DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
2. Claims 1-16 and 19-22 are pending.
3. Claims 1-16 and 19-22 are examined herein.
Withdrawn Rejections
4. The rejection under 35 U.S.C. 112(b) has been withdrawn in view of Applicant’s amendments to the claims.
5. The rejection under 35 U.S.C. 112(a) for lack of enablement has been withdrawn in view of Applicant’s statements in the Remarks and the evidence indicating that the required deposit of the seeds of the claimed peanut variety has been made and accepted.
6. The Declarations of Dr. William D. Branch and Brent W. Marable filed under 37 C.F.R. 1.132 have been fully considered. The evidence submitted in the Declarations is found sufficient to overcome the rejections of claims 1-16 and 19-22 under 35 U.S.C. 102(a)(1) and 35 U.S.C. 103. Specifically, the evidence shows that term “released,” as applied in the Branch article to Georgia-21GR, does not signify release to the public or public availability. The evidence includes the germplasm deposit information from the USDA-ARD GRIN database entry which indicates that the germplasm is not currently availably but will be publicly available after the expiration of a PVP or patent. Accordingly, the rejections have been withdrawn.
7. All rejections of claims 17 and 18 are moot in view of their cancelation by Applicant.
Specification
8. The specification remains objected to because it does not properly reflect the amendments. A marked-up copy of the specification does not appear to have been submitted. The only substitute specification submitted on September 10, 2025 is a clean copy that no longer refers Tables 1-9 but the deletion of the corresponding text (“Tables 1-9”) is not indicated (see, for example, page 40 of the instant specification and the specification filed on October 16, 2023). This is improper as the record must clearly reflect all amendments to the disclosure. See 37 C.F.R. 1.125; MPEP 608.01(q).
Applicant argues that the submission of the substitute specificaiton overcomes the objection (page 7 of the Remarks). This is not found to be persuasive. The specificaiton remains objected for the reason set forth above.
Claim Rejections - 35 USC § 112(a)
9. 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.
10. Claim 1-16 and 19-22 remain rejected 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. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This rejection has been modified in view of Applicant’s amendments to the claims. Applicant’s argument submitted on September 10, 2025 was fully considered but it is not found to be persuasive.
Applicant claims a seed of peanut variety Georgia-21GR and a peanut plant grown from said seed. Applicant claims a plant regenerated from the tissue culture obtained from peanut variety Georgia-21GR (claim 8). Applicant claims a progeny plant of an unspecified generation produced by crossing the plant of peanut variety Georgia-21GR with a second, unspecified plant (claim 11).
Applicant describes variety Georgia-21GR as having been obtained from the initial cross between parental varieties Georgia-10T and GA 062711 followed by pedigree selection (Example 1). The specification previously repeatedly referred to Tables 1-9 as providing the description of the morphological and physiological characteristics of the claimed variety. In the instant amendments, Applicant has deleted the reference to the Tables from the specification.
Applicant does not describe peanut variety Georgia-21GR or the plants derived from said variety via tissue culture or locus conversion. While the specification no longer appears to refer to Tables 1-9, the specification provides no description of the morphological and physiological characteristics of the claimed peanut variety. The specification provides one table, Table A, on page 38, that lists the breeding history for the claimed variety, but no description of the morphological and physiological traits is provided. Consequently, the disclosure cannot be said to sufficiently apprise one of skill on the art of the claimed plant, nor permit an adequate search of the prior art.
Moreover, the claims encompass plants derived from the tissue culture of the claimed variety or a progeny plant of any filial generation. These genera of plants are not described either. Even assuming that the plants of variety Georgia-21GR themselves were described (which they are not due to the lack of the description of its traits), they would not be sufficiently representative of said genera.
For example, as one having ordinary skill in the art would recognize, regeneration of a plant from tissue-culture can cause mutations called somaclonal variations (see Jain (2001) Euphytica; Vol. 118; pp. 153-166). Tissue culture can induce dramatic changes such as changes in chromosome number, changes in ploidy and rearrangements, alterations in nuclear and cytoplasmic genetic elements, point mutations, changes in DNA methylation, and altered sequence copy number (Jain, last paragraph on page 153 and paragraph bridging left and right columns on page 154). A plant produced by this method may not retain the characteristics of the plant from which it was derived. Jain discloses plants having heavier tillering, slower growth rate, increased erectness, albino, altered leaf-shape, altered vigor (Jain, last paragraph on page 153). This means that claim 8, for example, encompasses a genus of plants that may differ from the plants of peanut variety Georgia-21GR by any number of morphological and physiological characteristics. Applicant has failed to describe any plants encompassed by that genus.
Claims 8 and 11 are thus “reach through” claims in which the Applicant has described a starting material and at least one method step, however, they have not described the resulting product, and the genus of products that can be produced by the recited method steps and materials is so large that one of skill in the art is not able to envision the members of the genus. (See Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920-23, 69 USPQ2d 1886, 1890-93 (Fed. Cir. 2004)).
See Vas-Cath Inc. v. Mahurkar 1991 (CA FC) 19 USPQ2d 1111, 1115, which teaches that the purpose of the written description is for the purpose of warning an innocent purchaser, or other person using a machine, of his infringement of the patent; and at the same time, of taking from the inventor the means of practicing upon the credulity or the fears of other persons, by pretending that his invention is more than what it really is, or different from its ostensible objects, that the patentee is required to distinguish his invention in his specification. In this case, there is no way that a practitioner would be able to determine if any particular peanut plant is infringing the instant claims, and therefore, the public has not been put on notice with a sufficient description of the claimed invention.
Response to Arguments
Applicant argues as follows: “Claims 17 and 18 are cancelled, thereby rendering their rejection moot. In response, without commenting on the merits and solely in the interest of furthering prosecution, the specification and claims have been amended to include deposit information, thereby rendering the outstanding rejection moot” (page 8 of the Remarks).
This argument is not found to be persuasive for the following reasons. Frist, the lack of the requisite deposit information and statements was the basis for the enablement rejection, which has been withdrawn, not the instant written description rejection. Second, the basis for the instant rejection was and remains not only the fact that claims 17 and 18 encompassed a non-described genus of plants derived from Georgia-21GR via locus conversion, but also the lack of written description of the claimed variety itself, as well as of the genus of plants regenerated from the tissue culture of the deposited variety and the progeny of Georgia-21GR of any filial generation. For the reasons set forth in the modified rejection above, the written description remains insufficient.
Conclusion
11. No claims are allowed.
12. 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.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MYKOLA V KOVALENKO whose telephone number is (571)272-6921. The examiner can normally be reached Mon.-Fri. 9:00-5:30 PST.
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/MYKOLA V. KOVALENKO/Primary Examiner, Art Unit 1662
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