Status of the Application
Drawings
Replacement drawings were received on 24 February 2026. These drawings are objected to because the figure designation does not appear on the same page as the actual figure in many instances.
Many of the drawings filed 24 February 2026 are exoculated in color. Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
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.
Claims 1-4 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 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.
Applicant claims an Impatiens walleriana seed and plant containing a genetic resistance to Plasmopara obducens (syn. P. destructor) inherited (obtained) from deposited plant variety AB1664-1.
Applicant describes variety AB1664-1 predominantly by means of a deposit of seeds, and several varieties having different flower colors predominantly by means of making (crossing with variety AB1664-1) in Example 2 on page 9 of the Specification.
Applicant does not describe the structure of the genetic resistance to P. obducens. See Amgen inc. v Chagai Pharmaceutical Co., 18 USPQ 2d 1016 (Fed. Cir. 1991), which teaches that the conception of a chemical compound requires the inventor to be able to define the compound so as to distinguish it from other materials, and to describe how to obtain it rather than simply defining it solely by its principle biological property; thus, when an inventor of a gene, which is a chemical compound albeit a complex one, is unable to envision detailed constitution of the gene so as to distinguish it from other materials, as well as a method of obtaining it, the conception is not achieved until a reduction to practice has occurred, and until after the gene has been isolated.
The above issue is of particular relevance because the prior art had taught an Impatiens walleriana seed and plant containing a genetic resistance to P. obducens in Warfield et al (U.S. 2018/0271045 A1) in variety T041 at claim 14. Without a description of a structurally distinguishing feature, Applicant has failed to adequately described the invention sufficient to put the public on notice what would be infringing. See Vas-Cath Inc. v. Mahurkar 1991 (CA FC) 19 USPQ2d 1111, 1115, which teaches that the purpose of the written description is for the purpose of warning an innocent purchaser, or other person using a machine, of his infringement of the patent; and at the same time, of taking from the inventor the means of practicing upon the credulity or the fears of other persons, by pretending that his invention is more than what it really is, or different from its ostensible objects, that the patentee is required to distinguish his invention in his specification.
Applicant argues that claim 1 has been amended, and that the deposited seed serves as written description (page 1 of the Remarks).
Applicant’s arguments are not found to be persuasive. 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 stated above, Applicant must describe the invention sufficiently to distinguish the claimed invention from that which is in the public domain. Instant claim 1 is directed to a product-by-process (obtained from), but because Applicant hasn’t described “a genetic resistance to Plasmopara obducens” sourced from Impatiens walleriana other than by function, but the genetic resistance described by Warfiled et al appears to have an identical function. Hence, Applicant has failed to adequately described the claimed invention sufficient to distinguish the claimed invention from any other Impatiens walleriana containing a genetic resistance to P. obducens.
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 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.
At claims 1-3, the phrase “genetic resistance to Plasmopara obducens” fails to set forth the metes and bounds of the claimed invention. Daughtrey et al (2020 Plant Health Progress 21(3): 214-216) teaches that the Imara XDR Impatiens cultivars (of which the IDMR lines taught on page 9 of the Specification appear to be members of) are not resistant to a known rDNA genotype of downy mildew (see Abstract). Hence, “genetic resistance” would appear to be relative to certain genotypes of downy mildew pathogens. Because claim 4 depends from claim 3 it is also indefinite.
Applicant argues that claim 1 is amended on page 1 of the Remarks.
This argument is not found persuasive. The Examiner notes that claim 1 only requires that the “genetic resistance to Plasmopara obducens” be obtained from the plant AB1664-1. Where the “genetic resistance” can be obtained does not set forth the metes and bounds of the claimed invention, essentially what it (the genetic resistance) is and what it is not.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-4 remain rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Warfield et al (U.S. 2018/0271045 A1, effective filing date 13 March 2017).
Claim 1 is directed to a product-by-process, that being a seed of an I. walleriana containing a genetic resistance to P. obducens (downy mildew), “obtainaned from” variety AB1664-1. As stated above, Applicant has not distinguished the “genetic resistance” found in variety AB1664-1 from the variety T041 of Warfield et al.
Warfield et al discloses a seed of an I. walleriana containing a genetic resistance to P. obducens at claims 1-3 and method of making same at claims 9-12. Without evidence to the contrary the seed of an I. walleriana containing a genetic resistance to P. obducens disclosed by Warfield et al would appear to comprise the same genetic resistance found in instant variety AB1664-1. The Office does not have the facilities and resources to provide the factual evidence needed in order to establish that the product of the prior art does not possess the same, material, structural and functional characteristics of the claimed product. In the absence of evidence to the contrary, the burden is on the Applicant to provide that the claimed product is different from those taught by the prior art and to establish patentable differences. See In re Best 562F.2d 1252 USPQ 430 (CCPA 1977) and Ex parte Gray 10 USPQ 2d 1922 (PTO Bd. Pat. App. & Int. 1989).
In the alternative, the instant claims would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant claims in view of the teachings of Warfield et al. Both the variety T041 of the prior art and variety AB1664-1 of the instant invention appear to comprise naturally occurring genetic resistance to P. obducens. Hence, descendants of said varieties would not be distinguishable from each other. Given the success of Warfield et al to transfer the occurring genetic resistance to P. obducens from variety T041 to other “elite” cultivars one of ordinary skill in the art would have had a reasonable expectation of success. Warfield et al teaches that the presence of disease due to downy mildew in commercial cultivars of I. walleriana is of economic importance and that introducing downy mildew resistance to other cultivars is much needed and desired (see Background and Summary on page 1).
Applicant argues that claims 1-4 are novel over Warfield because Warfield does not teach plant AB1664-1 (page 1 of the Remarks).
This argument is not found persuasive because the instant claims are directed to a product-by-process and not limited to variety AB1664-1, the claimed I. walleriana need only has a pedigree that includes variety AB1664-1. There is nothing in Warfield to suggest that the source of the “genetic resistance” did not from Impatiens walleriana. It is Applicant’s responsibility to distinguish the “genetic resistance” found in variety AB1664-1 from that of the prior art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,004,460. Although the claims at issue are not identical, they are not patentably distinct from each other because the species disclosed in the ‘460 would anticipate and render obvious the instantly claimed genus.
Applicant argues that a terminal disclaimer has been filed. Applicant is notified that the terminal disclaimer has been dismissed.
The terminal disclaimer identifies a party who is not the applicant (only for applications filed on or after September 16, 2012; See FP 14.26.10): For cases filed on/after 9/16/12, 37 CFR 1.321 specifies that only the applicant can disclaim, and the terminal disclaimer must specify the extent of the applicant's ownership. To remedy this: A request under 37 CFR 1.46(c) to change the applicant needs to be filed, which is (1) a request, signed by a 1.33(b) party, (2) a corrected ADS (37 CFR 1.76(c)) that identifies the "new" applicant in the applicant information, and is underlined since it is new, and (3) a 3.73(c) statement showing chain of title to the new applicant. Along with the § 1.46(c) request The Office needs a POA that gives power to the attorney who is signing the TD, along with another copy of the TD, unless they file a TD that is signed by the applicant.
Conclusion
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.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID H KRUSE whose telephone number is (571) 272-0799. The examiner can normally be reached Monday-Friday 7AM-3:30PM.
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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/David H Kruse/
Primary Examiner, Art Unit 1663