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 Claims
The amendments received on 06/18/2026 have been entered.
Claims 1, 2, 6, 8, 12-15, and 17-20 have been amended.
Claims 1-20 are pending and are examined in this Office Action.
The text of those sections of Title 35, U.S. Code, not included in this action, can be found in a prior Office action.
Objections/Rejections that are Withdrawn
The objection to the Specification has been withdrawn in light of Applicant’s amendments to the Specification.
The objections to claims 6, 12-15 and 17-20 have been withdrawn in light of Applicant’s amendments to the claims. However, Applicant’s amendments have raised new grounds for claim objections.
The rejection of claims 1-20 under 35 USC 112(b) Indefiniteness for the recitation of the term “variety” has been withdrawn in light of Applicant’s amendment to the claim. However, the 35 USC 112(b) Indefiniteness rejection of claims 6-8 and 15 for unaddressed issues still stands.
The rejection of claims 1-20 under 35 USC 112(a) Written Description for the recitation of the term “variety” has been withdrawn in light of Applicant’s amendment to the claim. However, the 35 USC 112(a) Written Description rejection of claims 6-8 for unaddressed issues still stands.
The rejection of claims 1-20 under 35 USC 112(a) Written Description for the “Missing Breeding History” has been withdrawn in light of Applicant’s amendment to the Specification.
The rejection of claims 1-20 under 35 USC 112(a) Enablement has been withdrawn in light of Applicant’s amendment to the claims.
Claim Objections
Claims 12-15 and 18-19 are objected to because of the following informalities:
In claim 12, line 1, a comma should be inserted after “profile”.
In claims 13 and 14, line 1, a comma should be inserted after “breeding”.
In claim 15, line 2, a comma should be inserted after the first recitation of “HID3724”.
In claim 18, line 1, it is suggested to insert the word ---plant--- after the word “maize”.
In claim 18, line 2, a comma should be inserted after “program”. The comma after “method” in line 2 should be deleted.
In claim 19, line 1, a comma should be inserted after “product”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Indefiniteness
Claims 6-8 and 15 remain 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. All dependent claims are included in these rejections unless they include a limitation that overcomes the deficiencies of the parent claim.
In claim 6, the metes and bounds of “essentially all” are unclear. It is unclear how many characteristics are encompassed by “essentially all”. It is unclear which physiological and morphological characteristics of variety HID3724 are retained and which are altered or lost.
Claim 7, specifically, is indefinite, in part because it depends from claim 6 which is indefinite, and in part because it recites “introducing a transgene” without specifying what plant the transgene is being introduced into.
Claim 8, specifically, is indefinite because it requires the “phenotypic characteristics of maize variety HID3724 listed in Table 1”. Claims must be stand alone and must not refer to tables except for in exceptional circumstances (MPEP2173.05(s)). This is not an exceptional circumstance.
Claim 15, specifically, is indefinite because it requires progeny plants having an additional trait and all of the physiological and morphological characteristics of maize inbred plant HID3724. It is unclear how a plant can have ALL of the characteristics and also have an additional trait. See, for example, claim 8 which requires that the plant has the locus conversion and “otherwise” comprises the characteristics.
Response to Arguments
Applicant's arguments filed 06/18/2026 have been fully considered but they are not persuasive.
Applicant did not amend the claims in a way that would overcome the outstanding 35 U.S.C. 112(b) Indefiniteness rejections outlined above, nor did Applicant put forth any arguments against the outstanding 35 U.S.C. 112(b) Indefiniteness rejections outlined above.
Written Description
Claims 6-8 remain 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. All dependent claims are included in these rejections unless they include a limitation that overcomes the deficiencies of the parent claim.
Applicant claims a maize plant having “essentially all” of the morphological and physiological characteristics of the plant of maize variety HID3724. Applicant claims a converted plant, seed, cell, or plant part of maize variety HID3724 comprising a locus conversion and otherwise comprising “the phenotypic characteristics” of the variety.
Applicant describes the plants of maize variety HID3724 by describing its morphological and physiological characteristics (Table 1).
Applicant does not describe the genus of plant encompassed by the claims. As noted above, the specification does not define the term “essentially all.” Thus, the genus of claims 6 and 7 will encompass maize plants that may differ from the plants of maize variety HID3724 by any number of characteristics. Similarly, in claim 8, a converted plant otherwise comprises the “phenotypic” characteristics of the deposited variety will comprise plants whose genetic material and any number of characteristics differ from those of the plants of the deposit. Given the size and the variability of the genus encompassed by the claims, the sole described species, maize variety HID3724, is not sufficiently representative.
In addition, Applicant has not set forth a structure or structures common to the genus, such that one of ordinary skill in the art would recognize which maize plant belongs to the claimed genus and which one does not. This is particularly true given that the claims would encompass plants comprising genetic material that is not shared by the plants of the deposit.
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 maize plant is infringing the instant claims, and therefore, the public has not been put on notice with a sufficient description of the claimed invention.
Accordingly, the specification fails to provide adequate written description to support the genus of maize plants produced by introducing a locus conversion into the plants of maize variety HID3724; or plants comprising “essentially all’ of the morphological and physiological characteristics of said variety.
Response to Arguments
Applicant's arguments filed 06/18/2026 have been fully considered but they are not persuasive.
Applicant did not amend the claims in a way that would overcome the outstanding 35 U.S.C. 112(a) Written Description rejection outlined above, nor did Applicant put forth any arguments against the outstanding 35 U.S.C. 112(a) Written Description rejection outlined above.
EXAMINER’S NOTE: In response to Applicant’s Remarks on page 7 (Remarks dated 06/18/2026) specifically pertaining to the 35 U.S.C. 112(a) Written Description rejection over “Missing Breeding History”, Applicant references the Miscellaneous Incoming Letter dated 02/17/2025 (the date cited in the Remarks is 2-28-2024, which appears to be incorrect).
The letter states in part:
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However, the breeding history was not requested by this Examiner to be submitted via a 37 CFR 1.105 request. The breeding history should be part of the Specification; therefore, until the breeding history is officially part of the Specification, it is considered “missing” from the Specification.
Summary
Claims 1-5, 9-11, 16-17, and 20 are allowed.
Claims 12-15 and 18-19 are objected to.
Claims 6-8 and 15 are rejected.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA MEADOWS whose telephone number is (703)756-1430. The examiner can normally be reached Monday - Friday 9:00 am - 5:00 pm.
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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.
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CHRISTINA MEADOWS
Examiner
Art Unit 1663
/CHRISTINA L MEADOWS/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
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