CTNF 18/952,046 CTNF 77007 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claims 32-67, pending in this application, are examined. Copending Applications Applicants must bring to the attention of the Examiner, or other Office official involved with the examination of a particular application, information within their knowledge as to other copending United States applications, which are "material to patentability" of the application in question. MPEP 2001.06(b). See Dayco Products Inc. v. Total Containment Inc., 66 USPQ2d 1801 (CA FC 2003). Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 32-36, 39-40, 42-67 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-37 of U.S. Patent No. 12, 180, 497 . Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the application and the issued patent are drawn to a nucleic acid molecule comprising a polynucleotide encoding a polypeptide having at least 95% sequence identity to SEQ ID NO: 11 under an operably linked to a plant expressible heterologous promoter, wherein the coexpression of said polypeptide with a polypeptide having at least 95% identity to SEQ ID NO: 16 in a soybean plant enhances Asian Soybean Rust (ASR) as compared to a control plant; said polynucleotide comprises a sequence having at least 90% identity to SEQ ID NO: 7 or 8; said heterologous plant expressible promoter is SEQ ID NO: 14, 19-21 or 22; a transgenic ASR resistant soybean plant comprising said nucleic acid ; and a method of producing of producing said ASR resistant transgenic plant by introducing into a plant cell/plant a DNA construct comprising a polynucleotide encoding a polypeptide having at least 95% to SEQ ID NO: 11 under the control of a plant expressible promoter, and a DNA construct comprising a polynucleotide encoding a polypeptide having at least 95% to SEQ ID NO: 16 under the control of a plant expressible promoter, wherein the coexpression of the polypeptides increases resistance of the plant to ASR . Claim 32 of the instant application, drawn to a nucleic acid molecule comprising a polynucleotide encoding a polypeptide having at least 95% sequence identity to SEQ ID NO: 11 under an operably linked to a plant expressible heterologous promoter, wherein the co-expression of said polypeptide with a polypeptide having at least 95% identity to SEQ ID NO: 16 in a soybean plant enhances Asian Soybean Rust (ASR) as compared to a control plant, is obvious over claim 1 of the issued patent, drawn to a nucleic acid molecule comprising a polynucleotide encoding a polypeptide having at least 95% sequence identity to SEQ ID NO: 11 under an operably linked to a plant expressible heterologous promoter, wherein the co-expression of said polypeptide with a polypeptide having at least 90% identity to SEQ ID NO: 16 in a soybean plant enhances Asian Soybean Rust (ASR) as compared to a control plant, given that the “at least 90% identity to SEQ ID NO: 16” includes 95% sequence identity. Limitations in claims 33-36, 39-40, and 42-67 of the instant application are overlapping and obvious over the limitations in claims 2-11 and 15-37 of the issued patent claims. Therefore, the claims are obvious over the prior art . 08-30 AIA A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co. , 151 U.S. 186 (1894); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert , 245 F.2d 467, 114 USPQ 330 (CCPA 1957). A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101. 08-31 AIA Claim s 37-38 and 41 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim s 12-14 of prior U.S. Patent No. 12, 180,497 . This is a statutory double patenting rejection. Claims 37-37 and 41, drawn a nucleic acid molecule comprising a polynucleotide operably linked to a heterologous regulatory element, wherein said polynucleotide encodes a polypeptide having at least 95% sequence identity to the full length of SEQ ID NO: 16, wherein co-expression of said polypeptide with a polypeptide having at least 95% sequence identity to the full length of SEQ ID NO: 11, in a soybean plant, enhances resistance of the plant to Asian Soybean Rust (ASR) compared to a control plant; wherein the polynucleotide comprises:(a) the nucleotide sequence of any one of SEQ ID NOs: 12, or 13; or (b) a nucleotide sequence having at least 90% sequence identity to the full length of any one of SEQ ID NOs: 12 or 13; and a vector comprising said nucleic acid molecule; are identical to claims 12-14, drawn a nucleic acid molecule comprising a polynucleotide operably linked to a heterologous regulatory element, wherein said polynucleotide encodes a polypeptide having at least 95% sequence identity to the full length of SEQ ID NO: 16, wherein co-expression of said polypeptide with a polypeptide having at least 95% sequence identity to the full length of SEQ ID NO: 11, in a soybean plant, enhances resistance of the plant to Asian Soybean Rust (ASR) compared to a control plant; wherein the polynucleotide comprises:(a) the nucleotide sequence of any one of SEQ ID NOs: 12, or 13; or (b) a nucleotide sequence having at least 90% sequence identity to the full length of any one of SEQ ID NOs: 12 or 13; and a vector comprising said nucleic acid molecule, of the issued patent. Conclusion No claim is allowed. 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. 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. MEDINA AHMED. IBRAHIM Primary Examiner Art Unit 1662 /MEDINA A IBRAHIM/ Primary Examiner, Art Unit 1662 Application/Control Number: 18/952,046 Page 2 Art Unit: 1662 Application/Control Number: 18/952,046 Page 3 Art Unit: 1662 Application/Control Number: 18/952,046 Page 4 Art Unit: 1662 Application/Control Number: 18/952,046 Page 5 Art Unit: 1662 Application/Control Number: 18/952,046 Page 6 Art Unit: 1662 Application/Control Number: 18/952,046 Page 7 Art Unit: 1662 Application/Control Number: 18/952,046 Page 8 Art Unit: 1662
Prosecution Insights