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 .
Restrictions Requirements
Applicant’s amendment of claims 1, 4 and 6 are acknowledged. Claims 1-6 are pending and claims 1-6 along with elected species of SEQ ID NO:151 are examined in this office action. The election of species was done on 09/02/2025 without traverse.
Rejection that are withdrawn
Objection to specification is withdrawn in light of applicant’s amendment of specification by including a proper symbol indicating use in commerce in trade names or a marks used in commerce.
35 U.S.C. 103 rejection has been withdrawn in light of applicant’s amendment of claim by deleting the part that requires the plant to have any of at least 15 consecutive nucleotides of SEQ ID NO:151 associated with sugarcane disease resistance.
Claim Objections
Claim 6 objected to because of the following informalities:
Claim 6 lines 2 and 3 recites the phrase “JW90, Iriomote 8” which is advised to recite to “JW90 and Iriomote 8”
Appropriate correction is required.
Claim Rejections - 35 USC § 112 - written description requirement
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.
Following analysis is modified in light of applicant’s amendment of claims to delete the part of claims 1 and 4 that requires the plant to have any of at least 15 consecutive nucleotides of SEQ ID NO:151 associated with sugarcane disease resistance, recitation of sugarcane as parent plant in claim 1 and deletion of Iriomote 15 as source of SEQ ID NO:151 associated with sugarcane smut resistance in claim 6.
Claims 1-5 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.
Breadth of the Claim
The claims broadly recite any sugarcane smut resistance allele with any structure.
The claims broadly recite any strain of sugarcane has SEQ ID NO:151 associated with or genetically linked to improved smut resistance (claims 1-5).
What is Described in the Specification
Applicant describes the following:
genomic DNAs were extracted from the sugarcane variety (NiF8), the wild-type sugarcane variety (Iriomote 15), 3 progeny lines (KY08-6023), (KY08-6039), and (KY08-6041) (page 30, paragraph 0092).
33, 35, and 35 progeny lines developed by crossbreeding between the progeny lines with wild-type sugarcane variety JW90 (page 30, paragraph 0092).
QTL mapping was carried out by the composite interval mapping with LOD threshold 2.5.
presence of QTL linked to sugarcane smut resistance was confirmed in a region of approximately 12.27 cM including the markers AMP0063683 to AMP0091501 in the 8th linkage group of "KY09-6092" (Table 13 and Fig. 20) wherein the value indicating the effect is negative, QTL is linked to a trait of improving smut resistance (page 48, paragraph 0129).
as shown m Table 13 and Fig. 20, the range including the markers AMP0063683 to AMP0091501 in the 8th linkage group observed in this example was found to exhibit a significantly higher LOD value and significantly improved effects where in AMP0091501 is SEQ ID NO:151 or 316 (page 49, paragraph 0131; page 63, paragraph 0152).
peak position of QTL in LG 8 is at 83.8 wherein the range is 12.27 cM (page 49, paragraph 0130).
Difference Between What was Described and What is Claimed
Applicant has not described any smut resistant strain of sugarcane comprises the SEQ ID NO: 151 other than Iriomote 8 and JW90.
Analysis
The purpose of the written description is to ensure that the inventor had possession at the time the invention was made, of the specific subject claimed. For a broad generic claim, the specification must provide adequate written description to identify the genus of the claim.
Applicant described their identified markers are from a triparental cross between Iriomote 15, NiF8 and JW90 in a narrow set of parental lines and 33, 35 and 103 progenies (page 30, paragraph 0092).
Applicant has not described any strain of sugarcane comprises the SEQ ID NO: 151 and it is associated or genetically linked to sugarcane smut resistance other than the strains of Iriomote 8 and JW90. Applicant described the origin of their SEQ ID NO: 151 or AMP0091501 (page 17, paragraph 0051) is from Iriomote 8 (page 60-62, Table 17, paragraph 0147) wherein AMP0091501 (SEQ ID NO: 316) = AMP0111891 (SEQ ID NO: 292))(i.e. they are identical) (page63, paragraph 0152). However applicant has not described any other sugarcane strain would have SEQ ID NO:151 that would be associated with sugarcane smut resistance gene or genes. Furthermore, Sugarcane strains are aneupolyploids between two polyploids, S. officinarum and S. spontaneum, and have approximately 100-120 chromosomes spanning about 10 Gb (Aitken et al. (Published: 2014, Journal: BMC Genomics 15:152; (see pg 2, left column, paragraph 1, 3). Different cultivars have different numbers of chromosomes, different percentages of chromosomes that are from S. officinarum, that are from S. spontaneum, and that are interspecific (Piperidis et al. (Published: 2020, Journal: Plant J. 103:2039-2061; see pg 2048, right column, paragraph 2; Aitken et al., pg 2, left column, paragraph 2). As different cultivars will have originated from different S. spontaneum plants, they will differ in the S. spontaneum parts of their genomes. Therefore, there is dearth of description of any smut resistant strain of sugarcane comprises the SEQ ID NO: 151 associated with or genetically linked to sugarcane smut resistance gene or genes other than in strains Iriomote 8 and JW90.
Relating to structure vs. function, the claims remain drawn to any unspecified allele of the unspecified DNA marker loci present in any resistant strains (claims 1-5). This leads to a situation where the instantly claimed allele of the claimed marker loci would not possess the necessary structural features needed to accomplish the claimed phenotype. The Specification makes clear that the specific DNA markers comprised within the peak positions lend to the phenotype from specific strains of Iriomote 8 and JW90, thus it is necessary to claim the polymorphisms as such (i.e., specific favorable alleles).
Given Applicants have provided very vague description of the method steps or structures that would link a myriad of unspecified Sugarcane smut resistance allele that has any level of association with the recited marker, and which alleles are determinants of sugarcane smut resistance in sugarcane line, it remains unclear what features or method steps are capable of performing the claimed function. The Specification fails to provide an adequate written description to support the breadth of the claims. Therefore, one skilled in the art would not have recognized Applicants to be in possession of the claimed invention at the time the application was filed. See Written Description guidelines published in 2008 online at https://www.uspto.gov/sites/default/files/web/menu/ written.pdf. Thus, based on the analysis above, Applicant has not met either of the two elements of the written description requirement as set forth in the court's decision in Eli Lilly. As a result, it is not clear that Applicant was in possession of the claimed genus at the time this application was filed.
"The test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to one skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad Pharm, Inc, v EH Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Lockwood v. Amer. Airlines, ina, 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). "An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations. Lockwood, 107 F.3d at 1572, 41 USPG2d at 1966". While the written description requirement does not demand either examples or an actual reduction, actual "possession" or reduction to practice outside of the specification is not enough. Ariad Pharm, Inc. v. Eli Lilly & Co., 598 F,3d 1336,1352 (Fed. Cir. 2010). Rather, it is the specification itself that must demonstrate possession. Id.
Thus, based on the analysis above, Applicant has not met either of the two elements of the written description requirement as set forth in the court's decision in Eli Lilly. As a result, it is not clear that Applicant was has described the structure of claimed genus to have application as recited function at the time this application was filed.
Response to Argument
Applicant's arguments filed 01/06/2026 have been fully considered but they are not persuasive.
Applicant argues Table 15 demonstrates that smut morbidity, particularly the absence of smut, in each of F1-1 to F1-8 correlates with the presence or absence of the respective markers, including AMP0091501. Applicant argues specifically, F1-1 to F1-4, which contain marker AMP0091501, exhibit no smut (Table 15), whereas F-5 to F1-8, which lack marker AMP0091501, exhibit smut (Table 15) (Response to rejection, page 9, last paragraph). Applicant argues as explained in paragraph [0020], each marker listed in Table 15, including AMP0091501, is linked to a causal gene (or group of causative genes) for improved smut resistance. Applicant argues even a single marker, AMP0091501, is associated with sugarcane smut resistance and can be used to produce a sugarcane line or strain having improved smut resistance (Response to rejection, page 10, first paragraph).
Applicant argues each marker in Table 15, including AMP0091501, is genetically linked to a causal gene (or group of causative genes) responsible for improved smut resistance (paragraph [0020]), i.e., a sugarcane smut resistance allele within the sugarcane genome. Applicant argues thus, detection of the marker indicates the presence of smut resistance. Applicant argues identification of a smut-resistant sugarcane line or strain does not require direct detection or structural characterization of the resistance allele itself. Applicant argues as a matter of common general technical knowledge, a person skilled in the art understands that markers linked to causal genes are routinely used to detect the presence of those genes (Response to rejection, page 10, second paragraph).
Applicant argues as in view of Tables 14 and 16-17, the nucleotide sequence of marker AMP0091501 for strain Iriomote 8 (SEQ ID NOs: 151 and 316) is identical to the nucleotide sequence of marker AMP0I 11891 for strain JW90 (SEQ ID NO: 292). Applicant argues the nucleotide sequence of AMP0091501 is designated as SEQ ID NO: 151 in Table 14 and as SEQ ID NO: 316 in Table 17. Applicant argues the specification clearly shows that smut-resistant sugarcane strains other than Iriomote 8 can comprise the marker of SEQ ID NO: 151 (Response to rejection, page 11 and 12, last and first paragraphs).
Applicant argues specification clearly defines the term "marker associated with sugarcane smut resistance" based on genetic linkage, particularly in paragraphs [0019] and [0020]. Applicant argues reading the specification as a whole, would not interpret the term "associated" in claim I to encompass arbitrary or non-genetic associations (Response to rejection, page 12, paragraph 3).
Applicant argues Table 15 shows that all strains F1-5 to F1-8, which exhibit smut incidence between 18.8% and 70%, lack marker AMP0091501 (SEQ ID NO: 151), whereas strains F1-1 to F1-4, which show no smut incidence, all contain marker AMP0091501 (SEQ ID NO: 151). Applicant argues the specification clearly demonstrates that the presence of marker AMP0091501 is associated with smut resistance. Applicant argues because the claimed method includes determining the presence or absence of a marker associated with sugarcane smut resistance and selecting progeny plants having that marker, the progeny being tested need not themselves already exhibit smut resistance (page 12 and 13, last and first paragraph).
Applicant's arguments have been fully considered but they are not all persuasive.
Regarding argument on specification clearly defines the term "marker associated with sugarcane smut resistance" based on genetic linkage, particularly in paragraphs [0019] and [0020] is found persuasive and the part of the written description has been withdrawn.
Regarding argument on remarks and argument by applicant that as in view of Tables 14 and 16-17, the nucleotide sequence of marker AMP0091501 for strain Iriomote 8 (SEQ ID NOs: 151 and 316) is identical to the nucleotide sequence of marker AMP0111891 for strain JW90 (SEQ ID NO: 292)(Response to rejection, page 11 and 12, last and first paragraphs) was found persuasive therefore the part of the written description has been withdrawn.
Regarding argument on specification clearly shows that smut-resistant sugarcane strains other than Iriomote 8 and JW90 can comprise the marker of SEQ ID NO: 151 (Response to rejection, page 11 and 12, last and first paragraphs) was not found persuasive since for example Iriomote15 does not comprise the allele and there are no arts to show there are other strains that has SEQ ID NO: 151 that is associated with smut resistance. Claims specifically require the SEQ ID NO: 151 is genetically linked to or associated with smut resistance gene or genes (Spec, paragraphs 0019-0020) which has been only described to found in Iriomote 8 and JW90. Furthermore, although the identical sequence of SEQ ID NO:292 found in JW90, applicant has not described the SEQ ID NO:292 is genetically strongly linked or associated with smut resistance genes such that it can be used as a marker for selecting for smut resistance gene or genes. The example only showed the SEQ ID NO:151 is associated with smut resistance (see Figure 20).
For example, search of SEQ ID NO:151 to GenEmbl database shows many other Saccharum cultivar that has smut resistance however they do not have SEQ ID NO: 151 is genetically linked to or associated with smut resistance gene or genes (see snippet of alignment below). For example Raboin et al. (Published: 2003, Journal: Proc S Afr Sug Technol Ass (2003) 77 pages: 134-141) (Cited in previous office action) teaches for example R570 that has lower than 80% identity to SEQ ID NO:151 has smut resistance (Abstract).
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Therefore there is dearth of description of any strain of sugarcane comprises the SEQ ID NO: 151 and it is associated or genetically linked to sugarcane smut resistance other than the strains of Iriomote 8 and JW90.
Claim Rejections - 35 USC § 112 – Lack of Enablement
Following analysis is modified in light of applicant’s amendment of claim 6 to delete line Iriomote 15 as source of SEQ ID NO:151 associated with sugarcane smut resistance.
Claim 6 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 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.
Applicant teaches Examples of wild-type varieties with excellent smut resistance include, but are not particularly limited to JW90 and Iriomote 8 (Spec, page 9, paragraph 0021).
The method of claim 6 which require specific parental smut-resistant strain of sugarcane to be JW90 and Iriomote 8, but Applicant has not shown that the parental inbred lines are accessible because it is not known and readily available to the public. The concepts of “known and readily available” are considered to reflect a level of public accessibility to a necessary component of an invention disclosure that is consistent with an ability to make and use the invention. To avoid the need for a deposit on this basis, the biological material must be both known and readily available - neither concept alone is sufficient. A material may be known in the sense that its existence has been published, but is not available to those who wish to obtain that particular known biological material. Likewise, a biological material may be available in the sense that those having possession of it would make it available upon request, but no one has been informed of its existence.
Applicants cannot rely upon a third party to enable their claims. Applicants are suggested to file a declaration stating that the inbred lines were widely known and available at the time of the invention. See Ex parte Humphreys 24 USPQ2d 1255, 1259 (BdPatApp&Int, 1992) which teaches that the ability of others to obtain material from a third party prior to and after the filing date of an application does not establish that upon issuance of a patent on such application that such material will continue to be accessible to the public.
Response to Argument
Applicant's arguments filed 01/06/2026 have been fully considered but they are not persuasive.
Applicant argues the Japanese wild-type sugarcane strains were known and publicly available through the NARO (National Agriculture and Food Research Organization) Genebank Project in Japan, and therefore would have been accessible to a person of ordinary skill in the art at the relevant time (Response to Rejection, page 13, paragraph 4).
Applicant’s arguments have been fully considered but they are not persuasive since applicant is cannot rely upon a third party to enable their claims. The search of lines JW90 and Iriomote 8 in the NARO (accessed at htttps://www.gene.affrc.go.jp/distribution-cart_en.php, accessed at 03/23/2026) showed there is a suspension of distribution applications (see snippet below), which showed the lines are not readily available and without readily availability, one cannot carry out the method of claims 1, 5 and 6. Therefore the enable rejection has been maintained.
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Claim Rejections - 35 USC § 112 – Scope of Enablement
Following analysis is modified in light of applicant’s amendment of claims to delete the part of claims 1 and 4 that requires the plant to have any of at least 15 consecutive nucleotides of SEQ ID NO:151 associated with sugarcane disease resistance, recitation of sugarcane as parent plant in claim 1 and deletion of Iriomote 15 as source of SEQ ID NO:151 associated with sugarcane smut resistance in claim 6.
Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a method of producing sugarcane lines with improved smut resistance, where the method has a step of determining the presence of a DNA markers of SEQ ID NO:151 in the genome of a progeny plant and selecting the line with the DNA markers of SEQ ID NO:151 originated from Iriomote 8 and JW90, does not reasonably provide enablement for a method of producing sugarcane lines with improved smut resistance, where the method has a step of determining the presence in the genome of a progeny plant the SEQ ID NO:151 of a sugarcane genomic DNA originated from any source comprising one parent as any sugarcane plant (claims 1-4) or any smut resistant plant (claim 5). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
An “analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention.” MPEP 2164.01. “A conclusion of lack of enablement means that. . . the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention [i.e., commensurate scope] without undue experimentation.” In re Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); MPEP 2164.01.
In In re Wands, 858 F.2d 731,8 USPQ2d 1400 (Fed. Cir. 1988), several factors implicated in determination of whether a disclosure satisfies the enablement requirement and whether any necessary experimentation is “undue” are identified. These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands, 858 F.2d 731,737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). No single factor is independently determinative of enablement; rather “[i]t is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others.” MPEP 2164.01. Likewise, all factors may not be relevant to the enablement analysis of any individual claim.
The Breadth of the Claims and nature of invention:
The claims 1-6 recite DNA marker or DNA chip comprising SEQ ID NO:151 associated with sugar came smut resistance (SSR).
The claims broadly recite any sugarcane smut resistance allele with any structure.
The claims broadly recite method of detecting in a soybean plant having any association of the DNA marker and smut resistance that would be located anywhere in the genome of the progeny plant screened.
The amount of direction provided by the inventor:
Applicant teaches presence of QTL linked to sugarcane smut resistance was confirmed in a region of approximately 12.27 cM including the markers AMP0063683 to AMP0091501 in the 8th linkage group of "KY09-6092" (Table 13 and Fig. 20) wherein the value indicating the effect is negative, QTL is linked to a trait of improving smut resistance (page 48, paragraph 0129).
Applicant teaches as shown m Table 13 and Fig. 20, the range including the markers AMP0063683 to AMP0091501 in the 8th linkage group observed in this example was found to exhibit a significantly higher LOD value and significantly improved effects where in AMP0091501 is SEQ ID NO:151 or 316 (page 49, paragraph 0131; page 63, paragraph 0152).
Applicant teaches peak position of QTL in LG 8 is at 83.8 wherein the range is 12.27 cM (page 49, paragraph 0130).
Applicant teaches in Table 15 it showed various incidence of smut from 18.8% to 70% without significance presence of the reads of the markers (page 51, Table 15).
Applicant teaches the regions with 12.27cM comprising AMP0063683 ((i.e. SEQ ID NOs: 144, 145), and AMP0082090, AMP0013802, AMP0083204, AMP0043774, AMP0094596, and AMP0091501 with SEQ ID NOs: 146-151 respectively has been used as the markers associated with sugarcane smut resistance (page 50, Table 13, Table 14).
Applicant teaches their identified markers are from a triparental cross between Iriomote 15, NiF8 and JW90 in a narrow set of parental lines and 33, 35 and 103 progenies (page 30, paragraph 0092).
Applicant does not show SEQ ID NO:151 is found in NiF8 or Iriomote 15.
The state of the prior art:
Ching et al. (Published:2002, Journal: BMC Genet. 3:19 pages: 1-14) teaches haplotypes can be more informative than single DNA marker and can be more descriptive of any particular genotype (page 1, Abstract).
Lee et al. teaches mapping resolution is limited by mapping population size (page 1487, right last paragraph).
Sugarcane strains are aneupolyploids between two polyploids, S. officinarum and S. spontaneum, and have approximately 100-120 chromosomes spanning about 10 Gb (Aitken et al. (Published: 2014, Journal: BMC Genomics 15:152; (see pg 2, left column, paragraph 1, 3).
The existence of working examples:
The Specification or state of the art does not teach a person with skill in the art how to make and/or use the subject matter within the full scope of these claims because:
Applicant does not teach a DNA marker comprising SEQ ID NO:151 (see AMP0091501, Table 15) that is associated or genetically linked to smut resistance gene or genes is originated from any other strain of sugarcane other than resistant source of Iriomote 8 and JW90.
Lack of a working example is a critical factor to be considered, especially in a case involving an unpredictable and undeveloped art. See MPEP § 2164.
Genetech, 108 F.3d at 1366, states that “a patent is not a hunting license. It is not a reward for search, but compensation for its successful conclusion” and “[p]atent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable”.
In the absence of guidance from either the instant disclosure or the art, it would require undue trial and error experimentation for a skilled artisan to make and use the broadly claimed method of producing sugarcane lines with improved smut resistance, with no reasonable expectation of success in arriving at a protein variant having increased grain yield and/or one more agronomic characteristics of a plant compared to a control plant.
Thus, in view of the unpredictability associated with the SEQ ID NO:151 is associated or genetically linked with SSR resistance and it is found in any strain of sugarcane, the lack of enabling guidance from either the instant disclosure or the art, and breath and diversity of the embodiments encompassed by the claimed genus, the lack of sufficient working examples, and the level of the art at the time of the invention, one of ordinary skill in the art must rely on undue trial and error experimentation to make and test the numerous polypeptides encompassed by the broad genera, in order to make and/or use the invention within the full scope of these claims.
For at least this reason, the Specification does not teach a person with skill in the art how to make and/or use the subject matter within the full scope of these claims.
Response to Argument
Applicant's arguments filed 01/06/2026 have been fully considered but they are not persuasive.
Applicant argues the specification is not limited to enablement based solely on Iriomote 8. Applicant argues as described in Example 4 (see paragraphs [0137], [0139], and [0152]), the marker AMP0091501 (SEQ ID NO: 151) identified from Iriomote 8 was shown to have an identical nucleotide sequence to marker AMP0I 11891 derived from a different sugarcane strain, JW90. Applicant argues this finding demonstrates that the marker-trait association is conserved across multiple sugarcane strains and is not unique to Iriomote 8 (Response to Rejection, page 14, paragraph 2).
Applicant argues the specification teaches that detection of SEQ ID NO: 151 is applicable to sugarcane plants beyond the Iriomote 8 strain and enables a person skilled in the art to practice the claimed methods across sugarcane plants without undue experimentation. Applicant argues the amended claims, which are now limited to sugarcane parent plants and specific disclosed marker sequences, are therefore fully enabled by the specification (Response to Rejection, page 14, paragraph 3).
Regarding argument on specification teaches that detection of SEQ ID NO: 151 is applicable to sugarcane plants beyond the Iriomote 8 strain and enables a person skilled in the art to practice the claimed methods across sugarcane plants without undue experimentation, the argument was not found persuasive since for example Iriomote15 does not comprise the allele and there are no arts to show there are other strains that has SEQ ID NO: 151 that is associated with smut resistance. Furthermore, although the identical sequence of SEQ ID NO:292 found in JW90, applicant has not described the SEQ ID NO:292 is genetically strongly linked or associated with smut resistance genes such that it can be used as a marker for selecting for smut resistance genes or genes. The example only showed the SEQ ID NO:151 is associated with smut resistance (see Figure 20). Claims specifically require the SEQ ID NO: 151 is genetically linked to or associated with smut resistance gene or genes (Spec, paragraphs 0019-0020) which has been only described to found in Iriomote 8 and JW90. For example, search of SEQ ID NO:151 to GenEmbl database shows many other Saccharum cultivar that has smut resistance however they do not have SEQ ID NO: 151 is genetically linked to or associated with smut resistance gene or genes (see snippet of alignment above). For example Raboin et al. (Published: 2003, Journal: Proc S Afr Sug Technol Ass (2003) 77 pages: 134-141) (Cited in previous office action) teaches for example R570 that has lower than 80% identity to SEQ ID NO:151 has smut resistance (Abstract). Therefore the part of rejection has been maintained.
Conclusion
No claim is allowed.
Claims 1-6 are free of prior art. The closes prior art is Enoki et al. (US Patent No.: US 9,758,841 B2, Date of Patent: Sep.12,2017). Enoki et al. which does not teach method comprise determining in the progenies of plant a marker associated with sugarcane smut resistance comprises nucleotide sequences of SEQ ID NO:151 and in which one of the parental line to produce the progenies is smut resistant strain of sugarcane selected from JW90 and Iriomote 8 because the lines were not known to comprise the sugarcane smut resistance before the effective date of filing.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/SANTOSH SHARMA/Examiner, Art Unit 1663
/DAVID H KRUSE/Primary Examiner, Art Unit 1663