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 .
Election/Restrictions
2. Applicant’s election of Group I, claims 13-18, without traverse, in the reply filed on June 5, 2026 is acknowledged. Claims 19-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December June 5, 2026.
Information Disclosure Statement
3. The listing of references on page 30 of the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, “the list may not be incorporated into the specification but must be submitted in a separate paper.” Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
4. Claims 13-14, 15, 17, and 18 are objected to because of the following informalities.
In claim 13, the use of periods in the designation of subparts which is improper. In lines 2-3 of the claim, the term “dosages levels” should be amended to recite “dosage levels” or “dosages.” In part (b) of the claim, the term “inhibitors” should be amended to recite “inhibitor.”
In claims 13, 14, 15, 17, and 18, the term “AHAS/ALS” should be amended to recite either “AHAS” or “ALS” alone, and once amended, the term “AHAS” or “ALS” should be spelled out at its first use in claim 13.
In claim 15, the term “at least one imidazolinone herbicides” should be amended to recite “at least one imidazolinone herbicide.” Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
5. 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.
6. Claims 13-18 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 pre-AIA the applicant regards as the invention.
In claim 13, the wording of part (a) makes it unclear whether the rice plant that is “resistant to AHAS/ALS inhibitors” is actually required to comprise a gene comprising a mutation and encoding an AHAS enzyme with the A205V substitution, because the claim appears to merely recite a plant comprising said mutation for comparison and does not expressly require that the “resistant” plant actually comprise said substitution.
The phrase “a substitution of amino acids A205V in an AHAS/ALS enzyme” renders the claim indefinite because it refers to “amino acids” in plural, yet recites a single substitution, A205V. Moreover, the recitation of the substitution, A205V, without a clear reference sequence introduces further ambiguity into the claim language, particularly given that position A205 appears to refer to the Arabidopsis numbering, while the claim recites a rice plant.
In claim 14, the phrase “wherein the AHAS/SL inhibitors cause 10% or less plant injury to the rice plant” renders the claim indefinite because it is unclear whether it refers to the “inhibitors” recited in part (a) of claim 13, as a property of a plant, or to the “at least one AHAS/ALS inhibitors” that are recited in part (b) of claim 13, in the “contacting step.”
In claim 16, line 2, the term “the imidazolinone herbicides” lacks sufficient antecedent basis in claims 14 or 13 from which claim 16 depends.
In claim 17, the term “administered at a rice development stage from 2-leaf stage, 3-leaf stage, and 4-leaf stage” renders the claim indefinite because it makes it unclear at what stage the inhibitors are administered, given that the various development stages are not recited in the alternative. In addition, because the terms “2-leaf”, “3-leaf” and “4-leaf” differ in scope, they amount to the recitation of a broad limitation (e.g., “2-leaf”) together with a narrower limitation (“3-leaf” or “4-leaf”), which renders the claim indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
In claim 18, the term “manufacturer recommended dosage” renders the claim indefinite because the term “recommended,” is a term whose metes and bounds cannot be readily ascertained by one of ordinary skill in the art without specific guidance as to said rate, which guidance is missing from the specification, particularly given that manufacturer recommendations can and do change over time. The metes and bounds are unclear.
Given that claim 15 depends from claim 13 and fails to recite additional limitations overcoming the indefiniteness of the base claim, its metes and bounds are unclear as well.
Claim Rejections - 35 USC § 102
7. 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 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.
(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.
8. Claims 13-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Livore et al (US Patent Publication 20100029485, published February 3, 2010).
As set forth above, the claims were found indefinite. For the purpose of the examination, the recitation, in claim 13, “a rice plant wherein the rice plant is resistant to AHAS/ALS inhibitors” is interested as encompassing a rice plant comprising an AHAS nucleic acid encoding an AHAS enzyme having an alanine to valine substitution at the relative position 205 in the Arabidopsis numbering.
Livore et al disclose a rice plant comprising at least one copy of a rice AHASL polynucleotide that encodes a herbicide resistant AHASL protein, wherein said protein comprises an A205V substitution (A179V, in rice numbering). Livore et al disclose a seed of said plant, and teach that the plant has enhanced tolerance to at least one class of AHAS inhibiting herbicides (claims 1-14; Examples 1 and 2; see also paragraphs 0014-0018). Livore et al disclose that the A205V substitution occurs in one of the conserved domains of the AHAS enzyme (Table 2).
Livore et al disclose obtaining the rice plants comprising the A205V substitution using the sodium azide mutagenesis and selection of a known rice cultivar (Example 1). Livore et al teach the nucleic acid and the amino acid sequences of the wild type and mutant rice AHASL (Figures 1 and 2). Livore et al disclose that the resultant rice plants were tolerant to two applications of 1x and 2x rates of imazapyr and imazapic (paragraph 0207), which could be reasonably interpreted as reading on the “two times manufacturer recommended dosage” (instant claim 18). Regarding instant claim 14, given that the plants of Livore et al showed resistance to AHAS inhibiting herbicides, at least some of said inhibitors applied at least some of the concentrations (all of which are encompassed by the claim) would necessarily result in “10% or less” injury, in at least some of the plants.
Livore et al disclose a method of controlling weeds in the vicinity of said herbicide tolerant rice plant by applying an effective amount of an imidazolinone herbicide to said plant (claims 15-16). One would recognize that the IUPAC names recited in claim 16 of Livore et al read on the commercial manes of imidazolinones recited in the instant claim 16. Livore et al disclose applying imidazolinone herbicides at a four or five leaf stage to the resistant rice plants (Example 1, paragraphs 203-207).
For these reasons, the disclosures of Livore et al anticipate the limitations of the instant claims.
Conclusion
9. No claims are allowed
10. 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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