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
The claims filed 24June2026 are acknowledged and have been fully considered. Claims 1-20 are pending and examined on the merits herein. Claims 1-8, 12-20 are currently amended. Claims 9-11 are original.
Priority
No priority claim is of record. Claims 1-20 MAINTAIN an effective filing date of 23October2024 (the actual filing date of this nonprovisional application).
Withdrawn Objections and/or Rejections
Objections and/or rejections made of record in the nonfinal office action dated 24March2026 that are not otherwise discussed herein are withdrawn. In particular:
RE ¶¶ 5-6: The objections to the specification are withdrawn in view of the amendments thereto;
RE ¶¶ 7-16: The objections to the claims are withdrawn in view of the amendments thereto (all of which are consistent with what was suggested by the Office);
RE ¶ 17: The rejection to claims 3-4 for “failing to further limit” the claim to which it refers is withdrawn in view of the amendments to the claims (all of which are consistent with what was suggested by the Office);
RE ¶¶ 18-21 and 23-25: Certain Indefiniteness rejections are withdrawn in view of the amendments to the claims (all of which are consistent with what was suggested by the Office);
RE ¶ 26: The Written Description rejection is withdrawn in view of the amendments to claim 5; and
RE ¶ 27: The “Breeding History” Written Description rejection is withdrawn in view of the amendments to the specification (which is consistent with what was requested and suggested by the Office—as stated within the rejection itself, the Office confirms that this amendment is not New Matter).
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.
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.
[Copied from Nonfinal 24March2026 → ] Claim 8 is directed toward a converted plant/part that comprises a locus conversion (it is assumed that the converted plant/part is generated by introducing a locus conversion into a plant/part of maize variety DWID4941, although this is not clear from the current claim language). Claim 8 goes on to say that the deposited seed is “representative” of the converted plant/part. Applicant attests that the deposited seed will be that of maize variety DWID4941, therefore, such deposited seed cannot be “representative” of converted plants/parts (which comprise a locus conversion that a plant/part of DWID4941 does not also have). Perhaps a new claim 21 should be introduced that is directed toward a method of generating a converted plant/part comprising introducing a locus conversion (or transgene) into a plant, or plant part, of maize variety DWID4941. Then, perhaps a new claim 22 should be introduced (which depends from claim 21) and is a product-by-process claim directed toward a converted plant/part comprising the locus conversion (or transgene) and “otherwise all of the physiological and morphological characteristics of a plant of maize variety DWID4941”. In that instance, perhaps claim 8 may be canceled (because that subject matter would be captured by new claim 22)? On the topic of new claims, perhaps Applicant would like to introduce a new method claim 23 directed toward gene editing a plant/part of maize variety DWID4941 (noting that at least CRISPR is discussed in the specification at the paragraph bridging pages 40-41)?
Response to Applicant’s Remarks 24June2026:
Applicant asserts that the claim amendments filed 24June2026 are sufficient to overcome this rejection.
That is not persuasive because, even as amended, there is no nexus between the claimed “converted” products and products of maize variety DWID4941 (i.e., there is no explanation within the claim itself or the specification as to any shared genomic structure between the claimed “converted” products and that of maize variety DWID4941). This means that, even as amended, it is not clear what the “converted” products here encompass. Please note that “converted” is not defined within the specification and does not have a well-recognized meaning in the art. If accurate to the intended meaning of these claims, perhaps claim 8 may be amended to something like “A converted seed, plant, plant part or plant cell of maize variety DWID4941 characterized as a seed, plant, plant part or plant cell of maize variety DWID4941 into which a locus conversion was introduced, representative seed ….” or something like “A converted seed, plant, plant part or plant cell of maize variety DWID4941 characterized as a seed, plant, plant part or plant cell of maize variety DWID4941 further comprising a locus conversion, representative seed ….”
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.
[Copied from Nonfinal 24March2026 → ] The following is a statement of reasons for the indication of allowable subject matter: a plant/part of inbred maize variety DWID4941 appears to have a structure (genetic composition, as evidenced by its parentage/breeding history) and function (traits/characteristics as set forth in Tables 1, 2A, 2B) that are not taught or suggested by the prior art. The closest prior art may be identified as US2013/0269052 (Appl. No. 13856864 published 10October2013) teaching maize lines CC8, BB98, and BB201 (amongst others). A plant/part of maize variety DWID4941 materially differs from that of maize line CC8, BB98, and BB201 in at least anther and glume color (Munsell value), and ear length.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rebecca STEPHENS whose telephone number is (571)272-0070. The examiner can normally be reached Monday through Friday 8:30-4:30.
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 at (571) 270-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/REBECCA STEPHENS/Examiner, Art Unit 1663
/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663
Prosecution Insights