DETAILED ACTION
Claims 1-20 are pending.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The rejection of claims 1-20 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112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is withdrawn in light of Applicant’s amendment of the specification to state that the parents are nonpublic proprietary lines. This is interpreted as meaning that the parents have no other names and as meaning that neither parent was not produced by backcrossing a trait or transgenic event into another soybean variety in the prior art, as Applicant has a duty to disclose such information material to patentability.
The rejection of claims 5 and 16 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the subject matter that the inventor or a joint inventor, or for pre-AIA the applicant, regards as the invention is withdrawn in light of Applicant’s amendment to the claims.
The rejection of claims 1-20 under 35 U.S.C. 103(a) as being unpatentable over Moots et al (2019, US 10,271,496) in view of Mason (2021, US 11,058,087) is withdrawn in light of Applicant’s statement regarding the parents of the instantly claimed plant and the prior art plant. The interpretation presented in Paragraph 3# above applies here as well.
The rejection of claims 1-20 under 35 U.S.C. 103(a) as being unpatentable over Floyd (2021, US 10,952,391) in view of Mason (2021, US 11,058,087) is withdrawn in light of Applicant’s statement regarding the parents of the instantly claimed plant and the prior art plant. The interpretation presented in Paragraph 3# above applies here as well.
The rejection of claims 1-20 on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,271,496 in view of Mason (2021, US 11,058,087) is withdrawn in light of Applicant’s statement regarding the parents of the instantly claimed plant and the prior art plant. The interpretation presented in Paragraph 3# above applies here as well.
The rejection of claims 1-20 on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,952,391 in view of Mason (2021, US 11,058,087) is withdrawn in light of Applicant’s statement regarding the parents of the instantly claimed plant and the prior art plant. The interpretation presented in Paragraph 3# above applies here as well.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
The nonstatutory 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 nonstatutory 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 nonstatutory 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 nonstatutory 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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/519,124.
The rejection is repeated for the reasons of record as set forth in the Office action mailed 25 June 2025. Applicant presented no arguments regarding this rejection in the response filed 25 November 2025.
The claims are drawn to a plant and seed of soybean variety 01098096, the plant and seed further comprising a single locus conversion, and methods of breeding with it.
‘124 claims soybean variety 01098110, which, like the instantly claimed soybean variety, was produced by crossing BL3119A4-C0DNN with CP3614M4-TALNN, performing 2 rounds of backcrossing using BL3119A4-C0DNN as the recurrent parent, followed by 4 generations of selfing (¶16 in both applications).
01098110, like the instantly claimed soybean variety, has a relative maturity of 3.2, purple flowers, gray pubescence, imperfect black hila, brown pods, yellow, dull seed coats, a spherical flattened seed shape, yellow cotyledons, an ovate, green leaves, an indeterminate growth habit, resistance to soybean cyst nematode race 3, resistance to southern stem canker, resistance to brown stem rot, the rps1c Phytophthora resistance gene, the MON89788 glyphosate resistance event, the glufosinate resistance event A5547-127, and the MON87708 dicamba resistance event (Table 1 and the paragraph immediately following). ‘124 and the instant application report chloride sensitivity in different terms; as a plant that is moderately tolerant of chloride would be an excluder, these plants appear to match in chloride sensitivity. ‘124 is silent regarding the frog eye leaf spot tolerance of 01098110.
Soybean variety 01098110 and the instantly claimed soybean variety differ slightly in tolerances to Phytophthora and chloride and differ in canopy.
Soybean variety 01098110 and the instantly claimed soybean variety are obvious variants of BC2F4 progeny of a cross between BL3119A4-C0DNN and CP3614M4-TALNN. Selection of Phytophthora and chloride tolerances and canopy types are design choices.
The claims of ‘124 are identical to the instant claims, except for the name of the variety.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anne R. Kubelik, Ph.D., whose telephone number is (571) 272-0801. The examiner can normally be reached Monday through Friday, 9:00 am - 5:00 pm Eastern.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham, can be reached at (571) 270-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Anne Kubelik/Primary Examiner, Art Unit 1663