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 .
DETAILED ACTION
1. Applicants’ election with traverse of invention Group I, claims 1, 7, 18-20, and SEQ ID NO:24 as species election, amendments to claims 1 and 18, cancellation of claims 8, 10-14, 17 and 21-26 as well as submission of new claims 27-30 in the reply filed 6/1/2026 are acknowledged.
Applicants requested that SEQ ID NO:20-24 be examined together in that SEQ ID NO:20-23 comprises SEQ ID NO:24.
Applicants requested are granted.
As the result, claims 1, 7, 18-20, 27-30 are pending and examined on the merits.
The restriction requirements are still deemed proper and thus made Final.
Specification
2. The disclosure is objected to because the status of U.S. application needs to be updated. For example, U.S. application is recited on page 1.
3. The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code. See MPEP § 608.01. See, for example, paragraph [00137].
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
4. Claim(s) 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Burns et al. (US Patent NO. 9,441,240).
Instant reads on a processed product such as flour derived from a harvested product from a transgenic plant comprising the chimeric insecticidal protein.
The Office interpreted that instant claim reads on any flour given that the claimed flour derived from a harvested product from the transgenic plant does not have to comprises the chimeric insecticidal protein after the process.
Burns et al. teach corn flour as a commodity product. Therefore, it teaches all the limitation of instant claim.
Double Patenting
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.
5. Claims 1, 7, 18, 27-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No.11,535,862. Although the claims at issue are not identical, they are not patentably distinct from each other.
Instant claims are drawn to a chimeric insecticidal protein that is toxic to a lepidopteran insect pest comprising SEQ ID NO: 20-24 (claim 1); or wherein the chimeric insecticidal protein has insecticidal activity against a Spodoptera frugiperda insect pest with resistance to a Vip3A protein or a Cry1F protein (claim 2); or a harvest product containing the chimeric insecticidal protein.
Claims 1-3 of U.S. Patent No.11,535,862 teach a chimeric insecticidal protein that is toxic to a lepidopteran insect pest comprising SEQ ID NO: 3 (claim 1); or wherein the chimeric insecticidal protein has insecticidal activity against a Spodoptera frugiperda insect pest with resistance to a Vip3A protein or a Cry1F protein (claim 2); or
A method of controlling a lepidopteran insect pest, the method comprising delivering to the insect pest or an environment thereof a composition comprising an effective amount of the chimeric insecticidal protein.
SEQ ID NO: 3 of U.S. Patent No.11,535,862 comprises instant teach SEQ ID NO: 20-24, and therefore anticipates instant SEQ ID NO: 20-24.
Although claims 1-3 of U.S. Patent No.11,535,862 do not explicitly teach a harvest product containing the chimeric protein, such plant containing the chimeric protein was obviously obtained given the chimeric insecticidal protein is used for protect the plant from insect infestation. The plant comprising the chimeric insecticidal protein itself is considered as a harvest product.
6. Claims 1, 7, 18, 20, 27-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No.11,535,862, as applied for claims 1, 7, 18 and 27-30 further in view of US Patent No. 5, 356, 623. Although the claims at issue are not identical, they are not patentably distinct from each other.
The teaching of instant claims 1, 7, 18, and 27-30 are discussed above.
Instant claim 20 further comprises a limitation that an agriculturally acceptable carrier is also included in the insecticidal composition.
Claims 1-3 of U.S. Patent No.11,535,862 do not teach an agriculturally acceptable carrier.
US Patent No. 5, 356, 623 teaches insecticidal formulations typically contain agriculturally acceptable carrier (column 7, lines 37-47).
It would have been obvious for a skilled in the art to further use the insecticidal protein together with an agriculturally acceptable carrier given the teaching of US Patent No. 5, 356, 623 that insecticidal formulations typically contain agriculturally acceptable carrier.
7. It is noted that double patenting rejection is not made in view of claims 1-18 of U.S. Patent No.12,203,091 due to the restriction requirement filed 7/1/2021 in US Patent Application No. 16/468,528.
Summary
No claim is allowed
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LI ZHENG whose telephone number is (571)272-8031. The examiner can normally be reached Monday-Friday (9-5).
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/LI ZHENG/Primary Examiner, Art Unit 1662
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