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 .
Interview
The examiner requests that applicant schedule an interview to discuss the breeding history, description and any other patents or patent applications including plant patents which are drawn to the instant variety before responding to this office action.
Given the contradictory descriptions of the variety in the specification and the statement on the TCG Durum Wheat page that TCG ranger (aka T17C12D) is a CSO variety which is patented and from which seed cannot be saved and replanted the examiner believes that an interview prior to response will best move the application forward (TCG Durum Wheat, Page 1).
Claim Status
Claims 1-20 are pending.
Claims 1-20 are examined on the merits.
Specification
The disclosure is objected to because of the following informalities: in paragraph 0249 on page 56 of the instant specification the second sentence includes “-----” instead of a date of the deposit of seeds of wheat cultivar T17C12D. Additionally, later in that sentence there is an ATCC Accession number listed as “--------“. The deposit accession number and the date need to be specified.
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 1-20 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 all recite dashed lines instead of the accession number. In the absence of an accession number, the metes and bounds of the claims cannot be determined. Claims 2-8, 10 and 12-20 are rejected for depending from indefinite claims and failing to recite additional limitations that would render the claims definite.
Claims 1, 6, 11 and 17 are indefinite in their recitation of “wheat cultivar T17C12D” for several reasons. First, a cultivar is described in several ways which include a name which if known in the art represents a fixed set of genetics and morphological characteristics, a deposit of representative seeds of the cultivar which represent a fixed reference of the characteristics of the claimed cultivar, a description of the breeding history which provides information on the genetics of the cultivar and a description of the characteristics of the cultivar which is often provided in a trait table.
In the instant case the deposit has not been perfected and no deposit number is provided in the claims or in the specification. Given that the term “wheat cultivar T17C12D” is not otherwise known in the art, without the deposit the exact scope imparted by the use of this term is not clear.
Further, while applicant has provided a breeding history in table 1 of the specification, applicant has also provided description of the variety in the paragraphs preceding table 1 which identifies the parents of the instant variety. Importantly, in paragraph 0020, the parents of the instant variety are described as Linkert and Brick which are plants of wheat species Triticum aestivum while in Table 1 the parents of the instant variety are listed as VT Peak and Joppa which are Triticum turgidum (Durham Wheat) varieties.
Additionally, the title of the instant application and Table 1 state that the instant cultivar is a Durham wheat (Triticum turgidum) cultivar, while paragraph 0019 of the instant specification states that the instant variety is a hard red spring type, which paragraph 0005 makes clear belongs to the Triticum aestivum species.
As such given the description of the variety provided in the specification the exact scope imparted to the claims by the use of the instant cultivar name is not clear. This is because given that applicant has provided two different sets of parents of the instant cultivar as well as two different descriptions of the type of wheat and even two different species to which the claimed cultivar is a member the phenotypic, morphological and genetic characteristics are not clear. Therefore, even with a perfected deposit the scope imparted to the claims by recitations of the instant variety is not clear and the claims are rejected as indefinite. Dependent claims are included for depending on indefinite claims and failing to limit the scope of the claims to definite subject matter.
Claims 1, 6, 11 and 17 are indefinite in their recitation of “wheat cultivar T17C12D” because the corresponding deposit number is absent from the claims. Common designations of plant varieties can change over time and the term “wheat cultivar T17C12D” is not otherwise known in the art. Thus, the metes and bounds of claims 1, 6, 11 and 17 are unclear. Claims 2-5, 7-10, 12-16 and 18-20 are rejected for depending on indefinite claims and failing to limit the scope to definite subject matter.
Claim Rejections - 35 USC § 112 (Enablement)
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 1-20 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 T17C12D.
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 T17C12D at the ATCC, but there is no indication that the seeds have been deposited (¶0249). 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
The claims all require wheat variety T17C12D. This variety appears to be free of the art.
The closest prior art is found in the 2016 Agriculture MREDI Grant Quarter 2 Report. Specifically in the report on project 41W221, Principle Investigator, Mike Giroux describes a cross that was made between Durum wheat varieties Joppa and VT Peak, the parents of the instant variety (Instant Specification, Page 6, Table 1)(Giroux, Page 9, Second Full Paragraph; Giroux, Pages 9-10, Table 1). Importantly, Giroux is silent on the additional breeding steps used to produce the instantly claimed variety and does not describe the traits of any of the F1 progeny produced from the Joppa x VT-Peak and VT-Peak x Joppa crosses.
Conclusion
No claims are allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN JAMES SULLIVAN whose telephone number is (571)272-0561. The examiner can normally be reached 7:30 to 5:00.
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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/BRIAN JAMES SULLIVAN/ Examiner, Art Unit 1663
/Amjad Abraham/ SPE, Art Unit 1663