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 1-20 are pending.
Claims 1-20 are examined on the merits.
Specification
The specification is objected for lacking a deposit date and a deposit number: on page 49, rather than an accession number or a date that the deposit was made the fourth line of paragraph 0241 includes two blanks.
Claim Rejections - 35 USC § 101 and 35 USC § 115 (Improper Inventorship)
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. 115(a) reads as follows (in part):
An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.
The present application sets forth the incorrect inventorship because a review of the record shows that the listed inventor worked for M.S. Technologies at least as early as 2013. Applicant’s breeding history submitted in the artifact folders dated 09/30/2024 and 08/11/2025 shows that the plant was obtained from an unnamed third party in 2018. Further, this breeding history does not indicate that any modification was made to that starting material. As such given that the instant invention appears to be drawn to plants obtained from an unnamed third party in 2018 and that the inventor listed in this patent application worked for the instant applicant prior to that date it does not appear that the inventor listed in this application is the inventor of the claimed plant variety.
Claims 1-20 are rejected under 35 U.S.C. 101 and 35 U.S.C. 115 for failing to set forth the correct inventorship for the reasons stated above.
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, 11, and 13 are rejected as being indefinite in their recitation "NCMA Accession _____" because the NCMA Accession Number is missing. Therefore, the metes and bounds of the claims are not clear. Amending the claims to recite the NCMA accession number would overcome the rejection.
Claims 1, 6, 10, 11, 13 and 16-18, are rejected as being indefinite in their recitation “soybean cultivar 02051391” because the recitation does not clearly identify the claimed plant cultivar and seed. Furthermore, the recitation does not set forth the metes and bounds of the claimed invention. Since the name “soybean cultivar 02051391” 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 could be modified, as there is no written description of the plant that encompasses all of its traits. This rejection can be obviated by amending the claims to recite the NCMA deposit number.
Dependent claims are also rejected because they fail to overcome the deficiencies of parent claims.
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.
Regarding Biological Deposit
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 invention appears to employ the seed of novel plants. Since the seed claimed 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. If a seed is not so obtainable or available, the requirements of 35 U.S.C. 112 may be satisfied by a deposit thereof. The specification does not disclose a repeatable process to obtain the exact same seed in each occurrence and it is not apparent if such a seed is readily available to the public.
If the deposit of the seed is made 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 the seed have been deposited and accepted under the Budapest Treaty and that the seed 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.
Although the rules do not specify a specific number of seeds to be deposited to meet the requirements of these rules, so long as the number of seeds deposited complies with the requirements of the Budapest Treaty International Depositary Authority (IDA) where the deposit is made, the USPTO would consider such a compliant submission as satisfying the rules under 37 CFR 1.801 through 1.809. Note that the American Type Culture Collection (ATCC), a Budapest IDA, requires a minimum deposit of 625 seeds; other IDAs may have different minimum requirements. Accordingly, any depositor should confirm that the number submitted to a specific IDA complies with that IDA's requirements for seed deposits.
If the deposit has not been made under the Budapest Treaty, then in order to certify that the deposit meets the criteria 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;
(d) the viability of the biological material at the time of deposit will be tested (see 37 CFR 1.807); and
(e) the deposit will be replaced if it should ever become unviable.
Applicant has NOT indicated that Applicant intends to deposit the seeds at the NCMA in accordance with 37 CFR 1.801-1.809. Accordingly, Applicant needs to provide a signed statement indicating compliance with 37 CFR 1.801-1.809, the NCMA Accession No. and evidence of deposit to overcome this rejection. Compliance with this requirement may be held in abeyance until the application is otherwise in condition for an allowance.
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.
LACK OF BREEDING HISTORY
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 written description requirement.
35 USC 112 (a) states that “The specification shall contain a written description of the invention”. In evaluating written description, the threshold question is what is “an adequate written description”.
This is a question of fact that is evaluated by the factfinder (examiner). MPEP 2163.04 clearly states that “The inquiry into whether the description requirement is met must be determined on a case-by-case basis and is a question of fact. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).”
The instant invention is a new soybean cultivar 02051391. So, the examiner will evaluate what is an adequate written description for a new soybean cultivar. In reviewing this question of fact, the examiner analyzed how plant cultivars are evaluated in the public domain. The review concluded that generally the minimum requirements for an adequate description of a new plant cultivar include a trait table and genetic information (via a breeding history). In reviewing applicant’s specification there is a phenotypic description as is seen in table 1. However, there is no accompanying detailed breeding history in the specification which sets out the parentage and specific breeding history of the claimed cultivar. Even the confidential information provided in the artifact folder is generic and does not provide a detailed and specific history which provides the genetic characteristics of the claimed cultivar. This information is insufficient to provide adequate written description of the claimed cultivar and a detailed and specific breeding history should be added to the specification.
Because the specification lacks an adequate breeding history and that breeding history is part of the minimum description of a plant cultivar the applicant has not fulfilled the requirement of 35 USC 112(a) to provide a written description in the specification. The office’s reasonable basis for challenging the adequacy of written description is informed by a review of the following:
With regard to Plant Patents, MPEP 1605 states that a complete detailed description of a plant includes “the origin or parentage”.
A breeding history, including information about parentage and breeding methodology, is part of the requirements of Plant Cultivar Protection (PVP) applications. That information is used to “determine if development is sufficient to consider the cultivar new” (See “Applying for a Plant Cultivar Certificate of Protection”, USDA, https://www.ams.usda.gov/services/pv po/application-help/apply, downloaded 05/01/2023).
The International Union for the Protection of New Cultivars of Plants (UPOV) considers breeding history and methodology part of its evaluation of essentially derived plant cultivars (UPOV, Explanatory Notes on Essentially Derived Cultivars Under the 1991 Act of the UPOV Convention, April 6, 2017, See UPOV EDV Explanatory Notes 14 and 30).
Historically, the USPTO has considered breeding history information when determining the patentability of a new plant cultivar. (See Ex Parte C (USPQ 2d 1492 (1992) (W) and Ex Parte McGowen Board Decision in Application 14/996,093, decided June 15, 2020). In both of these cases, there were many differences cited by the Applicant when comparing the prior art and the new plant cultivar. However, because the breeding history was available, these differences were deemed to be obvious and within the natural variation expected in a backcrossing breeding process. Without a breeding history in these cases, a complete comparison with the prior art could not have been possible.
As seen above in Ex Parte C and Ex Parte McGowan, a trait table is insufficient to differentiate cultivars by itself. It has been long established that intracultivar heterogeneity exists in crop species. Haun et al. (Plant Physiology, Feb. 2011, Vol. 155, pp. 645-655) teaches that the assumption that elite cultivars are composed of relatively homogenous genetic pools is false. (p. 645, left column). Segregation, recombination, DNA transposition, epigenetic processes, and spontaneous mutations are some of the reasons elite cultivar populations will maintain some degree of plant-to-plant variation (p. 645, right column and p. 646, left column). In addition to genetic variation, environmental variation may lead to phenotypic variation within a cultivar. (Großkinsky et al., J. Exp. Bot., Vol. 66, No. 11, pp. 5429-5440, 2015, p. 5430, left column, 1st full paragraph, and right column, 2nd full paragraph). In view of this variability, a breeding history is an essential and the least burdensome way to provide genetic information needed to adequately describe a newly developed plant.
The above factual evidence provides a reasonable basis that a breeding history is necessary written description. With this information the examiner has met the initial burden of presenting by a preponderance of evidence why a person of ordinary skill in the art would not recognize in an applicant’s disclosure a description of the invention defined by the claims. (See MPEP 2163.04).
Please note, the citations above are not for legal authority, the legal authority relied upon by the examiner is the 35 USC 112(a) statute. The citations are presented to support the finding of fact that a breeding history is necessary to the adequate description of a plant.
Although not directly relied upon for the above written description position, a complete written description additionally helps drive examination and help with infringement verification.
MPEP 2163 (I) states “The written description of the deposited material needs to be as complete as possible because the examination for patentability proceeds solely on the basis of the written description. See, e.g., In re Lundak, 773 F.2d 1216, 227 USPQ 90 (Fed. Cir. 1985); see also 54 Fed. Reg. at 34,880 ("As a general rule, the more information that is provided about a particular deposited biological material, the better the examiner will be able to compare the identity and characteristics of the deposited biological material with the prior art.").”
MPEP 2163(I) states “The description must be sufficient to permit verification that the deposited biological material is in fact that disclosed. Once the patent issues, the description must be sufficient to aid in the resolution of questions of infringement." Id. at 34,880.)” (Quoting the Deposit of Biological Materials for Patent Purposes, Final Rule, 54 Fed. Reg. 34,864 (August 22, 1989) at 34,880).
The breeding history aids in the resolution of patent infringement by providing information necessary to determine whether differences in the plants are genetic differences, differences caused by the environment, or differences within the accepted variation within a cultivar.
Moreover, a specification devoid of a complete breeding history hampers the public’s ability to resolve infringement analysis with plants already in the prior art as well as plants that have not yet been patented. Because the instant specification lacks the complete breeding history, the public will not be able to fully resolve questions of infringement. Since the breeding history, including the parents, is not known to the public, the public could only rely on the phenotypes of the claimed plants for assessing potential infringement.
Thus, an application that does not clearly describe the breeding history does not provide an adequate written description of the invention.
To overcome this rejection, Applicant must amend the specification/drawing to provide the breeding history used to develop the instant cultivar. When identifying the breeding history, 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.
Applicant is reminded that they have a duty to disclose information material to patentability. Applicant should also notate the most similar plants which should include any other plants created using similar breeding history (such as siblings of the instant cultivar). If there any patent applications or patents in which sibs or parents of the instant plant are claimed, the serial numbers and names of the sibs or parents should be disclosed. This information can be submitted in an IDS with a notation of the relevancy to the instant application or as information submitted as described in MPEP 724 (e.g., trade secret, proprietary, and Protective Order).
35 USC 112(a) clearly states “The specification (emphasis added) shall contain a written description of the invention”. In the instant application, Applicant included some breeding history for tomato cultivar NUN 00331 TOP in the Specification. This disclosure is insufficient because it does not address all the issues set forth above. Thus, the breeding history for the claimed cultivar as disclosed in the Specification is incomplete.
WRITTEN DESCRIPTION
Claim 18 is 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant claims a mutagenized soybean plant produced by the method of claim 17, wherein the plant comprises a mutation in the genome and otherwise comprises all of the morphological and physiological characteristics of soybean cultivar 02051391.
Applicant describes soybean cultivar 02051391 in Table 1 on page 9 of the specification. Applicant describes how to introduce mutations into soybean cultivar 02051391 (paragraphs 0215-0216 on page 42 of the specification).
Applicant does not describe the genus of mutagenized soybean plants derived from soybean cultivar 02051391. The definition in paragraph 00240, on page 49 of the specification, explains that article “a” is to be construed to “cover both singular and the plural” unless otherwise indicated or clearly contradicted by the context. In view of this definition, the term “a mutation” would encompass any number of mutation that may confer any number of morphological and/or physiological characteristics to the mutant plant. Applicant has failed to describe said genus.
See Vas-Cath Inc. v. Mahurkar 1991 (CA FC) 19 USPQ2d 1111, 1115, which teaches that the purpose of the written description is for the purpose of warning an innocent purchaser, or other person using a machine, of his infringement of the patent; and at the same time, of taking from the inventor the means of practicing upon the credulity or the fears of other persons, by pretending that his invention is more than what it really is, or different from its ostensible objects, that the patentee is required to distinguish his invention in his specification. In this case, there is no way that a practitioner would be able to determine if any particular soybean plant is infringing the instant claims, and therefore, the public has not been put on notice with a sufficient description of the claimed invention.
Claim 18 is thus a “reach through” claim in which the Applicant has described a starting material and at least one method step, but has not described the resulting product; and wherein the genus of products that can be produced by the recited method steps and materials is so large that one of skill in the art is not able to envision the members of the genus. (See Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920-23, 69 USPQ2d 1886, 1890-93 (Fed. Cir. 2004)). Accordingly, the specification fails to provide adequate written description to support the genus of soybean plants produced by introducing a mutation into soybean cultivar 02051391.
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 1-17 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of the following US Patents which share an inventor with the instant application: US 12,127,522 B2, patented October 29, 2024, US 12,310,314 B2, patented May 27, 2025 and US 11,930,776 B2, patented March 19, 2024. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Each of the reference patents share a nearly identical claim set with the instant application which differ only in the specific name of the cultivar which is arbitrary and does not appear to have any specific meaning in the art, any deposit information, and the cancellation of original claim 18 which were identical to instant claim 18 with the exception of the specific cultivar name, which produces allowed claim sets having only 19 claims. In the case of ‘522 in claim 15 “a” was changed to “the” in section (b).
Additionally there is no specific breeding history which clearly sets out the parents of the instant cultivar and the steps used to produce the instant cultivar, even the information provided in the artifact folder fails to provide a specific breeding history such that the genetic characteristics of the instant cultivar are adequately described. Similarly, the reference patents fail to provide this information and therefore this information cannot be used to distinguish the instant and reference cultivars.
Reference patents ‘522, ‘314 and ‘776 are drawn to soybean cultivars designated 02198425, 06142425 and 07081321, respectively.
Each of these soybean cultivars share many characteristics with the instant soybean cultivar 02051391 within 10% including at least the same yellow seed coat color, dull seed coat luster, yellow cotyledon color, ovate leaflet shape, indeterminate growth habit, purple flower color, gray plant pubescence color, brown pod wall color, lodging score, plant height, seed percent protein and seed percent oil (See Table 1 of the instant application and the reference patents); and the same DAS-44406-6 event conferring tolerance to 2,4-D herbicides, glyphosate herbicides, and glufosinate herbicides.
The instant cultivar differs slightly from the reference cultivars. Specifically, the instant cultivar differs from Cultivar 02198425 of ‘522 in maturity group (000 vs 00), relative maturity (000.8 vs 00.1) and seed size (3065 vs 3738). Similarly, the instant cultivar differs from Cultivar 06142425 of ‘314 in maturity group (000 vs 00), relative maturity (000.8 vs 00.2) and seed size (3065 vs 3790). Finally, the instant cultivar differs from Cultivar 07081321 of ‘776 in hilum color (Yellow vs Buff) and seed size (3065 vs 4266).
First, it is important to note that these differences are extremely small and further it may be noted that environmental factors and/or cultivation practices alone influence such traits.
For example, amount of day light received and growth temperature affects or influences relative maturity in soybean cultivars. See Setiyono et al. (Field crop Research, 100:257-271; 2007, see in particular, abstract; Figures 1-13.
Likewise, soybean seed size is also affected or influenced by environmental conditions. See for example, Delouche (Hortscience, 15(6): pages 13-18, 1980; see in particular Figure 1 at page 15).
Therefore, these minor differences appear to be due to growing conditions and cultivation practices and therefore the cultivars of the reference patents and instant application appear to be identical.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application Nos. 18/805,213 and 18/890,370 which share an inventor and applicant with the instant application (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Each of the reference applications share a nearly identical claim set with the instant application which differ only in the specific name of the cultivar which is arbitrary and does not appear to have any specific meaning in the art and any deposit information.
Additionally there is no specific breeding history which clearly sets out the parents of the instant cultivar and the steps used to produce the instant cultivar, even the information provided in the artifact folder fails to provide a specific breeding history such that the genetic characteristics of the instant cultivar are adequately described, see written description rejections above. Similarly, the reference applications fail to provide this information and therefore this information cannot be used to distinguish the instant and reference cultivars.
Reference applications ‘213 and ‘370 are drawn to soybean cultivars designated 08064455 and 09015455, respectively.
Each of these soybean cultivars share many characteristics with the instant soybean cultivar 02051391 within 10% including at least the same yellow seed coat color, dull seed coat luster, yellow cotyledon color, ovate leaflet shape, indeterminate growth habit, purple flower color, gray plant pubescence color, yellow hilum color, brown pod wall color, maturity group, plant height, seed percent protein and seed percent oil (See Table 1 of the instant application and the reference patents); and the same DAS-44406-6 event conferring tolerance to 2,4-D herbicides, glyphosate herbicides, and glufosinate herbicides.
The instant cultivar differs slightly from the reference cultivars. Specifically, the instant cultivar differs from Cultivar 08064455 of ‘213 in plant lodging score (6.6 vs 6.1) and very slightly in seed size (3065 vs 3385, which is just over a 10% difference). Similarly, the instant cultivar differs from Cultivar 09015455 of ‘370 in relative maturity (000.8 vs 000.6).
First, it is important to note that these differences are extremely small and further it may be noted that environmental factors and/or cultivation practices alone influence such traits.
For example, amount of day light received and growth temperature affects or influences relative maturity in soybean cultivars. See Setiyono et al. (Field crop Research, 100:257-271; 2007, see in particular, abstract; Figures 1-13.
Likewise, soybean seed size is also affected or influenced by environmental conditions. See for example, Delouche (Hortscience, 15(6): pages 13-18, 1980; see in particular Figure 1 at page 15).
Therefore, these minor differences appear to be due to growing conditions and cultivation practices and therefore the cultivars of the reference patents and instant application appear to be identical.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Close Prior Art
The claims all require soybean cultivar 02051391 which appears to be free of the art based on a comparison of the physiological and morphological characteristics provided in table 1 and paragraph 0070 of the instant specification. However, given that the instant disclosure fails to provide a detailed breeding history, see written description rejection above, this is a provisional statement of close prior art because the genetics of a cultivar or variety cannot be searched without a breeding history.
The closest prior art appears to be found in US Patent, Mason, US 10,512,229 B1, patented December 24, 2019 which is drawn to Soybean Cultivar 74340613. The instant and reference cultivars share many characteristics including seed coat color, seed coat luster, cotyledon color, leaflet shape, growth habit, flower color, plant pubescence color, pod wall color, plant lodging score, seed % protein and seed oil (Table 1 of instant application and reference patent). Importantly, the instant and reference cultivars appear to differ in parentage breeding history and differ in hilum color, maturity group, relative maturity, height and seed size. As such, the instant soybean cultivar appears to be free of the art.
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 on (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