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 .
Claim Status
Claims 1-10 are under examination on the merits.
Priority
Claims 1-10 receive the U.S. effective filing date of 07/21/2023.
Foreign priority to CN202310900814X filed 07/21/2023 is recognized.
The objection to the drawings is withdrawn in light of Applicant’s amendment to the specification.
The objection to the specification is withdrawn in light of Applicant’s amendment to the specification.
The objection to claims 4-8 for lack of proper articles is withdrawn in light of Applicant’s amendments to the claims.
The objection to claim 6 for typographical error is withdrawn in light of Applicant’s amendment to the claim.
The rejection of claims 1-5, 7 & 8 under 35 U.S.C. 103 as being unpatentable over Shi is withdrawn because of Applicant’s arguments and claim amendment(s).
The rejection of claims 6 & 9-10 under 35 U.S.C. 103 as being unpatentable over Shi, and further in view of He et al. is withdrawn because of Applicant’s arguments and claim amendment(s).
Claim Objections
Claims 1 & 5 are objected to because of the following informalities:
Claim 1, typographical error; line 3 of the claim reads “…or the transgenic cell line all comprise the rice…” but should read:
“…or the transgenic cell line comprise a ”
Claim 1, typographical error; line 4 of the claim reads “…a nucleotide sequence of the gene BPH33.2 is shown in SEQ ID NO.1, and has..” but should read:
““…wherein the .”
Claims 5-8 & 10, typographical error; line 1 of claim 5 reads “The method of preparing…” but should read:
“A method of preparing…”
Similarly, claims 6-8 & 10 begin with the article “The method…” but should read:
“A method…”
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.
The rejection of claims 9 & 10 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite are withdrawn because of Applicant’s amendments to the claims.
Claims 1-10 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.
Claim 1 recites the limitation ‘the rice brown planthopper resistance gene’ in line 3. There is insufficient antecedent basis for this limitation in the claim. Claims 2 & 3 depend from claim 1 and are thus also rendered indefinite.
Because of this, claims 1-3 are rejected.
Claims 2 & 3 are indefinite because each of the claims first recites the molecular constructs or transgenic cell type(s) of claim 1, then recites an additional limitation drawn to either a cDNA (claim 2) or a protein (claim 3).
The claims, as written, do not connect the claimed constructs/cells with the biomolecules recited following ‘wherein’. Absent recitation of linking functional steps or structures, it is unclear how the cDNA or protein limitations recited in claims 2 and 3 relate to the BPH33.2 gene, if these are being produced by the claimed constructs or if they are simply secondary biomolecules present absent connection to the previously recited recombinant vector or construct(s).
Because of this, claims 2 & 3 are rejected.
Applicant is advised to cancel claims 2 & 3 or otherwise amend them to recite their functional or structural connection to the BPH33.2 gene of dependent claim 1.
Claims 4-10 are indefinite because independent claims 4 & 9 lack recitation of active method steps or limitations.
Claim 4 merely recites ‘A method…wherein the method is a transgenic method or a hybridization method’.
Claim 9 similarly recites ‘a method of selecting’ using molecular markers but does not indicate what steps are involved in selection, or what actions are involved in the breeding of selected plants, other than the diagnosis of the genotype using molecular markers.
Because the claims are drawn to ‘a method’ but do not specify or provide a description of said method, one would not be able to understand the metes and bounds of the claims 4 or 9. Because claims 5-8 depend from claim 4, they are also rendered indefinite. Because claim 10 depends from claim 9, it is also rendered indefinite.
As such, and without further limitation(s) recited in the claims, one would not be able to understand or avoid potentially infringing the metes and bounds of claims 4-10 as currently written.
Because of this lack of descriptive method steps, claims 4-10 are rejected.
Claims 6 & 10 are indefinite because they recite a series of nucleotide sequences for molecular markers and/or associated primers (i.e. H99, H79, 33-3 & 33-4) but do not include the corresponding SEQ ID NO. within the claims.
Claims drawn to nucleotide or protein sequences are required to indicate corresponding SEQ ID NO. provided in computer-readable format with the application. This is to provide complete description of the sequence limitations recited in the claim and enable proper descriptive search.
Because SEQ ID NO. are missing claims 6 & 10 are rejected.
Applicant is advised to amend claims to include the corresponding SEQ ID NO. for each of the nucleotide sequences recited.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The previous rejection of claims 9 & 10 under 35 U.S.C. 101 because the claimed invention is directed to 'an application', or use, of the claimed material is withdrawn because of Applicant’s amendments to the claims.
Claims 4, 8 & 9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because they are drawn to an abstract idea.
Claim 4 as currently written is drawn to ‘a method of preparing a plant’ but does not include any description of steps involved in the method. Claim language recites that the method is either a transgenic or hybridization method, which are categories of methods, but Applicant does not recite any descriptive steps to indicate the limitations of the claimed method.
Claim 8 is similarly drawn to ‘a method of preparing a plant’ and specifies the plant is rice, but does not provide any more description of steps indicating limitations of the proposed method.
Claim 9 similarly recites ‘a method of selecting’ using molecular markers but does not indicate subsequent steps are involved after selection, or what actions are involved in the breeding of selected plants, other than the diagnosis of the genotype using molecular markers.
As such, and without further limitation(s), these claims as written are merely drawn to the abstract idea of methods of ‘preparing a plant’, ‘selecting a plant’ or ‘breeding a plant’ without describing further inventive steps. Because of this, claims 4, 8 & 9 are rejected.
Conclusion
No claims are allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEITH R WILLIAMS whose telephone number is (571)272-3911. The examiner can normally be reached Mon - Fri, 9:30 - 5:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KEITH R. WILLIAMS/Examiner, Art Unit 1663
/Anne Kubelik/Primary Examiner, Art Unit 1663