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 objections and rejections
1. Claims 1-20 are pending. Accordingly, claims 1-20 are examined on merits.
2. Objection to the specification is withdrawn in light of amendments to the specification filed in the papers of July 1, 2026.
3. Objection of claims 6 and 19 is withdrawn in light of claim amendments filed in the papers of July 1, 2026, and upon further consideration
4. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
5. Rejection of claims 1-20 under 35 U.S.C. 112(b) ), as being indefinite is withdrawn upon further consideration.
6. Rejection of claims 1-20 under 35 U.S.C. 112(a) as failing to comply with the enablement requirement is withdrawn on the condition that the Applicant will file original receipt from NCMA about the seed deposit.
7. Applicant’s filing of terminal disclaimer in the papers of July 1, 2026 is acknowledged. While, terminal disclaimer is approved, however, withdrawing of double patenting rejection against copending 19/960, 097 is irrelevant at this point because claims remain rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of copending Application No. 18/960,097.
Double Patenting
8A. Claims 1-20 remain provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of copending Application No. 18/960,097. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented for the reasons of record stated in the Office action mailed July 1, 2026.
Soybean cultivar 35560317 (see table 1) of copending US Patent Application No. 18/960,097 (‘097 thereafter) appears to shares all the physiological and morphological characteristics, including the breeding history with instant soybean cultivar 36570317 (see table 1). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Although copending ‘097 application designates the claimed soybean cultivar as 35560317 but instant soybean cultivar 36570317 shares the same parents as the copending ‘097 soybean cultivar 35560317. The method of producing copending ‘097 soybean cultivar 35560317 is identical to the method of producing instant soybean cultivar 36570317. The instant soybean cultivar 36570317 appears to share all the physiological and morphological characteristics of the copending ‘097 soybean cultivar as 35560317. For example, instant soybean cultivar 36570317 shares breeding history, seed coat color, seed coat luster, cotyledon color, leaflet shape, growth habit, flower color, hilum color, plant pubescence color, pod wall color, maturity group, relative maturity, and plant lodging score. Small and insignificant variations in traits like plant height, seed size, seed % protein and seed % oil appear to be due to environmental factors and/or cultivation practices, unless Applicant provides evidence that these differences are due to the differences in genetic make-up of two cultivars.
8B. Response to Applicant’s Arguments:
Applicant argues generally that progeny derived from the same original cross will inherently diverge in genotype and phenotype due to Mendelian segregation, meiotic recombination, mutation, and the polygenic/quantitative nature of many agronomic traits, and that a person of ordinary skill would therefore expect soybean cultivar 36570317 and copending cultivar 35560317 to be genotypically and/or phenotypically distinct. This argument is not persuasive for the following reasons:
First, Applicant’s argument is directed to the general biological principle that segregating populations can produce genetically distinct individuals from a common cross. It is not disputed that segregation, recombination, and polygenic inheritance are capable of producing divergent progeny in the abstract. The question before the Office, however, is not whether divergence is theoretically possible, but whether the two specifically claimed cultivars — 36570317 and 35560317 — are in fact distinct. Applicant has not pointed to any actual comparative data, side-by-side trial results, molecular marker analysis, or other objective evidence establishing that the two cultivars differ from one another in any measurable respect. As set forth in the rejection, the two cultivars share breeding history, seed coat color, seed coat luster, cotyledon color, leaflet shape, growth habit, flower color, hilum color, plant pubescence color, pod wall color, maturity group, relative maturity, and plant lodging score, and were produced by an identical breeding method from identical parentage. This shared profile establishes a prima facie case that the claimed subject matter of the instant application is the same invention as that claimed in the ’097 application. Once such a prima facie showing has been made, the burden shifts to Applicant to come forward with evidence of actual distinctness. See MPEP § 1504.06.
Second, it is well established that arguments of counsel cannot take the place of evidence in the record. See In re Pearson, 494 F.2d 1399 (CCPA 1974); In re Geisler, 116 F.3d 1465 (Fed. Cir. 1997); MPEP § 716.01(c). Applicant’s response consists entirely of general scientific principles concerning plant breeding and segregation, unsupported by any declaration, comparative grow-out data, statistical analysis, or genotypic marker comparison specific to cultivars 36570317 and 35560317. Such unsupported attorney argument, however scientifically accurate as a general matter, does not rebut the specific factual showing of similarity set forth in the rejection.
Third, to the extent Applicant relies on the small variations noted in the rejection itself (e.g., plant height, seed size, seed % protein, seed % oil), the rejection already anticipated this argument and explained that such minor quantitative variations are ordinarily attributable to environmental or cultivation conditions rather than genotype, absent evidence to the contrary. Applicant has not rebutted this point with data showing that these differences are heritable, statistically significant, and reproducible across environments, as opposed to environmentally induced.
Finally, Applicant is reminded that because this is a rejection based on claiming the “same invention” under 35 U.S.C. 101 — rather than an obviousness-type double patenting rejection — a terminal disclaimer cannot be used to overcome this rejection. See MPEP § 1504.06; MPEP § 804. The rejection can only be overcome by (1) amendment or cancellation of the conflicting claims so that they no longer read on the same subject matter, (2) a showing, supported by objective comparative evidence, that the two cultivars are in fact phenotypically and/or genotypically distinct, or (3) abandonment of one of the conflicting applications, or its allowance and issuance as a patent, with subsequent cancellation of the claims in the other.
Conclusion
9. Claims 1-20 remain rejected.
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 extension fee 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 Vinod Kumar whose telephone number is (571) 272-4445. The examiner can normally be reached on 8.30 a.m. to 5.00 p.m.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad A. 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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/VINOD KUMAR/Primary Examiner, Art Unit 1663
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