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 .
Claim status
Claims 1-20 are pending.
Claims 10-20 are withdrawn.
Claims 1-9 are examined.
Election/Restrictions
Applicant’s election without traverse of claims 1-9 in the reply filed on 7/15/2026 is acknowledged.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/15/2026.
Claim Interpretation
Applicant provides the following regarding “recombinant” in the context of a nucleic acid sequence, “’recombinant’ nucleic acid molecule (or DNA) is used herein to refer to a nucleic acid sequence (or DNA) that is in a recombinant bacterial or plant host cell; has been edited from its native sequence; or is located in a different location than the native sequence”.
Therefore, “recombinant” in the context of claim 1 is interpreted as having been edited from the native sequence or is in a different location than the native sequence. Therefore, a rejection under 35 USC 101 has not been applied as would have been applied if “recombinant” were interpreted more broadly to encompass naturally occurring embodiments, given that SEQ ID NO: 9 is a genomic sequence.
Claim Rejections - 35 USC § 112
Enablement
Claims 1-9 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.
Applicant claims method of increasing SCR resistance in a plant by expressing a recombinant polynucleotide comprising SEQ ID NO: 9.
Applicant teaches identification of SNPs associated with SCR resistance in corn (Table 5, for example).
Applicant does not teach increasing SCR resistance in a plant by expressing a recombinant polynucleotide comprising SEQ ID NO: 9. Applicant only speculates that a plant transformed to express SEQ ID NO: 9 would have increased SCR resistance (Example 5).
The lack of predictability in the art and the lack of guidance provided by Applicant would not have enabled one of ordinary skill in the art to predictably practice the claimed method. Without validation of SEQ ID NO: 9 being exogenously expressed in a plant resulting in increased resistance to SCR, one of ordinary skill in the art would not recognize Applicant’s disclosure to be enabling of the claimed method.
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,091,673. Although the claims at issue are not identical, they are not patentably distinct from each other because Applicant claims a method of increasing resistance to SCR in a plant by expressing a recombinant nucleic acid of SEQ ID NO: 9 in the plant. Claim 1 of ‘673 is drawn to producing a plant comprising a series of SNPs associated with SCR resistance. The instant disclosure provides that SEQ ID NO: 9 is the genomic sequence of the whole NLR01 fragment (paragraph bridging pages 44-45). Applicant discloses that NRL01 is one of two candidate resistance genes identified from the resistant corn line CIMBL83 and appears to indicate that NRL01 is the primary candidate (last paragraph of page 42). Applicant discloses that Table 5 shows the KASP markers for the CIMBL83 resistant haplotype (last sentence of page 43). The SNPs disclosed in instant Table 5 are identical to those of patented ‘673 claim 1. These SNPs are interpreted as being encompassed by the genomic sequence of SEQ ID NO: 9. Therefore, claim 1 of ’673 is a species that anticipates the genus required by instant claims 1-9.
Conclusion
Claims 1-9 are rejected.
The closest prior art is Genbank accession no. AC165173.2, which shares only 93.41% identity across 24% of the sequence.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R BYRNES whose telephone number is (571)270-3935. The examiner can normally be reached 9:00 - 5:00 M-F.
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/DAVID R BYRNES/Examiner, Art Unit 1662
