DETAILED ACTION
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 .
This is a Final Office Action in response to amendment filed on October 27th, 2025. Claims 9-12 are amended, claims 1-8 and 13-20 are canceled, and new claims 21-22 are added. Claims 9-12 and 21-22 are pending and examined herein.
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 eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 9-12 remain, and new claims 21-22 are, rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-12 of U.S. Patent No. US12049636B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The instant claims are drawn to a soybean plant comprising the recombinant DNA molecule comprising a nucleic acid sequence encoding a polypeptide having at least 92% identity to an amino acid sequence selected from the group consisting of SEQ ID NO: 51.
The patented claims are drawn to a plant comprising a recombinant DNA molecule comprising a nucleic acid sequence encoding a polypeptide having at least 90% identity to the amino acid sequence of SEQ ID NO: 1, 4, 7, 9, 11, 18, 22, 25, 28, 31, 34, 37, 40, 43, 46-50, or 52.
The polypeptides of the instant SEQ ID NO: 51 is, for example, more than 99% identical to the polypeptide set forth in SEQ ID NO: 52, of the ‘636 patent. Although ‘636 claims does not limit to a soybean plant, soybean is the working example of ‘636 patent and therefore an obvious embodiment. Similarly, SEQ ID NO: 51 of the instant claim is an obvious embodiment encompassed by the ‘636 patent regarding at least 90% identity to the amino acid sequence of SEQ ID NO: 1, 4, 7, 9, 11, 18, 22, 25, 28, 31, 34, 37, 40, 43, 46-50, or 52.
Therefore, although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 9-12 remain, and new claims 21-22 are, rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-12 of U.S. Patent No. US11655480B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The patented claims are drawn to a soybean plant comprising a recombinant DNA molecule comprising a nucleic acid sequence encoding a polypeptide having at least 90% identity to the amino acid sequence of SEQ ID NO: 51, wherein the polypeptide confers herbicide tolerance to a transgenic plant.
The polypeptides of the instant SEQ ID No: 51, is the same as the patented SEQ ID NO: 51. Although ‘480 claims does not limit to a soybean plant, soybean is the working example of ‘480 patent and therefore an obvious embodiment.
Therefore, although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 9-12 remain, and new claims 21-22 are, rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US10900050B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The patented claims are drawn to a plant comprising a recombinant DNA molecule comprising a nucleic acid sequence encoding a polypeptide having at least 90% identity to the amino acid sequence of SEQ ID NO:14, wherein the polypeptide confers herbicide tolerance to a transgenic plant.
The polypeptides of the instant SEQ ID NO: 51 has over 99% sequence identity to the patented SEQ ID NO: 14. Although ‘050 claims does not limit to a soybean plant, soybean is the working example of ‘050 patent and therefore an obvious embodiment. Similarly, SEQ ID NO: 51 of the instant claim is an obvious embodiment encompassed by the ‘050 patent regarding at least 90% identity to the amino acid sequence of SEQ ID NO: 14.
Therefore, although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 9-12 remain, and new claims 21-22 are, rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-98 of U.S. Patent No. US10023874B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The patented claims are drawn to a plant comprising a recombinant DNA molecule comprising a nucleic acid sequence encoding a polypeptide having at least 92% identity to an amino acid sequence selected from the group consisting of SEQ ID NO: 1, 4, 7, 9, 11, 14, 18, 22, 25, 28, 31, 34, 37, 40, 43, and 46-52, wherein the polypeptide confers herbicide tolerance to a transgenic plant.
The polypeptides of the instant SEQ ID NO: 51 is, for example, more than 99% identical to the polypeptide set forth in SEQ ID NO: 52, of the ‘874 patent. Although ‘874 claims does not limit to a soybean plant, soybean is the working example of ‘874 patent and therefore an obvious embodiment. Similarly, SEQ ID NO: 51 of the instant claim is an obvious embodiment encompassed by the ‘874 patent regarding at least 90% identity to the amino acid sequence of SEQ ID NO: 1, 4, 7, 9, 11, 18, 22, 25, 28, 31, 34, 37, 40, 43, 46-50, or 52.
Therefore, although the claims at issue are not identical, they are not patentably distinct from each other.
Conclusion
No claims 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.
Claims 9-12 and 21-22 are free of the prior art because there is no prior art teaching or suggesting the claimed soyean plant comprising a recombinant DNA encoding herbicide tolerant polypeptide having at least 92% amino acid sequence identity with SEQ ID NO: 51. The closest prior art is US Patent No. 7838733 to Wright, which teaches a recombinant polynucleotide that encodes an AAD-1 protein comprising the amino acid sequence of SEQ ID NO: 9 having aryloxyalkanoate dioxygenase activity, and transgenic plants and methods. The prior art AOPP protein has 89.1% (263/295) identity with the instant SEQ ID NO: 1. However, Wright does not teach or suggest the sequence variants and improved herbicide tolerance of the instantly claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WEIHUA FAN whose telephone number is (571)270-0398. The examiner can normally be reached Monday-Friday, 9-5.
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 A 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.
WEIHUA . FAN
Primary Examiner
Art Unit 1663
/WEIHUA FAN/Primary Examiner, Art Unit 1663