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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/05/2026 has been entered.
Status of Claims
Claims 1-6 and 8-20 as filed on 05/05/2026 are pending.
Claims 1-2, 6, 8, 12-15, and 18-19 have been amended.
Claims 1-6 and 8-20 are examined in this Office Action.
Objections and Rejections that are Withdrawn
The objections to claims 6, 12-15, and 19 have been withdrawn in light of Applicant’s amendments to the claims. However, the objection to claim 6 for the recitation of the term “a transgene” in line 3 is maintained; the objection to claim 15 for the recitation of the term “a transgene” in line 6 is maintained.
The 35 USC 112(b) Indefiniteness rejections to claims 1-6 and 8-20 have been withdrawn in light of Applicant’s amendment to the claims.
The 35 USC 112(a) Written Description rejection has been withdrawn in light of Applicant’s amendments to the claims, and for providing a breeding history in the Specification.
The text of those sections of Title 35, U.S. Code, not included in this action, can be found in a prior Office action.
Claim Objections
Claims 6 and 15 remain objected to because of the following informalities:
In regard to claim 6, for proper antecedence, the second recitation of “a transgene” in line 3 should be re-written as ---the transgene--- as it refers back to the previously recited “a transgene”.
In regard to claim 15, for proper antecedence, the second recitation of “a transgene” in line 6 should be re-written as ---the transgene--- as it refers back to the previously recited “a transgene”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claims 1-6 and 8-20 are rejected under 35 U.S.C. 103 as being unpatentable over Goodwin (Goodwin, W., Patent No.: US 8,492,620 B1; Date of Patent: Jul. 23, 2013; included on IDS) in view of Delzer (Delzer, B., Patent No.: US 8,507,769 B1; Date of Patent: Aug. 13, 2013; included on IDS).
The amendment to the Specification dated 05/05/2026 discloses that corn inbred line BGAA3603 of the instant Application was developed from Syngenta inbred lines NPFA4824 and NPAA3676 via the breeding history outlined below.
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Although the instant Specification does not disclose which of NPFA4824 and NPAA3676 is the recurrent parent and which is the donor parent, a comparison of traits outlined in the table below shows the similarity of every available trait between variety NPAA3676 and instant variety BGAA3603. Due to the similarity between the two varieties, variety NPAA3676 is deduced to be the recurrent (female) parent recited in the breeding history for instant variety BGAA3603.
NPFA4824
NPAA3676
BGAA3603
Type
Dent
Dent
Dent
Maturity Group
4
3
3
Hybrid Relative Maturity
99
98
90-102
Area of Adaptation
West and Central
Broadly Adapted
Northern Corn Belt
90-100 RM Zone
HU to 50% silk from planting
1327.7
1275.2
1287.4
HU to 50% pollen
shed from planting
1333
1312.3
1337.9
plant height
245.2
236.9cm
212.4cm
anther color
yellow
yellow
yellow
glume color
green
green
green
silk color
yellow with pink
red
red
cob color
red
red
red
The instant Specification is also silent on the trait(s) passed on by donor parent NPFA4824. However, Table 1, #4 Plant Disease Traits (Delzer, B., Patent No.: US 8,507,769 B1; Date of Patent: Aug. 13, 2013; Specification, columns 27 and 28; see table below) shows that NPFA4824 is resistant to both Eye Spot and Southern Corn Leaf Blight (SCLB) (8 – few scattered lesions, 5-10% of leaf area).
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Whereas, recurrent parent NPAA3676 is rated as moderately susceptible to both Eye Spot and Southern Corn Leaf Blight (SCLB) (4 and 5 – highly abundant lesions, >50% of leaf area) (Goodwin 2013, Specification, columns 27 and 28, Table 1, #4 Plant Disease Traits; see table below).
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Thus, it is deduced that the trait(s) passed on to maize variety BGAA3603 from donor parent NPFA4824 is resistance to the fungal disease(s) Eye Spot and/or Southern Corn Leaf Blight (SCLB).
Claim 1 is drawn to a seed of maize BGAA3603, wherein representative seed of said maize variety BGAA3603 has been deposited under ATCC Accession Number PTA-127673.
Goodwin (2013) teaches and claims a seed of the maize plant NPAA3676, wherein representative seed of said plant having been deposited under ATCC Accession Number PTA-13367 (entire Specification; claim 1).
Goodwin (2013) further teaches that “[a]ny breeding methods using the maize variety NPAA3676, and its progeny are part of this invention” (column 11, lines 65-66); and “[a]ll plants and plant cells produced using maize variety NPAA3676 are encompassed within the present invention, which also encompasses the corn variety used in crosses with other, different, corn varieties to produce corn hybrid seeds and hybrid plants and the grain produced on the hybrid plant. This invention includes progeny plants and plant cells, which upon growth and differentiation produce corn plants having the physiological and morphological characteristics of the maize variety NPAA36 when grown in the same environmental conditions” (column 12, lines 27-36).
Instant maize BGAA3603 is the progeny of maize variety NPAA3676 and also comprises physiological and morphological characteristics of the maize variety NPAA3676. Thus, Goodwin (2013) teaches a seed of maize variety BGAA3603, except for the trait of resistance to the fungal disease(s) Eye Spot and/or Southern Corn Leaf Blight (SCLB) passed on from donor parent NPFA4824.
Delzer teaches variety corn line NPFA4824, which according to Table 1, #4 Plant Disease Traits (Delzer, Specification, columns 27 and 28; see table above), NPFA4824 is resistant to both Eye Spot and Southern Corn Leaf Blight (SCLB) (8 – few scattered lesions, 5-10% of leaf area).
Both Goodwin (2013) and Delzer teach that nucleotide sequences that confer disease resistance can be introduced and/or transformed into the inbred line, including a nucleotide sequence conferring resistance to Southern corn leaf blight (Goodwin 2013, column 19, lines 11-22; Delzer, column 19, lines 16-27).
At the time the instant application was filed, it would have been obvious and within the scope of one of ordinary skill in the art to introgress Eye Spot and/or Southern Corn Leaf Blight (SCLB) resistance into maize BGAA3603 to arrive at a transgene conversion of maize BGAA3603 which would have resistance to Eye Spot and/or Southern Corn Leaf Blight (SCLB). One would have been motivated to introgress the Eye Spot and/or Southern Corn Leaf Blight (SCLB) resistance because both Goodwin (2013) and Delzer teach that additional traits of interest useful to the invention include disease resistance, specifically Southern corn leaf blight (Goodwin 2013 and Delzer, page 32, lines 18-26). Goodwin (2013) teaches that backcrossing is often employed to introduce a desired trait into a recurrent parent. A plant with the desired trait or locus is crossed into a recurrent maize parent usually in one or more backcrosses. If markers are employed to assist in selection of progeny that have the desired trait and recurrent parent background genetics, then the number of backcrosses needed to recover the recurrent parent with the desired trait or locus can be relatively few (column 14, lines 33-42). Therefore, the instant application using 1 backcross falls within the explicit instructions of Goodwin(2013) in the prior art.
There was ample motivation for one of ordinary skill in the art to introgress Eye Spot and/or Southern Corn Leaf Blight (SCLB) resistance taught by Delzer into the maize variety taught by Goodwin (2013). The result of this introgression would have been indistinguishable from the instantly claimed maize BGAA3603, and it would have been an obvious species that falls within the genus of plants of maize variety NPAA3676 further comprising a single locus conversion.
In regard to claims 2-5, Goodwin (2013) teaches and claims a maize plant NPAA3676, a plant part of the maize plant, wherein said plant part is a pollen grain, a protoplast, a cell, a tassel, an anther, or an ovule (i.e., a maize BGAA3603; a plant part of maize BGAA3603, wherein said plant part is a pollen grain, a silk, a protoplast, a cell, a tassel, an anther, or an ovule; a maize seed produced on said maize plant) (Goodwin 2013, column 9, lines 23-47; claims 2-4).
In regard to claim 6, Goodwin (2013) teaches and claims a maize plant having all the physiological and morphological characteristics of inbred plant NPAA3676, wherein said plant comprises a desired trait selected from the group consisting of waxy starch, male sterility or restoration of male fertility, modified carbohydrate metabolism, modified protein metabolism and modified fatty acid metabolism, altered starch, thermotolerant amylase, herbicide tolerance and/or resistance; insect or nematode tolerance and/or resistance, bacterial disease resistance, fungal disease resistance, and viral disease resistance; wherein said desired trait is conferred by a transgene (i.e., a maize plant having the physiological and morphological characteristics of the plant according to claim 2 and further comprising a transgene, wherein the transgene is selected from the group consisting of water stress resistance, waxy starch, male sterility or restoration of male fertility, modified carbohydrate metabolism, modified protein metabolism, modified fatty acid metabolism, altered starch, thermotolerant amylase, herbicide resistance, insect resistance, nematode resistance, bacterial disease resistance, fungal disease resistance, and viral disease resistance) (Goodwin 2013, column 3, lines 38-51; claims 13-15).
In regard to claim 8, Goodwin (2013) teaches a maize plant having all the physiological and morphological characteristics of inbred plant NPAA3676, wherein the maize plant can comprise a genome which further comprises at least one transgene and/or the maize plant can exhibit a trait conferred by a transgene (i.e., a converted seed, plant, plant part or plant cell of maize variety BGAA3603, wherein the converted seed, plant, plant part or plant cell comprises a transgene conversion, and wherein the plant or a plant grown from the converted seed, plant part or plant cell comprises the transgene conversion and otherwise comprises the phenotypic characteristics of maize variety BGAA3603 when grown under the same environmental conditions) (Goodwin 2013, column 3, lines 38-45).
In regard to claims 9-11, Goodwin (2013) teaches and claims a process for producing hybrid maize seed, said process comprising crossing a plant of the maize inbred line NPAA3676 with a different maize plant; a method for producing maize seed comprising growing said plant until seed is produced, harvesting the seed; and a maize plant or plant part produced by growing the hybrid maize seed (i.e., a process for producing maize seed, said process comprising crossing the maize plant with a different maize plant, and harvesting the seed; an F1 maize seed produced by the process of claim 9; an F1 maize plant produced by germinating the seed of claim 10) (Goodwin 2013, column 2, lines 54-59; claims 6-7, and 9).
In regard to claim 12, Goodwin (2013) teaches a number of well-known methods can be employed to identify the genotype of a maize plant; a marker profile produced with any of the locus identifying systems known in the industry will identify a particular allele at a particular locus. An F1 hybrid made from the inbred of this invention will comprise a marker profile of the sum of both of the profiles of its inbred parents. Accordingly, some embodiments of the present invention provide an inbred or hybrid plant, plant part thereof, including but not limited to a seed or an embryo, and/or a cell thereof having the allele marker profile of the inbred plant (i.e., A method of producing a genetic marker profile comprising extracting nucleic acids from the seed or the plant germinated from said seed and genotyping said nucleic acids at one or more genetic loci, thereby producing a genetic marker profile) (Goodwin 2013, column 24, lines 58-67, and column 25, lines 1-9).
In regard to claims 13 and 14, Goodwin (2013) teaches a method of introducing traits (i.e., plant breeding) can be done with fewer back crossing events if the trait and/or the genotype is selected for or identified through the use of markers. SSR, microsatellites, single nucleotide polymorphisms (SNPs) decrease the amount of breeding time required to locate a line with the desired trait or traits; a method for developing a maize plant in a maize plant breeding program, comprising applying plant breeding techniques comprising recurrent selection, backcrossing, pedigree breeding, marker enhanced selection, or haploid/double haploid production, wherein application of said techniques results in development of a maize plant (i.e., a method of plant breeding comprising a) isolating nucleic acids from the seed, b) identifying one or more polymorphisms from the isolated nucleic acids, and c) selecting a plant obtained from said seed having said one or more polymorphisms, wherein the plant is used in a plant breeding method; a method of plant breeding comprising a) isolating nucleic acids from the plant, b) identifying one or more polymorphisms from the isolated nucleic acids, and c) selecting a plant having said one or more polymorphisms, wherein the plant is used in a plant breeding method) (Goodwin 2013, column 16, lines 12-18).
In regard to claims 15 and 16, Goodwin (2013) teaches and claims a process of introducing a desired heritable trait into maize plant NPAA3676 comprising: (a) crossing NPAA3676 plants grown from NPAA3676 seed with plants of another maize plant that comprise a desired trait to produce hybrid progeny plants, (b) selecting hybrid progeny plants that have the desired trait to produce selected hybrid progeny plants; (c) crossing the selected progeny plants with the NPAA3676 plants to produce backcross progeny plants; (d) selecting for backcross progeny plants that have the desired trait to produce selected backcross progeny plants; and (e) repeating steps (c) and (d) at least three or more times to produce backcross progeny plants that comprise the desired trait and all of the physiological and morphological characteristics of maize inbred plant NPAA3676 when grown in the same environmental conditions; a plant produced by this process; wherein the said trait is conferred by a transgene (i.e., a process of introducing an additional trait into maize plant BGAA3603 comprising: (a) crossing BGAA3603 plants grown from BGAA3603 seeds with plants of another maize variety that comprise transgene to produce hybrid progeny plants, (b) selecting hybrid progeny plants that have the transgene to produce selected hybrid progeny plants; (c) crossing the selected progeny plants with the BGAA3603 plants to produce backcross progeny plants; (d) selecting for backcross progeny plants that have the additional trait to produce selected backcross progeny plants; and (e) repeating steps (c) and (d) at least three or more times to produce backcross progeny plants that comprise the additional trait and all of the physiological and morphological characteristics of maize inbred plant BGAA3603 when grown in the same environmental conditions; a plant produced by this process) (Goodwin 2013, column 3, lines 7-22 and lines 42-45; claims 11 and 12).
In regard to claim 17, Goodwin (2013) teaches and claims methods for producing other maize breeding lines derived from the corn inbred of this invention by crossing the maize inbred plant NPAA3676 with a second maize plant and growing the progeny seed to yield an inbred NPAA3676-derived maize plant; producing a maize plant derived from the inbred plant NPAA3676, the method comprising the steps of: (a) growing a hybrid progeny plant wherein the maize variety of this invention is a parent (b) crossing the hybrid progeny plant with itself or a different plant to produce a seed of a progeny plant; (c) growing the progeny plant from said seed and crossing the progeny plant with itself or a different plant; and (d) repeating steps (c) for an additional generation to produce a maize plant derived from the inbred plant NPAA3676. (i.e., a method of producing a maize plant derived from the inbred plant BGAA3603, the method comprising the steps of (a) growing the plant of claim 11; (b) crossing said plant with itself or a different plant to produce a seed of a progeny plant; (c) repeating step (b) at least one or more times; and (d) growing said progeny plant from said seed and crossing the progeny plant with itself or a different plant to produce a maize plant derived from the inbred plant BGAA3603) (Goodwin 2013, column 14, lines 3-18; claim 16).
In regard to claim 18, Goodwin (2013) teaches a method for developing a maize plant in a maize plant breeding program, comprising applying plant breeding techniques comprising recurrent selection, backcrossing, pedigree breeding, marker enhanced selection, haploid/dihaploid production, or transformation to the maize plant of this invention, or its parts, wherein application of said techniques results in development of a maize plant (i.e., a method for developing a second maize variety in a maize plant breeding program, comprising applying plant breeding techniques, wherein said techniques comprise recurrent selection, backcrossing, pedigree breeding, marker enhanced selection, haploid/dihaploid production, or transformation to the maize plant of claim 11, wherein application of said techniques results in development of a second maize variety) (Goodwin 2013, columns 3 and 4, lines 63-3; claim 17).
In regard to claim 19, Goodwin (2013) teaches and claims a method of producing a commodity plant product comprising growing a plant from the seed, or a part thereof, and producing said commodity plant product comprising protein concentrate, protein isolate, starch, meal, flour or oil therefrom (i.e., a method of producing a commodity plant product comprising growing a plant from the seed, or a part thereof, and producing said commodity plant product comprising protein concentrate, protein isolate, starch, meal, flour or oil therefrom) (Goodwin 2013, column 4, lines 4-11; claim 18).
In regard to claim 20, Goodwin (2013) teaches that inbred development can be accomplished by haploid/doubled haploid production. The haploid/doubled haploid process of developing inbreds starts with the induction of a haploid by using KWS inducers lines, Krasnador inducers lines, or stock six inducer lines. The haploid cell is then doubled, and the doubled haploid plant is produced. Sometimes this doubled haploid can be used as an inbred but sometimes it is further self-pollinated to finish the inbred development (i.e., a method of producing a maize plant with doubled haploid chromosomes from the maize BGAA3603 the method comprising: (a) crossing the plant of claim 11 with an inducer maize plant to produce a progeny with haploid chromosomes; and (b) doubling the haploid chromosomes in the progeny to produce a maize plant with doubled haploid chromosomes) (Goodwin 2013, columns 11 and 12, lines 65-10).
Response to Applicant’s Arguments
Applicant's arguments filed 05/05/2026 have been fully considered but they are not persuasive.
Applicant argues that it would be impossible to predict the genotype and combination of traits produced by the sexual recombination of gametes from NPFA4824 and NPAA3676. For example, BGAA3603 is unexpectedly well adapted to the Northern Corn Belt. Also, the plant height of BGAA3603 is unexpectedly shorter that either NPFA4824 and NPAA3676. The results of the unique combination of gametes that joined to produce BGAA3603 and created a new individual corn plant which never existed before and could not be predicted or created again. The full genotype and phenotype are exemplified by the seed deposited as PTA-127673 reflect a plant which is different than either NPFA4824 or NPAA3676.
The Examiner respectfully disagrees. Both Goodwin (2013) and Delzer teach that maize plant breeding is a process to develop improved maize germplasm in an inbred or hybrid plant. Plant breeding begins with the analysis and definition of problems and weaknesses of the current germplasm, the establishment of program goals, and the definition of specific breeding objectives. The next step is selection of germplasm that possess the traits to meet the program goals. The aim is to combine in a single variety an improved combination of desirable traits from the parental germplasm. These important traits may include, for example, higher yield, resistance to diseases, fungus, bacteria and insects, better stems and roots, tolerance to drought and heat, improved nutritional quality, and better agronomic characteristics (Goodwin 2013, column 1, lines 51-62; Delzer, column 1, lines 51-62).
Based on the teachings of Goodwin (2013) and Delzer, the breeding of variety NPAA3676 as the recurrent (female) parent and NPFA4824 as the donor parent would result in a unique combination of desirable traits from the parental germplasm, which would not be unexpected.
Non-Statutory Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 8-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 8,492,620 B1; issued on Jul. 23, 2013 in view of Patent No. US 8,507,769 B1; issued on Aug. 13, 2013.
The claim language is nearly identical except for the name of the varieties. The analysis for obviousness was set forth, above, in the rejection under 35 USC 103.
Response to Applicant’s Arguments
Applicant's arguments filed 05/05/2026 have been fully considered but they are not persuasive.
Applicant argues that BGAA3603 is a new corn plant with a new combination of genes and traits which have never occurred before.
The Examiner respectfully disagrees. Goodwin (2013) states that “[a]ny breeding methods using the maize variety NPAA3676, and its progeny are part of this invention” (column 11, lines 65-66); and “[a]ll plants and plant cells produced using maize variety NPAA3676 are encompassed within the present invention, which also encompasses the corn variety used in crosses with other, different, corn varieties to produce corn hybrid seeds and hybrid plants and the grain produced on the hybrid plant. This invention includes progeny plants and plant cells, which upon growth and differentiation produce corn plants having the physiological and morphological characteristics of the maize variety NPAA36 when grown in the same environmental conditions” (column 12, lines 27-36).
Additionally, Delzer states that “any breeding methods using the inbred corn line NPFA4824 or it progeny are part of this invention. Such methods can include, but are not limited to, marker assisted breeding, selection, selfing, backcrossing, hybrid production, and crosses to populations. All plants and plant cells produced using maize variety NPFA4824 are encompassed within the present invention, which also encompasses the corn variety used in crosses with other, different, corn varieties to produce corn hybrid seeds and hybrid plants and the grain produced on the hybrid plant. This invention includes progeny plants and plant cells, which upon growth and differentiation produce corn plants having the physiological and morphological characteristics of the maize variety NPFA4824 when grown in the same environmental conditions” (column 12, lines 26-41).
Thus, instant maize BGAA3603 clearly falls under the purview of U.S. Patent No. US 8,492,620 B1 (Goodwin 2013) in view of Patent No. US 8,507,769 B1 (Delzer).
Summary
No claim is allowed.
Correspondence
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/CHRISTINA L MEADOWS/Examiner, Art Unit 1663
/Amjad Abraham/ SPE, Art Unit 1663
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