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 .
Status of the Claims
Claims 1-19 are pending.
Claims 1-19 are examined herein.
Information Disclosure Statement
The Information Disclosure Statement filed on 09/19/2024 is in compliance with the provisions of 37 CFR 1.97 and has been considered in full. A signed copy of the list of references cited is included with this Office Action.
Examiner’s Note
Applicant’s disclosure of the New Guinea Impatiens variety SAMKINP077 breeding history and parental genetics in the instant specification dated 07/29/2024 is acknowledged and presented below.
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However, while Applicant states that the two parental varieties (NU-8618w and NS-5651w) are both unpatented proprietary Impatiens lines, Applicant does not provide any other names for the parental varieties except those that are not present in the public domain. Examiner’s interpretation of this disclosure, based on a review of the prior art, and no instance of either of these parental lines being publicly known, is that these parental lines are not publicly available lines that were internal proprietary unpatented lines as described. If these parental lines were publicly known or known by alternative names, Applicant should identify any and all other potential names for all parental lines utilized in the development of the instant cultivar and all other potential names for the claimed cultivar. If Applicant’s breeding history uses proprietary cultivar names, Applicant should notate in the specification all other names of the proprietary cultivars, especially publicly disclosed or patented cultivar information. If the breeding history encompasses a locus conversion or a backcrossing process, Applicant should clearly indicate the recurrent parent and the donor plant and specifically name the trait or transgenic event that is being donated to the recurrent parent. If one of the parents is a backcross progeny or locus converted line of a publicly disclosed line, Applicant should provide the breeding history of the parent line as well (i.e., grandparents). Applicant should identify the breeding method used, such as single seed descent, bulk method, backcross method, etc., and the filial generation in which the instant plant was chosen. Information pertaining to the homozygosity or heterozygosity of the parents as well as the instant plant should be set forth.
Based on the Applicant’s disclosure, for examination purposes, Examiner will interpret the parental lines as having never been publicly available, unless Applicant provides evidence to the contrary.
Specification
The disclosure is objected to because of the following informalities:
On pg. 28 of the instant specification, in the last line of paragraph 0083, there is a blank space where there should be a NCMA number.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Indefiniteness
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 1-19 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.
The recitation of “NCMA No. ____” in Claim 1 is indefinite because the claim does not clearly set forth the metes and bounds of the patent protection desired. Without the accession number for the plant tissue deposited to the NCMA the scope of the claim is not clear because the representative deposit of the claimed variety is not clear. The claim is vague and indefinite due to the missing accession number because of the requirement that the inventor claims what is viewed as the invention. Therefore, Claim 1 is rejected as indefinite for failing to clearly set forth the metes and bounds of the claims.
Claims 2-19 are also rejected for depending from an indefinite claim and failing to recite additional limitations that would render the claims definite.
Claims 1-2, 6, 12-13, 15 and 17 are rejected as being indefinite in their recitation “SAKIMP077” because the recitation does not clearly identify the claimed variety. Furthermore, the recitation does not set forth the metes and bounds of the claimed invention. Since the name “SAKIMP077” is not known in the art, the use of said name does not carry art recognized limitations as to the specific characteristics or essential characteristics that are associated with that denomination. In addition, the name appears to be arbitrary, and the specific characteristics associated therewith are unclear without the deposit. This aspect of the indefiniteness rejection can be obviated by amending the claims to recite the NCMA deposit number.
Claims 3-5, 7-11, 14, 16 and 18-19 are also rejected for depending on an indefinite claim and failing to recite additional limitations that would render the claims definite.
Claim 13 is rejected as being indefinite in the recitation of “A method for producing the New Guinea Impatiens plant” because the claim refers to “the New Guinea Impatiens plant” but it is not clear what Impatiens plant the claim is referring to. It does not appear that “the New Guinea Impatiens” plant is the plant of SAKIMP077 given that part d) of the claim states that SAKIMP077 is one of the parents of the method. Therefore, it is not clear what Impatiens plant this method is used to produce and one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claimed invention.
Claim 14 is also rejected for depending on Claim 13 and failing to limit the scope of the claim to definite subject matter.
Claim Rejections - 35 USC § 112
Deposit of Biological Material Requirement
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 1-19 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 all require New Guinea Impatiens variety SAKIMP077. Since the tissue of the claimed 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 Impatiens variety and it is not apparent if this Impatiens variety or if tissue from this Impatiens variety is readily available to the public. If a tissue is not so obtainable or available, a deposit thereof may satisfy the requirements of 35 U.S.C. 112. So long as the deposit 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 a representative sample of plant tissue of SAKIMP077 (pg. 28), but there is no indication that the tissue sample has been deposited.
If the deposit of this tissue 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 deposit has been made and that the deposited sample 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 during the pendency of the application, access to the invention will be afforded to the Commissioner upon request; 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 l.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.
Claim Rejections - 35 USC § 112
Written Description
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 4-5 and 8 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.
Claim 4-5 are broadly directed to tissue or cell cultures of regenerable cells produced from the claimed hybrid New Guinea Impatiens variety including those produced from F2 embryo tissues. As noted above with respect to the plant parts of Claim 2, given that the claimed variety is a heterozygous F1 hybrid, F2 tissues, cells and cultures thereof can have very distinct genetic and morphological characteristics from the claimed hybrid variety. While Applicant has described the characteristics of the claimed hybrid variety, Applicant has not adequately described the genetic and morphological characteristics encompassed by the broad genus of all of the many possible F2 progeny plants, tissues and cells encompassed in the instant claims.
Claim 8 is broadly directed to New Guinea Impatiens plants produced by growing plantlets or proliferated shoots produced by vegetatively propagating tissue capable of being propagated from the claimed hybrid plant, including F2 embryo tissue, in order to obtain proliferated shoots or plantlets. Therefore, Claim 8 is drawn to plants produced by propagating F2 embryo tissue to produce proliferated shoots, plantlets and then plants, and as such, is drawn to F2 plants. As noted above with respect to the plant parts of Claim 2 and the tissue and cell cultures of Claims 4-5— given that the claimed variety is a heterozygous F1 hybrid— F2 plants can have very distinct genetic and morphological characteristics from the claimed hybrid variety. While Applicant has described the characteristics of the claimed hybrid variety, Applicant has not adequately described the genetic and morphological characteristics encompassed by the broad genus of all of the many possible F2 progeny plants encompassed by the instant claims.
Closest Prior Art
Claims 1-19 appear to be free of the prior art, given the failure of the prior art to teach or reasonably suggest a New Guinea Impatiens variety having all the phenotypic characteristics of the exemplified New Guinea Impatiens variety listed in Table 1 (pgs. 4-8), or methods of its use. The closest prior art in regard to Claims 1-19 can be found in Sato et al. (US Patent No. 11,666,014 B1, issued 06/06/2023) which teaches New Guinea Impatiens variety SAKIMP069 having the same plant habit (mounding), life cycle (annual), leaf shape (lanceolate), leaf tip (acuminate), leaf base (shortly attenuate), leaf arrangement (whorled), leaf margin (serrate), leaf surface (smooth and waxy), stem pubescence (none/absent), and leaf pubescence (absent/none) as the instant variety. However, New Guinea Impatiens variety SAKIMP069 differs from the instant New Guinea Impatiens variety in at least: parental genetics, breeding history, stem color, anthocyanin color, leaf color (upper and lower), petiole color, vein color (upper and lower), petal color (upper and lower surface), and anther color.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELSEY L. MCWILLIAMS whose telephone number is (703)756-4704. The examiner can normally be reached M-F 08:00-17:30.
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 at (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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/KELSEY L MCWILLIAMS/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663