DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Claims 6, 28, and 29 are pending and examined.
3. In view of Applicant’s amendments to the claims to require the use of SEQ ID NO: 1 or 2 as a probe, the rejection under 35 U.S.C. 102(a)(1) has been withdrawn.
4. The objection to claim 6 is withdrawn in view of Applicant’s amendments to the claim.
Election/Restrictions
5. Applicant's election with traverse of Group I, claim 6, in the reply filed on April 13, 2026 is acknowledged. The traversal was not found to be persuasive, and the requirement is thus still deemed proper and is therefore made FINAL.
In the instant amendments, Applicant canceled claims 22-27 and added new claims 28 and 29. Given that claims 28 and 29 depend from claim 6 and would have been included with the elected Group, they are rejoined and examined.
Double Patenting
6. 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.
7. Claims 6, 28, and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 19/346,280 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims make obvious the claims of the co-pending application.
The claim of the co-pending application is drawn to a method of detecting the presence of a DNA segment diagnostic for corn event MON95275 in a sample, comprising “contacting the sample with the DNA molecule of claim 3, subjecting said sample and said DNA molecule to stringent hybridization conditions; and detecting hybridization of said DNA molecule to said DNA in said sample,” wherein said detection is diagnostic for the presence of the event. Claim 3 in the co-pending application has been canceled. However, claim 6 is pending and in the originally submitted claims, claim 3 recited a DNA molecule comprising a polynucleotide segment of sufficient length to function as a DNA probe that hybridizes specifically under stringent conditions with corn event MON95275 in a sample, wherein detecting said hybridization is diagnostic for the presence of said event. The method of the instant claims, which uses SEQ ID NO 1 or 2 as a probe, thus represents a species of the method of the co-pending claims. Thus the instant invention makes obvious the invention of the co-pending application. Moreover, selecting a SEQ ID NO: 1 or 2, as a sequence specific to event MON95275 would have been a matter of obvious optimization of conditions given that the co-pending claims recite the event. It is noted that the instant SEQ ID NO: 1 and 2 are identical to SEQ ID NO: 1 and 2 of the co-pending application (see Sequence Search Results for SEQ ID NO: 1 and 2 against the Published Applications database).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct
Conclusion
8. No claims are allowed.
9. The claims are deemed free from the prior art. The closest prior art is Brinker et al (US Patent Publication 2013/0340111, issued on December 19, 2013), discussed in the previous Office Action.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MYKOLA V KOVALENKO whose telephone number is (571)272-6921. The examiner can normally be reached Mon.-Fri. 9:00-5:30 PST.
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/MYKOLA V. KOVALENKO/Primary Examiner, Art Unit 1662
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