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
Claims 1-26 as filed on 3 June 2024 were examined and rejected in an Office action posted on 1 February 2026. Applicant responded on 1 April 2026.
Claims 1-26 are examined herein.
Withdrawal of Objections and Rejections
The objection to the specification is withdrawn in view of Applicant’s amendments together with perfecting the deposit.
The objection to claims 1, 9, and 21 is withdrawn in view of Applicant’s amendments to the claims. The objection to claims 24-26 is also withdrawn.
The rejection of claims 1-26 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of Applicant’s amendments to the claims.
The rejection of claims 1-26 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112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement (deposit) is withdrawn in view of Applicant’s perfecting the deposit.
The rejection of claims 8, 10, 11 and 19 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112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is withdrawn in view of Applicant’s amendments to the claims.
The rejection of claims 1-26 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), first paragraph, as failing to comply with the written description requirement regarding the specification is withdrawn in view of Applicant’s adding the breeding history to the specification.
Consequently, the double patenting rejection is also withdrawn in agreement with Applicant’s arguments on page 15 of the response.
Examiner’s Notes
Citations to Applicant’s specification if any are abbreviated herein “Spec.”
35 USC § 112(b)-Based Claim Rejections
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 23-26 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.
This is a new rejection necessitated by Applicant’s amendments to the claims.
Claims 24-26 were objected to as potentially having the same scope as claim 23 if allowed. Applicant extensively amended the claims.
Claim 23 encompasses a mixture of seed or grain of at least two soybean cultivars, the mixture comprising the soybean seed of claim 1, and wherein said mixture achieves a desired grain content profile . . .
Applicant attaches no particular meaning to “mixture.” The term is used frequently in the specification. For example, in paragraph 0013 it is a post-harvest mixture. This continues through paragraph 0016. Also paragraph 0250 where the mixture may be “seeds or grain.” This again appears to refer to harvested grain.
There is nothing here to inform an artisan the limits of a mixture. Confluence Genetics appears to be located in St. Louis. Is Missouri a “mixture”?
Is a mixture only post-harvest? Are adjacent fields, one with the claimed cultivar and the other with a different cultivar, a “mixture.”
Furthermore, many of the characteristics recited in claim 24 appear to be post-processing measurements but the claims require the seed of claim 1. Additionally the “mixture” and/or “composition now requires an increased yield and/or desired content profile. These are relative terms but there is no comparison standard given. Are they in comparison to the to=-be-patented seed? Are they in comparison to the to an arbitrary mixture? But that again calls into question the meaning of a “mixture.”
Therefore an ordinary artisan cannot ascertain the metes and bounds of the claims.
Additionally, claims 24 and 25 have extremely similar wording so these relative terms are extremely important in determining if they have different scope.
This is a new rejection necessitated by Applicant’s amendments to the claims.
Conclusion
Claims 1-22 are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 RUSSELL T BOGGS whose telephone number is (571)272-2805. The examiner can normally be reached Monday - Friday, 0800 to 1830 Mtn.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham can be reached at 571-270-0708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUSSELL T BOGGS/Examiner, Art Unit 1663
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