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 .
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant’s response filed 07/23/2026 in reply to the office action of 04/23/2026 has been entered. Claims 32-34, 36, 38-39, 41-46, 48-49 and 55-62 are amended. Claims 35, 37, 40, 47, 50 and 63-67 are cancelled. New claim 68 is added. Therefore, claims 32-34, 36, 38-39, 41-46, 48-49, 51-54, 55-62 and 68 are pending.
Claims 32-34, 36, 38-39, 41-46, 48-49, 51-62 and 68, pending in this application, are examined.
Withdrawn Objections and Rejections
The statutory double patent rejection to claims 37-38 and 41 over the claims 12-14 of the US PAT 12, 180, 497 has been withdrawn in view of Applicant’s amendment to the claims.
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 51-52 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.
Claims 51-52 are indefinite for depending upon cancelled claim 50. In the interest of compact prosecution claim 51 is considered to depend from claim 49.
Double Patenting
Claims 32-33, 36, 38, 39, 41-46, 48-49, 51-62 and 68 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-37 of U.S. Patent No. 12, 180, 497. This rejection is repeated for the same reasons of record as set forth in the last office action of 04/23/2026.
Applicant asserts that the claims as amended are patentably distinct from the claims of the issued patent. This assertion is incorrect because the amendment does not obviate the rejection. Applicant has amended the claims by changing the wording in the claims when the specific polynucleotide of SEQ ID NO: 7-8 and 12-13 and the encoded polypeptide sequences of SEQ ID NO: 11 and 16 and the rust resistance phenotype have not been changed. For example, amending the instant claims to recite “a first” and “a second” polynucleotide or “non-naturally occurring plant” instead of “transgenic plant”, or the presence of “intron” as a regulatory element in the nucleic acid molecule, would not render the claims non-obvious over the issued patent claims. Further, Applicant did explain why the claims as amended are not obvious.
As stated in the last office action, the claims of both the application and the issued patent are drawn to a nucleic acid molecule comprising a polynucleotide encoding polypeptides having at least 95% sequence identity to SEQ ID NO: 11 and a polynucleotide encoding a polypeptide having at least 95% sequence identity to SEQ ID NO: 16; said polynucleotides operably linked to a heterologous regulatory element; wherein the polynucleotides comprise a nucleotide sequence having at least 90% identity to SEQ ID NO: 7 or 8, and a nucleotide sequence having at least 90% to SEQ ID NO: 12-13, respectively; said nucleic acid molecule further comprising a plant expressible promoter operably linked to each polynucleotide; a vector, a transgenic plant or plant cell comprising said nucleic acid molecule; and a method of producing of producing said ASR resistant transgenic plant by introducing into a plant cell/plant said nucleic acid molecule.
Therefore, the instant claims as amended are obvious over the issued patent claims. Filing a proper terminal disclaimer will obviate the rejection.
Conclusion
No claim is allowed.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDINA AHMED IBRAHIM whose telephone number is (571)272-0797. The examiner can normally be reached Monday-Friday, 9:00 - 6:00.
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, BRATISLAV STANKOVIC can be reached at 571-270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MEDINA AHMED. IBRAHIM
Primary Examiner
Art Unit 1662
/MEDINA A IBRAHIM/ Primary Examiner, Art Unit 1662
