DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
2. Claims 1-17 and 19-23 are pending.
3. Claims 1-17 and 19-23 are examined herein.
4. Given Applicant’s amendments to the claims and the specification to recite the deposit information for the claimed peanut variety, and in view of the provided evidence that the deposit was made and accepted by ATCC, the rejections under 35 U.S.C. 112(a) for lack of enablement and under 35 U.S.C. 112(b) have been withdrawn.
5. With regard to the rejections under 35 U.S.C. 102 and 103, on March 20, 2026, Applicant submitted the Declarations of William D. Branch and Brent W. Marable. The Declarations were fully considered. The evidence submitted in the Declarations shows that peanut variety “Georgia-Val/HO” was not publicly available as of the filing date. Upon the consideration of said evidence, the rejections under 35 U.S.C. 102 and 103 have been withdrawn.
6. The objection to the specification is withdrawn in view of Applicant’s amendments to the disclosure to recite the deposit information.
7. The objections to the claim are withdrawn in view of Applicant’s amendments.
Drawings
8. Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee. Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
It is noted that on March 31, 2026, Applicant submitted a petition to accept color drawings. However, until the petition is granted, the Drawings will remain objected to.
Claim Rejections - 35 USC § 112(a)
9. 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.
Written Description
10. Claim 8, 11, 12, 17, and 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
This rejection has been modified in view of Applicant’s amendments to the clams. Applicant’s arguments submitted on March 20, 2026 were fully considered but they are not persuasive.
Applicant claims a progeny plant of unspecified generation, regenerated from the tissue culture obtained from peanut variety Georgia-Val/HO. Applicant claims a plant produced from the claimed variety by introducing a single locus conversion, including wherein said single locus conversion is introduced by backcrossing or genetic transformation. Applicant claims a progeny plant of an unspecified generation produced by crossing the plant of peanut variety Georgia-Val/HO with a second, unspecified plant.
Applicant describes variety Georgia-Val/HO as having been obtained from the initial cross between parental varieties Georgia-11J and Georgia-Valencia followed by pedigree selection (Example 1; Table A). Applicant describes the characteristics of Georgia-Val/HO in Tables 1-7.
Applicant does not describe the genus of plants derived from variety Georgia-Val/HO via tissue culture or locus conversion. Nor does Applicant describe the genus of progeny plants derived from the plant of Georgia-Val/HO by the breeding method of claim 19. The sole described species, Georgia-Val/HO is not sufficiently represented of the genera encompassed by the claims.
As one having ordinary skill in the art would recognize, regeneration of a plant from tissue-culture can cause mutations called somaclonal variations (see Jain (2001) Euphytica; Vol. 118; pp. 153-166). Tissue-culture can induce dramatic changes such as changes in chromosome number, changes in ploidy and rearrangements, alterations in nuclear and cytoplasmic genetic elements, point mutations, changes in DNA methylation, and altered sequence copy number (Jain, last paragraph on page 153 and paragraph bridging left and right columns on page 154). A plant produced by this method may not retain the characteristics of the plant from which it was derived. For example, Jain discloses plants having heavier tillering, slower growth rate, increased erectness, albino, altered leaf-shape, altered vigor (Jain, last paragraph on page 153). This means that claim 8, for example, encompasses a genus of plants that may differ from the plants of peanut variety Georgia-Val/HO by any number of morphological and physiological characteristics. Applicant has failed to describe any plants encompassed by that genus.
Applicant does not describe the genus of peanut plants produced by introducing a single locus conversion into the claimed peanut variety. The specification states as follows: “Single locus converted (conversion) plant: Plants developed by backcrossing and/or by genetic transformation, where essentially all of the desired morphological and physiological characteristics of a peanut variety are recovered in addition to the characteristics of the single locus transferred into the variety via the backcrossing technique” (page 11, lines 9-13). The specification does not clarify what the terms “essentially all” or “desired” mean. It is unclear which characteristics of variety Georgia-Val/HO are “desired” and which are not “desired,” for example, from among the characteristics of the claimed peanut variety listed in Tables. It is also unclear how many of the desired characteristics would be required to have “essentially all” of them.
As a result, the genus of peanut plants derived from peanut variety Georgia-Val/HO by introducing a single locus conversion via backcrossing could have morphological and physiological characteristics that differ dramatically from those of said variety. Applicant has failed to describe a representative number of plants thus produced. Even if the plant of peanut variety Georgia-Val/HO were described, it would not be sufficiently representative, because the claims encompass an undefined number of peanut plants with varying genotypes and phenotypes.
Moreover, claim 11 encompasses a progeny seed of the claimed peanut variety wherein progeny is not limited by filial generation. While the specification describes variety Georgia Val/HO and its F1 hybrid, given that the F1 will comprise half of the genetic material of said variety, a progeny plant of subsequent generations can comprise any number of characteristics that are substantially different from Georgia Val/HO. Similarly, a plant produced by the method of claim 19 may comprise any number of characteristics that differ from those of the deposited variety. Applicant has not described any progeny plants of Georgia Val/HO, and the single described species is not sufficiently representative of the vast genus encompassed by the claims.
These claims are “reach through” claims in which the Applicant has described a starting material and at least one method step, however, they have not described the resulting product, and the genus of products that can be produced by the recited method steps and materials is so large that one of skill in the art is not able to envision the members of the genus. (See Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920-23, 69 USPQ2d 1886, 1890-93 (Fed. Cir. 2004)).
See Vas-Cath Inc. v. Mahurkar 1991 (CA FC) 19 USPQ2d 1111, 1115, which teaches that the purpose of the written description is for the purpose of warning an innocent purchaser, or other person using a machine, of his infringement of the patent; and at the same time, of taking from the inventor the means of practicing upon the credulity or the fears of other persons, by pretending that his invention is more than what it really is, or different from its ostensible objects, that the patentee is required to distinguish his invention in his specification. In this case, there is no way that a practitioner would be able to determine if any particular peanut plant is infringing the instant claims, and therefore, the public has not been put on notice with a sufficient description of the claimed invention.
Response to Arguments
Applicant argues that the amendments to the claims to recite “progeny” plant overcome the rejection (page 11 of the Remarks). This is not found to be persuasive. Applicant’s amendments are acknowledged and the rejection has been modified accordingly. However, the amendments are not sufficient to obviate the rejection. For example, merely identifying the product-by-process plant of the instant claims as a “progeny” plant does not limit the scope of the claims to the described subject matter. This is because a progeny plant may still be of any filial generation and may comprise any number of morphological and physiological characteristics that differ from those of peanut variety Georgia-Val/HO. The rejection is maintained.
Conclusion
11. Claims 1-7, 9-10, 13-16, 19, and 21-23 are allowed.
12. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MYKOLA V KOVALENKO whose telephone number is (571)272-6921. The examiner can normally be reached Mon.-Fri. 9:00-5:30 PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRATISLAV STANKOVIC can be reached at (571)270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MYKOLA V. KOVALENKO/Primary Examiner, Art Unit 1662
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