DETAILED ACTION
Response to Amendment
Applicant’s response to the office action filed on April 8, 2026 has been entered. The claims pending in this application are claims 3 and 4. The objections and rejections not reiterated from the previous office action are hereby withdrawn in view of applicant’s amendment filed on April 8, 2026. Claims 3 and 4 will be examined.
Priority
Acknowledgment is made of applicant’s claim for foreign priority based on an application, Chinese Patent Application No. 202211491947.8, filed in China on November 26, 2022. It is noted, however, that applicant has not filed a certified copy of this application as required by 37 CFR 1.55. Note that applicant has not addressed this issue in the response filed on April 8, 2026.
Claim Objections
Claim 3 is objected to because of the following informalities: (1) “selecting, from recombinant inbred rice lines produced from HuaZhan (HZ) rice and Nekken 2 rice, breeding material for breeding rice varieties resistant to a whitebacked planthopper” in the preamble should be “selecting, recombinant rice seeds resistant to a whitebacked planthopper produced by crossing Nekken 2 rice to HuaZhan (HZ) rice, wherein Nekken 2 rice is a donor parent and HuaZhan (HZ) rice is a recipient parent” in view of paragraphs [0029] and [0030] of US 2024/0175097 A1, which is US publication of this instant case; (2) “ a recombinant inbred rice line” in line 4 should be “one of recombinant rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice”; (3) “the DNA” in line 6 should be “the DNA template”; (4) “primer pairs for the Indel Wbph-1 are” in the end of the claim should be “the primer pairs for the Indel Wbph-1 are”; and (5) “primer pairs for the Indel Wbph-2 are” in the end of the claim should be “the primer pairs for the Indel Wbph-2 are”.
Claim 4 is objected to because of the following informalities: (1) “the primer pairs of the Indel Wbph-1” should be “the primer pairs for the Indel Wbph-1”; and (2) “the primer pairs of the Indel Wbph-2” should be “the primer pairs for the Indel Wbph-2”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Scope of Enablement
This rejection is modified from the rejection under 35 U.S.C. 112(a) mailed on January 28, 2026.
Claims 3 and 4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for extracting a genomic DNA from rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice, obtaining amplification products by amplifying the genomic DNA using primer pairs for Indel Wbph-1 and primer pairs for Indel Wbph-2, and carrying out electrophoresis detection on the amplification products, does not reasonably provide enablement for selecting, from recombinant inbred rice lines produced from HuaZhan (HZ) rice and Nekken 2 rice, breeding material for breeding rice varieties resistant to a whitebacked planthopper using the methods recited in claims 3 and 4. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
Factors to be considered in determining whether a disclosure meets the enablement requirement of 35 USC 112, first paragraph, have been described by the court in In re Wands, 8 USPQ2d 1400 (CA FC 1988). Wands states at page 1404,
“Factors to be considered in determining whether a disclosure would require undue experimentation have been summarized by the board in Ex parte Forman. They include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.”
The Nature of The Invention
The claims are drawn to a method for selecting, from recombinant inbred rice lines produced from HuaZhan (HZ) rice and Nekken 2 rice, breeding material for breeding rice varieties resistant to a whitebacked planthopper. The invention is a class of invention which the CAFC has characterized as “the unpredictable arts such as chemistry and biology.” Mycogen Plant Sci., Inc. v. Monsanto Co., 243 F.3d 1316, 1330 (Fed. Cir. 2001).
The Breadth of The Claims
Claims 3 and 4 encompass a method for selecting, from recombinant inbred rice lines produced from HuaZhan (HZ) rice and Nekken 2 rice, breeding material for breeding rice varieties resistant to a whitebacked planthopper, comprising: extracting genomic DNA from a recombinant inbred rice line to obtain a DNA template, using primer pairs for Indel Wbph-1 and primer pairs for Indel Wbph-2 for PCR amplification of the DNA to obtain amplification products, carrying out electrophoresis detection on the amplification products to obtain a band pattern for the Indel Wbph-1 and a band pattern for the Indel Wbph-2, analyzing the resistance of the rice to the whitebacked planthopper by the band pattern for the Indel Wbph-1 and the band pattern for the Indel Wbph-2, and selecting the recombinant inbred rice line as breeding material when the band pattern for the Indel Wbph-1 and the band pattern for the Indel Wbph-2 tend to the parent HZ rice; wherein if the band pattern for the Indel Wbph-1 and the band pattern for the Indel Wbph-2 tend to the parent HZ rice, it indicates that the resistance of the rice to whitebacked planthopper is better, and if the band pattern for the Indel Wbph-1 and the band pattern for the Indel Wbph-2 tend to the parent Nekken 2 rice, it indicates that the resistance is poor; and wherein the primer pairs for the Indel Wbph-1 are: upstream primer: 5’-AGGAGACC GCCGTTTTTGAT-3’, SEQ ID NO: 1; downstream primer: 5’-AAGCGTTTCGTTTCGGTTG
G-3’, SEQ ID NO: 2; the primer pairs for the Indel Wbph-2 are: upstream primer: 5’-CTATGGC TACCGCGACGTAC-3’ SEQ ID NO: 3; downstream primer: 5’-GCTGCTCACGTCGACGA
C-3’, SEQ ID NO: 4.
Working Examples
The specification provides no working example for selecting, from recombinant inbred rice lines produced from HuaZhan (HZ) rice and Nekken 2 rice, breeding material for breeding rice varieties resistant to a whitebacked planthopper using the methods recited in claims 3 and 4.
The Amount of Direction or Guidance Provided and The State of The Prior Art
The specification provides no working example for selecting, from recombinant inbred rice lines produced from HuaZhan (HZ) rice and Nekken 2 rice, breeding material for breeding rice varieties resistant to a whitebacked planthopper using the methods recited in claims 3 and 4. Furthermore, there is no experimental condition and/or experimental data in the specification to support the claimed invention. During the process of the prior art search, the examiner has not found any prior art which is related to select, from recombinant inbred rice lines produced from HuaZhan (HZ) rice and Nekken 2 rice, breeding material for breeding rice varieties resistant to a whitebacked planthopper using the methods recited in claims 3 and 4.
Level of Skill in The Art, The Unpredictability of The Art, and The Quantity of Experimentation Necessary
While the relative skill in the art is very high (the Ph.D. degree with laboratory experience), there is no predictability whether breeding material for breeding rice varieties resistant to a whitebacked planthopper can be selected from recombinant inbred rice lines produced from HuaZhan (HZ) rice and Nekken 2 rice using the methods recited in claims 3 and 4.
It is known that “[S]ix major genes conferring WBPH resistance in rice have been identified, including Wbph1 (Sidhu and Khush 1979), Wbph2 (Angeles et al. 1981, Ravinder et al. 1982), Wbph3 (Hernandez and Khush 1981), wbph4 (Hernandez and Khush 1981), Wbph5 (Wu and Khush 1985), and Wbph6 (Min et al. 1991)” (see page 153, left column from Chen et al., Breeding Science, 60, 153-159, 2010). Although the specification shows that “[M]olecular markers Indel Wbph-1 and Indel Wbph-2 were set at the upstream and downstream of QTL locus
qWBPH1.1, and primers were designed”, “the primer pairs for the molecular marker Indel Wbph-1 were: upstream primer: SEQ ID NO: 5’-AGGAGACCGCCGTTTTTGAT-3’;
downstream primer: SEQ ID NO: 5’-AAGCGTTTCGTTTCGGTTGG-3’”, “the primer pairs for the molecular marker Indel Wbph-2 were: upstream primer: SEQ ID NO: 5’-CTATGGCTACCG
CGACGTAC-3’; downstream primer: SEQ ID NO: 5’-GCTGCTCACGTCGACGAC-3’”, “[G]enomic DNA was extracted from the leaves of the parents Nekken 2, HZ and their F1 generations and RIL populations, and PCR amplification was performed on their genomic DNA using the above molecular markers”, “PCR reaction system: 1 μL of upstream primer (10 μmol), 1 μL of downstream primer (10 μmol), 2 μL of DNA template (>100 ng/μL), 6 μL of mix enzyme (TsingkeBiotechnologyCo., Ltd., 2×Taq Master Mix), 1 μL of ddH2O”, “reaction procedure: pre-denaturation at 94° C for 3 min; denaturation at 94° C for 30 s, annealing at 57° C for 30 s, extension at 72° C for 30 s, amplification for 38 cycles; and finally final extension at 72° C for 10 min”, “PCR amplification products were detected by 4% agarose gel electrophoresis, and some results are shown in FIG. 4 and FIG. 5”, and “[T]he electrophoretic detection band patterns were analyzed. Among them, if the band tends to the parent HZ, it indicates that the resistance of this strain rice to whitebacked planthopper is better, and if the band tends to Nekken 2, it indicates that the resistance is poor” (see paragraphs [0023], [0024], [0040] to [0046], and Figures 4 and 5 of US 2024/0175097 A1, which is US publication of this instant case), the specification only teaches that amplification products amplified from genomic DNA extracted from rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice using a upstream primer and a downstream primer specific for Wbph-1 gene (SEQ ID Nos: 1 and 2) and an amplification product amplified from genomic DNA extracted from HuaZhan rice seeds using the upstream primer and the downstream primer specific for Wbph-1 gene (SEQ ID Nos: 1 and 2) have the same or similar size based on the results of a gel electrophoresis and amplification products amplified from the genomic DNA extracted from the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice using a upstream primer and a downstream primer specific for Wbph-2 gene (SEQ ID Nos: 3 and 4) and an amplification product amplified from DNAs extracted from HuaZhan rice seeds using the upstream primer and the downstream primer specific for Wbph-2 gene (SEQ ID Nos: 3 and 4) have the same or similar size based on the results of a gel electrophoresis. Since it is known that genes from a hybrid rice may contain one or more single-nucleotide polymorphisms (see page 1747, left column, third paragraph from Gu et al., Nature Genetics, 55, 1745-1756, 2023) and claim 3 does not require to compare the DNA sequences of Wbph-1 gene and Wbph-2 gene of HuaZhan rice seeds with the DNA sequences of Wbph-1 gene and Wbph-2 gene of the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice and test functions of Wbph-1 gene and Wbph-2 gene in the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice, and does not indicate that HuaZhan (HZ) rice is resistant to whitebacked planthopper, even though the amplification products amplified from the genomic DNA extracted from the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice using the upstream primer and the downstream primer specific for Wbph-1 gene (SEQ ID Nos: 1 and 2) and the amplification product amplified from genomic DNA extracted from HuaZhan rice seeds using the upstream primer and the downstream primer specific for Wbph-1 gene (SEQ ID Nos: 1 and 2) have the same or similar size based on the results of the gel electrophoresis and the amplification products amplified from the genomic DNA extracted from the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice using the upstream primer and the downstream primer specific for Wbph-2 gene (SEQ ID Nos: 3 and 4) and the amplification product amplified from the genomic DNA extracted from HuaZhan rice seed using the upstream primer and the downstream primer specific for Wbph-2 gene (SEQ ID Nos: 3 and 4) have the same or similar size based on the results of the gel electrophoresis, if Wbph-1 gene and/or Wbph-2 gene of the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice contain one or more substitution polymorphisms which cause Wbph-1 gene and/or Wbph-2 gene to loses/lose its/their functions, the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice resistant to whitebacked planthopper may become poor. Thus, it is unpredictable how a skilled artisan knows that, if the band pattern for the Indel Wbph-1 and the band pattern for the Indel Wbph-2 of the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice tend to the parent HZ rice, it can indicate that the resistance of the rice produced by crossing Nekken 2 rice to HuaZhan (HZ) rice to whitebacked planthopper is better, and if the band pattern for the Indel Wbph-1 and the band pattern for the Indel Wbph-2 of the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice tend to the parent Nekken 2 rice, it can indicate that the resistance is poor such that breeding material for breeding rice varieties resistant to a whitebacked planthopper cannot be selected from recombinant inbred rice lines produced from HuaZhan (HZ) rice and Nekken 2 rice using the methods recited in claims 3 and 4. Furthermore, since claim 3 does not require to plant the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice in a testing ground for rice production, without planting the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice in a testing ground for rice production, it is unpredictable how a skilled artisan knows that the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice resistant to whitebacked planthopper become better only based on the band pattern for the Indel Wbph-1 and the band pattern for the Indel Wbph-2 of the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice tend to the parent HZ rice and the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice resistant to whitebacked planthopper become poor only based on the band pattern for the Indel Wbph-1 and the band pattern for the Indel Wbph-2 of the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice tend to Nekken 2 such that breeding material for breeding rice varieties resistant to a whitebacked planthopper cannot be selected from recombinant inbred rice lines produced from HuaZhan (HZ) rice and Nekken 2 rice using the methods recited in claims 3 and 4.
Case law has established that “(t)o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’.” In re Wright 990 F.2d 1557, 1561. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) it was determined that “[T]he scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art”. The amount of guidance needed to enable the invention is related to the amount of knowledge in the art as well as the predictability in the art. Furthermore, the Court in Genentech Inc. v Novo Nordisk 42 USPQ2d 1001 held that “[I]t is the specification, not the knowledge of one skilled in the art that must supply the novel aspects of the invention in order to constitute adequate enablement”.
In view of above discussions, the skilled artisan will have no way to predict the experimental results. Accordingly, it is concluded that undue experimentation is required to make the invention as it is claimed. These undue experimentation at least includes to test whether breeding material for breeding rice varieties resistant to a whitebacked planthopper can be selected from recombinant inbred rice lines produced from HuaZhan (HZ) rice and Nekken 2 rice using the methods recited in claims 3 and 4.
Conclusion
In the instant case, as discussed above, the level of unpredictability in the art is high, the specification provides one with no guidance that leads one to claimed methods. One of skill in the art cannot readily anticipate the effect of a change within the subject matter to which the claimed invention pertains. Thus given the broad claims in an art whose nature is identified as unpredictable, the unpredictability of that art, the large quantity of research required to define these unpredictable variables, the lack of guidance provided in the specification, the absence of any working example related to claimed invention and the no teaching in the prior art balanced only against the high skill level in the art, it is the position of the examiner that it would require undue experimentation for one of skill in the art to perform the method of the claim as broadly written.
Response to Arguments
In page 5, third paragraph bridging to page 8, third paragraph of applicant’s remarks, applicant argues that “[A]pplicant respectfully submits that the claims as amended are now commensurate with what the specification teaches and do not require undue experimentation. The Office Action quotes the relevant Wands factors as indicated above, and considered under those factors, Applicant submits the amended claims are enabled. As to the quantity of experimentation necessary, only routine experimentation is required to practice amended claims 3-4. On page 3 of the Office Action, the examiner acknowledges that the specification is enabling for extracting a DNA from rice, obtaining amplification products using primer pairs of molecular markers for PCR amplification of the DNA, and carrying out electrophoresis detection on the amplification products. Amended claim 3 is directed to that disclosed marker-assisted workflow, now specifically limited to recombinant inbred rice lines produced from HuaZhan (HZ) rice and Nekken 2 rice, and to the exact Indel Wbph-1 and Indel Wbph-2 primer pairs recited in the claim. Amended claim 4 further narrows the method to the disclosed PCR reagent system and expressly requires a Taq DNA polymerase, thereby addressing the concern that prior claim 4 did not require a DNA polymerase. As to the amount of direction or guidance presented, the disclosure provides detailed, step-by-step technical instruction for the claimed method. Amended claims 3-4 closely track the disclosed protocol found at paragraphs [0042]-[0049] because primer pairs for Indel Wbph-1 and Indel Wbph-2 are the exact sequences now recited in amended claim 3. Amended claims 3-4 closely track the disclosed protocol found at paragraphs [0050]-[0053] because genomic DNA was extracted from the parents Nekken 2, HZ and their F1 generations and RIL populations and PCR amplification was performed using markers Indel Wbph-1 and Indel Wbph-2. As to the presence of working examples, on page 6 of the Office Action the Examiner acknowledges that the specification discloses extraction of genomic DNA from the parents HZ and Nekken 2 and from recombinant inbred line populations, PCR amplification using the recited marker pairs, and electrophoretic detection of the amplification products, with results shown in FIGS. 4 and 5. Further, the working example of electrophoretic detection band patters disclosed in paragraph [0054] is now recited in amended claim 3. As to the nature of the invention, amended claim 3 is not directed to an open-ended breeding program across arbitrary rice germplasm. Instead, claim 3 is now narrowly directed to selecting breeding material from a defined population using two expressly recited marker assays and a stated selection criterion that both band patterns tend to the HZ parent. Thus, even if biology is generally characterized as an unpredictable art, the actual claimed invention has been confined to the specific marker-assisted selection procedure that the specification describes. As to the state of the prior art, the Office Action notes that several whitebacked planthopper resistance genes were known in the art, while also acknowledging that the present specification teaches the specific Indel Wbph-1 and Indel Wbph-2 markers, the corresponding primers, the PCR conditions, the electrophoresis analysis, and the correlation between HZ-type bands and better resistance in the disclosed recombinant inbred lines. Hence, the state of the art does not undermine enablement; rather, the specification supplies the specific technical teaching necessary to practice the narrowed claims. As to the relative skill in the art, the Office Action states that "the relative skill in the art is very high (the Ph.D. degree with laboratory experience)." That high level of skill further supports enablement here, because the amended claims require only familiar molecular biology operations performed on the specified recombinant inbred rice lines. As to predictability or unpredictability, the amended claims are limited to the predictable scope actually taught by the specification. Applicant submits that amended claim 3 does not claim all possible mechanisms of resistance, all rice varieties, or all breeding outcomes. It claims a defined marker-assisted selection method in a defined HuaZhan/Nekken 2 recombinant inbred population, using the exact disclosed Indel Wbph-1 and Indel Wbph-2 assays, and selecting when both observed band patterns tend to the HZ parent. As to the breadth of the claims, the amendments materially narrow the claims and bring them into reasonable correlation with the disclosure. Amended claim 3 no longer claims a broad, generalized breeding method. It is confined to selecting breeding material from recombinant inbred rice lines produced from HuaZhan (HZ) rice and Nekken 2 rice, using only the recited Indel Wbph-1 and Indel Wbph-2 primer pairs, and selecting only when both band patterns tend to the HZ parent. Amended claim 4 likewise narrows the assay to the recited PCR systems and reaction procedure, including Taq DNA polymerase. The amended scope is therefore commensurate with the disclosure the examiner already identified.
For these reasons, the Wands factors, considered as a whole, favor enablement. The amended claims are directed to a specifically disclosed marker-assisted selection method, supported by detailed technical guidance, concrete assay conditions, defined primer sequences, disclosed electrophoresis results, and an express band-pattern interpretation for the claimed HuaZhan /Nekken 2 recombinant inbred rice lines. Accordingly, one of ordinary skill in the art would be able to make and use the full scope of amended claims 3-4 without undue experimentation”.
The above arguments have been fully considered but they are not persuasive toward the withdrawal of the rejection. Since it is known that genes from a hybrid rice may contain one or more single-nucleotide polymorphisms (see page 1747, left column, third paragraph from Gu et al., Nature Genetics, 55, 1745-1756, 2023) and claim 3 does not require to compare the DNA sequences of Wbph-1 gene and Wbph-2 gene of HuaZhan rice seeds with the DNA sequences of Wbph-1 gene and Wbph-2 gene of the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice and test functions of Wbph-1 gene and Wbph-2 gene in the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice, and does not indicate that HuaZhan (HZ) rice is resistant to whitebacked planthopper, even though the amplification products amplified from the genomic DNA extracted from the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice using the upstream primer and the downstream primer specific for Wbph-1 gene (SEQ ID Nos: 1 and 2) and the amplification product amplified from genomic DNA extracted from HuaZhan rice seeds using the upstream primer and the downstream primer specific for Wbph-1 gene (SEQ ID Nos: 1 and 2) have the same or similar size based on the results of the gel electrophoresis and the amplification products amplified from the genomic DNA extracted from the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice using the upstream primer and the downstream primer specific for Wbph-2 gene (SEQ ID Nos: 3 and 4) and the amplification product amplified from the genomic DNA extracted from HuaZhan rice seed using the upstream primer and the downstream primer specific for Wbph-2 gene (SEQ ID Nos: 3 and 4) have the same or similar size based on the results of the gel electrophoresis, if Wbph-1 gene and/or Wbph-2 gene of the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice contain one or more substitution polymorphisms which cause Wbph-1 gene and/or Wbph-2 gene to loses/lose its/their functions, the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice resistant to whitebacked planthopper may become poor. Thus, it is unpredictable how a skilled artisan knows that, if the band pattern for the Indel Wbph-1 and the band pattern for the Indel Wbph-2 of the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice tend to the parent HZ rice, it can indicate that the resistance of the rice produced by crossing Nekken 2 rice to HuaZhan (HZ) rice to whitebacked planthopper is better, and if the band pattern for the Indel Wbph-1 and the band pattern for the Indel Wbph-2 of the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice tend to the parent Nekken 2 rice, it can indicate that the resistance is poor such that breeding material for breeding rice varieties resistant to a whitebacked planthopper cannot be selected from recombinant inbred rice lines produced from HuaZhan (HZ) rice and Nekken 2 rice using the methods recited in claims 3 and 4. Furthermore, since claim 3 does not require to plant the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice in a testing ground for rice production, without planting the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice in a testing ground for rice production, it is unpredictable how a skilled artisan knows that the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice resistant to whitebacked planthopper become better only based on the band pattern for the Indel Wbph-1 and the band pattern for the Indel Wbph-2 of the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice tend to the parent HZ rice and the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice resistant to whitebacked planthopper become poor only based on the band pattern for the Indel Wbph-1 and the band pattern for the Indel Wbph-2 of the rice seeds produced by crossing Nekken 2 rice to HuaZhan (HZ) rice tend to Nekken 2 such that breeding material for breeding rice varieties resistant to a whitebacked planthopper cannot be selected from recombinant inbred rice lines produced from HuaZhan (HZ) rice and Nekken 2 rice using the methods recited in claims 3 and 4.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 claim is allowed.
Papers related to this application may be submitted to Group 1600 by facsimile transmission. Papers should be faxed to Group 1600 via the PTO Fax Center. The faxing of such papers must conform with the notices published in the Official Gazette, 1096 OG 30 (November 15, 1988), 1156 OG 61 (November 16, 1993), and 1157 OG 94 (December 28, 1993)(See 37 CAR § 1.6(d)). The CM Fax Center number is (571)273-8300.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Frank Lu, Ph.D., whose telephone number is (571)272-0746. The examiner can normally be reached on Monday-Friday from 9 A.M. to 5 P.M.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Dr. Anne Gussow, Ph.D., can be reached on (571)272-6047.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FRANK W LU/Primary Examiner, Art Unit 1683 April 25, 2026
Prosecution Insights