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 .
Claim Status
Claims 1-26 are pending and examined on the merits.
Claims 1, 8, 9, 14, 19, 21, and 23-26 currently amended.
Response to Arguments - Specification
Applicant’s amendments filed 29 April 2026 have overcome the objection of record.
Response to Arguments - Indefiniteness
Applicant’s amendments filed 29 April 2026 have overcome the rejection of record. However, a new ground of rejection has been raised.
Claim Rejections - 35 USC § 112
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.
Claims 1-26 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claims are drawn to plants or parts thereof of soybean cultivar 3284306 as well as F1 offspring thereof and plants produced by methods applied to soybean cultivar 3284306.
The specification sets forth a definition for the word “plant”. The specification states on page 6 “A plant refers to a whole plant, any part thereof, or a cell or tissue culture derived from a plant, comprising any of: whole plants, plant components to organs (e.g., leaves, stems, roots, etc.), plant tissues, seeds, embryos, plant cells, protoplasts and/or progeny of the same”. Although any plant part thereof, including cells and protoplasts are in of themselves difficult to read as a “plant” as such, at least it is possible to at least limit the definition to having the same genetic makeup as a cell of a plant of the deposit, the phrase “and/or progeny of the same” opens up the definition to include anything that is considered progeny which would read on a multitude of genetic compositions and a multitude of potential traits. This open definition is in direct contradiction and at odds with the claims particularly as they relate to cultivar 3284306 as the definition of plant contradicts “cultivar 3284306” such that it fails to impart a limitation or meaning. The metes and bounds of the claims are unclear because while the claim in its plain meaning appears to limit the invention to plants of cultivar 3284306, the definition of plant in the specification then opens up to include progeny of said cultivar such that it is unclear what the claim is drawn to in scope.
Accordingly, the claims are rejected as being indefinite.
PNG
media_image1.png
164
796
media_image1.png
Greyscale
Claim Rejections - 35 USC § 112
Response to Arguments - Lack of Written Description – Breeding History
Applicant’s amendments filed 29 April 2026 have overcome the rejection of record.
Response to Arguments - Lack of Written Description
Applicant’s amendments filed 29 April 2026 have overcome the rejection of record. However, a new ground of rejection has been raised.
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 1-26 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
The claims are drawn to plants or parts thereof of soybean cultivar 3284306 as well as F1 offspring thereof and plants produced by methods applied to soybean cultivar 3284306.
The specification sets forth a definition for the word “plant”. The specification states on page 6 “A plant refers to a whole plant, any part thereof, or a cell or tissue culture derived from a plant, comprising any of: whole plants, plant components to organs (e.g., leaves, stems, roots, etc.), plant tissues, seeds, embryos, plant cells, protoplasts and/or progeny of the same”. Although any plant part thereof, including cells and protoplasts are in of themselves difficult to read as a “plant” as such, at least it is possible to at least limit the definition to having the same genetic makeup as a cell of a plant of the deposit, the phrase “and/or progeny of the same” opens up the definition to include anything that is considered progeny which would read on a multitude of genetic compositions and a multitude of potential traits.
The specification does not describe what traits and what genetic composition a soybean plant would need to have in order to meet the limitations of the claims as currently written. Virtually any soybean could be encompassed by the claims as they are currently written with the definition of plants as set forth in the instant specification.
Accordingly, one of skill in the art would not be able to determine if they were in possession of the claimed soybean plant, seeds or methods or not.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-26 are rejected under 35 U.S.C. 102(a)(1) and 35 USC 102 (a)(2) as being anticipated by Walsh et al (US Patent 11046968, published on 6/29/2021).
The claims are drawn to plants or parts thereof of soybean cultivar 3284306 as well as F1 offspring thereof and plants produced by methods applied to soybean cultivar 3284306.
The specification sets forth a definition for the word “plant”. The specification states on page 6 “A plant refers to a whole plant, any part thereof, or a cell or tissue culture derived from a plant, comprising any of: whole plants, plant components to organs (e.g., leaves, stems, roots, etc.), plant tissues, seeds, embryos, plant cells, protoplasts and/or progeny of the same”. Although any plant part thereof, including cells and protoplasts are in of themselves difficult to read as a “plant” as such, at least it is possible to at least limit the definition to having the same genetic makeup as a cell of a plant of the deposit, the phrase “and/or progeny of the same” opens up the definition to include anything that is considered progeny which would read on a multitude of genetic compositions and a multitude of potential traits.
The specification does not describe what traits and what genetic composition a soybean plant would need to have in order to meet the limitations of the claims as currently written. Virtually any soybean could be encompassed by the claims as they are currently written with the definition of plants as set forth in the instant specification. Even if it could not be asserted that the soybean plant was in fact crossed with the instantly claimed cultivar, because any cross with any genetic composition is encompassed, any given genetic composition appears to be encompassed by the claims as currently written.
Walsh et al teach a transgenic soybean (see claims). Given the broad definition of plant and the unspecified traits such a plant would have to have, Walsh et al inherently meet the limitations of the claims as set forth.
Walsh et al also teach soybean oil from a transgenic soybean plant (see claim 17) which would meet all the limitations of the above claims wherein the product would be indistinguishable from the currently claimed product. It is noted, that even if the broad definition of plant was not present claims 21-22 would still be anticipated.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R KEOGH whose telephone number is (571)272-2960. The examiner can normally be reached M-Th 7-4:30, half day on Fridays.
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.
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.
/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663
Prosecution Insights