DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 30 April 2026 has been entered.
Claims 1-6 and 8-20 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The objection to the specification is withdrawn in light of Applicant’s amendment.
The objection to claims 14 and 18 because of informalities is withdrawn in light of Applicant’s amendment to the claims.
The rejection of claims 1-20 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bhatnagar et al (2021, US 10,905,068) taken with the evidence of each of Popi (2009, US 7,473,826), Page (2016, US 9,313,970), Popi (2011, US 7,872,183), Page (2011, US 8,035,006), Popi (2012, US 8,324,476), Johnson (2007, US 7,211,717), and Page (2015, US 8,969,677) is withdrawn in light of Applicant’s amendment to the specification.
The rejection of claims 1-20 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Fangl et al (2020, US 10,653,096) taken with the evidence of each of Popi (2009, US 7,473,826), Page (2016, US 9,313,970), Popi (2011, US 7,872,183), Page (2011, US 8,035,006), Popi (2012, US 8,324,476), Johnson (2007, US 7,211,717), and Page (2015, US 8,969,677) is withdrawn in light of Applicant’s amendment to the specification.
The rejection of claims 1-20 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Miller (2010, US 7,642,427) taken with the evidence of each of Popi (2009, US 7,473,826), Page (2016, US 9,313,970), Popi (2011, US 7,872,183), Page (2011, US 8,035,006), Popi (2012, US 8,324,476), Johnson (2007, US 7,211,717), and Page (2015, US 8,969,677) is withdrawn in light of Applicant’s amendment to the specification.
The rejection of claims 1-20 on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 7,642,427 taken with the evidence of each of Popi (2009, US 7,473,826), Page (2016, US 9,313,970), Popi (2011, US 7,872,183), Page (2011, US 8,035,006), Popi (2012, US 8,324,476), Johnson (2007, US 7,211,717), and Page (2015, US 8,969,677) is withdrawn in light of Applicant’s amendment to the specification.
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 the second paragraph of 35 U.S.C. 112:
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.
Claims 6, 8, 12, 14 and 20 are 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.
The rejection is modified from the rejection set forth in the Office action mailed 3 February 2026. Applicant’s arguments filed 30 April 2026 have been fully considered but they are not persuasive.
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 a desired trait”. A plant cannot have both a desired trait and have all of the physiological and morphological characteristics of BDAX4615. The former is excluded by the latter, and former means that the plant does not have all of the physiological and morphological characteristics of BDAX4615. Thus, the metes and bounds of the claim are unclear.
Claim 8 is indefinite in its recitation of “A converted seed, plant, plant part or plant cell of maize line BDAX4615, representative seed of the maize line BDAX4615 having been deposited under ATCC accession number PTA 127494, wherein the converted seed, plant, plant part or plant cell comprises a transgene conversion …”. It is not clear what a transgene conversion is. One possibility is that it is a single locus conversion that comprises a transgene; a contradictory possibility is that it is conversion of one transgene to another.
Claim 12 lacks antecedent basis for the limitation “the plant germinated from said seed”. The seed of claim 10 is a genus of F1 progeny of the plant of claim 2, encompassing seeds in which the second parent is any other maize plant. Plants grown from the seed encompass those of a wide range of genotypes. Because there is not just one type of seed encompassed by claim 10, there is not just one possible plant that can be grown from the seed of claim 10.
Claims 14 lacks antecedent basis for the limitation “the plant” in line 4. There are two different plants recited previously in the claim, one in line 2 and one in line 3. If the latter is intended, it is suggested that “wherein the plant” in line 4 be replaced with --wherein the selected plant--.
Claim 20 lacks antecedent basis for the limitation “the maize inbred line BDAX461”.
Response to Arguments
Applicant urges that claims 6, 8, 12, and 14 are amended (response pg 1).
This is not found persuasive because the amendments did not address these rejections, or, in the case of claim 8, created a new one.
Applicant urges, in response to the lack of antecedent basis rejection of claim 20, that Table1 has been amended (response pg 2).
This is not found persuasive because the rejection was made because of a lack of antecedent basis in the claim, not the specification.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Claim 16 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 written description requirement. The claims contain subject matter that 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.
Due to Applicant’s amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 3 February 2026. Applicant’s arguments filed 30 April 2026 have been fully considered but they are not persuasive.
Claim 16 is drawn to a plant produced by the method of claim 15. The method of claim 15 produces a plant that comprises an additional trait and otherwise all of the physiological and morphological characteristics of maize inbred plant BDAX4615.
There is no limit to the number of additional traits that can be in the plant of claim 16. There is also no limit to the number of traits additional that can be in the plant of claim 16.The claim reads on a plant that differs from an BDAX4615 plant in any number of physiological and morphological characteristics.
The specification describes no structural features that distinguish a maize plant that belongs to the genus of plants that differ from an BDAX4615 plant in any number of physiological and morphological characteristics from other maize plants.
Hence, Applicant has not, in fact, described the full scope of plants that comprise an additional trait and otherwise all of the physiological and morphological characteristics of maize inbred plant BDAX4615, 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
Applicant urges that part A is addressed by amendments to Table 1 (response pg 2).
This is not found persuasive because that amendment does not address this remaining portion of the part A rejection. A plant with a desired trait and otherwise all of the physiological and morphological characteristics of BDAX4615 is not required to have any physiological and morphological characteristics of BDAX4615; every trait may be a desired trait that differs from the physiological and morphological characteristics of BDAX4615.
Part B of the previous rejection was overcome by Applicant’s amendment of the specification.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or 35 U.S.C. 112(pre-AIA ), fourth paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Due to Applicant’s amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 3 February 2026. Applicant’s arguments filed 30 April 2026 have been fully considered but they are not persuasive.
Parent claim 2 is drawn to a plant of maize variety BDAX4615. Dependent claim 6 is drawn to a plant having all of the physiological and morphological characteristics of the plant of claim 2 and further comprising a desired trait. Because the plant of claim 6 further comprises a desired trait it does not have all of the physiological and morphological characteristics of the plant of claim 2. The claim thus fails to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Arguments
Applicant urges that claim 6 is amended (response pg 2).
This is not found persuasive because the amendment did not overcome this rejection.
Claims 1-5, 8-11, 13, 15 and 17-19 are allowed.
Claims 8, 12, 14 and 20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
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
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