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 .
Claims 17 and 21-30 are pending.
Election/Restrictions
Applicant’s election without traverse of the species “SEQ ID NO: 2” in the reply filed on 14 May 2026 is acknowledged.
Examiner’s Comment
The instant application was filed as a continuation of application 17/273,159 (patent 12,084,672 was granted on application ‘159). The examiner issued a Requirement for Restriction/Election during the prosecution of application ‘159. The claims of the instant application have consonance with the non-elected subject matter of application ‘159. However, the “safe harbor” protections of 35 U.S.C. 121 only apply to divisional applications. From MPEP 804.01:
“ The U.S. Court of Appeals for the Federal Circuit has concluded that the protection of 35 U.S.C. 121 does not extend to all types of continuing applications, stating that "the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications." Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 1362, 86 USPQ2d 1001, 1007-1008 (Fed. Cir. 2008).”
For this reason, Examiner has made the double patenting rejection over US 12,084,672 set forth below.
Claim Objections
Claim 21 is objected to because of the following informalities: in line 2, please delete “corresponds to” and replace with –is--.
Appropriate correction is required.
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 17 and 21-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,084,672 B1. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 17 and 21-30 are broadly drawn to genetically modified Camelina, canola or soybean plants that express an RNA that increases seed yield (ISY RNA), wherein the genetically modified plant comprises a modified gene for the ISY RNA, wherein the ISY RNA encodes a protein comprising SEQ ID NO:2, and wherein the modified gene comprises a non-cognate promoter and a nucleic acid encoding said ISY RNA.
Claims 1-8 of U.S. Patent No. 12,084,672 B1 are broadly drawn to genetically modified Camelina, canola or soybean plants that express a protein that increases seed yield (ISY protein), wherein the genetically modified plant comprises a modified gene for the ISY protein, wherein the ISY protein comprises SEQ ID NO:2, and wherein the modified gene comprises a non-cognate promoter and a nucleic acid encoding said ISY protein.
Regarding instant claims 17, 21-24, 27-28 and 30, the recited claim limitations are nearly identical to the claims of the reference patent except for the recitation of “ISY RNA” in the instant application and the recitation of an “ISY protein” in the reference patent claims. However, a gene encoding a protein comprising SEQ ID NO: 2, would inherently produce an intermediary mRNA via transcription that would then be translated to produce the amino acid sequence comprising SEQ ID NO: 2. This would be an “ISY RNA”. Therefore the claims of the reference patent anticipate the claims of the instant patent.
Regarding instant claims 25-26, which depend from instant claim 17, it would be obvious to one of skill in the art to transform a plant to comprise the modified gene as this is a routing and well known process for making genetically engineered plants comprising modified genes. Such transformation would result in the integration of the modified gene into the genomic DNA of the plant. Such transformation would also result in stable expression.
Regarding instant claim 29, which depends from instant claim 17, SEQ ID NO: 2, as claimed in both the instant application and the reference patent, is an amino acid sequence which is encoded by SEQ ID NO: 1. SEQ ID NO: 1 does not appear to contain any introns but rather consists of coding sequence. The amino acid sequence of SEQ ID NO: 2 makes obvious any coding sequence which encodes it. Thus, it would use SEQ ID NO: 1 as the nucleic acid encoding the ISY RNA.
Conclusion
No claims are allowed.
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/ALEKSANDAR RADOSAVLJEVIC/Examiner, Art Unit 1662
/BRENT T PAGE/Primary Examiner, Art Unit 1663
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