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 .
Specification
The disclosure is objected to because of the following informalities: the specification at page 59 is incomplete with respect to the deposit date and accession number. Applicant is reminded that for each deposit made pursuant to the regulations, the specification shall be amended to contain (see 37 CFR 1.809): (1) The accession number for the deposit; (2) The date of the deposit; (3) A description of the deposited biological material sufficient to specifically identify it and to permit examination; and (4) The name and address of the depository. Such an amendment to the specification, or the assurance that such an amendment will be made, would overcome the objection.
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.
Claims 1-22 are rejected 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. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The invention appears to employ the seed of novel plants. Since the seed claimed is essential to the claimed invention, it must be obtainable by a repeatable method set forth in the specification or otherwise be readily available to the public. If a seed is not so obtainable or available, the requirements of 35 U.S.C. 112 may be satisfied by a deposit thereof. The specification does not disclose a repeatable process to obtain the exact same seed in each occurrence and it is not apparent if such a seed is readily available to the public.
If the deposit of these seeds is made under the terms of the Budapest Treaty, then an affidavit or declaration by the applicants, or a statement by an attorney of record over his or her signature and registration number, stating that the seeds have been accepted and will be irrevocably and without restriction or condition released to the public upon the issuance of a patent would satisfy the deposit requirement made herein. A minimum deposit of 625 seeds is considered sufficient in the ordinary case to assure availability through the period for which a deposit must be maintained.
If the deposit has not been made under the Budapest Treaty, then in order to certify that the deposit, meets the criteria set forth in 37 CFR 1.801-1.809, applicants may provide assurance of compliance by an affidavit or declaration, or by a statement by an attorney of record over his or her signature and registration number showing that
(a) during the pendency of the application, access to the invention will be afforded to the Commissioner upon request;
(b) all restrictions upon availability to the public will be irrevocably removed upon granting of the patent;
(c) the deposit will be maintained in a public depository for a period of 30 years or 5 years after the last request or for the enforceable life of the patent, whichever is longer;
(d) the viability of the biological material at the time of deposit will be tested (see 37 CFR 1.807); and
(e) the deposit will be replaced if it should ever become inviable.
For each deposit made pursuant to these regulations, the specification shall be amended to contain (see 37 CFR 1.809):
(1) The accession number for the deposit;
(2) The date of the deposit;
(3) A description of the deposited biological material sufficient to specifically identify it and to permit examination; and
(4) The name and address of the depository.
Claims 1-22 are 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.
Claims 1-22 are drawn to a plant or seed of soybean cultivar 5625047, to products derived therefrom, and to methods of making and using the plants, seeds, and products.
The instant Specification fails to satisfy the written description requirement of 35 U.S. Code § 112(a) because it does not provide a description sufficient to conduct an examination, including search of the prior art, nor does it provide enough description to be sufficient to aid in the resolution of questions of infringement.
MPEP 2163 (I) states “The written description of the deposited material needs to be as complete as possible because the examination for patentability proceeds solely on the basis of the written description. See, e.g., In re Lundak, 773 F.2d 1216, 227 USPQ 90 (Fed. Cir. 1985); see also 54 Fed. Reg. at 34,880 ("As a general rule, the more information that is provided about a particular deposited biological material, the better the examiner will be able to compare the identity and characteristics of the deposited biological material with the prior art.").”
MPEP 2163(I) states “The description must be sufficient to permit verification that the deposited biological material is in fact that disclosed. Once the patent issues, the description must be sufficient to aid in the resolution of questions of infringement." Id. at 34,880.)” (Quoting the Deposit of Biological Materials for Patent Purposes, Final Rule, 54 Fed. Reg. 34,864 (August 22, 1989) at 34,880).
In the instant application, a full examination cannot be conducted because applicant failed to provide the breeding history for the instantly claimed plant cultivar. Applicant specifically claims a new soybean plant cultivar. A plant cultivar is defined by both its genetics (breeding history) and its traits. In the instant application, applicant has only provided a description of the plant traits as seen in the specification. The instant application is silent as to the breeding history used to produce the claimed soybean plant cultivar.
The criticality of a breeding history in assessing the intellectual property rights of a plant is well recognized in the field of plant breeding. With regard to Plant Patents, MPEP 1605 states that a complete detailed description of a plant includes “the origin or parentage”. Other bodies that grant intellectual property protection for plant varieties require breeding information to evaluate whether protection should be granted to new varieties. A breeding history, including information about parentage and breeding methodology, is part of the requirements of Plant Variety Protection (PVP) applications. That information is used to “determine if development is sufficient to consider the variety new” (See “Applying for a Plant Variety Certificate of Protection” by the USDA reference to Exhibit A, www.ams.usda.gov/services/pvpo/application-help/apply). Additionally, the International Union for the Protection of New Varieties of Plants (UPOV) considers breeding history and methodology part of its evaluation of essentially derived plant varieties (See UPOV EDV Explanatory Notes 14 and 30, www.upov.int/edocs/expndocs/en/upov_exn_edv.pdf). While the USPTO, USDA, and UPOV have different laws governing intellectual property rights, all recognize that a breeding history is an essential part of adequate description of the plant sought to be protected.
The breeding history is also necessary to aid in the resolution of patent infringement by providing information necessary to determine whether differences in plants where genetic differences, differences caused by the environment, or differences within the accepted variation within a variety. Historically, the USPTO has considered breeding history information when determining the patentability of a new plant variety. (See Ex Parte C (USPQ 2d 1492 (1992) and Ex Parte McGowen- Board Decision in Application 14/996,093). In both of these cases, there were many differences cited by the applicant when comparing the prior art and the new plant variety. However, because the breeding history was available, these differences were deemed to be obvious and within the natural variation expected in a backcrossing breeding process. Without a breeding history in these cases, a complete comparison with the prior art could not have been possible.
Moreover, a specification devoid of a breeding history hampers the public’s ability to resolve infringement analysis with plants already in the prior art as well as plants that have not yet been patented. Because the instant specification lacks the breeding history, the public will not be able to fully resolve questions of infringement. Since the breeding history, including the parents, is not known to the public, the public could only rely on the phenotypes of the claimed plants for assessing potential infringement.
As seen above in Ex Parte C and Ex Parte McGowan, a trait table is insufficient to differentiate varieties by itself. It has been long established that intracultivar heterogeneity exists in crop species. HAUN teaches that the assumption that elite cultivars are composed of relatively homogenous genetic pools is false. (Haun et al. The Composition and Origins of Genomic Variation among Individuals of the Soybean Reference Cultivar Williams 82. Plant Physiol. 2010 Nov 29;155(2):645–655, see page 645 Left column). Segregation, recombination, DNA transposition, epigenetic processes, and spontaneous mutations are some of the reasons elite cultivar populations will maintain some degree of plant-to-plant variation. (Haun Page 645 right column and Page 646 left column). In addition to genetic variation, environmental variation may lead to phenotypic variation within a cultivar. (Großkinsky et al. Plant phenomics and the need for physiological phenotyping across scales to narrow the genotype-to-phenotype knowledge gap. J. Exp. Bot. 2015 Sep;66(18):5429-40. Epub 2015 Jul 10, see page 5430 left column 1st full paragraph and right column 2nd full paragraph). In view of this variability, a breeding history is an essential and the least burdensome way to provide genetic information needed at adequate describe a newly developed plant.
Thus, an application that does not clearly describe the breeding history does not provide an adequate written description of the invention.
To overcome this rejection, applicant must amend the specification/drawing to provide the breeding history used to develop the instant variety or cultivar. When identifying the breeding history, applicant should identify any and all other potential names for all parental lines utilized in the development of the instant variety. For example, if applicant’s breeding history uses proprietary line names, applicant should notate in the specification all other names of the proprietary lines, especially publicly disclosed or patented line information. If the breeding history encompasses a locus conversion or a backcrossing process, applicant should clearly indicate the recurrent parent and the donor plant and specifically name the trait or transgenic event that is being donated to the recurrent parent. If one of the parents is a backcross progeny or locus converted line of a publicly disclosed line, applicant should provide the breeding history of the parent line as well (i.e. grandparents).
Applicant is also reminded that they have a duty to disclose information material to patentability. Applicant should also notate the most similar plants which should include any other plants created using similar breeding history (such as siblings of the instant variety). This information can be submitted in an IDS with a notation of the relevancy to the instant application or as information submitted as described in MPEP 724 (e.g., trade secret, proprietary, and Protective Order).
Claim 8 is 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.
Claim 8 is drawn to a soybean plant produced by the method of claim 7, wherein the plant comprises the desired trait.
Claim 7 is drawn to a method of producing a plant derived from soybean cultivar 5625047 comprising an added desired trait, wherein the method comprises introducing at least one mutation in a nucleic acid sequence of the soybean plant, or plant part thereof, or seed of claim 1, wherein the mutation confers the desired trait to at least one cell of soybean cultivar 5625047.
Claim 8 encompasses a broad genus of plants that have been mutated in an unspecified manner to introduce at least one mutation in an unspecified nucleic acid sequence of the soybean plant, or plant part thereof, or seed of claim 1 to confer an unspecified desired trait to at least one cell of soybean cultivar 5625047. While the specification at pages 19-21 generally describes methods that are known in the art to be useful for introducing mutations into the nucleic acids of plants, the specification does not describe any soybean plant that has been mutated to introduce at least one mutation in a nucleic acid sequence to confer a desired trait to at least one cell of soybean cultivar 5625047. Further, the specification does not describe specific mutations that can be made to specific nucleic acid sequences such that a specific desired trait is conferred to at least one cell of soybean cultivar 5625047.
At the time of filing it was understood that different techniques for introducing mutations into a nucleic acid sequence are often random and can cause multiple nonspecific alterations in a target genome. See, e.g. Alonso et al. (Moving forward in reverse: genetic technologies to enable genome-wide phenomic screens in Arabidopsis. Nat Rev Genet. 2006 Jul;7(7):524-36. Epub 2006 Jun 6. Review, the whole article and in particular page 528 Table 1).
Given the breadth of the claim which encompasses a large genus of plants that have been mutated in an unspecified manner to introduce at least one mutation in an unspecified nucleic acid sequence of the soybean plant, or plant part thereof, or seed of claim 1 to confer an unspecified desired trait to at least one cell of soybean cultivar 5625047, given that different techniques for introducing mutations into a nucleic acid sequence are often random and can cause multiple nonspecific alterations in a target genome, given the extremely limited disclosure of only general methods that are known in the art to be useful for introducing mutations into the nucleic acids of plants combined with the failure to disclose any soybean plant that has been mutated to introduce at least one mutation in a nucleic acid sequence to confer a desired trait to at least one cell of soybean cultivar 5625047, one skilled in the art would not recognize that the applicant was in possession of the claimed invention as a whole at the time of filing.
Claim 19 is 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.
Claim 19 is drawn to a soybean plant produced by the method of claim 18, wherein said plant has all of the physiological and morphological characteristics of soybean cultivar 5625047.
Claim 18 is drawn to a method of editing the genome of soybean cultivar 5625047, said method comprising editing the genome of the plant, of claim 1, or plant part thereof, wherein said method is selected from the group comprising zinc finger nucleases, transcription activator-like effector nucleases (TALENSs), engineered homing endonucleases/meganucleases, and the clustered regularly interspaced short palindromic repeat (CRISPR)-associated protein9 (Cas9) system.
Claim 19 encompasses a broad genus of plants that have been subjected to a wide variety of nucleases that target their genome in an unspecified manner such that the resultant plants still have all of the physiological and morphological characteristics of soybean cultivar 5625047. While the specification at pages 21-23 generally describes methods that are known in the art to be useful for plant genome editing, the specification does not describe any soybean plant that has been edited using these techniques and that has all of the physiological and morphological characteristics of soybean cultivar 5625047. Further, the specification does not describe targets in the genome of soybean cultivar 5625047 that can be edited such that the resultant plants have all of the physiological and morphological characteristics of soybean cultivar 5625047.
At the time of filing it was understood that genome editing techniques, in addition to making targeted genetic alterations, can also alter the genome in unexpected ways,
See, for example, Lozano-Juste et al. (Plant genome engineering in full bloom. Trends Plant Sci. 2014 May;19(5):284-7; Epub 2014 Mar 24, page 285 column 2 in particular), who teach that all genome editing technologies have limitations that include the occurrence of off-target effects, which effects vary by orders of magnitude between different target sequences and organisms. Lozano-Juste et al. also teach that a variety of techniques have been developed that may help reduce these off-target effects, but that the effectiveness of these techniques needs to be evaluated empirically.
Given the breadth of the claim which encompasses a large genus of plants that have been subjected to a wide variety of nucleases that target their genome in an unspecified manner such that the resultant plants still have all of the physiological and morphological characteristics of soybean cultivar 5625047, given that genome editing techniques, in addition to making targeted genetic alterations, can also alter the genome in unexpected ways, given the extremely limited disclosure of only general methods that are known in the art to be useful for plant genome editing combined with the failure to disclose any soybean plant that has been edited using these techniques and that has all of the physiological and morphological characteristics of soybean cultivar 5625047, or targets in the genome of soybean cultivar 5625047 that can be edited such that the resultant plants have all of the physiological and morphological characteristics of soybean cultivar 5625047, one skilled in the art would not recognize that the applicant was in possession of the claimed invention as a whole at the time of filing.
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.
Claims 1, 9, 14 and 21, and ALL CLAIMS DEPENDENT THEREON, 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, 9, 14 and 21 are indefinite in the recitation of “NCMA No. _____”, because the accession number is missing. Amending the claims to recite the accession number, or the assurance that the claims will be so amended, would overcome the rejection.
Claims 1, 2, 7, 9, 13, 14, 17, 18, 19 and 21, and ALL CLAIMS DEPENDENT THEREON, 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, 2, 7, 9, 13, 14, 17, 18, 19 and 21 are indefinite in the recitation of “soybean cultivar 5625047”, given that a name does not clearly identify the claimed soybean cultivar and seed, and does not set forth the metes and bounds of the claimed invention. Since the name 5625047 is not known in the art, the use of said name does not carry art recognized limitations as to the specific characteristics or essential characteristics that are associated with that denomination. In addition, the name appears to be arbitrary, and the specific characteristics associated therewith could be modified. The amendment of the independent claims to recite the accession number, or the assurance that the independent claims will be so amended, would overcome the rejection.
Claims 11, 16, 18 and 22, and ALL CLAIMS DEPENDENT THEREON, 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 11, 16, 18 and 22 are indefinite in the recitation of “selected from the group comprising”. The phrase “selected from the group” is the language of a Markush grouping where a claim recites a list of alternatives to define a limitation. Markush groups recite a closed list of alternatives, and therefore generally use the language “group consisting of A, B, and C” or “wherein the material is A, B, or C”; see MPEP 2173.05(h). Claims 11, 16, 18 and 22 recite the open claim language “comprising”, which includes the listed alternatives but also includes many other unspecified alternatives, rather than the closed claim language “consisting of”, which limits the group to the listed alternatives. The recitation of “comprising” in these claims renders the groups of alternatives open, such that it is unclear what other alternatives are encompassed by the lists of alternatives recited in the claims. Accordingly, the metes and bounds of claims 11, 16, 18 and 22 are unclear. The amendment of claims 11, 16, 18 and 22 to recite “consisting of” instead of “comprising” would overcome this ground of rejection.
Claim 18, and claim 19 dependent thereon, 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 18 is indefinite because the members of the Markush Group are not methods. The members of the Markush Group are proteins that can be used in a method of editing a genome.
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.
Claims 11 and 22 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 fails to further limit the soybean plant of claim 10 due to the use of the open claim language “comprising” prior to the Markush group of alternatives for desired traits. Similarly, claim 22 fails to further limit the food or feed product of claim 21 due to the use of the open claim language “comprising” prior to the Markush group of alternatives for food or feed products. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 8, 10 and 15 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Rhodes. U.S. Patent Application Publication No. 2017/0020098, published Jan. 26, 2017.
Claim 8 is drawn to a soybean plant produced by the method of claim 7, wherein the plant comprises the desired trait.
Claim 10 is drawn to a soybean plant produced by the method of claim 9, wherein the plant comprises the desired trait.
Claim 15 is drawn to a soybean plant produced by the method of claim 14, wherein the plant has the desired trait.
The soybean plants of claims 8, 10 and 15 are made by different methods applied to the soybean cultivar 5625047, wherein the soybean plant produced by the method has any unspecified desired trait. The methods applied to the soybean cultivar 5625047 (the methods of claims 7, 9 and 14) are known to have the capacity to alter multiple traits randomly and simultaneously. According the soybean plants of claims 8, 10 and 15 are anticipated by any soybean plant whose physiological and morphological characteristics are similar to those of soybean cultivar 5625047, since the soybean plants of claims 8, 10 and 15 are not required to retain any of the physiological and morphological characteristics of soybean cultivar 5625047.
Rhodes teaches a soybean cultivar 4319662471 that shares may of the physiological and morphological characteristics exhibited by soybean cultivar 5625047, such as seed coat color, seed coat luster, seed color, leaflet shape, growth habit, flower color, hilum color, pubescence color, pod wall color and maturity group (page 3 Table 1). Further, any trait exhibited by soybean cultivar 4319662471 could be considered desirable, depending on the intended use of the plant. Accordingly, Rhodes anticipates claims 8, 10 and 15.
Claim Rejections - 35 USC § 102/ § 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 1-7, 9, 11-14, 16-17 and 19-22 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Rhodes. U.S. Patent Application Publication No. 2017/0020098, published Jan. 26, 2017.
Claims 1-7, 9, 11-14, 16-17 and 19-22 are drawn to a plant, seed, plant part or tissue culture of soybean cultivar 5625047, methods of growing the soybean cultivar, methods of introducing a desired trait such as herbicide tolerance into the soybean cultivar by mutation or by breeding, and methods of producing a plant product and plant products such as food or feed, for example soybean oil.
Rhodes teaches a soybean cultivar 4319662471 that shares all of the qualitative characteristics exhibited by soybean cultivar 5625047, namely seed coat color, seed coat luster, seed color, leaflet shape, growth habit, flower color, hilum color, pubescence color, pod wall color and maturity group (page 3 Table 1). Soybean cultivar 4319662471 also exhibits quantitative characteristics that are extremely similar to those exhibited by soybean cultivar 5625047, namely relative maturity, lodging score, percent protein and percent oil. Additionally, soybean cultivar 4319662471 and soybean cultivar 5625047 are both resistant to soybean cyst nematode race 3. Rhodes also teaches methods of growing the soybean cultivar, methods of introducing a desired trait such as herbicide tolerance into the soybean cultivar by mutation or by breeding, and methods of producing a plant product and plant products such as food or feed, for example soybean oil (claims; paragraphs [0079]; [0199]).
Quantitative characteristics such as relative maturity, lodging score, percent protein and percent oil are known to vary depending on the conditions under which they are measured, and because no standard deviations are reported for either cultivar, it cannot be determined if the differences in their quantitative characteristics are statistically significant. Further, no breeding history is disclosed for either soybean cultivar, so the two plants cannot be distinguished on this basis either. Accordingly, both cultivars appear to be the same or extremely similar plants as determined by their shared qualitative characteristics.
See In re Best, 195 USPQ 430, 433 (CCPA 1977), which teaches that where the prior art product seems to be identical to the claimed product, except that the prior art is silent as to a particularly claimed characteristic or property, then the burden shifts to Applicant to provide evidence that the prior art would neither anticipate nor render obvious the claimed invention.
Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CYNTHIA E COLLINS whose telephone number is (571)272-0794. The examiner can normally be reached M-F 8:30 am - 5:00 pm.
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/CYNTHIA E COLLINS/Primary Examiner, Art Unit 1662