DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first-to-invent provisions pre-AIA .
Status
Claims 2, 16, 19, 21, 22, 23, and 24 as amended on 13 January 2025 were examined and rejected in an Office action posted on 29 May 2026. Applicant responded on 17 June 2026 adding claims 43-48. Claims 2, 16, 19, 21, 22, 23, 24, and 43-48 as filed on 17 June 2026 are examined herein.
Examiner’s Notes & Claim Interpretation
Citations to Applicant’s specification are abbreviated herein “Spec.”
Occasionally, “SIN:” may be used as an abbreviation “SEQ ID NO:” herein.
Applicant amended the claims to remove fragments of SEQ ID NO:594 and narrowed the scope of variants of SEQ ID NO:595. However, the claims still recite variants of SEQ ID NO:594. The claims, however, are reasonably interpreted as requiring the expression of a protein with the sequence of SEQ ID NO:595 or a variant thereof. SEQ ID NO:594 is 870 nucleotides in length. Adding a mere six nucleotides, obviously well within the 95% sequence identical scope, could markedly change the protein being expressed. Adding a start codon, ATG, and a stop codon anywhere downstream, could produce a vast range of fragments.
Withdrawal of Objections and Rejections
The objections to claims 23 and 34 are withdrawn in view of Applicant’s amendments to the claims.
The rejection of claim 22 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of Applicant’s amendments to the claim.
The rejections of claims 16, 23 and 46 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, both scope of enablement and written description, are withdrawn in view of Applicant’s amendments to the claims.
35 USC § 112(b)-Based Claim Rejections
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 43-45 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.
The above claims require an “increased” phenotype but without a comparative basis. But “increased” is a relative term.
This is a new rejection.
Especially in the case of an increased plant height, which could readily vary based on environment, articulating a bass for comparison is required.
35 USC § 112(a) based Claim Rejections
The following is a quotation of 35 U.S.C. 112(a):
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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 2, 19, 21, 22, 24, 43-45 and 47-48 are rejected 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 claims contain 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The Federal Circuit held that a written description of an invention '"requires a precise definition, such as by structure, formula [or] chemical name,' of the claimed subject matter sufficient to distinguish it from other materials." Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1405 (Fed. Cir. 1997) (quoting Fiers v. Revel, 984 F.2d 1164, 1171, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993)).
The court also held "naming a type of material generally known to exist, in the absence of knowledge as to what that material consists of is not a description of that material." Id., 119 F.3d at 1568, 43 USPQ2d at 1406. The court held that "[a] description of a genus of cDNAs may be achieved by means of a recitation of a representative number of cDNAs, defined by nucleotide sequence, falling within the scope of the genus or of a recitation of structural features common to members of the genus, which features constitute a substantial portion of the genus." Id., 119 F. 3d at 1569, 43 USPQ2d at 1406.
Claim 2 is drawn to a method of producing a plant. The method comprises growing a plant cell with an exogenous nucleic acid molecule which has a sequence at least 95% identical to SEQ ID NO:594, or alternatively, encoding a polypeptide with a sequence at least 95% identical to SEQ ID NO:595. SEQ ID NO:594 encodes SEQ ID NO:595.
Thus the claimed genus of polypeptides directly includes all polypeptides at least 95% identical to SEQ ID NO:595. As discussed above, however, since the claim still reads on a broad range of variants of a polynucleotide sequence, the claim also reads on a vast genus of fragments of SEQ ID NO:595.
Claims 16 and 46 require SEQ ID NO:595.
Claim 19 is drawn to a plant cell with a biological molecule as in claim 2 where the plant cell will, if regenerated into a plant, produce a plant that has a difference in one of three articulated phenotypes compared to a control plant.
Claim 21 reads on a transgenic plant; claim 22 lists various types of plants (e.g. rice); claim 23 requires 99% sequence identity to SEQ ID NO:595. Claim 24 reads on a seed product. New claims 43, 44, and 45 recite increased beneficial phenotypes. Claim 47 reads on a seed. Claim 48 reads on progeny without any restriction as to generation.
Although Applicant correctly points out that results were provided for expression of SEQ ID NO:594 and thus SEQ ID NO:595 in Example 9 on pages 88-89 of the specification.
Further, SEQ ID NO:595 is mentioned somewhat individually in paragraphs 0044 and, 0071 as having an “alpha/beta hydrolase fold domain” and 0120.
Given that variants of SEQ ID NO:594 read on a vast genus of fragments of IN:595, and claim 2, for example, uses the open language “comprising” that fragments of SEQ ID NO:595 probably are present in some of the other polypeptides, the results are not presented as fragments of SEQ ID NO:595. Therefore such examples are not interpreted as providing written description for the full scope of the claimed variants of SEQ ID NO:595 producing fragments of SEQ ID NO:595.
SEQ ID NO:595, for example, is 263 amino acids long. Since no minimum fragment size is specified by the claims, that is a genus of well over 250 fragments. Furthermore,. Since changes to codons in SEQ ID NO:595 could substitute other amino acids, the claimed variants of SEQ ID NO:594 include variants of SEQ ID NO:595 with approximately 55 changes, falling well outside the scope of 95% sequence identical variants of SEQ ID NO:595.
Further, the art teaches that minor changes to the amino acid sequence of a protein can change of eliminate activity.
Rhoads et al. which describes that mutation of Cys-128 to Ala in an alternative oxidase caused a pronounced overall increase in enzyme activity relative to the wild-type in the presence or absence of pyruvate (page 30753 Figure 3), whereas mutation of Cys-78 to Ala in the same Arabidopsis alternative oxidase resulted in a minimally active enzyme that showed no response to added pyruvate. Rhoads et al. (1998) J Biol Chem 273(46):30750-56, 30753 Fig. 3.
Furthermore, Guo et al. describes that while proteins are fairly tolerant to mutations resulting in single amino acid changes, increasing the number of substitutions additively increases the probability that the protein will be inactivated. Guo et al. (2004) Proc Natl Acad Sci USA 101:9205-10, 9209, rt. col., para. 2. Thus, according to Guo et al., changing up to 19 amino acids in the relatively short SEQ ID NO:77 has a high likelihood of inactivating the protein. Minor changes might alter the activity of the protein when expressed transgenically.
Re-capping, in addition to polypeptide variants, the claims read on polynucleotide variants.
These variant polynucleotide sequences include variants that include a premature stop codon or a frame-shift mutation inserted near the 5' end of the coding sequence. A premature stop codon might produce a protein that is markedly shorter. But a frame-shift mutant could produce an unrecognizable protein variant relative to the recited amino acid sequences. Further the genera would encompass internal deletions of the encoded amino acid sequence. Still further, the permitted changes could be confined to the first base of a codon as opposed to the wobble base and thus a small number of nucleotide changes could substantially change the amino acid sequence of the polypeptide.
Therefore one skilled in the art would not be able to envision the claimed genus of variant polypeptides that would be active in the instant invention.
Hence Applicant fails to satisfy the written description requirement because Applicant fails to describe a representative number of species of sequences related to SEQ ID NO:894 or SEQ ID NO:595. Applicant also fails to describe the structural elements of this polypeptide and its encoding polynucleotide that are necessary and/or sufficient for activity in the instant invention. Therefore Applicant has not demonstrated to one skilled in the art possession of the broad genus of claimed polypeptides and variants. The specification fails to provide an adequate written description to support the breadth of the claims, and thus one of skill in the art would not believe Applicant to be in possession of the invention as broadly as claimed at the time of filing.
Dependent claims are included in the rejections because none provide limitations obviating these rejections.
Claim 16 is included because although the claim requires SEQ ID NO:595, it reads on any change in biomass.
Applicant’s Argument & Response
Applicant traverses the rejection beginning on page 4. Applicant first draws attention to Example 9. Applicant points out homolog teachings beginning on page 6 of the Response as well as conserved domains. A structural feature is discussed in the last full paragraph of page 7. The last three paragraphs of the Response deal with polypeptide sequence variants (pp. 8-9).
Applicant’s argument is persuasive as regard the current claimed genus of polypeptide sequence percentage variants, but not with regard to polynucleotide variants which include fragments of SEQ ID NO:595 as well as frame shift variants.
Claims 2, 19, 21, 22, 24, 43-45 and 47-48 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The Federal Circuit in In re Wands lists eight considerations for determining whether or not undue experimentation would be necessary to practice an invention. In re Wands, 858 F2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). These factors are: the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples of the invention, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims. Id.
Biotechnology is generally held to be an unpredictable art. In re Vaeck, 947 F.2d 488,496, 20 U.S.P.Q.2d 1438, 1445 (Fed. Cir. 1991).
The scope of the claims is discussed above and that discussion is incorporated by reference here.
Claim 2, for example, incorporates nucleotide sequences that start with SEQ ID NO:595 and the claim includes polypeptide sequence variants; but it also includes fragments of SEQ ID NO:595 and frame shift mutants of SEQ ID NO:595 because the claim includes variants of SEQ ID NO:594.
The discussion of protein variants from the prior art (Rhoads et al. and Guo et al.) is also incorporated here.
Further, as discussed above, the claims encompass any change in biomass – even a decrease. Although potentially valuable in furthering the Green Revolution (e.g., Hedden (2003 as cited above), Applicant does not teach its relevance here. This begs the question of how to use a smaller plant.
The scope of the protein fragments and frame-shift variants is truly vast. Given the size of the claimed genera, extensive guidance would be required. Such guidance is not provided.
One of skill in the art, after reading the specification, would be uncertain as to both how to make and how to use the invention as broadly as claimed. One of skill in the art would find it difficult to predict which of the myriad of possibilities would provide a a functional and useful invention and which would not – without undue experimentation.
Given the claim breadth regarding variant sequences and fragments, combined with the unpredictability in the art, and lack of guidance as discussed above, undue experimentation is required to practice Applicant's invention. Therefore one skilled in the art would be forced to make and test numerous nucleic acids encoding polypeptides related to the ones used in the instant working example with no guidance as to which ones could be used in the instant invention and to what benefit. Thus Applicant's claimed invention would require undue trial and error experimentation with no reasonable expectation of success.
Dependent claims are included in the rejections because none provide limitations obviating these rejections.
Applicant’s Argument & Response
Applicant traverses the rejection beginning on page 9. Applicant first points out the narrowing of the scope to 95% sequence identical. Applicant then draws attention to Example 9. Applicant draws attention to the alignment of Figure 8 near the bottom of page 10. The discussion bridging pages 10 and 11 deals with polypeptide variants.
Discussing minor sequence variants is not persuasive when applied to the full scope of claimed fragments and frame-shift variants.
As above, Applicant’s argument is persuasive as regard the current claimed genus of polypeptide sequence percentage variants, but not persuasive with regard to polynucleotide variants which include fragments of SEQ ID NO:595 as well as frame shift variants.
35 USC §§ 102 / 103-based Claim Rejections
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 2, 16, 19, 21, 22, 23, and 24, 43-48 are rejected under 35 U.S.C. 102 102(b) as anticipated by, or, in the alternative, under 35 U.S.C. 102 103(a) as being unpatentable over Christensen et al.; U.S. Patent Publication No. 2006/0112454 A1 (Apuya & Feldmann; assigned to CERES, INC.) (None are inventors in the instant application.)
Further, this publication is from application serial no. 11/140,450. The ‘450 Application gave rise to U.S. Patent No. 8,022,273 B2. (claims to SEQ ID NO:2) A divisional filed from the ‘450 Application, that is Application serial no. 13/184,361, gave rise to U.S. Patent No. 8,962,921 B2 (claims to SEQ ID NO:11).
The factual inquiries set forth in Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:a. Determining the scope and contents of the prior art.b. Ascertaining the differences between the prior art and the claims at issue.c. Resolving the level of ordinary skill in the pertinent art.d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
. Christensen et al.’s claim 1 reads on a polynucleotide that encodes any amino acid sequence in the sequence listing. As seen in the alignment below, Christensen et al.’s SEQ ID NO:11 is the same as instant SEQ ID NO:595. Christensen et al. teaches making a plant transgenically expressing the amino acid sequence (claim 14). Christensen et al. also teaches, in claim 19, various increases in biomass including, e.g. greater yield (iii).
Thus, transgenically expressing SEQ ID NO:595 either brings about an increase in biomass. Christensen et al also teaches methods for practicing the invention (btm col. 75).
An ordinary artisan would be motivated to observe, for example, an increase in biomass and further to take advantage of this increase in biomass. Christensen et al. also teaches, for example, rice as a target (col. 3).
Given the level of skill in the art as of the effective filing date of the claimed invention one of ordinary skill in the art would have had a reasonable expectation of success since all steps were routine.
Failure of those skilled in the art to contemporaneously recognize an inherent property, function or ingredient of a prior art reference does not preclude a finding of anticipation. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1349,51 USPQ2d 1943, 1948 (Fed. Cir. 1999). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See also MPEP § 2112.
Therefore claims 2, 16, 19, 21, 22, 23, 24, 46 are anticipated, or in the alternative, obvious.
Claims 43-45 articulate the now-recited phenotypic improvements of claim 2, for example, but they are merely claimed as properties resulting from expressing instant SEQ ID NO:595. Therefore they are obvious.
Given a plant, seeds and progeny are obvious, and thus claims 47 and 48 are obvious.
Applicant’s Argument and Response
Applicant’s argument against the rejection begin on page 12.
Applicant references the thousands of sequences taught by Christensen et al. (compared to the hundreds disclosed in the instant application).
Applicant argues that the rejection dies bit articulate the instant parameters of increased height, tiller and/or panicle weight.
On the top of page 13,however, Applicant returns to the no longer relevant, according to Applicant, discussion of increased biomass.
In any case, Christensen et al. extensively documents increased yield, focusing on environmental conditions. See, for example, paragraphs 0012, 0014, 0018, 0020, 0021 and 0023. The prior art teaches that increased height can correlate to increased yield. Tittonell et al. (2005) Agric Ecosys Environ 105:213-20, abstract.
. Further, since Applicant’s argument frequently discusses increased biomass, increased height correlates to increased biomass.
The Office action asserted that the specification did not teach a correlation between the expression of instant SEQ ID NO:595 and biomass. Applicant correctly pointed out that the specification did document the expression of SEQ ID NO:595 with “increases in biomass-related traits.” Response, p. 13 (mid).
Applicant concludes the argument with citations to Federal Circuit decisions stating that a “strong evidentiary basis is needed to support any obviousness rejection.” citing to K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362 (Fed. Cir. 2014),. Applicant fails to provide a pinpoint citation. Applicant does state that “common sense” can provide a reason. This is supported by K/S HIMPP v. Hear-Wear Techs. Id.,
Here the rejection establishes that CeA was very concerned about yield, and Titton estabhlises a connection between plant height and yield in maize, and therefore the rejection does provide a strong evidentiary basis. E.g., K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1366, 110 U.S.P.Q.2d (BNA) 2027 (Fed. Cir. 2014) (citing to In re Zurko, 258 F.3d 1379, 1385-86, 59 U.S.P.Q.2d 1693).
Therefore Applicant’s argument was fully considered but is not persuasive.
Filing date in PALM: 2011-07-15
Sequence 11, US/13184361A
Patent No. 8962921
GENERAL INFORMATION
APPLICANT: FELDMANN, Kenneth A
APPLICANT: CHRISTENSEN, Cory
APPLICANT: APUYA, Nestor
TITLE OF INVENTION: NUCLEOTIDE SEQUENCES AND POLYPEPTIDES ENCODED THEREBY USEFUL FOR
TITLE OF INVENTION: MODIFYING PLANT CHARACTERISTICS
FILE REFERENCE: 2750-1594PUS3
CURRENT APPLICATION NUMBER: US/13/184,361A
CURRENT FILING DATE: 2011-07-15
PRIOR APPLICATION NUMBER: 11/140,450
PRIOR FILING DATE: 2005-05-27
PRIOR APPLICATION NUMBER: 60/575,253
PRIOR FILING DATE: 2004-05-27
NUMBER OF SEQ ID NOS: 262
SEQ ID NO 11
LENGTH: 263
TYPE: PRT
ORGANISM: Arabidopsis thaliana
FEATURE:
NAME/KEY: MISC_FEATURE
OTHER INFORMATION: peptide_clone26006_inplanta_experimental_L20
SEQ ID NO:595
MSEEKRKQHFVLVHGACHGAWCWYKVKPLLEALGHRVTALDLAASGIDTTRSITDISTCEQYSEPLMQLMTSLPNDEKVVLVGHSFGGLSLALAMDKFPDKISVSVFVTAFMPDTKHSPSFVEEKFASSMTPEGWMGSELETYGSDNSGLSVFFSTDFMKHRLYQLSPVEDLELGLLLKRPSSLFINELSKMENFSEKGYGSVPRAYIVCKEDNIISEDHQRWMIHNYPANLVIEMEETDHMPMFCKPQVLSDHLLAIA DNFS
SEQ ID NO:11
MSEEKRKQHFVLVHGACHGAWCWYKVKPLLEALGHRVTALDLAASGIDTTRSITDISTCEQYSEPLMQLMTSLPNDEKVVLVGHSFGGLSLALAMDKFPDKISVSVFVTAFMPDTKHSPSFVEEKFASSMTPEGWMGSELETYGSDNSGLSVFFSTDFMKHRLYQLSPVEDLELGLLLKRPSSLFINELSKMENFSEKGYGSVPRAYIVCKEDNIISEDHQRWMIHNYPANLVIEMEETDHMPMFCKPQVLSDHLLAIA DNFS
Alignment statistics for match #1
Score Expect Method Identities Positives Gaps
548 bits(1413) 0.0 Compositional matrix adjust. 263/263(100%) 263/263(100%) 0/263(0%)
Query 1 MSEEKRKQHFVLVHGACHGAWCWYKVKPLLEALGHRVTALDLAASGIDTTRSITDISTCE 60
MSEEKRKQHFVLVHGACHGAWCWYKVKPLLEALGHRVTALDLAASGIDTTRSITDISTCE
Sbjct 1 MSEEKRKQHFVLVHGACHGAWCWYKVKPLLEALGHRVTALDLAASGIDTTRSITDISTCE 60
Query 61 QYSEPLMQLMTSLPNDEKVVLVGHSFGGLSLALAMDKFPDKISVSVFVTAFMPDTKHSPS 120
QYSEPLMQLMTSLPNDEKVVLVGHSFGGLSLALAMDKFPDKISVSVFVTAFMPDTKHSPS
Sbjct 61 QYSEPLMQLMTSLPNDEKVVLVGHSFGGLSLALAMDKFPDKISVSVFVTAFMPDTKHSPS 120
Query 121 FVEEKFASSMTPEGWMGSELETYGSDNSGLSVFFSTDFMKHRLYQLSPVEDLELGLLLKR 180
FVEEKFASSMTPEGWMGSELETYGSDNSGLSVFFSTDFMKHRLYQLSPVEDLELGLLLKR
Sbjct 121 FVEEKFASSMTPEGWMGSELETYGSDNSGLSVFFSTDFMKHRLYQLSPVEDLELGLLLKR 180
Query 181 PSSLFINELSKMENFSEKGYGSVPRAYIVCKEDNIISEDHQRWMIHNYPANLVIEMEETD 240
PSSLFINELSKMENFSEKGYGSVPRAYIVCKEDNIISEDHQRWMIHNYPANLVIEMEETD
Sbjct 181 PSSLFINELSKMENFSEKGYGSVPRAYIVCKEDNIISEDHQRWMIHNYPANLVIEMEETD 240
Query 241 HMPMFCKPQVLSDHLLAIA DNFS 263
HMPMFCKPQVLSDHLLAIA DNFS
Sbjct 241 HMPMFCKPQVLSDHLLAIA DNFS 263
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 obviousness-type 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); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). MPEP § 804.
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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 2, 16, 19, 21, 22, 23, 24, and 43-48 are rejected on the ground of obviousness-type nonstatutory double patenting as being unpatentable over the claims of U.S. Patent 8,962,921 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons as follows.
As seen in the alignment below, instant SEQ ID NO:595 is the same as the SEQ ID NO:11 claimed by Christensen et al. Claim 1 of the ‘921 Patent is a species of the genus claimed in instant claim 19. However it is an obvious species since the amino acid sequences are the same.
Improved water use efficiency teaches a difference in height and/or yield, i.e., panicle weight. See claim 2 of the patent which teaches an increase in growth rate, i.e., height, ang seed yield, i.e. panicle weight. All dependent claims of the ‘921 Patent narrow the focus towards instant SEQ ID NO:595.
Although the claims of the ‘921 are a species of the instant claimed genus, it is a species taught by the claims. Although a species might be nonobvious over a genus, the reverse is not true. "It is well settled that 'anticipation is the epitome of obviousness."' In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002).
Applicant’s Argument and Response
Applicant traverses the rejection on page 14.
Applicant’s argument is not persuasive in view of the Patent’s claim 2. Observing an increase in growth rate is equivalent to selecting for increased height. Further a plant with increased water efficiency is reasonably interpreted to be taller under conditions of water stress.
Additionally, claims 19, 43 and 47-48, for example, read on compositions which are the same compositions as taught by the Patent, or are obvious in new of the Paten. For example, progeny – which are not required to have increased height.
Further the compositions must be considered under a Product-by-Process analysis.
Filing date in PALM: 2011-07-15
Sequence 11, US/13184361A
Patent No. 8962921
GENERAL INFORMATION
APPLICANT: FELDMANN, Kenneth A
APPLICANT: CHRISTENSEN, Cory
APPLICANT: APUYA, Nestor
TITLE OF INVENTION: NUCLEOTIDE SEQUENCES AND POLYPEPTIDES ENCODED THEREBY USEFUL FOR
TITLE OF INVENTION: MODIFYING PLANT CHARACTERISTICS
FILE REFERENCE: 2750-1594PUS3
CURRENT APPLICATION NUMBER: US/13/184,361A
CURRENT FILING DATE: 2011-07-15
PRIOR APPLICATION NUMBER: 11/140,450
PRIOR FILING DATE: 2005-05-27
PRIOR APPLICATION NUMBER: 60/575,253
PRIOR FILING DATE: 2004-05-27
NUMBER OF SEQ ID NOS: 262
SEQ ID NO 11
LENGTH: 263
TYPE: PRT
ORGANISM: Arabidopsis thaliana
FEATURE:
NAME/KEY: MISC_FEATURE
OTHER INFORMATION: peptide_clone26006_inplanta_experimental_L20
SEQ ID NO:595
MSEEKRKQHFVLVHGACHGAWCWYKVKPLLEALGHRVTALDLAASGIDTTRSITDISTCEQYSEPLMQLMTSLPNDEKVVLVGHSFGGLSLALAMDKFPDKISVSVFVTAFMPDTKHSPSFVEEKFASSMTPEGWMGSELETYGSDNSGLSVFFSTDFMKHRLYQLSPVEDLELGLLLKRPSSLFINELSKMENFSEKGYGSVPRAYIVCKEDNIISEDHQRWMIHNYPANLVIEMEETDHMPMFCKPQVLSDHLLAIA DNFS
SEQ ID NO:11
MSEEKRKQHFVLVHGACHGAWCWYKVKPLLEALGHRVTALDLAASGIDTTRSITDISTCEQYSEPLMQLMTSLPNDEKVVLVGHSFGGLSLALAMDKFPDKISVSVFVTAFMPDTKHSPSFVEEKFASSMTPEGWMGSELETYGSDNSGLSVFFSTDFMKHRLYQLSPVEDLELGLLLKRPSSLFINELSKMENFSEKGYGSVPRAYIVCKEDNIISEDHQRWMIHNYPANLVIEMEETDHMPMFCKPQVLSDHLLAIA DNFS
Alignment statistics for match #1
Score Expect Method Identities Positives Gaps
548 bits(1413) 0.0 Compositional matrix adjust. 263/263(100%) 263/263(100%) 0/263(0%)
Query 1 MSEEKRKQHFVLVHGACHGAWCWYKVKPLLEALGHRVTALDLAASGIDTTRSITDISTCE 60
MSEEKRKQHFVLVHGACHGAWCWYKVKPLLEALGHRVTALDLAASGIDTTRSITDISTCE
Sbjct 1 MSEEKRKQHFVLVHGACHGAWCWYKVKPLLEALGHRVTALDLAASGIDTTRSITDISTCE 60
Query 61 QYSEPLMQLMTSLPNDEKVVLVGHSFGGLSLALAMDKFPDKISVSVFVTAFMPDTKHSPS 120
QYSEPLMQLMTSLPNDEKVVLVGHSFGGLSLALAMDKFPDKISVSVFVTAFMPDTKHSPS
Sbjct 61 QYSEPLMQLMTSLPNDEKVVLVGHSFGGLSLALAMDKFPDKISVSVFVTAFMPDTKHSPS 120
Query 121 FVEEKFASSMTPEGWMGSELETYGSDNSGLSVFFSTDFMKHRLYQLSPVEDLELGLLLKR 180
FVEEKFASSMTPEGWMGSELETYGSDNSGLSVFFSTDFMKHRLYQLSPVEDLELGLLLKR
Sbjct 121 FVEEKFASSMTPEGWMGSELETYGSDNSGLSVFFSTDFMKHRLYQLSPVEDLELGLLLKR 180
Query 181 PSSLFINELSKMENFSEKGYGSVPRAYIVCKEDNIISEDHQRWMIHNYPANLVIEMEETD 240
PSSLFINELSKMENFSEKGYGSVPRAYIVCKEDNIISEDHQRWMIHNYPANLVIEMEETD
Sbjct 181 PSSLFINELSKMENFSEKGYGSVPRAYIVCKEDNIISEDHQRWMIHNYPANLVIEMEETD 240
Query 241 HMPMFCKPQVLSDHLLAIA DNFS 263
HMPMFCKPQVLSDHLLAIA DNFS
Sbjct 241 HMPMFCKPQVLSDHLLAIA DNFS 263
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL T BOGGS whose telephone number is (571)272-2805. The examiner can normally be reached Monday - Friday, 0800 to 1830 Mtn.
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/RUSSELL T BOGGS/ Examiner, Art Unit 1663
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