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 of Group 1 drawn to claims 1-4, 7-9 and new claims 16-20 in the reply filed on 02/23/2026 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)).
Claims
Claims 1-20 are pending.
Claims 5-6 and 10-15 are withdrawn as drawn to an unelected invention.
Claims 16-20 are newly added.
Claims 1-3 are newly amended.
Claims 1-4, 7-9 and 16-20 are examined on the merits.
Claim Objections
The claims are objected to for the following informalities:
Claim 1, in the second to last line recites the phrase “selected progeny plant”, which is inconsistent with earlier recitations which refer to plants in the plural, see for example “wherein each of the selected progeny plants” from lines 8-9 of claim 1. It is suggested to replace this phrase with “selected progeny plants”. Appropriate correction is requested.
Claims 1, 19 and 20 each recite “progeny plants has a combined haploid value (CHV) that approaches the highest possible optimal haploid value (OHV)”. The meaning of this recitation is clear; the selected plants should have a combined haploid value that approaches the best possible combined haploid value, the optimal haploid value (OHV). However, the claim uses the term “optimal haploid value” where “combined haploid value” should be. The office suggests amending the claim as follows would improve syntax and promote clarity “progeny plants has a combined haploid value (CHV) that approaches the highest possible combined haploid value, the optimal haploid value (OHV)”. Appropriate correction is required.
Claim 3 recites “wherein the first parent plant comprises”, “wherein the second parent plant does not comprise” and “wherein the selected progeny plant”. Claim 3 depends on claim 1 which refers to “a breeding population of plants comprising a plurality of first parental plants and a plurality of second parental plants” and also recites “each first parent plant with a second parent plant” and finally states “selecting a plurality of progeny plants”. To ensure consistency Examiner suggests modifying claim 3 to recite “wherein each of the first parent plants comprises”, “wherein each of the second parent plants do not comprise” and “wherein each of the selected progeny plants”. Appropriate correction is requested.
Claim 20 in the first line of part A. recites “returning one or more of the subsequent doubled haploid plants as to the breeding population”. In this recitation the word “as” appears to be a typographical error and should be removed to improve claim syntax. Appropriate correction is required.
Claim Rejections - 35 USC § 112 (Indefiniteness)
Claims 1-4, 7-9 and 16-20 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.
Claims 1 and 19-20 recite “a combined haploid value (CHV)” and “the highest possible optimal haploid value (OHV)” and claim 2 recites “CHV”. These terms are not known in the art and there is no concrete recognized meaning associated with these terms. Further, the specification while providing a nonlimiting description of CHV and OHV in paragraph 0010 on page 3 and further provides non-limiting equations that may be used to determine the CHV and OHV in paragraph 00103 on page 21 does not expressly define these terms. As such the scope imparted on the claim by these recitations is unclear and claims 1-2 and 19-20 are rejected as indefinite. Claims 3-4, 7-9 and 16-18 are included for depending on a indefinite claim and failing to limit the scope to definite subject matter.
Claim 1 recites “a plurality of first parental plants and a plurality of second parental plants” and then later, claim 1 recites “crossing each first parent plant with a second parent plant”. Claims 3, 16 and 18 recite “parent plant(s)” while claim 20 recites “plurality of the first or second parent plants” and “crossing each first parent plant with a second parent plant”. These recitations are indefinite because the scope of “parent plant” is not clear.
Given that claim 1 is drawn to a plurality of first parental plants and a plurality of second parental plants, it is clear that there is at least a group of first parent plants and a group of second parent plants but it is not clear if these groups of plants are uniform. The meaning of “first parental plants” could refer to a first parent plant line having specific and uniform characteristics and same with second parental plants. Alternatively, the first parent and second parent could be generic, referring simply to any first or second parent.
Each of these scopes is supported by language in the claim and the specification does not make clear what is required for a plant to be a first or a second parent plant. As such the scope of the claims are not clear and therefore the claims are rejected. Dependent claims are included for depending on an indefinite claim and failing to limit the scope to definite subject matter.
In claims 1 and 19-20 the recitations of “a combined haploid value (CHV) that approaches the highest possible optimal haploid value (OHV)” renders the claims indefinite. This is because the scope imparted on the claim by the use of the term “approaches” is not clear. In the claim this term is used to limit the claim to methods which select a group (plurality) of plants having the following characteristic: an OHV that approaches the CHV.
While this is clear and the general idea that selected plants should have CHVs that relate to the OHV is clear, the scope of the claim as a whole is unclear because it is not clear what OHV values approach the CHV. Further, it is not clear if in different contexts such as different breeding populations in different crop species, if the cutoff for an OHV that approaches the CHV is different than in a population where there are more plants closer to the desired optimal plant. Given that the scope of the “plurality of progeny plants” which must be selected is not clear the claims are rejected as indefinite.
Dependent claims are included for depending on an indefinite claim and failing to limit the scope of the claim to definite subject matter. While claim 2, which depends on claim 1 includes the limitation of “wherein each selected progeny plant has a CHV greater than the mean CHV of the progeny plants produced from the cross that produce the selected progeny plant” this claim continues to read on indefinite subject matter. Given the analysis presented above it is not clear what is required for a plant to have a CHV that approaches the OHV. Therefore the new limitation that the CHV of each selected plants is higher than the average CHV for its siblings does not limit the claim to definite subject matter. In fact, in the scenario where there is a lot of variation in the traits of the progeny this claim may read on more broad subject matter than claim 1 because there may be a very high OHV value and if “approaches” is interpreted to be a stringent cutoff, the average CHV could be much lower than the cutoff of approaches OHV, see figure 1 presented below.
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[AltContent: textbox (Figure 1. Example showing a spectrum of CHV values from lowest to highest (OHV), which demonstrates that given the indefinite nature of the phrase “approaches the highest possible optimal haploid value (OHV)” and the additional limitation presented in claim 2, that the subject matter of claim 2 does not implicitly limit the scope of claim 1 to definite subject matter. )]
Claim 7 which depends on claim 1, limits the scope to the method of claim 1 wherein the plants are selected from a specific group. This group includes many recitations of plants or plant groups that are very broad, for example melon is interpreted to be any type of melon plant whatsoever regardless of any genetic interrelatedness, similarly palm plants could be any plant called a palm including date palm, coconut palm, sugar palm whatsoever. However, in this group there are two indefinite recitations.
First, “Southern Pine” does not appear to refer to a specific species, rather it appears to identify plants based on their location or range. This is confused because one of the major “Southern Pine[s]” is Loblolly pine which is listed earlier in the claim. As such it is unclear if “Southern Pine” in the claim refers to any member of the family Pinus growing south of the Mason-Dixon line in the United States, if it refers to the 10 species whose major range is currently south of the Mason-Dixon line in the US which includes Longleaf, Slash, Loblolly, Shortleaf, Virginia, Pond, Sand, Spruce, Pitch and Table Mountain Pine, or if instead this term refers to some other group of plants (“What Is Southern Pine - SFPA.” Southernpine.com, 2023, Accessed 22 May 2026).
Second “turf” is indefinite. The plain meaning of Turf is “the upper stratum of soil bound by grass and plant roots into a thick mat” (“Definition of TURF.” Www.merriam-Webster.com, Merriam-Webster, 16 May 2026, Accessed 22 May 2026). This does not specify a specific group of plants with finite bounds as any plant could be in a complex with soil in the upper stratum of soil. The office suggests that substituting “turfgrass” for “turf” may limit the scope to subject matter having definite metes and bounds.
Given these two recitations which impart unclear scope, claim 7 is rejected as indefinite.
Claim 7 recites the limitation “wherein the plants are”. There is insufficient antecedent basis for this limitation in the claim because while Claim 1 recites “a plurality of first parental plants”, “a plurality of second parental plants”, “each first parent plant”, “a second parent plant”, “a population of F1 progeny plants” and “a plurality of progeny plants from the population of F1 progeny plants”, it is not clear what plants claim 7 is further limiting.
Claims 8 and 9 are indefinite in their recitations of “The method of claim 8, wherein the plants are”. Claim 8 cannot be dependent on itself without writing into an independent claim format and claim 9 which limits methods to those where the plants are maize plants would not further limit claim 8 which is drawn to methods wherein the plants are wheat plants. It appears that these claims are dependent on one of the other claims but given that it is not clear which claim they depend on the scope is unclear and both claims are rejected as indefinite.
Claim 16 depends on claim 1 and adds the following limitation: “wherein each second parent plant is crossed with a first parent plant to produce the population of F1 progeny plants”. The language of claim 16 makes clear that the scope of the claim is drawn to methods where each second parent plant is crossed with a first parent plant to produce the population of F1 progeny plants.
Importantly, claim 1 recites the following with respect to producing the population of F1 progeny plants: “crossing each first parent plant with a second parent plant to produce a population of F1 progeny plants”.
Given the language of claim 16 and the language of claim 1, it is unclear if claim 16 is referring to an additional crossing step, in which case it is not clear how this fits into the method of claim 1.
Alternatively, it is not clear if claim 16 is drawn to the method of claim 1 where instead of “crossing each first parent with a second parent plant to produce a population of F1 progeny plants” “each second parent plant is crossed with a first parent plant to produce the population of F1 progeny plants”.
Given that the scope imparted to the method by the limitation presented in claim 16 is not clear, claim 16 is rejected as indefinite.
Claim Rejections - 35 USC § 112 (Improper Dependence)
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 16 depends on claim 1 and adds the following limitation: “wherein each second parent plant is crossed with a first parent plant to produce the population of F1 progeny plants”. The language of claim 16 makes clear that the scope of the claim is drawn to methods where each second parent plant is crossed with a first parent plant to produce the population of F1 progeny plants.
Importantly, claim 1 recites the following with respect to producing the population of F1 progeny plants: “crossing each first parent plant with a second parent plant to produce a population of F1 progeny plants”.
Given the language of claim 16 and the language of claim 1, the scope of claim 16 appears to be drawn to the method of claim 1 where the crossing step of “crossing each first parent plant with a second parent plant to produce a population of F1 progeny plants” is substituted with “each second parent plant is crossed with a first parent plant to produce the population of F1 progeny plants”. This second recitation, differs in scope from the first recitation and the difference in scope is not that the recitation of claim 16 is drawn to a narrower scope of the genus recited in claim 1, instead the two crossing steps are drawn to distinct but partially overlapping scopes. Therefore, because claim 16 does not require all of the limitations of claim 1, claim 16 is rejected as improperly dependent.
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims complies with the statutory requirements.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 7-9 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bull, US 2010/0100980 A1, Published April 22, 2010 in view of Wędzony, Advances in haploid production in higher plants (2009): 1-33.
Independent claim 1 is drawn to a method for providing increased genetic gain and genetic diversity within a breeding plant population. The major steps of the method are summarized as follows
Beginning with a breeding population of plants comprising a plurality of first parental plants and a plurality of second parental plants.
Crossing each first parent plant with a second parent plant to produce a population of F1 progeny plants.
Selecting a plurality of progeny plants from the population of F1 progeny plants where the selected plants have a combined haploid value that approaches the optimal haploid value.
Importantly, as demonstrated in the indefiniteness analysis above, the scope of “approaches the highest possible [combined] haploid value (OHV)” is not clear and therefore any F1 progeny plant is interpreted to have a combined haploid value (CHV) that approaches the OHV. As such the selected plurality of F1 plants is interpreted to be any plurality of F1 plants.
Generating doubled haploid plants from the selected progeny plants.
With respect to claim 1, Bull teaches a method for providing increased genetic gain and maintaining genetic diversity in a breeding population of crop plants (Methods and compositions to enhance the germplasm of a plant. Enhanced germplasm would include germplasm having increased genetic gain and maintained genetic diversity) (Bull, abstract).
The method of Bull comprises the following steps:
Selecting a breeding population of plants comprising favorable haplotypes (Bull, Page 6, Paragraphs 0047 and 0051)).
The best plants of the breeding population are selected as parental plants. Then one of the haplotyped initial plants (a first parent line) is crossed with a second haplotyped initial plants (a second parental plant) to produce a new progeny plant population (Bull, Paragraphs 0047 and 0086).
Progeny can be selected for a favorable property by selecting for favorable haplotypes and the accumulation of favorable haplotypes in a breeding population (Bull, Page 6, Paragraph 0051).
This accumulation of favorable haplotypes represents increasing CHVs. Paragraph 0010 of the instant specification provides an explanation of CHV: “The combined haploid value (CHV) is determined for each of the haploid plant or haploid tissues, which CHV is the sum of breeding values (e.g., for a quantitative trait of interest) for segments of the haploid genome (“haploid values;” HVs). Given this definition paragraph 0051 of Bull which describes selecting for the accumulation of favorable haplotypes in progeny plants, clearly describes selecting for plants having high CHVs which would inherently approach the optimal value.
With respect to claim 1, Bull does not teach generating doubled haploid plants from the selected progeny plants.
With respect to claim 1, Wedzony teaches generating doubled haploid (DH) crop plants and teaches doubled haploid plants from a large number of crop species (Wedzony, Page 1, Abstract; Wedzony, Pages 5-6, Table 1). Additionally, Wedzony teaches motivation to produce doubled haploid crop plants (Wedzony, Pages 1-2, First Paragraph of Introduction). In fact, Wedzony teaches three different motivations: 1. DHs are useful in fixing traits rapidly in desirable combinations in a line/variety; 2. DHs facilitate hybrid breeding; and 3. DHs applied in marker studies speed up the development of mapping populations and marker/trait associations. Point 3, is particularly relevant to Bull, given that Bull teaches plant breeding methods which rely on associations between haplotypes and favorable properties or multi-trait indexes.
At the time of filing it would have been obvious to modify the method of Bull in order to produce doubled haploid crop plants as taught in Wedzony from the selected progeny plants of Bull. This would have been obvious because Bull is drawn to plant breeding methods which rely on associations between haplotypes and favorable properties or multi-trait indexes and Wedzony teaches that doubled haploids are useful when applied in marker studies to speed up the development of mapping populations and marker/trait associations and that doubled haploids can also be used to rapidly fix desirable combinations of traits (genetic gain) in a population of plants (a line or a variety). Given these teachings the ordinary artisan at the time of filing would have found it obvious to modify the method of Bull as instructed by Wedzony in order to more efficiently identify associations between haplotypes and desirable properties or multiple trait indexes and then to fix these combinations of haplotypes in the population. The ordinary artisan would have been motivated to make this modification to Bull because as made clear by Wedzony, the use of doubled haploids would rapidly increase the genetic gain associated with accumulating and fixing desirable haplotypes together in the population and would create more efficient breeding strategies. Therefore, claim 1 is rejected as obvious under Bull in view of Wedzony.
With respect to claim 2, Bull in view of Wedzony collectively teach all of the limitations of claim 1, see above.
Further, Bull teaches analyzing the effect on specific traits of fixing a known haplotype or collection of haplotypes into the population, when the haplotype has known associations with a variety of traits (Bull, Page 13, Example 2, Paragraphs 0113-0117 including Table 2). In this example Bull shows that the C8W6H5 haplotype which was rare in the population would lead to substantially higher yields when fixed in the population (Bull, Page 13, Table 2). Further, Bull teaches using these breeding values to select the haplotype that in combination with a transgene will be most beneficial for the improvement of the germplasm of the crop (Bull, Page 13, Paragraph 0114).
With respect to claim 3, Bull in view of Wedzony collectively teach all of the limitations of claim 1, see above.
Further, Bull teaches that the methods may use the pedigree breeding strategy for crosses, in which two parents each having desirable traits lacking in each other in order to produce progeny comprising both of those traits (Bull, Page 9. Paragraph 0084).
With respect to claim 4, Bull in view of Wedzony collectively teach all of the limitations of claim 3 taught above, see above.
Further, Bull teaches examples of genes that alter morphological characteristics and can be used with the methods of Bull, these include transgenes (Bull, Page 9, Paragraph 80).
With respect to claim 7, Bull in view of Wedzony collectively teach all of the limitations of claim 1, see above.
Further, Bull teaches the use of the method of Bull in soybean (Bull, Page 13, Example 2 including Table 2). Additionally, Bull teaches that the methods of Bull can be used in a variety of crop species including corn and wheat (Bull, Page 7, Paragraph 0056; Bull, Page 45, Claim 8).
With respect to claim 8, Bull in view of Wedzony collectively teach all of the limitations of claim 1, see above.
Further, Bull teaches the use of the method of Bull in soybean (Bull, Page 13, Example 2 including Table 2). Additionally, Bull teaches that the methods of Bull can be used in a variety of crop species including corn and wheat (Bull, Page 7, Paragraph 0056; Bull, Page 45, Claim 8).
With respect to claim 9, Bull in view of Wedzony collectively teach all of the limitations of claim 1, see above.
Further, Bull teaches the use of the method of Bull in soybean (Bull, Page 13, Example 2 including Table 2). Additionally, Bull teaches that the methods of Bull can be used in a variety of crop species including corn and wheat (Bull, Page 7, Paragraph 0056; Bull, Page 45, Claim 8).
With respect to claim 16, Bull in view of Wedzony collectively teach all of the limitations of claim 1, see above.
With respect to claim 17, Bull in view of Wedzony collectively teach all of the limitations of claim 1, see above.
Additionally, Bull teaches accumulating favorable haplotypes in a breeding population by selection of favorable haplotypes in individuals which are part of that breeding population (Bull, Page 6, Paragraph 0051).
With respect to claim 18, Bull in view of Wedzony collectively teach all of the limitations of claim 17 taught above, see above.
Further, Bull teaches crossing progeny plants with other plants to produce additional progeny plants (Bull, Page 45, Claim 11; Bull, Page 46, Claim 20).
With respect to claim 19, Bull in view of Wedzony collectively teach all of the limitations of claim 18 taught above, see above.
With respect to claim 20, Bull in view of Wedzony collectively teach all of the limitations of claim 19 taught above, see above.
With respect to claims 2-4, 7-9 and 16-20
With respect to claims 2-4, 7-9 and 16-20 Bull does not teach generating doubled haploid plants from the selected progeny plants nor does Bull explicitly teach all of the specific breeding steps recited in claims 18-20.
With respect to claim 2-4, 7-9 and 16-20, Wedzony teaches generating doubled haploid (DH) crop plants and teaches doubled haploid plants from a large number of crop species (Wedzony, Page 1, Abstract; Wedzony, Pages 5-6, Table 1). Additionally, Wedzony teaches motivation to produce doubled haploid crop plants (Wedzony, Pages 1-2, First Paragraph of Introduction). In fact, Wedzony teaches three different motivations: 1. DHs are useful in fixing traits rapidly in desirable combinations in a line/variety; 2. DHs facilitate hybrid breeding; and 3. DHs applied in marker studies speed up the development of mapping populations and marker/trait associations. Point 3, is particularly relevant to Bull, given that Bull teaches plant breeding methods which rely on associations between haplotypes and favorable properties or multi-trait indexes.
At the time of filing it would have been obvious to modify the method of Bull in order to produce doubled haploid crop plants as taught in Wedzony from the selected progeny plants of Bull and to use those in the breeding program by adding them to the groups of first and second parents where they would be crossed and those progeny selected based on comparing CHV to OHV.
This would have been obvious because Bull is drawn to plant breeding methods which rely on associations between haplotypes and favorable properties or multi-trait indexes and Wedzony teaches that doubled haploids are useful when applied in marker studies to speed up the development of mapping populations and marker/trait associations and that doubled haploids can also be used to rapidly fix desirable combinations of traits (genetic gain) in a population of plants (a line or a variety).
The modifications to the specific breeding strategy would have been obvious given that Bull is drawn to methods of accumulating desirable haplotypes in a breeding population by selecting for desirable haplotypes in individuals which are then returned to the breeding population. These plants could then be crossed with other desirable plants thereby fixing desirable haplotypes into the population.
Given these teachings the ordinary artisan at the time of filing would have found it obvious to modify the method of Bull as instructed by Wedzony in order to more efficiently identify associations between haplotypes and desirable properties or multiple trait indexes and then to fix these combinations of haplotypes in the population by crossing the selected progeny with the rest of the breeding population. The ordinary artisan would have been motivated to make these modification to Bull because as made clear by Wedzony, the use of doubled haploids would rapidly increase the genetic gain associated with accumulating and fixing desirable haplotypes together in the population and would create more efficient breeding strategies. Therefore, claims 2-4, 7-9 and 16-20 are rejected as obvious under Bull in view of Wedzony.
Summary
No claims are allowed.
Examiner’s Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN JAMES SULLIVAN whose telephone number is (571)272-0561. The examiner can normally be reached 7:30 to 5:00.
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/BRIAN JAMES SULLIVAN/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
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