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 .
Claims 1-20 are pending and examined herein.
Specification
The disclosure is objected to because of the following informalities: on page 56 (¶00251) the specification lists the accession number under which the wheat cultivar T16Y871 is deposited as “_______” and gives the date of the deposit as “_______”. The deposit accession number and the date need to be specified.
Appropriate correction is required.
Claim Objections
Claims 1, 9 and 11 are objected to because of the following informalities: the claims recite that representative seed of the wheat cultivar T16Y871 is deposited under ATCC Accession No.________. These deposit accession numbers are not complete and cannot be used to access the deposited seeds.
Appropriate correction is required.
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 1-20 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.
Claims 1, 9 and 11 are indefinite in their recitation of “wheat cultivar T16Y871” because the corresponding deposit number is absent from the claims. Common designations of plant varieties can change over time and the term “wheat cultivar T16Y871” is not otherwise known in the art. Thus, the metes and bounds of claims 1, 9 and 11 are unclear.
Claims 6 and 17 are indefinite in their recitation of “wheat cultivar T16Y871”. Without the deposit number in the independent claims, it is unclear what soybean is being referred to. Common designations of plant varieties can change over time and the term “wheat cultivar T16Y871” is not otherwise known in the art. Thus, the metes and bounds of claims 6 and 17 are unclear.
Claims 1, 9 and 11 are indefinite because of the presence of a blank line instead of an ATCC Accession No. Because the number is not present, it is unclear to which deposit the claims refer.
Claims 2-5, 7-8, 10, 12-16 and 18-20 depend directly or indirectly from the rejected claims above and, as they fail to clarify the metes and bounds of the claims from which the depend, are rejected on the same ground.
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.
Enablement
Claims 1-20 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 claims are directed to novel wheat cultivar T16Y871.
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.
The specification does not disclose a repeatable process to obtain the exact same plant in each occurrence and it is not apparent if such a plant is readily available to the public.
If a plant is not so obtainable or available, a deposit thereof may satisfy the requirements of 35 U.S.C. 112. So long as the number of seeds deposited complies with the requirements of the IDA where the deposit is made, the USPTO considers such a compliant submission as satisfying the rules under 37 CFR 1.801 through 1.809.
It is noted that Applicant intends to deposit seeds for T16Y871 at the ATCC, but there is no indication that the seeds have been deposited (¶0251). Further, there is no affirmative statement in the specification that all restrictions upon availability to the public will be irrevocably removed upon granting of the patent.
If the deposit of these seeds is made and accepted under the terms of the Budapest Treaty, then an affidavit or declaration by the Applicant, or a statement by an attorney of record over his or her signature and registration number, stating that the seeds will be irrevocably and without restriction or condition released to the public upon the issuance of a patent would satisfy the deposit requirement made herein.
If the deposit has not been made and accepted under the Budapest Treaty, then in order to certify that the deposit, meets the requirements set forth in 37 CFR 1.801-1.809, Applicant may provide assurance of compliance by an affidavit or declaration, or by a statement by an attorney of record over his or her signature and registration number showing that
(a) during the pendency of the application, access to the invention will be afforded to the Commissioner upon request;
(b) all restrictions upon availability to the public will be irrevocably removed upon granting of the patent;
(c) 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 enforceable life of the patent, whichever is longer; and
(d) the viability of the biological material at the time of deposit will be tested (see 37 CFR 1.807).
In addition, the identifying information set forth in 37 CFR 1.809(d) should be added to the specification. See 37 CFR 1.801 - 1.809 [MPEP 2401-2411.05] for additional explanation of these requirements.
Subject Matter Free of the Prior Art
Claims 1-20 appear to be free of the prior art.
The closest prior art is Baker et al (US Patent No.: 11,272,676 B2; 15 March 2022). Baker et al teaches wheat variety M14C1030. Wheat variety M14C1030 is a hard red spring wheat that shares many trait characteristics with the instant variety, such as a white coleoptile, yellow anthers, twisted flag leaf, presence of waxy bloom on the flag leaf and stem, awned heads, and acuminate glume beaks. However, wheat variety M14C1030 and the instant variety have different parental genetics and differ in many other traits such as the orientation of the flag leaf at boot stage, heading days, plant height, head shape and curvature, awn coloration, glume color, and seed weight.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEKSANDAR RADOSAVLJEVIC whose telephone number is (571)272-8330. The examiner can normally be reached Monday--Friday 8-5:30.
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/ALEKSANDAR RADOSAVLJEVIC/ Examiner, Art Unit 1662
/BRENT T PAGE/ Primary Examiner, Art Unit 1663