DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application is being examined under the pre-AIA first to invent provisions.
Status of the Claims
2. Claims 17, 18, and 34-48 are pending.
3. Claims 17, 18, and 38-48 are withdrawn.
4. Claims 34-37 are examined.
Election/Restrictions
5. Applicant’s election without traverse of Group II, claims 34-37 in the reply filed on June 10, 2026 is acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Objections
6. Claim 34 is objected to because of the following informalities. The terms “DMO” and “PAT” should be spelled out. Appropriate correction is required.
Double Patenting
7. 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.
8. Claims 34-37 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-13 of U.S. Patent No. 8,735,661. Although the claims at issue are not identical, they are not patentably distinct from each other.
The claims of the ‘661 patent are drawn to a recombinant cotton plant, seed, cell, or plant part thereof comprising the nucleotide sequence of SEQ ID NO: 1 and SEQ ID NO: 2 and a nucleic acid sequence encoding a DMO protein and a PAT protein, including wherein the genome of said plant produces an amplicon comprising a DNA molecule selected from the group consisting of SEQ ID NO: 1-8, 10, and complete complements thereof.
The instant claims are drawn to a recombinant DNA molecule comprising SEQ ID NO: 1 and 2, and a sequence encoding a DMO or a PAT protein, including wherein the DNA molecule is further defined as comprising SEQ ID NO: 3 and 4; 5 and 6; or 7 and 8.
The nucleic acid comprised in of the patent thus reads on the recombinant DNA molecule of the instant clams. For that reason, the claims of the ‘661 patent make obvious the invention of the instant claims.
Conclusion
9. No claims are allowed.
10. The claims are free from the prior art, which does not teach or reasonably suggest a nucleic acid comprising SEQ ID NO: 1 or 2. The closest prior art is Wang et al (US Patent Publication No. 2004/0181048), which teaches a nucleic acid sequence with 92% identity to SEQ ID NO: 1 (See Sequence Search results for SEQ ID NO: 1 against the Published Applications Database; Result 6).
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MYKOLA V KOVALENKO whose telephone number is (571)272-6921. The examiner can normally be reached Mon.-Fri. 9:00-5:30 PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRATISLAV STANKOVIC can be reached at (571)270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MYKOLA V. KOVALENKO/Primary Examiner, Art Unit 1662
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