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 .
Status of the Claims
The claims filed 16July2026 are acknowledged. Claims 1-20 are pending and examined on the merits herein. Claims 1-2, 4, 6, 10, 14-17, and 20 are original. Claims 3, 5, 7-9, 11-13, 18-19 are currently amended.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) [US provisional 63606878 filed 06December2023] is acknowledged. Claims 1-20 maintain an effective filing date of 06December2023.
Information Disclosure Statement
[Copied from Nonfinal 16April2026 → ] At present, an Information Disclosure Statement (IDS) has not been entered into the record.
Deposit
[Copied from Nonfinal 16April2026 → ] For the sake of a clear record, a Deposit Rejection would have been made but-for the information provided at page 60 of the specification. The statements there appear to be in compliance with 37 CFR §§ 1.801-1.809.
Withdrawn Objections and/or Rejections
Objections and/or rejections made of record in the nonfinal office action dated 16April2026 that are not otherwise discussed herein are withdrawn. In particular:
RE ¶¶ 7-9: The objections are withdrawn in view of the amendments to the claims (amendments which are commensurate with what was suggested by the Office);
and
RE ¶¶ 11-13: The indefiniteness rejections are withdrawn in view of the amendments to the claims (amendments which are commensurate with what was suggested by the Office).
Specification
The disclosure REMAINS objected to because of the following informalities: the Deposit paragraph on page 60 is missing details regarding the deposit (namely, the deposit Accession number, the date of deposit and amount of seed deposited, and/or whether the deposit is being made under the Budapest Treaty). After the deposit has actually been made and perfected, please update the specification to recite this information. Appropriate correction is required.
Response to Applicant’s Remarks 16July2026:
Applicant provides the following at page 5:
PNG
media_image1.png
75
586
media_image1.png
Greyscale
Claim Objections
Claims 3, 13, and 19 are objected to because of the following informalities: to ensure clarity, please amend “exhibits the” to “exhibits all of the”. Appropriate correction is required.
Claim Rejections - 35 USC § 112 - Indefiniteness
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 1 and 11 (therefore, all claims which refer thereto without correcting the issue) REMAIN 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.
Claim 1 recites a placeholder where the deposit accession number should/will be. Claim 11 recites an accession number that is believed to be a typographical error (because, based on the current specification, the deposit has not actually occurred yet and, therefore, there is no assigned accession number available). For at least these reasons, the claims are indefinite. Please update the claims (and specification) after the deposit has been completed and perfected.
Response to Applicant’s Remarks 16July2026:
Applicant provides the following at page 6:
PNG
media_image2.png
126
590
media_image2.png
Greyscale
Claims 3 and 13 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.
These claims recite “the derived seed”, which lacks antecedent basis and is, therefore, indefinite.
Claim Rejections - 35 USC § 112 – Written Description
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3-4, 13-14, 19 REMAIN rejected (therefore, also method claims 5-7 and 15-17 which refer to these rejected product claims) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
These claims REMAIN directed toward outcross plants encompassing the F2+ generation (i.e., F2 from a plant of inbred maize variety SG454).
The specification only describes plants/parts of inbred maize variety SG454 and their characteristics/traits at Table 1 of the specification (including F1 hybrid plants/parts therefrom).
A skilled artisan could not reasonably expect, with reasonable certainty, what the physiological and morphological characteristics of the claimed plants may be (= the claimed subject matter may be so far removed from a plant/part of inbred maize variety SG454 that the characteristics of the claimed plants/parts cannot be reasonably predicted). Said another way, the claimed subject matter is not tethered to novel starting materials (MPEP § 2116) by either (1) being limited to the F1 generation or (2) explicitly requiring that the claimed plants/parts “otherwise express all of the physiological and morphological characteristics of a plant of inbred maize variety SG454 when grown under the same environmental conditions”.
Without more information from Applicant, a skilled artisan at the time this application was filed would not reasonably recognize Applicant as being in possession of the full metes and bounds of these claims.
It would be remedial of this rejection to (I) explain (on the record, e.g., in remarks) how the specification (in view of the prior art) evidences possession of the full metes and bounds of the claimed plants; or (II) to amend the claims so that they are tethered to novel starting materials (MPEP § 2116) such as by limiting the products of claims 3-4, 13-14, 19 to the F1 generation.
Response to Applicant’s Remarks 16July2026:
The claim amendments and Remarks dated 16July2026 are acknowledged. While the claim amendments appear to be commensurate with what was suggested by the Office, those claim amendments also introduced indefiniteness (see rejection regarding “the derived seed” above). The Office cannot withdraw this rejection in view of the claim amendments when those same claim amendments introduced indefiniteness. Please correct the indefiniteness issue (and, in that way, also overcome this Written Description rejection).
Conclusion
THIS ACTION IS MADE FINAL. 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.
[Copied from Nonfinal 16April2026 → ] The following is a statement of reasons for the indication of allowable subject matter: plants and plant parts of inbred maize variety SG454 appear to be novel and nonobvious. The closest prior art may be identified as US Pat. No. 8541669 which teaches inbred maize/corn variety/line MXD03, but the parentage of this SG454 variety materially differs from the parentage of MXD03. Also, the characteristics of a plant of SG454 variety materially differ from those of a plant of MXD03.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rebecca STEPHENS whose telephone number is (571)272-0070. The examiner can normally be reached Monday through Friday 8:30-4:30.
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 at (571) 270-7058. 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.
/REBECCA STEPHENS/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
Prosecution Insights