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 .
Second Non-Final Office Action
In order to address aspects of the application relating to non-statutory double patenting a second non-final office action is presented as follows.
Status of the Claims
Claims 1-20 remain pending.
Claims 1, 3-4 and 18-19 are newly amended.
Claims 1-20 are examined on the merits.
Response to Applicant Arguments – Specification
In response to the amendments to the specification dated 05/19/2026 the objections to the specification of record are withdrawn.
Response to Applicant Arguments – Indefiniteness
In response to Applicant’s arguments and amendments to the claims dated 05/19/2026 the indefiniteness rejections of record are withdrawn.
Response to Applicant Arguments – Improper Dependence
In response to Applicant’s arguments and amendments to the claims dated 05/19/2026 the improper dependence rejections of record are withdrawn.
Response to Applicant Arguments – Enablement
In response to Applicant’s arguments and amendments to the claims dated 05/19/2026, particularly the statement by applicant that all restrictions upon the availability to the public of the deposited material will be irrevocably removed upon granting of the patent, the enablement rejections of record are withdrawn.
Response to Applicant Arguments – Written Description
In response to Applicant’s arguments and amendments to the claims dated 05/19/2026, the written description rejections of record are withdrawn.
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 7-8 and 10-14 are newly provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 10 and 14 of copending Application No. 18/952,029 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
These claims are not distinct from one another because the claims in the instant application are drawn to hybrid seeds and plants produced by crossing sorghum variety 2PLAS52R with another plant and the claims of the reference application are drawn to F1 hybrid seeds and plants of variety R20Y2043 which is produced by crossing a first plant with a second plant of variety 2PLAS52R (the variety of the instant application). As such both claims are drawn to hybrid plants produced by crossing instant variety 2PLAS52R with another plant.
Specifically, instant claim 7 is drawn to an F1 hybrid plant produced by crossing a plant or non-seed plant part of a plant of sorghum variety 2PLAS52R further comprising at least 2 and not more than 10 locus conversions wherein the plant otherwise comprises all of the physiological and morphological characteristics of sorghum variety 2 PLAS52R.
Correspondingly, claim 11 of the reference is drawn to an F1 hybrid plant of variety R20Y2043 produced by crossing a first plant of variety 2PNVG68A with a second plant of variety 2PLAS52R and further comprising a locus conversion with paragraph 0029 of the reference application clarifying that the term “single locus conversion” refers to plants that have a single locus which has been converted which is distinct from the term “locus conversion” which refers to hybrid plants that have inbred parents developed by backcrossing or genetic transformation to introduce traits including modified grain, modified carbohydrate content, and modified oil content. Given that claim 11 of the reference recites “locus conversion” and not “single locus conversion” claim 11 of the reference includes F1 hybrid plants produced by crossing the instantly claimed variety (2PLAS52R) with another plant wherein the hybrid plants comprise at least two locus conversions.
Instant claim 8 is drawn to a plant part comprising at least one cell of the F1 hybrid plant of claim 7.
Correspondingly, claim 10 of the reference is drawn to an F1 hybrid seed of variety R20Y2043 produced by crossing a first plant of variety 2PNVG68A with a second plant of variety 2PLAS52R and further comprising a locus conversion with paragraph 0029 of the reference application clarifying that the term “single locus conversion” refers to plants that have a single locus which has been converted which is distinct from the term “locus conversion” which refers to hybrid plants that have inbred parents developed by backcrossing or genetic transformation to introduce traits including modified grain, modified carbohydrate content, and modified oil content. Given that claim 10 of the reference recites “locus conversion” and not “single locus conversion” claim 10 of the reference includes F1 hybrid seeds produced by crossing the instantly claimed variety (2PLAS52R) with another plant wherein the hybrid plants comprise at least two locus conversions.
Instant claim 10 is drawn to a sorghum seed produced by crossing the plant or non-seed plant part of claim 2 with a different plant.
Correspondingly, claim 1 of the reference is drawn to a F1 hybrid sorghum seed of variety R20Y2043 produced by crossing a first plant of variety 2PNVG68A with a second plant of variety 2PLAS52R.
Instant claim 11, is drawn to an F1 hybrid plant produced by growing the seed of claim 10.
Reference claim 3, is drawn to a F1 hybrid sorghum variety R20Y2043 plant, plant part or plant cell produced by growing the F1 hybrid sorghum seed of claim 1 which was produced by crossing a first plant of variety 2PNVG68A with a second plant of variety 2PLAS52R.
Instant claim 12, is drawn to a plant part comprising at least one cell of the F1 hybrid plant of claim 11.
Reference claim 3, is drawn to a F1 hybrid sorghum variety R20Y2043 plant, plant part or plant cell produced by growing the F1 hybrid sorghum seed of claim 1.
Instant claim 13, is drawn to a non-seed plant part produced by growing the seed of claim 10.
Reference claim 3, is drawn to a F1 hybrid sorghum variety R20Y2043 plant, plant part or plant cell produced by growing the F1 hybrid sorghum seed of claim 1.
Instant claim 14, is drawn to the F1 hybrid seed of claim 11 further comprising a single locus conversion.
Reference claim 10, is drawn to a seed of F1 hybrid sorghum variety R20Y2043 further comprising a locus conversion.
Therefore, the claims of the instant application are not patentably distinct from those of the reference and claims 7-8 and 10-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 10 and 14 of copending Application No. 18/952,029. This rejection is provisional given that the claims of the reference application have not been patented.
Close Prior Art
The claims all require sorghum variety 2PLAS52R which appears to be free of the art.
The closest prior art appears to be found in US Patent US 10,058,067 B1, patented August 28, 2018 by Zorrilla, which is drawn to Sorghum Inbred PH2707MW. The instant and reference varieties share many characteristics including plant coleoptile color, plant pigment color, plant height, stalk height, stem thickness, leaf color, leaf margin, panicle anther color, panicle erectness and glume texture (Table 1 of instant application and reference publication). Importantly, the instant and reference varieties differ in parentage, breeding history, days to mid-anthesis, leaf midrib color, panicle length, panicle density, panicle shape and glume color. As such, the instant Sorghum variety appears to be free of the art.
Conclusion
Claims 1-6, 9 and 15-20 are allowed.
Claims 7-8 and 10-14 are provisionally rejected on the grounds of non-statutory double patenting.
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
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