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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in China on 03/21/2023. It is noted, however, that applicant has not filed a certified copy of the foreign application as required by 37 CFR 1.55.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
As such the priority date assigned to this application is 03/14/2024.
Election/Restrictions
Applicant’s election of the invention of Group I in the reply filed on 01/13/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant’s traversal with regard to the species election has been considered and found persuasive. As such, the species election dated 11/28/2205 has been withdrawn.
Status of the Claims
Claims 1-11 are pending.
Claims 2-3 and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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.
Specification
Applicant has improperly incorporated the reference genome Brana_Dar_V10 into the Specification, including the claims. Applicant states that the genome can be found in Chalhoub, B. et al. Plant genetics. Early allopolyploid evolution in the post-Neolithic Brassica napus oilseed genome. Science 345, 950-953 (2014). This material is essential to the claims.
The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 37 CFR 1.57(g).
Claim Interpretation
Claim 1 has been amended to change the claim in view of Applicant’s response to the species election requirement. However, in view of Applicant’s comments and traversal of the species election requirement, the species election requirement is withdrawn. As such, for purposes of compact prosecution (anticipating that Applicant will change the claim to reflect the original form), the claim will be interpreted as it was presented in the claim listing on 10/16/2025.
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 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 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 combination of the 1407 markers listed in Claim 1. As set forth hereinafter, this combination 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.
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 are 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 recites in part “the 1407 SNP molecular markers are determined by sequence alignment based on a reference genome Brana_Dar_V10 of the Brassica napus L.” This genome sequence is not identified by any sequence identifiers and appears to be one that is referenced in publications. Applicant states that the genome can be found in Chalhoub, B. et al. Plant genetics. Early allopolyploid evolution in the post-Neolithic Brassica napus oilseed genome. Science 345, 950-953 (2014). (Specification p. 2). A review of this prior art document shows that it does not actually contain any such sequence and instead appears to generically reference two genome databases. (p. 953 right col. “acknowledgements” paragraph). It is unclear which sequence is referenced and as such it is unclear how the identified polymorphisms relate to any particular B. napus genome. As such the metes and bounds of the claim are unclear.
Claim 1 recites in part “A single nucleotide polymorphism (SNP) molecular marker combination of Brassica napus L., wherein the SNP molecular marker combination comprises 1407 SNP molecular markers, and the 1407 SNP molecular markers are shown in BN0001-1407”. It is unclear what the “combination” 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 combination 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 “combination” actually encompasses. The metes and bounds of the claim are therefore unclear.
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.
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.
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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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/CHARLES LOGSDON/Primary Examiner, Art Unit 1662