DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1-20 are pending.
Claims 1-2, 6, 8, 15, and 20 are currently amended.
Claims 1-20 are examined on the merits.
Response to Arguments – Specification Amendment
The amendment filed 16 January 2026 has overcome the objection of record.
Claim Rejections - 35 USC § 112
Indefiniteness
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.
Claims 1-20 remain 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 that the inventor or a joint inventor, or for pre-AIA the applicant, regards as the invention. Dependent claims are included in all rejections.
Claims 1-2, 8, 15, 17, and 20 are indefinite in their recitation of “maize line HID2388”.
The specification states the following in regard to elite lines:
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Assuming that HID2388 is considered an “elite line,” it is unclear how homozygous a line must be to be considered “substantially homozygous.” Applicant has provided no statements on the record as to how the term “line should be interpreted when considering the scope of the claims. It is also noted that Table 1 in the specification is a “Variety Description” and not a line a description, so it is unclear how the descriptions in Table 1 are supposed to inform the interpretation of the claims. As such the metes and bounds of the claim cannot be determined.
Claim 6 is indefinite in its recitation of “A maize plant having all of the physiological and morphological characteristics of the plant according to claim 2 and further comprising an additional trait”. It is unclear how the plant can have all of the characteristics of the plant of claim 2 and further comprise an additional trait. For example, if the plant of claim 2 is not herbicide resistant but the plant in claim 6 further comprises an herbicide resistance gene, then the plant of claim 6 does not have all of the physiological and morphological characteristics of the plant according to claim 2. As such, the metes and bounds of the claim cannot be determined.
Claim 15 is indefinite in its recitation of “to produce backcross progeny plants that comprise the additional trait and all of the physiological and morphological characteristics of maize inbred plant HID2388”. A plant cannot have both an additional trait and have all of the physiological and morphological characteristics of maize inbred plant HID2388. The former is excluded by the latter, and former means that the plant does not have all of the physiological and morphological characteristics of maize inbred plant HID2388. Thus, the metes and bounds of the claim are unclear. In the third line from the bottom of the claim, it is suggested that the word “otherwise be added between the words “and” and “all” to overcome the rejection.
Response to Arguments – Indefiniteness
Applicant’s amendments have overcome some of the rejections of record. Rejections that have not been overcome are repeated above.
In regard to maintained rejections, Applicant's arguments filed 16 January 2026 have been fully considered but they are not persuasive.
Applicant urges that the claims no longer say variety.
This argument is not persuasive, because the word “line” also has unclear metes and bounds given the definition provided in the specification.
Lack of Written Description
The following is a quotation 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.
Claims 1-20 remain 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The instant claims are broadly drawn to plants and seeds of maize line HID2388, and plants and seed derived from said line, and methods of using said line.
As discussed, above, in the indefiniteness rejection and incorporated herein, the specification provides an unclear definition of “line” such that the metes and bounds of what maize plants would be covered by “maize line HID2388” are completely unclear.
Furthermore, the instant specification does not describe any embodiments of a plant produced by adding any number of trait conversions, mutations, variants, transgenes or added native traits to a plant of HID2388. Given that the underlying genetics can be dramatically changed with thousands of base changes, rearrangement, or substitutions in the genomic DNA, and that the phenotypic, physiological and morphological characteristics can be changed due to multiple changes in traits as a result of the mutations, variations, conversions, or transgenes, the genus of mutant plants encompassed by claims is not adequately described.
The specification describes no structural features that distinguish a maize plant that belongs to the genus of plants of “maize line HID2388” or “maize line HID2388” comprising a locus conversion or additional trait from other maize plants.
It is unclear what Applicant has reduced to practice within the scope of the claims, because Table 1 provides a variety description and not a line description.
Hence, Applicant has not, in fact, described the full scope of plants of “maize line HID2388” or plants of “maize line HID2388” comprising a locus conversion or additional trait, and the specification fails to provide an adequate written description of the claimed invention.
Therefore, given the lack of written description in the specification with regard to the structural and functional characteristics of the claimed compositions, Applicant does not appear to have been in possession of the claimed genus at the time this application was filed.
Response to Arguments - Lack of Written Description
Applicant's arguments filed 16 January 2026 have been fully considered but they are not persuasive.
Applicant's arguments filed 16 January 2026 have been fully considered but they are not persuasive.
Applicant urges that the claims no longer say variety.
This argument is not persuasive, because the word “line” also is not adequately described given the definition provided in the specification.
Conclusion
No claims are allowed. THIS ACTION IS MADE FINAL. 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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R KEOGH whose telephone number is (571)272-2960. The examiner can normally be reached M-Th 7-4:30, half day on Fridays.
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/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663