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 .
Status of the Claims
Claims 1-10 are pending.
Claims 2-3 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/13/2026.
Claims 1, 4-10 are examined herein.
The objection to the Specification is withdrawn in view of Applicant’s amendments of the claims.
Claim Objections
Claim 11 no longer appears in the claims. If Claim 11 is canceled, the Claims should be amended to reflect this (stating Claim 11. (canceled)).
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.
Claims 1, 4-10 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claims are directed to a set of the 1407 markers listed in Claim 1. As set forth hereinafter, this set reasonably encompasses a plant having all 1407 markers – that is SNPs corresponding to the identified nucleic acid residues at each specified position. The invention appears to employ novel plants. Since the plant is essential to the claimed invention it must be obtainable by a repeatable method set forth in the specification or otherwise be readily available to the public. If the plant is not so obtainable or available, the requirements of 35 USC § 112 may be satisfied by a deposit of the seeds. A deposit of 625 seeds of each of the claimed embodiments is considered sufficient to ensure public availability. The specification does not disclose a repeatable process to obtain the plant and it is not apparent if the plant is readily available to the public.
However, even if a deposit is made under the terms of the Budapest Treaty, then a statement, affidavit or declaration by Applicants, or a statement by an attorney of record over his or her signature and registration number, or someone empowered to make such a statement, stating that the instant invention will be irrevocably and without restriction released to the public upon the issuance of a patent must be made. No such statement is included by Applicant. A statement indiciating that the instant invention will be irrevocably and without restriction released to the public upon the issuance of a patent will satisfy this requirement.
The Deposit statement must indicate if the deposit is made under the Budapest Treaty or that it otherwise complies with the requirements of 37 CFR § 1.808(a)(2). Further, pursuant to MPEP 2409, the statement should indicate that the deposit has been accepted.
(a) If a deposit is made under the terms of the Budapest Treaty, then a statement, affidavit or declaration by Applicants, or a statement by an attorney of record over his or her signature and registration number, or someone empowered to make such a statement, stating that the instant invention will be irrevocably and without restriction released to the public upon the issuance of a patent, would satisfy the deposit requirement made herein.
(b) If a deposit has not been made under the Budapest Treaty, then in order to certify that the deposit meets the criteria set forth in 37 CFR 1.801 -1.809 and MPEP 2402-2411.05, Applicant may provide assurance of compliance by statement, affidavit or declaration, or by someone empowered to make the same, or by a statement by an attorney of record over his or her signature and registration number showing that:
(i) during the pendency of this application, access to the invention will be afforded to the Commissioner upon request;
(ii) all restrictions upon availability to the public will be irrevocably removed upon granting of the patent in accordance with 37 CFR § 1.808(a)(2);
(iii) the deposit will be maintained in a public depository for a period of 30 years or 5 years after the last request or for the effective life of the patent, whichever is longer;
(iv) a test of the viability of the biological material at the time of deposit (see 37 CFR § 1.807); and,
(v) the deposit will be replaced if it should ever become inviable.
Response to Remarks
Applicant urges that the rejection under 112a for lack of enablement should be withdrawn because Claim 1 has been amended to recite in part “A set of single nucleotide polymorphism (SNP) molecular markers of Brassica napus L., wherein the set of SNP molecular markers comprises 1407 SNP molecular markers”. Applicant argues that the amended claims are clear insofar as they do not encompass a plant and that the set of markers is a tool for detecting polymorphisms. As such, Applicant argues that there is no requirement for a deposit related to any particular plant and that the invention is fully enabled without said deposit. (Remarks p. 1-2).
This is not found persuasive. Without anything more, the amendments to the claims does not change the apparent scope, nor does it clarify the issue of indefiniteness raised in the office action dated 03/02/2026). A set and combination of things are essentially indistinguishable.
As set forth in the original rejection, the rejected claims remain unclear as to what is being claimed. Applicant admits that all of the recited markers correspond to positions in the Darmor B. napus variety. Because marker positions are typically identified by comparing the sequence of one plant and another (typically parents in a mapping cross) it is common for all of the markers used in a marker collection to be present in at least one of the plants. As such, a “set” of said markers could be present in a plant or collection of chromosomes from said plant.
If Applicant wishes to clarify what is claimed and to specify that the claims only encompass a collection of nucleic acids used in DNA chip technology or the like, it is recommended that Applicant merely amend the claims to specify that oligonucleotides comprise the markers – for example amending the first lines of Claim 1 to recite “A set of oligonucleotides comprising single nucleotide polymorphism (SNP) molecular markers of Brassica napus L., wherein the set of oligonucleotides comprising SNP molecular markers comprises 1407 SNP molecular markers” – or the equivalent. Such a clarification carried throughout the claims would likely obviate the rejection.
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.
Claims 1, 4-10 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.
Claim 1 had been amended to recite in part “A set of single nucleotide polymorphism (SNP) molecular markers of Brassica napus L., wherein the set of SNP molecular markers comprises 1407 SNP molecular markers” and the other claims referencing the markers have been accordingly amended. It is unclear what the “set” in the claims is. As is typically understood in the art, plants comprise markers and they are detected using a wide variety of techniques. The set could be a plant that comprises the polymorphisms at each position as they are provided in Claim 1, or an application or kit of some kind that uses all 1407 markers. The Specification discusses generation of DNA libraries from B. napus plants and detection of SNPs and selection to winnow the SNPs down to 1407 in number. As such the Specification appears largely directed to manners of detection so it is unclear what the “set” actually encompasses. The metes and bounds of the claim are therefore unclear.
Response to Remarks
Applicant urges that the rejection under 112b should be withdrawn because Claims 1 has been amended to recite in part “A set of single nucleotide polymorphism (SNP) molecular markers of Brassica napus L., wherein the set of SNP molecular markers comprises 1407 SNP molecular markers”, and the other claims referencing the markers have been accordingly amended. Applicant argues that the amended claims are clear insofar as they do not encompass a plant and that the set of markers is a tool for detecting polymorphisms. (Remarks p. 1-2).
This is not found persuasive. Without anything more, the amendments to the claims does not change the apparent scope, nor does it clarify the issue of indefiniteness raised in the office action dated 03/02/2026). A set and combination of things are essentially indistinguishable.
As set forth in the original rejection, the rejected claims remain unclear as to what is being claimed. Applicant admits that all of the recited markers correspond to positions in the Darmor B. napus variety. Because marker positions are typically identified by comparing the sequence of one plant and another (typically parents in a mapping cross) it is common for all of the markers used in a marker collection to be present in at least one of the plants. As such, a “set” of said markers could be present in a plant or collection of chromosomes from said plant.
If Applicant wishes to clarify what is claimed and to specify that the claims only encompass a collection of nucleic acids used in DNA chip technology or the like, it is recommended that Applicant merely amend the claims to specify that oligonucleotides comprise the markers – for example amending the first lines of Claim 1 to recite “A set of oligonucleotides comprising single nucleotide polymorphism (SNP) molecular markers of Brassica napus L., wherein the set of oligonucleotides comprising SNP molecular markers comprises 1407 SNP molecular markers” – or the equivalent. Such a clarification carried throughout the claims would likely obviate the rejection.
Conclusion
No claims are allowed.
The claims appear to be free of the prior art. The claims are reasonably interpreted to require all 1407 markers in a single embodiment. The closets prior art appears to be Chalhoub, B. et al. Plant genetics. Early allopolyploid evolution in the post-Neolithic Brassica napus oilseed genome. Science 345, 950-953 (2014), which references B. napus genomes which Applicant claims references critical genomic information. However, Chalhoub does not disclose, teach or otherwise render obvious the combination of the 1407 markers as required by the claims.
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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