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 .
DETAILED ACTION
Election/Restriction
1. Applicant’s election with traverse of Group I, claims 1, 2, 29, 41, 42, 50, 54, 55, 58; SEQ ID NO: 10; and species corn event Zm_CSM63715 in the papers filed January 26, 2026 is acknowledged.
Applicant traverses regarding claim 57 which is cancelled but its features are included in claim 58 which is dependent product -by-process claim (response, page 12). Applicant’s arguments are carefully considered and are deemed to be persuasive.
Claims 1, 2, 29, 41, 42, 50, 54, 55, 58 and newly added claims 98-107 are pending. Claims 3-28, 30-40, 43-49, 51-53, 56-57 and 59-97 are cancelled by the Applicant. Newly added claims 98, 99 and 101-105 fall within the scope of the elected invention and are thus included in the present examination. Newly added claims 100 and 106-107 are directed to non-elected subject matter were previously restricted into different Group or Groups (see pages 2-3, 10-11 of restriction/election mailed in the papers of December 23, 2025) are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Accordingly Claims 1, 2, 29, 41, 42, 50, 54, 55, 58 and newly added claims 98, 99 and 101-105 in conjunction with the elected SEQ ID NO: 10; and species corn event Zm_CSM63715 are examined on merits in the present examination. This restriction is made Final. It is noted that SEQ ID NO: 10 is a synthetic construct that does not exist in nature.
Applicant are reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Information Disclosure Statement
2. Initialed and dated copies of Applicant's IDS form 1449 filed in the papers of 04/17/2024, 06/11/2024 and 07/02/2024 are attached to the instant Office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner
The listing of references in the specification (see pages 218-221) 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
3. Claims 1, 50, 54, 58 and 104 are objected to because of the following informalities:
Claims 1 and 50 are objected for having non-elected subject matter. Non-elected subject matter is SEQ ID NOs: 1-9.
In claim 54, it is suggested to change the recitation (lines 2-5) “diphenylethers, N-
phenylphthalimides, oxadiazoles, oxazolidinediones, phenylpyrazoles, pyrimidinediones,
thiadiazoles, triazolinones, benzoxazinone derivatives, other PPO herbicides, and combinations of any thereof” to ---diphenylether, an N-phenylphthalimides, an oxadiazole, an oxazolidinedione, a phenylpyrazole, a pyrimidinedione, a thiadiazole, a triazolinone, a benzoxazinone derivative, an other PPO herbicide or any combinations thereof.--- for proper antecedent basis in dependent claim 55 and over all clarity of the claimed subject matter.
In claim 58, it is suggested to insert the recitation ---, a representative sample of seed
comprising the event having been deposited as ATCC Accession No. PTA-127361--- at the end of claim for the clarity of the claimed subject matter.
In claim 104, it is suggested to insert the recitation ---, a representative sample of seed
comprising the event having been deposited as ATCC Accession No. PTA-127361--- at the end of claim for the clarity of the claimed subject matter.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
4. Claim 50 is rejected under 35 U.S.C. 112(b), 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.
Claim 50 is rejected under 35 U.S.C. 112(b), as being indefinite for being dependent on
the cancelled claim 35. As the base claim 35 from which claim 50 depends has been cancelled, the scope of claim 50 cannot be determined. See MPEP 2260.01 Dependent Claims [R-07.2015].
Claim Rejections - 35 USC § 112
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.
5. Claims 2, 29, 58, 98, 103 and 104 are rejected under 35 U.S.C. 112(a), 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.
Claims require a representative sample of corn seed comprising event Zm_CSM63715 deposited with the ATCC as ATCC Accession No. PTA-127361.
Since the seed claimed is essential to the claimed invention, it must be obtainable by a reproducible method set forth in the specification or otherwise be readily available to the public. If a seed is not so obtainable or available, a deposit thereof may satisfy the requirements of 35 U.S.C. 112. The specification does not disclose a reproducible process to obtain the exact same seed in each occurrence and it is not apparent if such a seed is readily available to the public. If the deposit of the seed is made under the terms of the Budapest Treaty, then an affidavit or declaration by the Applicant, or a statement by an attorney of record over his or her signature and registration number, stating the seed have been deposited under the Budapest Treaty and that the seed will be irrevocably, and without restriction or condition, released to the public upon the issuance of a patent would satisfy the deposit requirement made herein. A minimum deposit of 625 (25 packets of 25 seeds each) seeds is considered sufficient in the ordinary case to assure availability through the period for which a deposit must be maintained.
If the deposit has not been made under the Budapest Treaty, then in order to certify that the deposit meets the criteria set forth in 37 CFR 1.801-1.809, Applicant may provide assurance of compliance by an affidavit or declaration, or by a statement by an attorney of record over his or her signature and registration number showing that
(a) during the pendency of the application, access to the invention will be afforded to the Commissioner upon request;
(b) all restrictions upon availability to the public will be irrevocably removed upon granting of the patent;
(c) the deposit will be maintained in a public depository for a period of 30 years or 5 years after the last request or for the enforceable life of the patent, whichever is longer;
(d) the viability of the biological material at the time of deposit will be tested (see 37 CFR 1.807); and
(e) the deposit will be replaced if it should ever become unviable.
It is recognized that Applicant has already deposited corn seed comprising event MON87403 with the ATCC under the terms of the Budapest Treaty, however the deposit has not been perfected (see page 138, paragraph [0138]). For example, items (d) and (e) regarding viability and testing of the biological material is not clearly stated.
A statement, affidavit or declaration by Applicant, or a statement by an attorney of record over his or her signature and registration number, or someone empowered to make such a statement, stating that the instant invention will comply with all requirements under 37 CFR 1.801-1.809, including missing statements (d) and (e), would satisfy the deposit requirement made herein. Additionally, it is noted the original receipt of deposit from ATCC is also missing in the records. It may be noted that claims 58 and 104 are also included in this rejection because it recites event Zm_CSM63715, comprising full length insert of SEQ ID NO: 10 and is present in the deposited seed ((see page 138, paragraph [0138]).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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.
6. Claims 98 and 104 are rejected under 35 U.S.C. 102(a)(1)as being anticipated by Jakel et al. (US Patent NO. 6,610,867 B2, Issued August 26, 2003).
Claim 98 is broadly drawn to a or a commodity product produced from a corn plant, seed, plant part, or progeny plant comprising corn event Zm_CSM63715.
Claim interpretation: the recitation “a commodity product produced therefrom” in claim 98 reads on corn oil (a commodity product) lacking corn genomic event Zm_CSM63715.
Jakel et al. disclose corn oil (food) prepared from corn seeds. See in particular, abstract; table 1 at column 6; examples 1-8 at columns 18-38.
It may be noted that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." The instantly claimed a commodity product reads on corn oil which does not necessarily contain genetic material (DNA or RNA), one of skill in the art would not be able to distinguish the structure of Jakel et al. oil from the commodity product (e.g. oil) prepared from the instantly claimed corn plant, seed, plant part, or progeny plant comprising corn event Zm_CSM63715.
Claim 104 is broadly drawn to a corn plant part, plant seed or plant cell derived from corn progeny plant comprising corn event Zm_CSM63715.
Given meiotic segregation during the formation of male and female gametes, and genetic reassortment and recombination following pollination leading to seed production, the claims broadly read on an untransformed seed or a wild type seed of a transgenic progeny plant comprising corn event Zm_CSM63715 . The plant seed derived from transgenic progeny plant comprising corn event Zm_CSM63715 reads on a wild type corn seed.
Jakel et al. disclose corn seeds and oil derived therefrom. See in particular, abstract; table 1 at column 6; examples 1-8 at columns 18-38.
Accordingly, Jakel et al. anticipated the claimed invention.
Conclusion
7. Claims 2, 29, 58, 98, 103 and 104 are rejected. Claims 1, 41, 42, 50, 54, 55, 99, 101, 102 and 105 are objected ether being objected for claim informality issues or dependent on objected claim(s). The closest prior art (Evdokimov et al. (US Patent NO. 10,370,677 B2, issued Aug 6, 2019) disclose a nucleotide sequence as set forth in SEQ ID NO: 32 having 9.7% identity to full-length sequence of instant SEQ ID NO: 10. The closest prior art does not teach event corn event Zm_CSM63715 which comprises instant SEQ ID NO: 10.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VINOD KUMAR whose telephone number is (571)272-4445. The examiner can normally be reached on 8:30 am - 5.00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad A. Abraham can be reached on (571) 270-7058 The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA).
/VINOD KUMAR/Primary Examiner, Art Unit 1663