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 .
Claims
The amendments received on Mar. 25, 2026, have been entered. Claims 1-20 are pending and are examined in this Office Action.
Duty of Disclosure
Applicant is reminded of their “Duty of Disclosure, Candor, and Good Faith” (see 37 C.F.R. § 1.56 and MPEP § 2001). Information that would be considered pertinent to patentability includes: 1) any progeny, siblings, half-siblings, or other closely genetically related plants that are either co-pending applications or previously published or publicly disclosed, 2) if backcrossing was used in the breeding history, then the recurrent parent should be disclosed along with any publications or public disclosures of the recurrent parent, and what events/loci/transgenes/traits were donated from the non-recurrent parent along with any publications or public disclosures of the events/loci/transgenes/traits or of the donor parent line itself, 3) if the parental varieties were developed via backcrossing this should be disclosed along with the grandparents, including which grandparent was the recurrent parent along with any publications or public disclosures of the recurrent parent and what events/loci/transgenes/traits were donated from the non-recurrent parent, 4) any alternative designations, experimental names, tradenames, etc. for the instant plant, parent plants, and grandparent plants should be disclosed. All of this information is pertinent for patentability. If, for example, one of the parent plants is published but with a different name/designation, then the publication should be included in the IDS along with an explanation that the different name/designation is a synonym and how this plant is related to the instantly claimed plant.
It is noted that Applicant provided 15 co-pending applications and 10 issued patents on the IDS submitted on Feb. 20, 2026. It would have been helpful if Applicant had provided an explanation as to the relevance of these documents.
Objections and Rejections That Are Withdrawn
The objection to the specification is withdrawn in light of Applicant’s amendments to the claims.
The objections to claims 1, 4, 18, and 19 are withdrawn in light of Applicant’s amendments to the claims.
The rejections of claims 1-20 under 35 U.S.C. 112(b) for indefiniteness are withdrawn in light of Applicant’s amendments to the claims and the specification.
The rejection of claims 1-20 under 35 U.S.C. 112(a) for lack of enablement is withdrawn in light of Applicant’s amendments to the claims and their assurances that they will satisfy all conditions of 37 CFR. 1.801-1.809 (Resp 3).
The rejection of claims 1-3, 7-12, 15, and 17-20 under 35 U.S.C. 112(a) for inadequate written description is withdrawn in light of Applicant’s amendments to the claims.
The statutory double patenting rejection under 35 USC 101 is withdrawn in light of the declaration from Mark Hayes that was received on Feb. 20, 2026. The non-statutory double patenting rejection for claims 1-20 is addressed by filing a terminal disclaimer on Feb. 20, 2026, which was approved on Mar. 9, 2026.
Claim Objections
Claim 12 is objected to because of the following informalities:
Claim 12 includes “a site-specific recombination site” in a Markush grouping of traits, and this is not, technically, a trait. Applicant is advised to rewrite this portion of the claim to recite: - - … wherein the locus conversion introduces a site-specific recombination site or confers a trait selected from the group consisting of … - - followed by the list of traits.
Appropriate correction is requested.
Applicant asserts that they have amended claim 12 in order to advance prosecution, but the amendments received on Mar. 25, 2026, do not include any amendments to claim 12.
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.
Inadequate Written Description
Claims 4-6, 13, 14, and 16 are 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.
Claims 4-6 are not adequately described because the genus of seeds and plants encompassed by the claims is significantly more broad that the deposited line. The claims encompass seeds and plants that have had a transgene introduced. There is no limitation on how many transgenes can be introduced, and it is known that transgenes are often introduced via locus conversion.
Claims 13 and 14 are broadened because they allow for an introduction of an unlimited number of locus conversions.
Claim 16 is broadened because it allows for an unlimited number of edits to the genome.
As discussed, above, the genus of plants encompassed by a claim directed to soybeans with an unlimited number of locus conversions or transgenes is not adequately described. A gene edit can be a locus conversion or a transgene, so claim 16 is equally broad. For this reason claims 4-6, 13, 14, and 16 are not adequately described.
Applicant did not provide any arguments to rebut the rejections of claims 4-6. Applicant argues that claims 13, 14, and 16 have been amended in order to advance prosecution, however, none of the amendments address the issue of an unlimited number of locus conversions or edits to the genome.
Close Prior Art
In the prior art (10,939,649 B2; issued on Mar. 9, 2021), J. T. Mason teaches soybean cultivar 84372449 which share the majority of the traits with the instant variety (Spec 60-61; Mason cols. 6-7). Although both soybean varieties have triple herbicide resistances including glyphosate and glufosinate resistance, they differ in the third herbicide resistance: 2,4-D for the instant variety and isoxaflutole for Mason’s variety. They were also developed by breeding programs that utilized completely different germplasm (Spec 60; Mason col. 6).
Summary
No claim is 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 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.
Examiner’s Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHY KINGDON whose telephone number is (571)272-8784. The examiner can normally be reached M-F 9:00 - 5:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
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CATHY KINGDON
Primary Examiner
Art Unit 1663
/CATHY KINGDON/Primary Examiner, Art Unit 1663
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