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
Claims 1-17 are pending.
This action is response to the application filed on December 30, 2024.
CROSS-REFERENCE TO RELATED APPLICATIONS
This application is a continuation of U.S. Patent Application No. 18/138,716, filed April 24, 2023, which is a continuation of U.S. Patent Application No. 16/448,334, filed on June 21, 2019, which is a continuation of U.S. Patent Application No. 15/618,023, filed on June 8, 2017, which claims the benefit of and priority to U.S. Provisional Application No. 62/347,344, filed on June 8, 2016. The entire disclosure of each of the above applications is incorporated herein by reference.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/17/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 10-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
The Supreme Court’s decisions make it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions. A claim that recites a numerical formula or equation will be considered as falling within the "mathematical concepts" grouping. In addition, there are instances where a formula or equation is written in text format that should also be considered as falling within this grouping. It is important to note that a mathematical concept need not be expressed in mathematical symbols, because "[w]ords used in a claim operating on data to solve a problem can serve the same purpose as a formula." In re Grams, 888 F.2d 835, 837 and n.1, 12 USPQ2d 1824, 1826 and n.1 (Fed. Cir. 1989). See, e.g., SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018) (holding that claims to a ‘‘series of mathematical calculations based on selected information’’ are directed to abstract ideas).
Per dependent claim 10: the claims fall within one of the four enumerated categories of patentable subject matter recited in 35 U.S.C. 101 (i.e., process, machine, manufacture, or composition of matter) in Step 1 does not end the eligibility analysis, because claims directed to nothing more than abstract ideas (such as a mathematical formula or equation), natural phenomena, and laws of nature are not eligible for patent protection.
Claims 10-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea.
Claim Rejections - 35 USC § 112
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 1-17 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.
2173.05(e) Lack of Antecedent Basis. A claim is indefinite when it contains words or phrases whose meaning is unclear.
Claims 1-17 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Because claims 1,10 and 17 recites, “…. generating, by the at least one computing device, population prediction scores for each potential cross within the set of potential crosses…. ", and “…. the associated potential cross within the set of potential crosses ….”. The term “the at least one computing device” and “the associated potential cross” are introduced without first defining. Thus, it is unclear whether: The phrase should be grounded in previously introduced elements. A claim is indefinite when it contains words or phrases whose meaning is unclear.
Examiner Note: May be renders the claim indefinite by failing to point out that is being performed. Applicants are advised to amend the claim so solve the 112 rejection set forth in the claim.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-17 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 12178172 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other.
Claims 1-20 of U.S. Patent No. US 12178172 B2 (hereinafter, "Patent"), contains every element of claim 1-17 of the instant application (hereinafter, "Instant Applicant") and thus anticipate the claims of the instant application. Claims of the instant application therefore are not patently distinct from the earlier patent claims and as such are unpatentable over obvious-type double patenting. A later patent claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim.
"A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). " ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Claims 1-17 should have been rejected on the ground of nonstatutory obvious-type double patenting as being unpatentable over claims 1-20 of US Patent No. US 12178172 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other.
Instant Application
Patent No. US 12/178,172 B2
1. A method for use in identifying crosses for use in plant breeding, the method comprising:
accessing a data structure representative of multiple parents;
identifying a set of potential crosses, each potential cross in the set of potential crosses including at least two of the multiple parents included in the data structure;
generating, by the at least one computing device, population prediction scores for each potential cross within the set of potential crosses, each population prediction score associated with a prediction of commercial success for the associated potential cross within the set of potential crosses;
selecting, by at least one computing device, a subgroup of potential crosses, from the set of potential crosses, based on one or more thresholds associated with the population prediction scores for the set of potential crosses;
selecting, by the at least one computing device, multiple target crosses from the subgroup of potential crosses based on a genetic relatedness of the parents in the subgroup of potential crosses and a risk associated with the multiple target crosses; and
directing ones of the selected multiple target crosses into a breeding pipeline, thereby providing crosses to the breeding pipeline based, at least in part, on commercial success of parents included in the ones of the selected multiple target crosses.
1. A method for use in identifying crosses for use in plant breeding, the method comprising:
accessing a data structure representative of multiple parents;
identifying a set of potential crosses, each potential cross in the set of potential crosses including ones of the multiple parents included in the data structure;
generating, by the at least one computing device, population prediction scores for each potential cross within the set of potential crosses, each population prediction score including a prediction of commercial success for the potential cross, based on historical advancement of at least one of the parents of the potential cross for commercialization;
selecting, by at least one computing device, a subgroup of potential crosses, from the set of potential crosses, based on one or more thresholds associated with the population prediction scores for the set of potential crosses;
selecting, by the at least one computing device, multiple target crosses from the subgroup of potential crosses based on a genetic relatedness of the parents in the subgroup of potential crosses and a risk associated with the multiple target crosses; and
directing ones of the selected multiple target crosses into a breeding pipeline, thereby providing crosses to the breeding pipeline based, at least in part, on commercial success of parents included in the ones of the selected multiple target crosses.
Examiner Note:
The closest prior art made of Marden et al (US 20150284796 A1) teaches for identifying crosses for use in plant breeding, accessing a data structure representative of multiple parents; identifying a set of potential crosses, each potential cross in the set of potential crosse. Marden. et al (US 10366791 B1) teaches but fails to teach the claimed features in combination with overall claimed limitations when interpreted in light of the specification. The applicant has the chance to provide evidence of patentability and otherwise reply completely at the earliest opportunity. See MPEP § 706. Under the principles of compact prosecution, the examiner review each claim for compliance with every statutory requirement for patentability in the initial review of the application and identify all of the applicable grounds of rejection in the first Office action to avoid unnecessary delays in the prosecution of the application. See 37 CFR.
An applicant may overcome a 35 U.S.C. 112 (pre-AIA ), second paragraph rejection by persuasively arguing and/or amending that the claims are patentably distinguishable from 35 U.S.C. 112 (pre-AIA ), second paragraph rejection, or by amending the claims to patentably distinguish.
No prior art rejection has been made in this first office action but not allowable because independent claims (independent claims 1, 10 and 17 are rejected by 112 2nd, and independent claim 10 are rejected by 101) are rejected. Thus, applicant would amend claims to further distinguish claimed invention over the rejection mentioned above. Examiner would consider amendments which may require further search and consideration.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ISAAC M WOO whose telephone number is (571)272-4043. The examiner can normally be reached 9:00 to 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tony Mahmoudi can be reached on 571-272-4078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ISAAC M WOO/Primary Examiner, Art Unit 2163