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 .
Election/Restrictions
Applicant’s election of claims 28-30, 41 and 46-48 in the reply filed on 16 September 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The Examiner notes that the elected claims were not specifically addressed in the restriction mailed on 17 May 2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code on page 8, paragraph 0022. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
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 28-32, 41 and 46-48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-9 and 11-13 of U.S. Patent No. 11,382,291. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims overlap in scope with the claims of the ‘291 Patent. For Example claim 7 of the ‘291 Patent includes the steps “selecting a progeny plant” at step “a)ii)” and a detecting step comprising “marker-assisted selection” at step “e)”, including selecting by detecting marker locus M1 (SEQ ID NO: 1) at claim 8. Claim 1 of the ‘291 Patent teaches a species that anticipates the genus of instant claim 48.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 28, 29, 31, 32, 41 and 46 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a process of though without significantly more. The claim(s) recite(s) detecting and selecting. This judicial exception is not integrated into a practical application because the detecting step can be practice by merely observing a plant of maize line H111 as taught by Robbins (1983 PhD Dissertation, Purdue University). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there is no actual had of man involved only a process of thought as taught by the prior art.
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.
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 28-32, 41 and 46-48 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 claim 28, line 3, the limitation “detecting” is indefinite because it is unclear what the metes and bounds of the “detecting” step are. The specification provides no specific guidance on the metes and bounds of “detecting”, hence one would not be put on notice what would be infringing and what would not. Claim 30 further defines the selecting step in claim 28, but does not specifically define “detecting” in claim 28. Because the remaining claims depend from claim 28, they are similarly indefinite.
At claim 48, “obtainable” is indefinite because it is unclear if the claimed plant or seed is produced by the method of claim 28, or just that it would be possible to select the claimed plant or seed. Hence, the metes and bounds of the claim are unclear.
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 28-32, 41 and 46-48 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 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 a method of selecting a corn plant or corn seed by detecting in a population a corn plant or corn seed comprising a chromosomal segment on chromosome 8 that confers broad-spectrum resistance to Exserohilum turcicum, and a corn plant or corn seed obtainable by said method.
Applicant describes a single marker locus designated M1 and having instant SEQ ID NO: 1 in paragraphs [0021] and [0022] on pages 7-8 of the instant Specification.
Applicant does not describe a genus of locus markers associated with broad-spectrum resistance to Exserohilum turcicum. Applicant does not describe the broad genus of “detecting” means as required to practice the claimed method. Applicant does not describe the broad genus of corn plants or corn seed obtainable from the method of instant claim 28.
Hence, it is unclear that Applicant was in possession of the invention as broadly claimed. The decision in AbbVie Deutschland GmbH & Co. v. Janssen Biotech, Inc. 111 USPQ2d 1780 (Fed. Cir. 2014) seems to be germane to the instant case. In Abbvie, an analogy is drawn between a claimed genus and a plot of land (see pages 1789-1791). Using this analogy, the Court offered that “[I]f the disclosed species only abide in a corner of the genus, one has not described the genus sufficiently to show that the inventor invented, or had possession of, the genus. He only described a portion of it.” Similar to the analogy drawn in Abbvie, in the case of Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 94 USPQ2d 1161 (Fed. Cir. 2010), the court (at page 1171) offered: [M]erely drawing a fence around the outer limits of purposed genus is not an adequate substitute for describing a variety of materials constituting the genus and showing that one has invented a genus and not just a species.
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) 48 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dorrance et al (1998 Plant Disease 82(6): 699-703).
Applicant discloses that the HtX (Applicant’s designation) occurs on chromosome 8 of maize line H111 on page 8, 1st paragraph of the Specification.
Dorrance et al disclose maize line H111 in Table 1 on page 699. Dorrance et al disclose F1 hybrids produced using maize line H111 in Table 3 on page 701. Because the corn plants or corn seeds disclosed by Dorrance et al can be selected by the method of instant claim 28, Dorrance et al anticipates the instantly claimed invention.
See In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985), which teaches that a product-by-process claim may be properly rejectable over prior art teaching the same product produced by a different process, if the process of making the product fails to distinguish the two products.
Claim(s) 28-32, 41, 46 and 48 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Robbins (1983 PhD Dissertation, Purdue University).
The term “HtX” used in the Specification to refer to the broad-spectrum resistance “gene” found in corn cultivar H111 would appear to be a term invented by Applicant. The Examiner does not find any reference to said term in the relevant art.
Robbins disclose crossing line H102 developed from variety ‘Mayorbela’ (PI 209135) and selecting a corn plant having high resistance to Exserohilum turcicum with other inbred corn lines either susceptible to NCLB (northern corn leaf blight) or having the Ht or Ht2 resistance genes. Robbins further discloses backcrossing to the susceptible parent line and selfing the F1 hybrids (see the Abstract on page vii). Hence, Robbins had previously disclosed the claimed invention.
The crossing and backcrossing steps disclosed by Robbins satisfies Applicant’s limitation “introgressing”. The limitation “elite” is given its broadest reasonable interpretation, that being a corn line that has some agronomically desirable trait (see Table 3 on page 20).
The recited single gene appears to be inherent in the NCLB resistance found in ‘Mayorbela’ (PI 209135) and that Applicant has merely disclosed genetic markers useful for following the inheritance of the “HtX” gene. While Robbins does not disclose marker locus M1, said marker locus would appear to be inherent in the disclosure without evidence to the contrary. Failure of those skilled in the art to contemporaneously recognize an inherent property, function or ingredient of a prior art reference does not preclude a finding of anticipation, Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999).
Claim Rejections - 35 USC § 103
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) 28 and 47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ouzunova et al (U.S. 2016/0201080) in view of Robbins (1983).
Applicant claims a method of selecting a sweet corn plant or sweet corn seed by detecting in a population a corn plant or corn seed comprising a chromosomal segment on chromosome 8 that confers broad-spectrum resistance to Exserohilum turcicum,
Ouzunova et al teaches that the prior art has introduced the Ht1 and Htn1 alleles together for NCLB resistance into sweet corn on page 1, right column, paragraph 0004.
Ouzunova et al does not teach introducing the HtX gene from corn variety PI 209135, or combining an Ht2 and HtN loci for NCLB resistance.
Robbins teaches crossing corn line H102 developed from variety ‘Mayorbela’ (PI 209135) and having high resistance to Exserohilum turcicum with other inbred corn lines either susceptible to NCLB (northern corn leaf blight) or having the Ht or Ht2 resistance genes. Robbins further teaches backcrossing to the susceptible parent line and selfing the F1 hybrids (see the Abstract on page vii) thus producing plants homozygous for the introgression in the selfed population(s).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant claims to modify the teaches of Ouzunova et al to introduce an NCLB resistance gene from a dent corn line like H102 into a sweet corn line using the teachings of Robbins. Robbins teaches that the resistance gene found in line H102 does not segregate with Ht and Ht2 on page 25. Given the teachings of Ouzunova et al, one of ordinary skill in the instant art would have had a reasonable expectation of success since the Ht1 and Htn1 alleles would have been introgressed from a dent corn donor.
Conclusion
No claims are allowed.
The art made of record and not relied upon is considered pertinent to applicant's disclosure. WO 2020/132188 is related to the instant Application because they both claim benefit of U.S. Provisional Application 62/783,899.
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.
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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