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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-5, 7-11, 17 and 22-25 in the reply filed on 14 July 2025 is acknowledged. The traversal is on the ground(s) that the two groups do share a single general inventive concept of integration of embryo trans fer and substrate design. Applicant further argues that the cited reference does not teach or suggest the use of a compressible and resilient solid substrate with an automated embryo transfer system. This is not found persuasive because Applicant is arguing limitations not found in claim 31, and an intended use of the compressible and resilient solid substrate does not distinguish the claimed method from that taught in the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 31, 32, 38 and 39 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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).
Specification
The disclosure is objected to because of the following informalities:
At page 8, line 13 and page 9, line 31 for example, the broad range value of a “water retention capacity” appears to have a typographical error. Applicant should review the compete specification for any other typographical errors.
There are two “Table 3” s on page 30.
Appropriate correction is required.
Information Disclosure Statement
The listing of references in the specification on page 32 is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claims 1, 9 and 17 are objected to because of the following informalities: The use of “-“ to denote a method/system step/element is objected to, 37 C.F.R. 1.75(i) states that “Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation”. Because dependent claims are further limiting or adding steps/elements to the independent claim(s) the Examiner suggests the use of “(a)” or “(i)” designation for steps/elements. Appropriate correction is required.
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 5, 8, 9, 11, 18 and 25 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.
Regarding claims 5, 8, 11 and 25, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 5 is indefinite because it is unclear where the “adding” and “washing” steps are practice in the method of claim 1. Also, at line 6, the limitation “and/or” is indefinite because it is unclear if the “transferring” step is required or optional. Hence, the metes and bounds of the claim are unclear.
Claim 9 is 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.
At claim 11, the repeated use of “and/or” renders the claim indefinite because it is unclear which combinations are required and which are optional. At line 7, “0.3-1.2 cm3” is indefinite because is denotes a volume but not a water retention capacity. Hence, the metes and bounds of the claim are unclear.
At claim 25, the repeated use of “and/or” renders the claim indefinite because it is unclear which combinations are required and which are optional. At line 7, “0.3-1.2 cm3” is indefinite because is denotes a volume but not a water retention capacity. Hence, the metes and bounds of the claim are unclear.
Claim Rejections - 35 USC § 102
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.
Claim(s) 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Megargel et al (WO 2017/192257).
The Examiner interprets Applicant’s limitation “sub-pressure generator” as equivalent to the vacuum system used in the instant prior art.
Megargel et al disclose a system for obtaining a plantlet from a plurality of somatic plant embryos at figure 1 and page 1, paragraph 0003. Megargel et al disclose 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 disclose 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 disclose 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 disclose 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.
Applicant states on page 17, lines 15-18, of the Specification:
It is noted that the steps are not necessarily performed in the exact order that they are listed above. For instance, the classification of a plant embryo as viable or non- viable may be performed before the plant embryo is attached to the nozzle of the plant embryo transfer device.
Hence, Megargel et al had previously disclosed all of the elements of the instantly claimed system.
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.
Claim(s) 1-5, 7-11, 17, 18 and 22-25 is/are 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.
Conclusion
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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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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/David H Kruse/
Primary Examiner, Art Unit 1663