CTNF 18/980,635 CTNF 91793 DETAILED ACTION 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 1-15 are pending and examined on their merits herein. 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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-15 of U.S. Patent No. US10519456B2 . Although the claims at issue are not identical, they are not patentably distinct from each other because : The instant claims are drawn to a method of editing dicot genomic DNA, comprising: (a) obtaining a first dicot plant comprising a mutation in a centromeric histone 3 (CENH3) gene and optionally a maize CENH3 tailswap transgene, wherein said first dicot plant expresses a site-directed DNA modification enzyme and optionally at least one guide nucleic acid, wherein the site-directed DNA modification enzyme is a base editor; (b) obtaining a second dicot plant, wherein the second dicot plant comprises the dicot plant genomic DNA to be edited; (c) pollinating the first dicot plant with pollen from the second dicot plant; and (d) selecting at least one haploid progeny produced by the pollination of step (c) wherein the haploid progeny comprises the genome of the second dicot plant but not the first dicot plant, and the genome of the haploid progeny has been modified by the base editor and optional at least one guide nucleic acid delivered by the first dicot plant; wherein the mutation in a CENH3 gene is selected from the group consisting of a loss-of-function mutation, a partial loss-of-function mutation, a restored frameshift mutation, and an in-frame deletion mutation; wherein the base editor comprises a site-directed nuclease; a cytidine deaminase fused to a Cas; or an APOBEC deaminase; wherein an edited haploid progeny selected in (d) is treated with a chromosome doubling agent, wherein the target sequence is SEQ ID NO: 103, and wherein the dicot genomic DNA is Arabidopsis genomic DNA; wherein the partial loss-of-function mutation is a frame-shift mutation near the 3′ terminus of the CENH3 gene; wherein the loss-of-function mutation is a knock-out mutation. The patented claims are drawn to method of editing dicot genomic DNA, comprising: a) obtaining a first dicot plant comprising a mutation in a centromeric histone 3 (CENH3) gene and optionally a maize CENH3 tailswap transgene, wherein said first dicot plant expresses a DNA modification enzyme and optionally at least one guide nucleic acid; b) obtaining a second dicot plant, wherein the second dicot plant comprises the dicot plant genomic DNA which is to be edited; c) pollinating the first dicot plant with pollen from the second dicot plant; and d) selecting at least one haploid progeny produced by the pollination of step (c) wherein the haploid progeny comprises the genome of the second dicot plant but not the first dicot plant, and the genome of the haploid progeny has been modified by the DNA modification enzyme and optional at least one guide nucleic acid delivered by the first dicot plant; wherein the mutation in a CENH3 gene is selected from the group consisting of a loss-of-function mutation, a partial loss-of-function mutation, a restored frameshift mutation, and an in-frame deletion mutation; or further comprising: chromosome doubling; by being treated with a chromosome doubling agent; or wherein the DNA modification enzyme is a site-directed nuclease; wherein the target sequence is SEQ ID NO: 103, and wherein the dicot genomic DNA is Arabidopsis genomic DNA; wherein the partial loss-of-function mutation is a frame-shift mutation near the 3′ terminus of the CENH3 gene; wherein the at least one haploid progeny comprises SEQ ID NO: 104, 105, 107, 108, 109, 110, 111, 112, 113, 114, 115, 116, or 117, and further wherein the at least one haploid progeny is Arabidopsis. Although the claims at issue are not identical, they are not patentably distinct from each other. Conclusion No claims are allowed. Claims 1-15 are free of the prior art. The closest prior art is Campbell et al (PG PUB US 2018/0245090 A1). Campbell teaches a method for generating a doubled haploid plant cell comprising a genome-edition, comprising transforming a haploid inducer line with a targeted endonuclease to generate a Haploid Inducer Line for Accelerated Genome Editing (HILAGE) stock line having the nucleic acid stably integrated therein, crossing the HILAGE stock line with a targeted line to generate an F1 zygote comprising the stably integrated nucleic acid and culturing the F1 zygote thereby resulting in a haploid cell; and inducing chromosome doubling in the haploid cell to generate a doubled haploid plant cell comprising the genome-edition. As evidenced by Declaration filed on May 23, 2019 with Application NO. 16/245,923, Campbell does not enable a reasonable expectation of success. For example, the H3 tail-swap line of Campbell is derived from Arabidopsis CenH3 and has an GFP tag, which is male sterile. Further, Campbell teaches culturing zygotes in order to express the nuclease, which has never been demonstrated in a dicot plant and is believed to be inoperative (Kelliher Declaration at 16). In contrast, the instant application has circumvented this obstacle and successfully practiced the claimed method. Therefore, in view of the state of the prior art and the evidence submitted by Applicant, it is deemed that Campbell does not reasonably teach or suggest the claimed method with a reasonable expectation of success. Any inquiry concerning this communication or earlier communications from the examiner should be directed to WEIHUA FAN whose telephone number is (571)270-0398. 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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. WEIHUA . FAN Primary Examiner Art Unit 1663 /WEIHUA FAN/Primary Examiner, Art Unit 1663 Application/Control Number: 18/980,635 Page 2 Art Unit: 1663 Application/Control Number: 18/980,635 Page 3 Art Unit: 1663 Application/Control Number: 18/980,635 Page 4 Art Unit: 1663 Application/Control Number: 18/980,635 Page 5 Art Unit: 1663 Application/Control Number: 18/980,635 Page 6 Art Unit: 1663 Application/Control Number: 18/980,635 Page 7 Art Unit: 1663
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