DETAILED ACTION
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 .
Claim Status
Claims 1-20 are pending and examined on the merits.
Claims 1, 6, 11, 13-15 and 18 are currently amended.
Response to Arguments - Title
The title objection of record is withdrawn due to amendments made in the response submitted 24 September 2026.
Response to Arguments – Specification
The Specification objections of record is withdrawn due to amendments made in the response submitted 24 September 2026.
Response to Arguments - Improper Markush Groups
The claim rejection of record is withdrawn due to amendments made to the claims in the claim set submitted 24 September 2026.
Response to Arguments - Lack of Written Description – Breeding History
The claim rejection of record is withdrawn due to amendments made to the claims in the claim set submitted 24 September 2026.
Response to Arguments - Indefiniteness
The claim rejection of record is withdrawn due to amendments made to the claims in the claim set submitted 24 September 2026. However, the amendments have raised a new ground of indefiniteness in claims 11-13. See rejection below.
Claim Rejections - 35 USC § 112
Indefiniteness
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.
Claims 11-13 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 pre-AIA the applicant regards as the invention.
Claim 11 has been amended to recite, “a single transgene or locus conferring the desired trait…” It is unclear if the word “single” is intended to modify just the word “transgene” or if it is intended to modify both the words “transgene” and “locus.”
It is suggested that the words “a single” be added before the word “locus” to overcome the rejection.
Note that claim 13 should be amended to recite the word “single” before both the words “transgene” and “locus” to insure clear antecedent basis.
Response to Arguments - Lack of Written Description
Applicant's arguments filed 24 September 2026 have been fully considered but they are not persuasive.
Applicant urges that claim 11 has been amended to recite, “a single transgene or locus conversion.”
This argument is not persuasive. It is unclear if the word “single” is intended to modify just the word “transgene” or if it is intended to modify both the words “transgene” and “locus.” If it is only modifying the word, “transgene,” then the basis for the lack of written description rejection still is present in the claim.
Claim Rejections - 35 USC § 112
Lack of Written Description
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.
Claim 13 remains 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 13 is drawn to soybean plants produced by processes that introduced at least one altered locus conversion to soybean line EW2120953 without any upper limit to the number of loci introduced to soybean line EW2120953.
This means that plants sharing little genetic and phenotypic characteristics are included in the scope of the claims.
The instant disclosure describes a few characteristics and traits of EW2120953 (pages 50-51).
These descriptions are insufficient, because there is not any limit on how dissimilar the resultant plants are from the deposited variety.
Given the broad scope of the claimed genus one of skill in the art would not have recognized that Applicant was in possession of the claimed genus at the time of filing.
Conclusion
Claims 1-10 and 14-20 are allowed.
Claims 11-13 are rejected.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R KEOGH whose telephone number is (571)272-2960. The examiner can normally be reached M-Th 7-4:30, half day on Fridays.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham can be reached on 571-270-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. 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.
/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663
