being compressible or resilient. Applicant argues that it is submitted that INK293KOL2014 does not cure the defect of Megargel and the combined teaching do not lead the skilled person to claimed method and system having a substrate that is compressible and resilient (page 12, 4th paragraph of the Remarks).
Applicant’s arguments are not found persuasive. INK293KOL2014 teaches using a natural fiber-based germination medium. INK293KOL2014 teaches that the top layer can have a density of 0.025-0.050 grams per cubic centimeter, a value which would obviously be compressible. INK293KOL2014 teaches using multiple layers of germination medium having decreasing densities (from bottom to top). The prior art does not need to use the same lexicon as used by Applicant, only teach a material that meets the claimed functional characteristics.
Applicant argues that Megargel already teaches a complete system for transferring embryos to a growth container with a selected growth medium. Applicant argues that the Examiner has not established why one skilled in the art would be motivated to substitute a compressible and resilient solid substrate comprising hydrophilic and biodegradable polymer fibres for Megargel's existing growth medium. Applicant argues that nothing in INK293KOL2014 provides any reasoning that would motivate the skilled person to replace the already taught growth medium of Megargel with the non-woven fiber medium of the INK293KOL2014 process (pages 12-13 of the Remarks).
Applicant’s arguments are not found persuasive because Megargel et al teach a method and apparatus for singulating, orienting and transferring a plant embryo to “a plate containing a selected medium” in the Abstract. Megargel et al do not limit use of their method to any specific medium but rely upon one of ordinary skill in the instant art to select an appropriate medium.
Applicant argues that Timmis and Hirasha also fail to cure the defects of Megargel and INK293KOL2015. Applicant argues that Timmis teaches that embryos are precisely placed on a tray in the same orientation and with their cotyledon ends precisely aligned with each other (Timmis at col. 13, Il. 17-31). Applicant argues that the index trays are forwarded to receive maturation treatments, and the embryos may be rehydrated and undergo a secondary classification process (Timmis at col. 13, Il. 39-47). Applicant argues that Timmis does not teach or suggest a compressible and resilient solid substrate comprising hydrophilic and biodegradable polymer fibres. Applicant argues that Hirahara teaches a receptacle tray that includes a plurality of cavities extending vertically therethrough, and received within each cavity is a manufactured seed (Hirahara at col. 7, Il. 10-25). Applicant argues that Hirahara likewise does not teach or suggest a compressible and resilient solid substrate comprising hydrophilic and biodegradable polymer fibres (page 13, 2nd paragraph of the Remarks).
Applicant argues that in contrast to the applied references, the inventors have beneficially found improvement with using the claimed growth substrate, which is compressible. Applicant argues that the specification discloses that when transferring plant embryos to a germination substrate, significantly improved results in terms of successful germination can be achieved if the plant embryo is pushed against the germination substrate in a substantially vertical alignment to provide close physical contact between the plant embryo and the germination substrate, with the root forming tip pointing down, and embedded within the germination substrate (page 12, lines 37-44). Applicant argues that the limits of precision of both human and robotic arms in combination with the small dimensions of plant embryos entails a high likelihood that a plant embryo transfer device mounted on a robotic arm pushes the plant embryo against the germination substrate with some force (page 13, lines 1-5). Applicant argues that the use of conventional germination substrates therefore risks crushing the plant embryo against the germination substrate as it is placed in or on the germination substrate, as conventional germination substrates are usually quite hard, i.e., non-compressible at the forces at hand in an automated system (page 13, 3rd paragraph of the Remarks).
Applicant argues that the use of a germination substrate comprising hydrophilic
polymer fibres solve the known problem of insufficient anchoring. Applicant argues that it has been found that when a plant embryo is placed in a substantially vertical position in a germination substrate comprising hydrophilic polymer fibres, it develops roots that protrude into the fibrous germination substrate and anchors the developing plantlet to the germination substrate (specification, page 13, lines 38-45; page 14, lines 1-4). Applicant argues that this is a significant advantage over other combined germination substrates where a substantial number of plantlets do not anchor in the germination substrate but rather develop roots on, or very shallow in, the top surface of the germination substrate, or are simply pushed up from the germination substrate out of the planting tray or other container holding the germination substrate (pages 13-14 of the Remarks).
Applicant’s arguments are not found persuasive. Applicant argues that the specification discloses that when transferring plant embryos to a germination substrate, significantly improved results in terms of successful germination can be achieved if the plant embryo is pushed against the germination substrate in a substantially vertical alignment to provide close physical contact between the plant embryo and the germination substrate, with the root forming tip pointing down, and embedded within the germination substrate (page 12, lines 37-44). This does not appear to be unexpected because Timmis et al teaches that manufactured seed provide for the embryo inside the seed coat to develop roots and eventually sheds the restraint along with the seed coat during germination, and that the manufactured seed coat can be fabricated from a variety of materials such as cellulosic materials (column 1, line 63 to column 2, line 3). Cellulosic materials would be hydrophilic and would necessarily need to be compressible and biodegradable in order for the embryo in the manufactured seed to grow and develop. It is the Examiner’s opinion that the method steps were known in the art before the effective filing date of the claims and that the germination substrate that is compressible and resilient solid substrate comprising a plurality of hydrophilic and biodegradable polymer fibres would have been well know in the instant art. The germination substrate that is compressible and resilient solid substrate comprising a plurality of hydrophilic and biodegradable polymer fibres appears to be an obvious composition with well recognized characteristics to one of ordinary skill in the instant art.
Conclusion
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.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID H KRUSE whose telephone number is (571) 272-0799. The examiner can normally be reached Monday-Friday 7AM-3:30PM.
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/David H Kruse/
Primary Examiner, Art Unit 1663
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