Status of the Application
This Office Action is in response to the Amendment and Remarks filed 8 June 2026.
The objections to the Specification and Claims are withdrawn in view of Applicant’s amendments.
The rejection under 35 USC 112(a) for enablement is withdrawn in view of Applicant’s amendments to the claims and specification.
The rejection under 35 USC 112(a) for written description of claims 1-7 and 9-20 is withdrawn in view of Applicant’s amendment to the Specification to clarify how the invention was made.
The rejection of claims 1-7 and 9-20 under 35 USC 112(b) is withdrawn in view of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112
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.
Claim 8 remains 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 8 is drawn to a maize plant comprising a transgene locus conversion and otherwise the phenotypic characteristics of DWID4835 when grown under the same environmental conditions. The plant can comprise any number of locus conversions, and these locus conversions can be in phenotypic characteristics of DWID4835. The claim thus appears to encompass a genus of plants with some unspecified number of differences in morphological and physiological characteristics that differ from those that are present in DWID4835.
The only plant within the scope of the claims described in the specification is DWID4835 itself.
Applicant argues that claim 8 has been amended on page 2 of the Remarks.
Applicant’s argument is not found persuasive. While Applicant has amended claim 8 to define what the locus conversion comprises, the amendment does not define what phenotype characteristics of maize variety DWID4835 the claimed converted plant comprises.
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.
Claim 8 remains 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.
Claim 8 remains indefinite because it is unclear what the metes and bounds of “the phenotypic characteristics of maize variety DWID4825” are. As maize variety DWID4825 has a plethora of phenotypic characteristics it is unclear which are encompassed by the claim.
Applicant argues that claim 8 is amended on page 2 of the Remarks.
Applicant’s argument is not found persuasive because the amendment does not overcome the issue.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6 and 7 remain rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Parent claim 2 is drawn to a plant grown from a seed of maize variety DWID4835; it thus drawn to a plant with all of the morphological and physiological characteristics of DWID4835.
Dependent claim 6 is a plant with essentially all of the physiological and morphological characteristics of DWID4835 and further comprising a specific additional trait. The plant therefore does not have all of the morphological and physiological characteristics of DWID4835. The claim thus fails to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Applicant argues that claim 6 has been amended on page 3 of the Remarks.
Applicant’s argument is not found persuasive because claim 6 remains broader in scope than claim 2 upon which it depends.
Conclusion
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.
Claims 1-5 and 9-20 are allowed.
Claims 6-8 remain rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID H KRUSE whose telephone number is (571) 272-0799. The examiner can normally be reached Monday-Friday 7AM-3:30PM.
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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/David H Kruse/
Primary Examiner, Art Unit 1663
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