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 .
Withdrawn Objections and/or Rejections
Objections and/or rejections made of record in the nonfinal office action dated 04March2026 that are not otherwise discussed herein are withdrawn. In particular, all but one of the objections and rejections of record are withdrawn in view of the claim amendments and specification amendments (all of which are consistent with what was suggested by the Office and, for that reason, the details of which are not listed here for the sake of brevity). The Office thanks Applicant for the comprehensive reply filed 03June2026.
Status of the Claims
Claims 1-32 filed 03June2026 are acknowledged and examined on the merits herein. Claims 1-3, 5, 7, 9, 11-12, 20-26, 28, 30-32 are currently amended. Claims 4, 6, 8, 10, 13-19, 27, and 29 are original. Claims 1-2 and 4-32 are allowed, claim 3 remains rejected for the reasons that follow.
Priority
There is no claim for the benefit of a prior-filed application (i.e., a priority claim). Therefore, the effective filing date of claims 1-32 REMAINS the actual filing date of this application: 09May2024.
Claim Rejections - 35 USC § 112 – 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.
I.) Claimed Products Not Tethered to Disclosed Line:
Claim 3 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 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.
[Copied from Nonfinal 04March2026 → ] This claim is directed toward a plant, or part thereof, that has “all of the” characteristics/traits of inbred corn line OK19635V1 (see Table 1) but the claimed plants/parts do not have any structural/genomic relationship with a plant of inbred corn line OK19635V1. Said another way, these claims encompass corn plants with any genomic structure and that, nonetheless, have all of the characteristics/traits of a plant of inbred corn line OK19635V1.
Applicant has only described one structure/genomic structure that is capable of causing all of the characteristics/traits of a plant of inbred corn line OK19635V1 (i.e., those listed in Table 1): the structure/genomic structure represented by the sample of seed that is/will be deposited with ATCC (per ¶¶197-206 on pages 46-47).
The prior art does not supplement the deficiencies of this specification.
Without more information from Applicant, a skilled artisan at the time this application was filed would not reasonably recognize Applicant as being in possession of the full metes and bounds of these claims (namely, arriving at “all of the” characteristics/traits of inbred corn line OK19635V1 without having any shared structure/genomic structure with that represented by the seed that is/will be deposited with ATCC).
It would be remedial of this rejection to amend the claims so that the claimed plants/parts have the structure/genomic structure represented by the sample of seed deposited seed that is/will be deposited with ATCC (not beyond the F1 generation).
Response to Applicant’s Remarks 03June2026:
Applicant asserts that removing “part thereof” from the claim is remedial of the issue underlying this rejection (page 16):
PNG
media_image1.png
97
484
media_image1.png
Greyscale
That is not persuasive because (1) “part thereof” is still recited in claim 3 (= Applicant has not “struck ‘part thereof’ from the [filed claims]”), and (2) the claim amendments 03June2026 do not otherwise add structure (genomic structure) to the claimed plants/plant parts. The claimed plants/plant parts are only recited by functional/phenotypic characteristics and need not have a particular structure (i.e., genomic structure). As claimed, the plants/plant parts may have originated from a completely independent parentage (as compared to a plant/part of OK 19635VI). Applicant has only described F0 and F1 plants/plant parts of/from the OK19635VI line as being capable of expressing the claimed functional/phenotypic characteristics (i.e., “all of the physiological and morphological characteristics of a plant of inbred corn line OK19635VI” as set forth at pages 50-52 of the specification). Said another way, based on the specification, it appears as though a plant/part must have one (F1) or both (F0) of the full sets of chromosomes represented by the seed deposited under NCMA Accession No. 202604066 (i.e., structure) in order to express “all of the physiological and morphological characteristics of a plant of inbred corn line OK19635VI” (i.e., function/phenotype). There is no information within the specification, as supplemented by the prior art, to suggest that alternative genomic structure/sequences are capable of causing the claimed function/phenotype (i.e., “all of the physiological and morphological characteristics of a plant of inbred corn line OK19635VI”), so the subject matter of claim 3 lacks Written Description. Please amend claim 3 so that the claimed plants/parts are of/from the OK19635VI line and not beyond the F0 or F1 generation (i.e., have a genomic structure that would actually encode and cause “all of the physiological and morphological characteristics of a plant of inbred corn line OK19635VI” to be expressed).
Conclusion
[Copied from Nonfinal 04March2026 → ] The following is an examiner’s statement of reasons for allowance: the closest prior art may be identified as MILLER (US Pat. No. 6706955) who disclose characteristics of plants of the “B73” line. A plant of the B73 line appears to be materially different from a plant of the present OK19635V1 line, though, in at least plant height and ear length. Absent evidence to the contrary (such as breeding history information), the presently claimed subject matter appears to be novel and nonobvious over MILLER.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 Rebecca STEPHENS whose telephone number is (571)272-0070. The examiner can normally be reached Monday through Friday 8:30-4:30.
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 at (571) 270-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/REBECCA STEPHENS/Examiner, Art Unit 1663
/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663
Prosecution Insights