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 .
Priority
The instant application was filed 06/26/2024 and claims foreign priority to CN202311563334.5, filed 11/22/2023. It is noted the foreign priority document is n
not in English this the instant claims are being afforded the filing date of 6/26/2024.
Claim Objections
Claims 1-3 are objected to because of the following informalities:
Claim 1 is objected to as it recites “SGPL!” but does not recite the full terminology for the acronym (or abbreviation). Claims are more concise when the first time an acronym (or abbreviation) is presented the full terminology is also presented. Finally an acronym (or abbreviation) may have alternative meanings to an artisan.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-3 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.
Claim 1 is indefinite because it lacks a positive active step relating back to the preamble. The preamble recites a screening method in breeding or beef production of a Shandong Black cattle, however the last positive active step is drawn to detecting the following items using the SGPL1 as a target:. Therefore it is unclear as to whether the method is drawn to screening method in breeding or beef production of a Shandong Black cattle or detecting the following items using the SGPL1 as a target. Further it is unclear where or how SGPL1 is being detected.
Further claim 1 recites, “messenger RNA expression level and a transcriptional or post-transcriptional modification level of an SGPL1 gene.” The metes and bounds are unclear as to what is required of “transcriptional or post-transcriptional modification level of an SGPL1 gene” as transcriptional or post-transcriptional modification is not an art accepted term and is not defined by the specification. Further it is unclear how to detect, “messenger RNA expression level and a transcriptional or post-transcriptional modification level.
Further claim 1 recites, “mutation and a single nucleotide polymorphism (SNP) of the SGPL1 gene.” The metes and bounds are unclear as a mutation appears to encompass a SNP. This it is unclear if the claim requires both or if a SNP anticipates the limitation.
Claim 1 further recites, “an expression level and a post-translational modification level of an SGPL1 protein; or a function, localization, and an activity of the SGPL1 protein.” The metes and bounds are unclear as to what is required of “a post-translational modification level of an SGPL1 protein” as a post-translational modification level of an SGPL1 protein is not an art accepted term and is not defined by the specification. Further it is unclear how to detect, “an expression level and a post-translational modification level of an SGPL1 protein; or a function, localization, and an activity of the SGPL1 protein.”
Claim 2 recites, “wherein the method further comprises screening an individual with a high transcription level, a high expression level, or a high activity of the SGPL1 as a stud bull.” The metes and bounds are unclear as high transcription level, a high expression level, or a high activity of the SGPL1 are relative terms. The specification and claims do not provide a standard to differentiate high transcription level, a high expression level, or a high activity of the SGPL1 from low transcription level, a low expression level, or a low activity of the SGPL1. Further it is unclear “as a stud bull” relates to claim 1 or claim 2. It is unclear if a stud bull is a target, where SGPL1 is detected or something else.
Claim 3 recites, “wherein the method further comprises retaining a calf with a high transcription level, a high expression level, or a high activity of the SGPL1 to allow beef production.” The metes and bounds are unclear as high transcription level, a high expression level, or a high activity of the SGPL1 are relative terms. The specification and claims do not provide a standard to differentiate high transcription level, a high expression level, or a high activity of the SGPL1 from low transcription level, a low expression level, or a low activity of the SGPL1. Further it is unclear how the recitation of high transcription level, a high expression level, or a high activity of the SGPL1 to allow beef production relate to retaining a calf.
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)(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) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bionaz (BMC Genomics 2008, 9:366).
As noted in the MPEP 2111.02, “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” Further, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Accordingly, the claim language of " A screening method in breeding or beef production of a Shandong Black cattle” merely sets forth the intended use or purpose of the claimed methods, but does not limit the scope of the claims.
The claims are unclear what is required of “detecting the following items using the SGPL1 as a target: a messenger RNA expression level and a transcriptional or post-transcriptional modification level of an SGPL1 gene; or mutation and a single nucleotide polymorphism (SNP) of the SGPL1 gene; or an expression level and a post-translational modification level of an SGPL1 protein; or a function, localization, and an activity of the SGPL1 protein.” The broadest reasonable interpretation is detection of expression of SGPL1 in cattle.
With regards to claim 1, Bionaz teaches detection of SGPL1 In figure 5.
While claim 2 recites, “wherein the method further comprises screening an individual with a high transcription level, a high expression level, or a high activity of the SGPL1 as a stud bull.” As detailed above it is unclear what high is relative to. Further it is unclear what stud bull has to do with the detecting of claim. The broadest reasonable interpretation is detection of expression of SGPL1 in cattle.
With regards to claim 3, Bionaz teaches detection of SGPL1 In figure 5.
While claim 3 recites, “wherein the method further comprises retaining a calf with a high transcription level, a high expression level, or a high activity of the SGPL1 to allow beef production..” As detailed above it is unclear what high is relative to. Further it is unclear what stud bull has to do with the detecting of claim. The broadest reasonable interpretation is detection of expression of SGPL1 in cattle.
With regards to claim 3, Bionaz teaches detection of SGPL1 In figure 5.
Summary
No claims are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN C POHNERT PhD whose telephone number is (571)272-3803. The examiner can normally be reached Monday- Friday about 6:00 AM-5:00 PM, every second Friday off.
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, Anne Gussow can be reached at (571)272-6047. 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.
/Steven Pohnert/Primary Examiner, Art Unit 1683
Prosecution Insights