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
Claims 1-25 are pending.
Claims 1-25 are examined herein.
The rejection to claims 12 and 14 under 35 USC 112(a) for failure to satisfy the written description requirement is withdrawn in view of Applicant’s amendments of the claims.
Claim Rejections - 35 USC § 112(a)
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.
Claim 8 remains 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant describes variety SHY-6S20-2286LN by its breeding history and the variety’s morphological and physiological characteristics. (Table 1 pp. 8-12).
Claim 8 is directed to a plant having all of the morphological and physiological characteristics of a corn plant of the SHY-6S20-2286LN variety. It is important to note that the claim does not require the plant to share any genetic basis with SHY-6S20-2286LN and as such the claimed genus encompasses plants having any genetic composition that exhibits the morphological and physiological characteristics of the claimed variety. This point is relevant because the specification does not describe any plants outside of SHY-6S20-2286LN having the required characteristics. The morphological and physiological characteristics of such a plant are not described anywhere in the specification, except for SHY-6S20-2286LN itself.
Given the breadth of the genus of plants encompassed by the claims, and the fact that the only plant that Applicant has described is that of corn variety SHY-6S20-2286LN, the instant claims are not adequately described and it is unclear whether at the time of filing Applicant was in possession of the invention as broadly claimed.
Response to Remarks
Applicant urges that the rejection to Claim 8 for failure to satisfy the written description requirement should be withdrawn because the claim has been amended to depend from Claim 2, which specifies that the plant for trait comparison is SHY-6S20-2286LN. (Remarks p. 7).
This is not found persuasive. As set forth in the rejection, the problem is that the plant of Claim 8 is limited only by the traits that it shares with the variety that is claimed in the other claims. The plant of Claim 8 encompasses plants with no direct genetic relationship with SHY-6S20-2286LN. The genus of such plants are not described by any breeding history, genetic description or seed deposit. As such, the claimed genus cannot be deemed to be adequately described.
Conclusion
Claims 8 is rejected.
Claims 1-7, 9-25 appear to be free of the prior art, given the failure of the prior art, to teach or reasonably suggest a sweet corn variety produced by the breeding methodology disclosed by Applicant and wherein said variety comprises all of the morphological and physiological characteristics of SHY-6S20-2286LN.
The closest prior art made of record is Hellewell (US 10194622 B1) which teach a sweet corn variety having similar characteristics relative to SHY-6S20-2286LN. However, the instant variety differs from the prior art in its complete genetic background and at least in its anther color.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES A LOGSDON whose telephone number is (571)270-0282. The examiner can normally be reached M-F 8:30 - 5:00 pm.
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, 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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/CHARLES LOGSDON/Primary Examiner, Art Unit 1662
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