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 6/30/2026
Claims 1, 3, and 7 are amended. Claims 14-16 are added. Claims 1, 3-4, 7-8 and 14-16 are pending and examined herein.
Response to Amendment
The objections of claims 1 and 12 are withdrawn in view of amendments.
The rejection of claims 7-8 35 U.S.C. 112(b) is withdrawn in view of amendment to the claims.
The rejection of claims 1, 3-4, and 7-8, under 35 U.S.C. 102(a)(1) and (a)(2) over Tranel et al (US Patent US7671254B2; issued 2 March 2010) is withdrawn in view of amendment to the claims.
The rejection of claims 1-4, 7-8, and 12-13 under 35 U.S.C. 102(a)(1) and (a)(2) over Hutzler, et al (US PGPUB US20150252379A1; Filed on Dec. 16, 2010) is withdrawn in view of amendment to the claims.
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 1, 3-4, 7-8 and 14-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-11, and 13-24 of U.S. Patent No. 10041087. Although the claims at issue are not identical, they are not patentably distinct from each other.
The instant claims are drawn to a method for controlling undesired vegetation at a plant cultivation site, the method comprising the steps of: a) providing, at said site, a plant that comprises at least one nucleic acid encoding a mutated protoporphyrinogen oxidase (mutated-PPO) which is resistant or tolerant to a "PPO inhibiting herbicide", and which comprises (1) the amino acid sequence of SEQ ID NO: 30 or 31 with a double amino acid substitution of L410E/F433V or (2) the amino acid sequence of SEQ ID NO: 37 with a double amino acid substitution selected from the group consisting of R95A/F397V and L374Q/F397V.
The patented claims are drawn to method for controlling undesired vegetation at a plant cultivation site, the method comprising the steps of providing, at said site, a plant that comprises at least one nucleic acid comprising a nucleotide sequence encoding a herbicide-tolerant mutant protoporphyrinogen oxidase (PPO) enzyme comprising an amino acid substitution at a position corresponding to position Leu397 of SEQ ID NO:2 and an amino acid substitution at a position corresponding to position Phe420 of SEQ ID NO:2, wherein the amino acid corresponding to position Leu397 of SEQ ID NO:2 is substituted with aspartate, glutamate, or glutamine, and wherein the amino acid corresponding to position Phe420 of SEQ ID NO:2 is substituted with valine or methionine;
The instant L410 is an amino acid at a position corresponding to position Leu397 of SEQ ID NO:2 in the patented claim; the instant F433 is an amino acid at a position corresponding to position F420 of SEQ ID NO:2 in the patented claim; the patented claim encompass a double substitution L397E and F420V, which reads on the instant L410E/F433V double substitution.
See alignment of the instant SEQ ID NO: 30 (query) and the patented SEQ ID NO: 2: (the relevant L and F highlighted).
Query 390 LEGFGVLIPYKEQQKHGLKTLGTLFSSMMFPDRAPDDQYLYTTFVGGSHNRDLAGAPTSI 449
LEGFGVLIP KEQ +GLKTLGTLFSSMMFPDRAP D L+TTFVGGS NR LA A T
Sbjct 378 LEGFGVLIPSKEQH-NGLKTLGTLFSSMMFPDRAPSDMCLFTTFVGGSRNRKLANASTDE 436
Claims 1, 3-4, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10100329. Although the claims at issue are not identical, they are not patentably distinct from each other.
The patented claims are drawn to method for controlling undesired vegetation at a plant cultivation site, the method comprising the steps of providing, at said site, a plant that comprises at least one nucleic acid comprising a nucleotide sequence encoding a herbicide-tolerant mutant protoporphyrinogen oxidase (PPO) enzyme comprising an amino acid substitution at a position corresponding to position Leu397 of SEQ ID NO:2 and an amino acid substitution at a position corresponding to position Phe420 of SEQ ID NO:2, wherein the amino acid corresponding to position Leu397 of SEQ ID NO:2 is substituted with aspartate, glutamate, or glutamine, and wherein the amino acid corresponding to position Phe420 of SEQ ID NO:2 is substituted with valine or methionine;
The instant L410 is an amino acid at a position corresponding to position Leu397 of SEQ ID NO:2 in the patented claim; the instant F433 is an amino acid at a position corresponding to position F420 of SEQ ID NO:2 in the patented claim; the patented claim encompass a double substitution L397E and F420V, which reads on the instant L410E/F433V double substitution.
Claims 1, 3-4, 7-8, 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3, 8-16 of U.S. Patent No. 11572571. Although the claims at issue are not identical, they are not patentably distinct from each other.
The instant L410 is an amino acid at a position corresponding to position Leu397 of SEQ ID NO:2 in the patented claim; the instant F433 is an amino acid at a position corresponding to position F420 of SEQ ID NO:2 in the patented claim; the patented claim encompass a double substitution L397E and F420V, which reads on the instant L410E/F433V double substitution.
Claims 7-8, 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3, 8-16 of U.S. Patent No. 12529066. Although the claims at issue are not identical, they are not patentably distinct from each other.
The instant L410 is an amino acid at a position corresponding to position Leu397 of SEQ ID NO:2 in the patented claim; the instant F433 is an amino acid at a position corresponding to position F420 of SEQ ID NO:2 in the patented claim; the patented claim encompass a double substitution L397E and F420V, which reads on the instant L410E/F433V double substitution.
Claims 7-8 and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3 and 8-10 of U.S. Patent No. 11441154. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1, 3-4, 7-8 and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11306322. Although the claims at issue are not identical, they are not patentably distinct from each other.
The L374E/F397V double mutant reads on the instant L410E/F433V double substitution.
Claims 1, 3-4, 7-8, 14-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7-17, 21-22, and 27-28 of U.S. Patent No. 10087460. Although the claims at issue are not identical, they are not patentably distinct from each other. The instant R95A/F397V reads on the patented R128A/F420V.
Claims 1, 3-4, 7-8, 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10968462. Although the claims at issue are not identical, they are not patentably distinct from each other.
The patented claims are drawn to a method and plant comprising the mutated PPO and mutations as recited in the instant claims, and further an exogenous polynucleotide encoding a CYP450 polypeptide. Therefore, the patented claims are drawn to a subgenus of the instantly claimed broad genus.
Claims 1, 3-4, 7-8, 14-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-13, and 16-18, of U.S. Patent No. 10982227. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-4 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11149030. Although the claims at issue are not identical, they are not patentably distinct from each other.
The patented claims are drawn to methods of weed control, comprising applying PPO herbicide to plants comprising PPO polypeptide tolerant to the herbicide, wherein the PPO protein has the mutations as described in the instant claims. Although the patented claims recite specific herbicides that is not recited in the instant claims, such belong to a subgenus of PPO herbicides of the broader genus of the instant claims.
Claims 7-8 and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-7 of U.S. Patent No. 10392630. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-4 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11479786. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1, 3-4, 7-8 and 14-15 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 14, 15, and 18 of copending Application No. 19426940 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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WEIHUA . FAN
Primary Examiner
Art Unit 1663
/WEIHUA FAN/Primary Examiner, Art Unit 1663
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