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 .
Claim Status
Claims 3-4 & 7 are under examination on the merits.
Claims 1-2 & 8-10 are withdrawn as drawn to non-elected subject matter.
Claims 5 & 6 are canceled.
Priority
Claims 3-4 & 7 receive the U.S. effective filing date of 1 Aug 2024.
Previous rejection of Claims 3-7 under 35 U.S.C. 112(a) is withdrawn in light of Applicant’s amendment to the claims.
Claim Objections
Claim 3 is objected to because of the following informalities:
The claim recites ‘…the TIsM gene…’ [line 6]. This appears to be a typographical error and should more correctly read ‘…the TI.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 3-4 & 7 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.
Due to Applicant’s amendment of the claims, the rejection is modified from that set forth in the Office action mailed 18 May 2026 as applied to claims 3-7. Applicant’s arguments 07 Aug 2026 have been considered but are not persuasive.
Claim 3 recites that ‘an amino acid sequence of the plant TIM protein’ is the elected species SEQ ID NO.1. It is unclear if SEQ ID NO.1 is merely a representative sub portion a broader amino acid sequence which comprises SEQ ID NO.1 (i.e. as part of an amino acid which is larger). It is unclear if Applicant is claiming a single TIM protein variant, or any and all TIM protein variants comprising SEQ ID NO.1.
Because the scope of the claim(s) varies depending on interpretation of this language, claims 3-4 & 7 are rendered indefinite and rejected.
Response to Arguments
Applicant urges that rejection under U.S.C. 112(b) is rendered moot by amendments to the claim language that have removed ambiguous language regarding scope of claims.
However, this is not persuasive as amended claims still contain language which makes their scope unclear with respect to the identity and structure of TIM protein(s) encompassed, as described in the rejection above.
Applicant is advised to amend claims to explicitly state what sequences are representative of claimed molecules, and to remove language that could be interpreted as indicating a particular SEQ ID NO. is merely a component (i.e. ‘an amino acid sequence of’) another, undefined molecule.
Claims 3-4 & 7 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.
Applicant’s amendment to the claims has necessitated a new grounds of rejection directed to viral species encompassed.
Amended claim 3, from which claims 4 & 7 depend, recites that a target virus ‘comprises SMV, TuMV, TMV, and PVX’. This claim is unclear because it both [a] uses open language (i.e. ‘comprises’) to describe limitation to ‘a virus’ (singular) and [b] it appears to list several viruses in conjunction (i.e. ‘and’). As currently written it is unclear whether Applicant is limiting the viral disease resistance to a viral complex comprising multiple virus species (i.e. ‘comprising’ with ‘and’), or, if the claim is merely an improper Markush claim wherein Applicant intends that one virus species is selected from the group of potential viral species options.
Applicant is advised to amend to remove open language (i.e. ‘comprises’) directed to multiple viruses from this claim if they are not intending to limit to a multi-species viral complex and/or present optional species in proper Markush format if they intend that single virus species is to be selected from a group of optional pathogens.
Claims 3-4 & 7 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.
Applicant’s amendment to the claims has necessitated a new grounds of rejection directed to plant species encompassed.
Amended claim 3, from which claims 4 & 7 depend, recites that the virus resistant plant ‘comprises soybean or Nicotiana benthamiana’. This claim is unclear because it uses open language (i.e. ‘comprises’) to describe limitation to a plant species (singular). As currently written it is unclear whether Applicant is limiting plant(s) encompassed to the two species recited, or if these comprise an exemplary portion of a more expansive range of plant species.
Applicant is advised to amend to remove open language (i.e. ‘comprises’) directed to multiple plant species from this claim if they are intending to limit to the two species listed.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEITH R WILLIAMS whose telephone number is (571)272-3911. The examiner can normally be reached Mon - Fri, 9:30 - 5:30 EST.
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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/KEITH R. WILLIAMS/Examiner, Art Unit 1663 /Amjad Abraham/SPE, Art Unit 1663
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