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
Claims 1-2 and 4-26 are pending.
Claim 3 is newly canceled.
Claims 1-2, 5-6, 9, 11, 15-21 and 23-24 are newly amended.
Claims 1-2 and 4-26 are rejected.
Response to Applicant Arguments – Objections to the Specification
In response to Applicant’s arguments and amendments to the claims dated 03/11/2026 the objections to the specification of record are withdrawn.
Specifically, applicant’s amendment to the specification to change “predigree” to “pedigree” in paragraph 0222 overcomes the objection to the specification due to that typographical error and it is withdrawn.
Further, in response to applicant’s assertion that the specification and claims will be amended upon indication of allowable subject matter, to recite the deposit accession number when completed, the objection to the specification on this ground is withdrawn.
Response to Applicant Arguments - Claim Objections
In response to Applicant’s arguments and amendments to the claims dated 03/11/2026, the claim objections of record are withdrawn. The amendment to claim 18 requires new claim objection.
Claim Objections
Claim 18 is objected to because of the following informalities: in the second line of the claim “(e) repeating step (c) and (d)” should be amended to “(e) repeating steps (c) and (d)” to make “steps” plural which matches the new requirement that both steps (c) and (d) must be repeated. Appropriate correction is required.
Response to Applicant Arguments - 35 USC § 112 (Indefiniteness)
In response to applicant’s arguments amendments to the claims dated 03/11/2026 the indefiniteness rejections against claims 1-26 on the grounds of the lack of the deposit accession number in the claims, claim 5 on the grounds of two separate limitations on the cells of the tissue culture, claim 18 on the grounds of the linked nature of step (c) and (d) and claims 21-22 on the grounds of the use of the term “delayed shelf life” are withdrawn.
However, with respect to the indefiniteness rejections against claims 9, 11, 13, 15, 16, 18 and 21-22 due to dependence issues applicants amendments overcome the rejections against claims 9 and 16 but applicant’s amendments to the claims and arguments are not found to be persuasive and the rejections of record are maintained.
Specifically, applicant urges in the remarks dated 03/11/2026 that the amendments have corrected issues related to dependence and therefore the rejections should be withdrawn, however claims 11 and 13 are drawn to bean seeds produced by the methods of claims 9 and 11, respectively, but these claims are not drawn to methods. Claims 15, 18 and 21-22 share the same type of issue.
Applicant’s arguments with respect to the indefiniteness rejections on the grounds of indefinite dependence are not found to be persuasive.
Claim Rejections - 35 USC § 112 (Indefiniteness)
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.
This rejection is maintained for the reasons of record, because the amendments and remarks by Applicants in response to Office Action mailed on 12/12/2025, have been fully considered but not deemed persuasive. See above for the response to Applicant's remarks.
Claims 11, 13, 15, 18 and 21-22 remain 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 which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 11, 13, 15, 18 and 21-22 are indefinite. These dependent claims all share the same issue which relate to the claims on which they depend.
Claim 11 is indefinite in that it is drawn to “A bean seed produced by the method of claim 9”, however claim 9 is drawn to “A bean pod produced by the method of claim 8”. Therefore, because claim 9 is not drawn to a method, it is not clear what method claim 11 is referring to. Is it referring to claim 8 which is recited in claim 9 or is claim 11 meant to depend on some other claim? Given that the answer to this question is not clear, claim 11 is rejected as indefinite.
Claim 13 is indefinite in that it is drawn to “A bean seed produced by the method of claim 11”, however claim 11 is drawn to “A bean seed produced by the method of claim 11”. Therefore, because claim 11 is not drawn to a method it is not clear what method claim 13 is referring to. Is it referring to claim 8 which is recited in claim 9 on which claim 11 depends or is claim 13 meant to depend on some other claim? Given that the answer to this question is not clear, claim 13 is rejected as indefinite.
Claim 15 is indefinite in that it is drawn to “A plant obtained from the method of claim 13”, however claim 13 is drawn to “A bean seed produced by the method of claim 11” and even claim 11 is not drawn to a method. Therefore, because claim 13 is not drawn to a method, it is not clear what method claim 15 is referring to. Given that the answer to this question is not clear, claim 15 is rejected as indefinite.
Claim 18 is indefinite in that it is drawn to “The method of claim 16, further comprising the step of”, however claim 16 is drawn to “A bean pod or seed produced by the method of claim 14”. Therefore, because claim 16 is not drawn to a method, it is not clear what method claim 18 is referring to. Is it referring to claim 14 which is recited in claim 16 or is claim 18 meant to depend on some other claim? Given that the answer to this question is not clear, claim 18 is rejected as indefinite.
Claim 21 is indefinite in that it is drawn to “The plant of claim 19, wherein the single locus conversion”, however claim 19 is drawn to “A method of producing a plant of bean plant designated HMC019545”. Therefore, because claim 19 is not drawn to a plant it is not clear what plant claim 21 is referring to. Given that the answer to this question is not clear, claim 21 is rejected as indefinite.
Claim 22 is indefinite in that it is drawn to “The plant of claim 19, wherein the single locus conversion”, however claim 19 is drawn to “A method of producing a plant of bean plant designated HMC019545”. Therefore, because claim 19 is not drawn to a plant it is not clear what plant claim 22 is referring to. Given that the answer to this question is not clear, claim 22 is rejected as indefinite.
Response to Applicant Arguments - 35 USC § 112 (Improper Dependence)
Applicant’s cancelation of claim 3 in the claims filed 03/11/2026 renders the improper dependence rejection against that claim moot and it is withdrawn.
Response to Applicant Arguments - 35 USC § 112 (Enablement)
In response to Applicant’s arguments and amendments to the claims dated 03/11/2026 the enablement rejections of record are withdrawn.
Specifically, in response to applicant’s assertion that the specification and claims will be amended upon indication of allowable subject matter, to recite the deposit accession number when completed, the enablement rejections of record are withdrawn.
Response to Applicant Arguments - 35 USC § 112 (Written Description)
Applicant’s arguments and amendments to the claims dated 03/11/2026 have been fully considered but are not found to be persuasive and therefore the rejections of record are maintained with one exception. Applicant’s cancelation of claim 3 renders the written description rejection against that claim moot and it is withdrawn.
Applicant’s arguments are summarized as follows and will be addressed below:
The specification in paragraph 0222 has been amended to recite that the two proprietary parental lines are “not publicly available” and further, paragraph 0222 makes clear that the initial cross was followed by pedigree breeding and the claimed variety is not a first generation hybrid and it is consistent for the traits described in the specification and as perfected by the deposit of the seed of the variety.
Applicant offers to submit the breeding history under seal.
Citing to selected case law, Applicant argues that deposits may satisfy the enablement and written description requirements.
Applicant’s arguments summarized in 1. above are not found to be persuasive for several reasons. First, simply amending the specification to state that the parental lines are not publicly available, while helpful in searching for this variety in the art does not meet the requirements of 35 U.S.C 112(a) which in the first line of the first paragraph statute states that “The specification shall contain a written description of the invention”.
This is because as noted in the rejection below it is clear that to a person having skill in the art, description of a bean variety requires a description of the traits of the variety, such as those found in tables 1 and 2 which describes the morphological characteristics of the variety but also a breeding history which provides description of the genetics of the variety. While, knowing that the variety is not a first generation hybrid and was produced by pedigree breeding provides some information on the genetics of the claimed variety, simply stating that the parents of the claimed variety were not known in the art at the time of filing does not provide any information on the genetic characteristics of those lines and similarly does not provide any description of the characteristics of the instantly claimed variety.
Second, applicant urges that the “perfected deposit” provides description of the claimed variety, which is not persuasive because the deposit does not appear to have been made. In applicant’s remarks dated 03/11/2026 page 10 in the second paragraph in the Rejection Under 35 U.S.C 112(a) section states that “Applicant respectfully requests that this rejection be held in abeyance until indication of allowable subject matter is indicated. Applicant will then amend the specification and claims to recite the deposit accession number when completed” (emphasis added by examiner). As such it does not appear that the deposit has been made, never-mind perfected.
Further, as noted above, the statute requires that the specification shall contain a written description of the invention and therefore a deposit could not meet this requirement.
Applicant’s arguments summarized in 2. and 3. above, will be addressed together. Applicant offers to provide the breeding history under seal and additionally provides selected case law which Applicant urges makes clear that a deposit may satisfy the written description and enablement requirements and that therefore, the invention has been adequately described.
The Examiner disagrees.
As noted above, the best starting point for a written description analysis is not interpretation of the patent law by courts, but the law itself. With respect to written description, the first 10 words of 35 USC § 112(a) are very important:
“The specification shall contain a written description of the invention…” (emphasis added by Examiner).
Accordingly, the strict interpretation of the law is clear. Applicant must provide in the specification a written description. The only question is what is an “adequate written description”. This is a fact-based inquiry done by the factfinder (the USPTO examiner) when analyzing the nature of the instant invention.
In this case, the Office has made a finding of fact that for the instant variety the minimum description is the combination of the phenotype and genotype (breeding history). To support the finding of fact, the Office has cited other plant-related intellectual property organizations and relevant court cases dealing with plant varieties in which both the phenotype and genotype are analyzed. The Office did not cite these findings to clarify the law. They are solely to clarify the finding of fact (that is - what is an adequate written description for the instant plant variety). Applicant’s arguments essentially ask the Office to not consider the actual statute and to base the decision solely on statements from court/board cases that do not directly decide what an adequate written description is a for a plant variety.
Therefore, for at least the reasons of record, and those reasons indicated above, the rejection is maintained.
Claim Rejections - 35 USC § 112(a) (Written Description)
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.
This rejection is maintained for the reasons of record, because the amendments and remarks by Applicants in response to Office Action mailed on 12/12/2025, have been fully considered but not deemed persuasive. See above for the response to Applicant's remarks.
Lack of Breeding History
Claims 1-2 and 4-26 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 instant Specification fails to satisfy the written description requirement of 35 U.S. Code § 112(a) because there is no breeding history included in the specification.
Specifically, in the instant application, applicant has only provided a description of the plant traits as seen in the specification. The instant application is incomplete as to the breeding history used to produce the claimed plant variety.
The breeding history is incomplete because the pedigrees of the plant line is not known in the art and not provided in the Specification. Rather than providing a complete breeding history, applicant states that “Garden bean cultivar HMC019545 has superior characteristics and was developed through pedigree breeding from an initial cross that was made in Sun Prairie, Wisconsin, in a greenhouse, in the spring between two proprietary lines”.
This is incomplete because it is not clear whether the proprietary lines are a public or non-public lines. Further it is not clear if the breeding history of the claimed variety comprises only a single crossing step of its parents or if instead a backcrossing strategy was used or if self-crossing steps to produce an inbred variety were involved or if any other breeding method whatsoever was employed.
It is not clear whether HMC019545 has any other synonyms or tradenames, nor what is the source of this plant line or the lines used to produce it. The breeding history must be clarified regarding synonyms, tradenames and the sources thereof.
In the instant application, Applicant claims a new plant variety and methods of producing the variety. This introduces a question of fact: what is an adequate written description of a plant variety.
In searching for an answer to the above question of fact, a search of the relevant art provided answers on what constitutes written description of a plant variety. A plant variety is defined by both its genetics (which are described in the breeding history) and its traits. The following are presented as a review of the state of the art with respect to the question of fact presented above; what is written description of a plant. The following is not presented as a legal basis for the rejection.
In plant breeding, a breeding history in considered critical in describing a variety and assessing the intellectual property rights of a plant. With regard to Plant Patents, MPEP 1605 states that a complete detailed description of a plant includes “the origin or parentage”. Other bodies that grant intellectual property protection for plant varieties require breeding information to evaluate whether protection should be granted to new varieties. A breeding history, including information about parentage and breeding methodology, is part of the requirements of Plant Variety Protection (PVP) applications. That information is used to “determine if development is sufficient to consider the variety new” (See “Applying for a Plant Variety Certificate of Protection” by the USDA, Exhibit A). Additionally, the International Union for the Protection of New Varieties of Plants (UPOV) considers breeding history and methodology part of its evaluation of essentially derived plant varieties (See UPOV EDV Explanatory Notes, 14 and 30). While the USPTO, USDA, and UPOV have different laws governing intellectual property rights, all recognize that a breeding history is an essential part of adequate description of the plant sought to be protected.
The breeding history is also necessary to aid in the resolution of patent infringement by providing information necessary to determine whether differences in plants where genetic differences, differences caused by the environment, or differences within the accepted variation within a variety. Historically, the USPTO has considered breeding history information when determining the patentability of a new plant variety. (See Ex Parte C (USPQ 2d 1492 (1992) and Ex Parte McGowen- Board Decision in Application 14/996,093). In both of these cases, there were many differences cited by the applicant when comparing the prior art and the new plant variety. However, because the breeding history was available, these differences were deemed to be obvious and within the natural variation expected in a backcrossing breeding process. Without a breeding history in these cases, a complete comparison with the prior art could not have been possible.
Moreover, a specification lacking a breeding history hampers the public’s ability to resolve infringement analysis with plants already in the prior art as well as plants that have not yet been patented. Because the instant specification lacks the breeding history, the public will not be able to fully resolve questions of infringement. Since the breeding history, including the parents, is not known to the public, the public could only rely on the phenotypes of the claimed plants for assessing potential infringement.
As seen above in Ex Parte C and Ex Parte McGowan, a trait table is insufficient to differentiate varieties by itself. It has been long established that intracultivar heterogeneity exists in crop species. Haun teaches that the assumption that elite cultivars are composed of relatively homogenous genetic pools is false. (See Haun, Page 645, left column). Segregation, recombination, DNA transposition, epigenetic processes, and spontaneous mutations are some of the reasons elite cultivar populations will maintain some degree of plant-to-plant variation. (See Haun, Page 645 right column and Page 646 left column). In addition to genetic variation, environmental variation may lead to phenotypic variation within a cultivar. (See Großkinsky, page 5430 left column 1st full paragraph and right column 2nd full paragraph). In view of this variability, a breeding history is an essential and the least burdensome way to provide genetic information needed at adequate describe a newly developed plant.
Thus, an application that does not clearly describe the breeding history does not provide an adequate written description of the invention.
To overcome this rejection, applicant must amend the specification/drawings to provide the breeding history used to develop the instant variety or cultivar. When identifying the breeding history, applicant should identify any and all other potential names for all parental lines utilized in the development of the instant variety. For example, if applicant’s breeding history uses proprietary line names, applicant should notate in the specification all other names of the proprietary lines, especially publicly disclosed or patented line information. If the breeding history encompasses a locus conversion or a backcrossing process, applicant should clearly indicate the recurrent parent and the donor plant and specifically name the trait or transgenic event that is being donated to the recurrent parent. If one of the parents is a backcross progeny or locus converted line of a publicly disclosed line, applicant should provide the breeding history of the parent line as well (i.e. grandparents).
Applicant is also reminded that they have a duty to disclose information material to patentability. Applicant should also notate the most similar plants which should include any other plants created using similar breeding history (such as siblings of the instant variety). This information can be submitted in an IDS with a notation of the relevancy to the instant application or as information submitted as described in MPEP 724 (e.g., trade secret, proprietary, and Protective Order).
Of interest the MPEP notes that in addition to demonstrating that the applicant is in possession of the claimed invention that the disclosure should have several other characteristics as follows:
MPEP 2163 (I) states “The written description of the deposited material needs to be as complete as possible because the examination for patentability proceeds solely on the basis of the written description. See, e.g., In re Lundak, 773 F.2d 1216, 227 USPQ 90 (Fed. Cir. 1985); see also 54 Fed. Reg. at 34,880 ("As a general rule, the more information that is provided about a particular deposited biological material, the better the examiner will be able to compare the identity and characteristics of the deposited biological material with the prior art.").”
MPEP 2163(I) states “The description must be sufficient to permit verification that the deposited biological material is in fact that disclosed. Once the patent issues, the description must be sufficient to aid in the resolution of questions of infringement." Id. at 34,880.)” (Quoting the Deposit of Biological Materials for Patent Purposes, Final Rule, 54 Fed. Reg. 34,864 (August 22, 1989) at 34,880).
Closest Prior Art
Applicant has not provided a detailed breeding history which as noted in the written description rejection above is required for a complete search of the instant invention. Therefore, this is a provisional statement of prior art as only the phenotypic characteristics of the claimed plant can be searched without the genetic information provided in a breeding history.
The instantly claimed plant appears to be free of the prior art. The closest prior art is found in Garden bean HMX4104 taught in US Patent Publication NO: US 2018/0020628 A1 by Robert John Gehin, published on January 25, 2018. The prior art bean shares most of the same traits as the instant bean (compare Table 1 in columns 34 and 35 and Table 6 in Columns 42-43 of the reference with Table 1 on pages 59-61 and Table 2 on Pages 62-63 of the instant specification). The beans appear to differ in their genetics although the breeding history of the instant bean is unknown. The instant and reference beans also differ in seed color and in two resistance traits. Specifically, the instant bean is resistant to Colletotrichum lindemuthianum (Anthracnose Races 7 and 73) and Xanthomonas axonopodis while the reference bean appears to be susceptible to those pathogens. Thus the varieties appear to be distinct.
Conclusion
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN JAMES SULLIVAN whose telephone number is (571)272-0561. The examiner can normally be reached 7:30 to 5:00.
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 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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/BRIAN JAMES SULLIVAN/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
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