DETAILED ACTION
Claims 1-20 are pending.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The objection to the specification is withdrawn in light of Applicant’s deposit statement.
The rejection of claims 18-19 under 35 U.S.C. 101 because the claimed invention is directed to a law of nature without significantly more is withdrawn in light of recent Office guidance.
The rejection of claims 1-20 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the subject matter that the inventor or a joint inventor, or for pre-AIA the applicant, regards as the invention is withdrawn in light of Applicant’s deposit statement, amendment of claim 13, and disavowal of “a plant of “soybean cultivar 24390625” as reading on the definition of “soybean plant” in ¶195 and “single locus conversion” as encompassing anything other transgenes (response pg 7-8).
The rejection of claims 1-20 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement is withdrawn in light of Applicant’s deposit statement. Applicant is reminded that because viability testing of all deposits is required before they can be considered to meet the requirements of 37 CFR 1.801- 1.809, they are advised to perfect the deposit as early as is possible, and before the payment of the issue fee. Failure to perfect a deposit by the date of payment of the issue fee may result in abandonment of the application for failure to prosecute.
The rejection of claims 1-20 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is withdrawn in light of Applicant having overcome the indefiniteness rejection above.
The rejection of claims 1-20 under 35 U.S.C. 102(a)(1) as anticipated by Grams (2020, US 10,548,282) is withdrawn in light of Applicant having overcome the indefiniteness rejection above.
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 1-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Grams (2020, US 10,548,282) in view of Mason (2021, US 10,918,064).
The claims are drawn to plants, seeds, cells and a tissue culture of soybean cultivar 24390625, methods of breeding with it, F1 progeny, methods comprising introducing a transgene or backcrossing a single locus conversion into it and plants thereby obtained, a method comprising mutating the plant, a method of determining its genotype, and a method of producing a commodity product from it.
‘282 teaches soybean variety, 68391846, which is also known as 13471648-19; column 6, line 48). 13471648-19 is the recurrent parent used to produce 24390625
Like the instant soybean, 13471648-19 has purple flowers, black hila, light tawny pubescence, yellow seed coat color, dull seed coat luster, yellow cotyledons, ovate leaflets, indeterminate growth habit, and the rhg1 soybean cyst nematode resistance gene (Table 1 and the paragraph immediately following). The instant soybean and its parent 13471648-19 have similar values for lodging, height, seeds/lb, seed protein % and seed oil %.
‘282 does not teach 13471648-19 with the DAS-44406-6 event, tan pod walls and a different relative maturity.
Mason teaches soybean cultivar 84322401, which has the DAS-44406-6 event, tan pod walls and a different relative maturity.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify 13471648-19 taught in ‘282 to introgress in the DAS-44406-6 event from soybean cultivar 84322401 taught in Mason. One of ordinary skill in the art would have been motivated to do so because DAS-44406-6 event confers resistance to dicamba (2,4-D herbicides), glyphosate and glufosinate (column 7, lines 9-11 of Mason) and would provide a broad spectrum of resistance to herbicides commonly used in soybean farming. A method comprising introducing a transgene conferring herbicide resistance into 13471648-19 is claimed in ‘282’s claim 9; the DAS-44406-6 event is one way of achieving that.
One of ordinary skill in the art would use Mason’s teaching of how to introgress a single gene into a soybean cultivar (column 24, line 9, to column 27, line 7) to introgress the DAS-44406-6 event into 13471648-19. Selection for traits like pod wall color, for which there is no economic preference, is a design choice.
Selection for altered relative maturity is also a design choice; one of ordinary skill in the art might wish to select for a group III relative maturity if they wished to grow the resulting plants further south than is possible to group II soybeans.
The resulting plants would encompass those plants like the instantly claimed soybean cultivar. Claims 1-17 and 19 in ‘884 are identical to instant claims 1-17 and 20 except for the name of the variety. It would have been obvious to one of ordinary skill in the art to apply those same methods to and produce the same products from the plant produced by introgressing the DAS-44406-6 event into 13471648-19, as these are all routine methods performed with soybean cultivars and routine products produced from them. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to determine the genotype of the resulting soybean plant by detecting at least one polymorphism and recording the data, as this is a routine step in breeding with a soybean plant, such as in the methods claimed in ‘884’s claims 11-12 and 14-16.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,548,282 in view of Mason (2021, US 10,918,064). .
The claims are drawn to plants, seeds, cells and a tissue culture of soybean cultivar 24390625, methods of breeding with it, F1 progeny, methods comprising introducing a transgene or backcrossing a single locus conversion into it and plants thereby obtained, a method comprising mutating the plant, a method of determining its genotype, and a method of producing a commodity product from it.
‘282 claims soybean variety, 68391846, which is also known as 13471648-19; column 6, line 48). 13471648-19 is the recurrent parent used to produce 24390625
Like the instant soybean, 13471648-19 has purple flowers, black hila, light tawny pubescence, yellow seed coat color, dull seed coat luster, yellow cotyledons, ovate leaflets, indeterminate growth habit, and the rhg1 soybean cyst nematode resistance gene (Table 1 and the paragraph immediately following). The instant soybean and its parent 13471648-19 have similar values for lodging, height, seeds/lb, seed protein % and seed oil %.
‘282 does not claim 13471648-19 with the DAS-44406-6 event, tan pod walls and a different relative maturity.
Mason teaches soybean cultivar 84322401, which has the DAS-44406-6 event, tan pod walls and a Group III relative maturity (Table 1 and the paragraph immediately following).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify 13471648-19 taught in ‘282 to introgress in the DAS-44406-6 event from soybean cultivar 84322401 taught in Mason. One of ordinary skill in the art would have been motivated to do so because DAS-44406-6 event confers resistance to dicamba (2,4-D herbicides), glyphosate and glufosinate (column 7, lines 9-11 of Mason) and would provide a broad spectrum of resistance to herbicides commonly used in soybean farming. A method comprising introducing a transgene conferring herbicide resistance into 13471648-19 is claimed in ‘282’s claim 9; the DAS-44406-6 event is one way of achieving that.
One of ordinary skill in the art would use Mason’s teaching of how to introgress a single gene into a soybean cultivar (column 24, line 9, to column 27, line 7) to introgress the DAS-44406-6 event into 13471648-19. Selection for traits like pod wall color, for which there is no economic preference, is a design choice.
Selection for altered relative maturity is also a design choice; one of ordinary skill in the art might wish to select for a group III relative maturity if they wished to grow the resulting plants further south than is possible to group II soybeans.
The resulting plants would encompass those plants like the instantly claimed soybean cultivar. Claims 1-17 and 19 in ‘884 are identical to instant claims 1-17 and 20 except for the name of the variety. It would have been obvious to one of ordinary skill in the art to apply those same methods to and produce the same products from the plant produced by introgressing the DAS-44406-6 event into 13471648-19, as these are all routine methods performed with soybean cultivars and routine products produced from them. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to determine the genotype of the resulting soybean plant by detecting at least one polymorphism and recording the data, as this is a routine step in breeding with a soybean plant, such as in the methods claimed in ‘884’s claims 11-12 and 14-16.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anne R. Kubelik, Ph.D., whose telephone number is (571) 272-0801. The examiner can normally be reached Monday through Friday, 9:00 am - 5:00 pm Eastern.
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/Anne Kubelik/Primary Examiner, Art Unit 1662