DETAILED ACTION
Claims 1-20 are pending.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The specification is objected to for the presence of blank lines in ¶244 and for the use of non-metric units of measure (e.g., bushels, acre, lb or pound) in at least Table 1 and ¶65-66.
Deposit of Biological Material
This application requires public availability of specific biological material to make and use the claimed invention. A rejection under the appropriate sections of 35 USC 112 would have been made but for Applicant’s statement in ¶244 indicating that an acceptable deposit of the specific biological material in compliance with the requirements under 37 CFR 1.801-1.809 will be made with a recognized IDA, at or before the payment of the issue fee, in the event that the application should be determined to be allowable.
Because viability testing of all deposits is required before they can be considered to meet the requirements of 37 CFR 1.801-1.809, applicants are advised to perfect the deposit as early as is possible, and before the payment of the issue fee. Failure to perfect a deposit by the date of payment of the issue fee may result in abandonment of the application for failure to prosecute.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—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.
Claim 18 is 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 claim(s) contains 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.
Claim 18 is drawn to a mutagenized soybean that comprises a mutation and otherwise comprises all the morphological and physiological characteristics of soybean cultivar 92111703.
EMS mutagensis of soybean can produce over 20,000 mutations per plant (Tsuda et al, 2015, BMC Genomics 16:1014; pg 4, right column, paragraph 1).
Thus, the claim encompasses soybean plants that can have almost any number of mutations in any number of morphological and physiological characteristics relative to soybean cultivar 92111703.
The specification describes no structural features that distinguish soybean plants that differ from morphological and physiological characteristics of soybean cultivar 92111703 in any number of traits from other soybean plants.
Hence, Applicant has not, in fact, described mutagenized soybean plants over the full scope of the claims, and the specification fails to provide an adequate written description of the claimed invention.
Therefore, given the lack of written description in the specification with regard to the structural and functional characteristics of the claimed compositions, Applicant does not appear to have been in possession of the claimed genus at the time this application was filed.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Eby (2017, US 8,975,486) in view of Brinker et al (2013, US 8,501,407) and de Beuckleer (2011, US 8,017,756).
The claims are drawn to soybean variety 92111703, methods of using it, and products and plants produced from it. 11050339-52 is the recurrent parent of 92111703 (¶68).
Eby teaches soybean variety 11050339-52, also known as S130097 (claims 1-2, column 6, line 35; Table 1). Like the instant soybean, 11050339-52 has purple flowers, black hila, light tawny pubescence, and brown pods, yellow, dull seed coats, yellow cotyledons, ovate leaflets, the MON889788 event, and indeterminate growth (Table 1; column 6, line 62, to column 7, lines 8-19). 11050339-52 and the instant soybean have similar values for relative maturity, lodging, plant height, seeds/lb, and % seed oil and protein.
Eby claims a cell and tissue culture of the plant (claims 3-4), methods of crossing the soybean with itself or another soybean plant, including a series of crosses to produce a soybean plant derived from the original line (claims 5-6), Fl progeny seeds (claim 7), introducing transgenes into the plant, including those conferring male sterility, herbicide resistance, insect or pest resistance, disease resistance, modified fatty acid metabolism, abiotic stress tolerance, or modified carbohydrate metabolism, and a plant thereby produced (claims 8-10), a method of introducing a single locus conversion into the plant, including one conferring male sterility, herbicide resistance, insect or pest resistance, disease resistance, modified fatty acid metabolism, abiotic stress tolerance, or modified carbohydrate metabolism, and a plant thereby produced (claims 11-13), a method of using the plant to produce a different inbred soybean plant (claims 14-17), a method of mutagenizing the plant and a plant thereby produced (claims 17-18), and methods of producing commodity products, including protein isolates, protein concentrate, hulls, meal, flour and oil (claims 19-20).
Eby claims S130097 further comprising a single locus conversion (claim 13) and a method of making it by backcrossing (claim 11), including where the conversion confers herbicide resistance (claim 12). To understand the scope of those claims, Eby’s specification is reviewed below.
Eby defines a single locus conversion as follows (column 6, lines 9-17):
Single Locus Converted (Conversion). Single locus converted (conversion), also known as coisogenic plants, refers to plants which are developed by a plant breeding technique called backcrossing and/or by genetic transformation to introduce a given locus that is transgenic in origin, wherein essentially all of the morphological and physiological characteristics of a soybean variety are recovered in addition to the characteristics of the locus transferred into the variety via the backcrossing technique or by genetic transformation.
Eby tells us that converted plants produced by backcrossing will have essentially all of the morphological and physiological characteristics of the recurrent parent, in addition to the single transferred gene from the nonrecurrent parent (column 23, lines 61-67):
The resulting progeny from this cross are then crossed again to the recurrent parent and the process is repeated until a soybean plant is obtained wherein essentially all of the morphological and physiological characteristics of the recurrent parent are recovered in the converted plant, in addition to the single transferred gene from the nonrecurrent parent.
Eby provides a definition of “essentially all” in a paragraph where he tells us that converted plants will have “occasional variant traits” and are part of his invention (column 23, lines 26-43):
When the term "soybean plant" is used in the context of the present invention, this also includes any single gene conversions of that cultivar. The term single gene converted plant as used herein refers to those soybean plants which are developed by a plant breeding technique called backcrossing wherein essentially all of the morphological and physiological characteristics of a cultivar are recovered in addition to the single gene transferred into the cultivar via the backcrossing technique. By "essentially all" as used herein in the context of morphological and physiological characteristics it is meant that the characteristics of a plant are recovered that are otherwise present when compared in the same environment, other than occasional variant traits that might arise during backcrossing or direct introduction of a transgene. It is understood that a locus introduced by backcrossing may or may not be transgenic in origin, and thus the term backcrossing specifically includes backcrossing to introduce loci that were created by genetic transformation.
Eby further tells us backcross converted plants will have traits that vary from those of S130097 (column 26, lines 34-41):
The modified soybean cultivar S130097 may be further characterized as having the morphological and physiological characteristics of soybean cultivar S130097 listed in Table 1 as determined at the 5% significance level when grown in the same environmental conditions and/or may be characterized by percent similarity or identity to soybean cultivar S130097 as determined by SSR markers.
Eby tells us to introduce single locus conversions into S130097 by backcrossing (column 25, lines 3-9):
Cultivar S130097 represents a new base genetic cultivar into which a new locus or trait may be introgressed. Direct transformation and backcrossing represent two important methods that can be used to accomplish such an introgression. The term backcross conversion and single locus conversion are used interchangeably to designate the product of a backcrossing program.
Eby’s specification teaches that with the help of marker-assisted selection a backcross conversion can be made in as few as two backcrosses (column 25, lines 19-29).
Eby teaches that “it is understood by those of ordinary skill in the art that for single gene traits that are relatively easy to classify, the backcross method is effective and relatively easy to manage” (column 25, lines 35-38) and herbicide resistance conferred by a transgene is listed as such a trait (column 25, lines 40-57).
Eby teaches multiple loci may be introduced into S130097: “In some embodiments of the invention, the number of loci that may be backcrossed into soybean cultivar S130097 is at least 1, 2, 3, 4, or 5, and/or no more than 6, 5, 4, 3, or 2.”
Eby does not teach 11050339-52 with the MON87708 and A5547-127 events or without the rhg1 soybean cyst nematode resistance gene.
Brinker et al teach soybean plants with the MON87708 event, which confers dicamba resistance via the dicamba monooxygenase (DMO) from Pseudomonas maltophilia (column 18, lines 4-53).
Beuckleer teaches soybean plants with the A5547-127 event, which confers glufosinate tolerance without otherwise compromising agronomic performance (column 25, lines 1-36; column 26, lines 34-42).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to introduce the MON87708 and A5547-127 events into 11050339-52 by backcrossing. One of ordinary skill in the art would have been motivated to do so because doing so would confer herbicide resistances to 11050339-52 by that would allow it to survive in a field sprayed with glufosinate, glyphosate and/or dicamba to control the widest variety of weeds. Additionally, Eby suggests introducing dicamba and glufosinate resistance into the plant (column 8, lines 16-20). The MON87708 event is one way to achieve dicamba resistance. The A5547-127 event is one way to achieve glufosinate resistance, with the advantage that it does not otherwise compromise agronomic performance (Beuckleer, column 25, lines 1-36; column 26, lines 34-42). 11050339-52 and the instant soybean have similar values for relative maturity, lodging, plant height, seeds/lb, and % seed oil and protein. These differences are merely a difference in degree and not in kind, and would be expected by one of ordinary skill in the art introgressing one trait from one plant into another.
Further, in light of Eby’s specification discussed above, one of ordinary skill in the art would interpret Eby’s claims 11-13 as encompassing a backcrossing method with as few as two backcrosses, where the trait backcrossed in is herbicide resistance, and would interpret the locus converted plant of Eby’s claim 13 as encompassing plants that are not invariant from 11050339-52’s traits, other than the conversion, but that differ from 11050339-52 to some undefined extent and have “occasional” variant traits relative to it.
Thus, one of ordinary skill in the art would have expected variant traits to be encompassed within the locus converted plant claimed in Eby’s claim 13 or produced by Eby’s methods of claims 11 and 12. One of ordinary skill in the art would have expected the locus converted plant to not be identical to 11050339-52 because Eby tells us that converted plants produced by backcrossing will have essentially all of the morphological and physiological characteristics of the recurrent parent, in addition to the single transferred gene from the nonrecurrent parent (column 23, lines 26-43), and that backcross converted plants will have traits that vary from those of 11050339-52 (column 26, lines 34-41).
One of ordinary skill in the art would have crossed Brinker et al’s soybean with Beuckleer’s, crossed the resulting plant to 11050339-52, then backcrossed the resulting progeny to 11050339-52 for several generations, each time selecting for all three events and otherwise all of the desired traits of 11050339-52. Whether one of ordinary skill in the art would have selected for plants with the rhg1 soybean cyst nematode resistance gene in 11050339-52 would be design choice based on the intended use of the soybean. If it was not intended for growth in soybean cyst nematode infested fields, one of ordinary skill in the art may choose to not select for this gene.
11050339-52 and the instant soybean have similar values for relative maturity, lodging, plant height, seeds/lb, and % seed oil and protein. These differences are merely a difference in degree and not in kind, and would be expected by one of ordinary skill in the art introgressing one trait from one plant into another.
One of ordinary skill in the art would have introduced transgenes and locus conversions into the plant, including those conferring male sterility, herbicide resistance, insect or pest resistance, disease resistance, modified fatty acid metabolism, abiotic stress tolerance, or modified carbohydrate metabolism, as taught by Eby. One of ordinary skill in the art would have been motivated to do so because would introduce further desired traits; for example, insect resistance would allow the plants to grown in areas with pests.
One of ordinary skill in the art would have crossed the resulting soybean with itself or another soybean plant, including a series of crosses to produce a soybean plant derived from the original line, including F1 progeny seeds and plants, as taught by Eby. One of ordinary skill in the art would have been motivated to do so because this would allow one to introduce 11050339- 52’s traits into other, new soybean lines.
One of ordinary skill in the art would have mutagenized the resulting soybean, as taught by Eby. One of ordinary skill in the art would have been motivated to do so because this would allow one to introduce new traits into 11050339-52.
One of ordinary skill in the art would have mutagenized the resulting soybean, as taught by Eby. One of ordinary skill in the art would have been motivated to do so because this would allow one to introduce new traits into 11050339-52.
One of ordinary skill in the art would have produced commodity products, including protein isolates, protein concentrate, hulls, meal, flour and oil from the soybean, as taught by Eby. One of ordinary skill in the art would have been motivated to do so because these are the economically important products from soybeans and ones of the main reason farmers grow soybean.
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 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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,229,183. Although the claims at issue are not identical, they are not patentably distinct from each other.
The claims of the instant application and each of ‘405, ‘797, ‘923, and ‘406 are patentably indistinct because the claims differ only in the name of the cultivars in the claims. These names are in-house designations have no art accepted meaning.
However, the cultivars share parents 11050339-52 X (11050339-52 x (11050339-52 x GL4808A1-D1YN) and were made by the same breeding steps.
The soybean cultivars claimed in ‘183 and the instant application both have yellow seed coats, a dull seed coat luster, yellow cotyledons, ovate leaflets, purple flowers, black hila, light tawny pubescence, brown pods, the MON889788, A5547-127, and MON87708 events, and indeterminate growth.
The soybean cultivars claimed in in ‘183 and the instant application also share similar values for relative maturity, lodging, plant height, seeds/lb, and % seed oil and protein, as shown in the table below:
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Relative maturity, lodging, plant height, seeds/lb, and % seed oil and protein are all affected by the environmental conditions in which the plant is grown.
Relative maturity is affected by growing temperature and the amount of daylight (Iowa State University Extension and Outreach, 2018, Soybean Planting and Decision Tool, https://crops.extension.iastate.edu/facts/soybean-planting-decision-tool; see Figure 4).
Lodging score is affected by planting date and seeding rate (Pioneer, 2021, https://www.pioneer.com/us/agronomy/planting_date_effects_lodging_yield_soybeans.html, see Fig 4, 5, pg 5, ¶1, 4).
Plant height is affected by a wide range of environmental conditions (Yang et al, 2021 BMC Plant Biology 21:63; see paragraph spanning the columns on pg 2).
Seed size is affected by weather conditions during seed-filling, particularly extreme late-season stress (Wiebold, 2015, https://ipm.missouri.edu/ipcm/2008/11/Soybean-Seed-Size-Does-Not-Affect-Yield-Performance/, ¶2 and 5) and can vary as much as 20% within a given variety (Staton, 2017, Recommendations for planting large soybean seed, MSU Extension, https://www.canr.msu.edu/news/recommendations_for_planting_large_soybean_seed; ¶1).
Protein and oil concentrations are affected by fertilizer application (Assefa et al, 2019, Front. Plant Sci. 10:298; see pg 10, left column, paragraph 2).
It is clear that the variation in these 6 traits between the instant cultivar and the other cultivars can be accounted for by differing environmental conditions. As none of the traits distinguish the instant cultivar from those claimed the applications listed above, these cultivars are not distinct and thus are obvious variants.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of each of copending Application Nos. 19029257, 19029642, 19022667, and 19056304. Although the claims at issue are not identical, they are not patentably distinct from each other.
The claims of the instant application and each of ‘257, ‘642, ‘667, and ‘304 are patentably indistinct because the claims differ only in the name of the cultivars in the claims. These names are in-house designations have no art accepted meaning.
However, the cultivars all share parents 11050339-52 X (11050339-52 x (11050339-52 x GL4808A1-D1YN) and were made by the same breeding steps.
All the soybean cultivars claimed in the instant and copending applications have yellow seed coats, a dull seed coat luster, yellow cotyledons, ovate leaflets, purple flowers, black hila, light tawny pubescence, brown pods, the MON889788, A5547-127, and MON87708 events, and indeterminate growth.
The soybean cultivars claimed in the instant and copending applications also share similar values for relative maturity, lodging, plant height, seeds/lb, and % seed oil and protein, as shown in the table below:
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266
906
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These small variations in these traits are what one of ordinary skill in the art would expect among progeny of a BC2F1 cross. As none of the traits distinguish the instant cultivar from those claimed the applications listed above, these cultivars are not distinct and thus are obvious variants.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 13 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No 11,284,592.
Claim 13 of the instant application claims a soybean plant of soybean cultivar 92111703, further comprising a single locus conversion, wherein the plant comprises the single locus conversion and otherwise comprises all of the morphological and physiological characteristics of soybean cultivar 92111703.
Claim 18 of the instant application claims a mutagenized soybean plant produced by the method of claim 18, wherein the mutagenized soybean plant comprises a mutation in the genome and otherwise comprises all of the morphological and physiological characteristics of soybean cultivar 92111703.
The soybean cultivar claimed in ‘592 differs from the soybean cultivar claimed in the instant application in one trait, rhg1, which is controlled by a single gene, but it and the instant cultivar otherwise have yellow seed coats, a dull seed coat luster, yellow cotyledons, ovate leaflets, purple flowers, black hila, light tawny pubescence, brown pods, the MON889788, A5547-127, and MON87708 events, and indeterminate growth.
The patented and instant soybeans share parents 11050339-52 X (11050339-52 x (11050339-52 x GL4808A1-D1YN) and were made by the same breeding steps. They also have Relative maturity, Lodging, Height, Seeds/lb, Seed % protein, and Seed % oil values similar to that of the instant soybean, given these traits are affected by environmental conditions, as discussed above, and incorporated herein.
These traits are summarized in the following Table:
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830
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The soybean cultivar claimed in’592 thus indistinguishable from a soybean plant of soybean cultivar 92111703 further comprising a single locus conversion, wherein the plant comprises the single locus conversion and otherwise comprises all of the morphological and physiological characteristics of soybean cultivar 92111703. It is also indistinguishable from a mutagenized soybean plant that comprises a mutation in its genome and otherwise comprises all of the morphological and physiological characteristics of soybean cultivar 92111703.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 8,975,486 in view of each of U.S. Patent Nos. 8,501,407 and 8,017,756.
The claims are drawn to soybean variety 92111703, methods of using it, and products and plants produced from it. 11050339-52 is the recurrent parent of 92111703.
‘486 claims soybean variety 11050339-52, also known as S130097 (claims 1-2, column 6, line 35). Like the instant soybean, 11050339-52 has purple flowers, black hila, light tawny pubescence, and brown pods, yellow, dull seed coats, yellow cotyledons, ovate leaflets, the MON889788 event, and indeterminate growth (Table 1; column 7, lines 8-19). 11050339-52 and the instant soybean have similar values for relative maturity, lodging, plant height, seeds/lb, and % seed oil and protein.
‘486 claims cells, tissue culture of the plant (claims 3-4), methods of crossing the soybean with itself or another soybean plant, including a series of crosses to produce a soybean plant derived from the original line (claims 5-6), Fl progeny seeds (claim 7), introducing transgenes into the plant, including those conferring male sterility, herbicide resistance, insect or pest resistance, disease resistance, modified fatty acid metabolism, abiotic stress tolerance, or modified carbohydrate metabolism, and plants thereby produced (claims 8-10), a method of introducing a single locus conversion into the plant, including one conferring male sterility, herbicide resistance, insect or pest resistance, disease resistance, modified fatty acid metabolism, abiotic stress tolerance, or modified carbohydrate metabolism, and plants thereby produced (claims 11-13), a method of using the plant to produce a different inbred soybean plant (claims 14-17), a method of mutagenizing the plant (claim 17), and methods of producing commodity products, including protein isolates, protein concentrate, hulls, meal, flour and oil (claims 18-19).
‘486 does not claim 11050339-52 with the MON87708 and A5547-127 events or without the soybean cyst nematode resistance gene.
‘407 teaches soybean plants with the MON87708 event, which confers dicamba resistance via the dicamba monooxygenase (DMO) from Pseudomonas maltophilia (column 18, lines 4-53).
‘756 teaches soybean plants with the A5547-127 event, which confers glufosinate tolerance without otherwise compromising agronomic performance (column 25, lines 1-36; column 26, lines 34-42).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to introduce the MON87708 and A5547-127 events into 11050339-52 by backcrossing. One of ordinary skill in the art would have been motivated to do so because doing so would confer herbicide resistances to 11050339-52 by that would allow it to survive in a field sprayed with glufosinate, glyphosate and/or dicamba to control weeds. The MON87708 event is one way to achieve dicamba resistance. The A5547- 127 event is one way to achieve glufosinate resistance, with the advantage that it does not otherwise compromise agronomic performance (‘756, column 25, lines 1-36; column 26, lines 34-42).
One of ordinary skill in the art would have crossed ‘407’s soybean with ‘756’s, crossed the resulting plant to 11050339-52, then backcrossed the resulting progeny to 11050339-52 for several generations, each time selecting for all three events and otherwise all of the desired traits of 11050339-52. Whether one of ordinary skill in the art would have selected for plants with the rhg1 soybean cyst nematode resistance gene in 11050339-52 would be design choice based on the intended use of the soybean. If it was not intended for growth in soybean cyst nematode infested fields, one of ordinary skill in the art may choose to not select for this gene.
11050339-52 and the instant soybean have similar values for relative maturity, lodging, plant height, seeds/lb, and % seed oil and protein. These differences are merely a difference in degree and not in kind, and would be expected by one of ordinary skill in the art introgressing one trait from one plant into another.
One of ordinary skill in the art would have introduced transgenes and single locus conversions into the plant, including those conferring male sterility, herbicide resistance, insect or pest resistance, disease resistance, modified fatty acid metabolism, abiotic stress tolerance, or modified carbohydrate metabolism, as claimed in ‘486 (claims 9 and 11); . One of ordinary skill in the art would have been motivated to do so because would introduce further desired traits; for example, insect resistance would allow the plants to grown in areas with pests.
One of ordinary skill in the art would have crossed the resulting soybean with itself or another soybean plant, including a series of crosses to produce a soybean plant derived from the original line, including F1 progeny seeds and plants, as claimed in ‘486 (claims 5-7 and 14-17). One of ordinary skill in the art would have been motivated to do so because this would allow one to introduce 11050339-52’s traits into other, new soybean lines.
One of ordinary skill in the art would have mutagenized the resulting soybean, as claimed in ‘486 (claim 17). One of ordinary skill in the art would have been motivated to do so because this would allow one to introduce new traits into 11050339-52.
One of ordinary skill in the art would have produced commodity products, including protein isolates, protein concentrate, hulls, meal, flour and oil from the soybean, as claimed in ‘486 (claim 19-20). One of ordinary skill in the art would have been motivated to do so because these are the economically important products from soybeans and ones of the main reason farmers grow soybean.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anne R. Kubelik, Ph.D., whose telephone number is (571) 272-0801. The examiner can normally be reached Monday through Friday, 9:00 am - 5:00 pm Eastern.
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/Anne Kubelik/Primary Examiner, Art Unit 1663
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