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 .
Specification
The disclosure is objected to because of the following informalities: In the first line of the Specification, “priority to” should be deleted.
Appropriate correction is required.
Claim Interpretation
At claim 9, line 1, for example; the limitation “or a part of” is interpreted to include the most important part of the claimed invention that being lutein in the flower petals.
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 1-21 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 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 plant. A deposit of 650 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. It is noted that Applicants have deposited the plant but there is no indication in the Specification as to public availability or under what conditions the deposit was made.
(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 has been deposited and accepted, and 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, 9, 15 and 21-22 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.
At claims 1, 9, 21 and 22 the metes and bounds of “a part of”, “said part of” and “parts thereof” are unclear. The specification does not define “part” or “parts”. Applicant asserts that it is lutein content that is the nexus of the instant invention, but it is unclear if “part” or “parts” encompass extracted lutein or other subcellular parts.
At claim 15(c), “said other marigold line plants” renders the claim indefinite because the claimed method is directed to introducing a desired trait “from” marigold inbred line KI3928, but at step (d) the method selects progeny plants comprising physiological and morphological characteristics of marigold inbred line KI3928. Hence, the metes and bounds of the claim are unclear.
Claim Rejections - 35 USC § 102
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)(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.
Claim(s) 22 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Narasimhamoorthy et al (U.S. Patent 9,867,341).
Applicant claims a genetically engineered marigold plant containing one or more desired trait(s).
Narasimhamoorthy et al disclose marigold inbred line denominated KI4537 at claim 5. Narasimhamoorthy et al disclose genetically engineered marigold plant of the claimed invention at column 9, lines 30-43. Narasimhamoorthy et al discloses that a preferred additional/desired trait includes genes that encode resistance to a herbicide. Hence, Narasimhamoorthy et al had previously disclosed the claimed invention.
Claims 1, 2 and 4-10 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention. GPM tradesns.vip discloses a sale of seed of Tagetes erecta seed variety KI3928 to Kemin Industries South Asia Private Limited through Swift Agro-Chemicals & Nutrients PVT.LTD on 11 October 2019 (see page 3/5 of the English translation, or original disclosure). Hence GPM has disclosed a prior sale and public use of the claimed invention more than one year prior to the effective priority date of 13 June 2023 of the instant claims.
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.
Claim(s) 1-22 are is/are rejected under 35 U.S.C. 103 as being unpatentable over GPM tradesns.vip (Swift Agro-Chemicals & Nutrients PVT.LTD 2023) in view of Narasimhamoorthy et al (U.S. Patent 9,867,341).
GPM tradesns.vip teaches a sale of seed of Tagetes erecta seed variety KI3928 to Kemin Industries South Asia Private Limited through Swift Agro-Chemicals & Nutrients PVT.LTD on 11 October 2019 (see page 3/5 of the English translation, or original disclosure).
GPM does not teach any specific methods of using seed of Tagetes erecta variety KI3928, just that it would have been readily available to one of ordinary skill in the instant art before the effective filing date of the instant claims.
Narasimhamoorthy et al teach parts of plant Tagetes erecta variety KI4537, a method of producing seed from said plant, methods of making hybrids and introducing new/desired traits into said plant and hybrid marigold plants and seeds produced using said plant at claims 1-21. Narasimhamoorthy et al also teach genetically engineering said marigold plant at column 9, 3rd paragraph.
It would prima facie obvious to one of ordinary skill in the art to use the Tagetes erecta variety KI3928 taught by GPM in the methods taught by Narasimhamoorthy et al. The Examiner notes that Tagetes erecta variety KI4537 was selected for elevated levels of lutein (see Abstract) and was developed from variety ‘Scarletade’ (column 2, lines 41-45), traits shared with Tagetes erecta variety KI3928 of the instant invention and taught by GPM. Given the teachings of Narasimhamoorthy et al, one of ordinary skill in the instant art would have had a reasonable expectation of success in substituting one high lutein producing, male fertile Tagetes erecta variety with another using the teachings of Narasimhamoorthy et al. Narasimhamoorthy et al teach that high lutein marigold flowers are used as an additive to chicken feed to enhance egg yolks, fat and skin color (column 1, lines 25-33). Hence, one of ordinary skill in the art would have been motivated to use Tagetes erecta variety KI3928 for the same purposes as taught by Narasimhamoorthy et al.
Conclusion
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.
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.
/David H Kruse/
Primary Examiner, Art Unit 1663