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 .
Information Disclosure Statement
The information disclosure statement (IDS) filed April 15, 2025 fails to comply with 37 CFR 1.98(a)(1), which requires the following: (1) a list of all patents, publications, applications, or other information submitted for consideration by the Office; (2) U.S. patents and U.S. patent application publications listed in a section separately from citations of other documents; (3) the application number of the application in which the information disclosure statement is being submitted on each page of the list; (4) a column that provides a blank space next to each document to be considered, for the examiner’s initials; and (5) a heading that clearly indicates that the list is an information disclosure statement. The information disclosure statement has been placed in the application file, but the information referred to therein has not been considered. A non-patent literature was filed on April 15, 2025 of U.S. Department of Agriculture Application for Plant Variety Protection Certificate for soybean variety 5PYYV54 which is not listed in the IDS. It is noted that the 65 pages of U.S. Patent Application No. 18/589901 including specification, abstract and claims of soybean variety 5PYYV54 was submitted on April 17, 2025. This patent application has now been granted on June 23, 2026 for U.S. Patent No. 12,660,786 and is cited in the Notices of References Cited with this Action.
Duty of Disclosure
Applicant is reminded of their “Duty of Disclosure, Candor, and Good Faith” (see 37 C.F.R. § 1.56 and MPEP § 2001). Information that would be considered material to patentability includes: 1) any progeny, siblings, half-siblings, or other closely genetically related plants that are either co-pending applications or previously published or publicly disclosed, 2) if backcrossing was used in the breeding history, then the recurrent parent should be disclosed along with any publications or public disclosures of the recurrent parent, and what events/loci/transgenes/traits were donated from the non-recurrent parent along with any publications or public disclosures of the events/loci/transgenes/traits or of the donor parent line itself, 3) if the parental varieties were developed via backcrossing this should be disclosed along with the grandparents, including which grandparent was the recurrent parent along with any publications or public disclosures of the recurrent parent and what events/loci/transgenes/traits were donated from the non-recurrent parent, 4) any alternative designations, experimental names, tradenames, etc. for the instant plant, parent plants, and grandparent plants should be disclosed. All of this information is material to patentability. If, for example, one of the parent plants is published but with a different name/designation, then the publication should be included in the IDS along with an explanation that the different name/designation is a synonym and how this plant is related to the instantly claimed plant.
Specification
The disclosure is objected to because of the following informalities: the specification has “XXXX” where there should be an accession number and “[date]” where there should be a date of deposit [0192].
Status of the Claims
Claims 1-20 are pending and will be examined on the merits.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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 the first paragraph of pre-AIA 35 U.S.C. 112:
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.
Enablement
Claims 1-20 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 claims all require seed of 5PSDW72.
Since the seed claimed is essential to the claimed invention, it must be obtainable by a repeatable method set forth in the specification or otherwise be readily available to the public.
The specification does not disclose a repeatable process to obtain the exact same seed in each occurrence and it is not apparent if such a seed is readily available to the public.
If a seed is not so obtainable or available, a deposit thereof may satisfy the requirements of 35 U.S.C. 112. So long as the number of seeds deposited complies with the requirements of the IDA where the deposit is made, the USPTO considers such a compliant submission as satisfying the rules under 37 CFR 1.801 through 1.809.
It is noted that Applicant intends to deposit seeds for soybean variety 5PSDW72 at the NCMA, but there is no indication that the seeds have been deposited. Further, there is no affirmative statement in the specification that all restrictions upon availability to the public will be irrevocably removed upon granting of the patent.
If the deposit of these seeds is made and accepted under the terms of the Budapest Treaty, then an affidavit or declaration by the Applicant, or a statement by an attorney of record over his or her signature and registration number, stating that the seeds will be irrevocably and without restriction or condition released to the public upon the issuance of a patent would satisfy the deposit requirement made herein.
If the deposit has not been made and accepted under the Budapest Treaty, then in order to certify that the deposit, meets the requirements set forth in 37 CFR 1.801-1.809, Applicant may provide assurance of compliance by an affidavit or declaration, or by a statement by an attorney of record over his or her signature and registration number showing that
i. during the pendency of the application, access to the invention will be afforded to the Commissioner upon request;
ii. all restrictions upon availability to the public will be irrevocably removed upon granting of the patent;
iii. the deposit will be maintained in a public depository for a period of 30 years or 5 years after the last request or for the enforceable life of the patent, whichever is longer; and
iv. the viability of the biological material at the time of deposit will be tested (see 37 CFR 1.807).
In addition, the identifying information set forth in 37 CFR 1.809(d) should be added to the specification. See 37 CFR 1.801 - 1.809 [MPEP 2401-2411.05] for additional explanation of these requirements.
Written Description
Claims 13-14 and 16 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 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 13-14 are drawn to a soybean plant produced where the soybean plant comprises a locus conversion comprising of all physiological and morphological characteristics of soybean variety 5PSDW72.
Applicants have not provided a representative number of species for that genus of a conserved structure/function between the member of the genus. There is no limitation to how many traits can change from 5PSDW72 to its progeny with added transgenes. Paragraph [0134] describes a single locus conversion from a locus conversion which demonstrates the “locus conversion” is not limited to a single locus conversion.
Claim 16 is drawn to a modified soybean that comprises a genome edit and otherwise comprises all the morphological and physiological characteristics of soybean cultivar 5PSDW72.
Thus, the claim encompasses soybean plants that can have almost any number of mutations/edits in any number of morphological and physiological characteristics relative to soybean cultivar 5PSDW72.
The specification describes no structural or functional features that distinguish the claimed plants of claim 16 from other soybean plants. The specification only describes soybean cultivar 5PSDW72 (Table 1). There is no description of any modified/edited soybean plants, nor any description of what structure or function needs to be retained by the genus of plants encompassed by claim 16.
Hence, Applicants have not, in fact, described the claimed 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, Applicants do not appear to have been in possession of the claimed genus at the time this application was filed.
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 1-20 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. Dependent claims are included in the rejection.
Claims 1-20 are indefinite due to the blank lines present in claims 1, 4, 18, and 19. The X’s are intended as placeholders for the accession number which is not yet presented by the applicant to the office. Without an accession number the blank lines leave the claims indefinite as it is unknown which deposit will be linked to the instant soybean (5PSDW72).
The failure to provide a deposit also renders the recitation of the soybean cultivar name “5PSDW72” as indefinite as the cultivar has no meaning without its linkage to a deposit.
Claim 15 recites the limitation "plant part" or “plant cells” in line 2. There is insufficient antecedent basis for this limitation in claim 1 drawn to plant or seed of soybean variety 5PSDW72.
Conclusion
No claims are allowed.
Closest Prior Art
The closest related prior art to the claimed plant is Kalvig et al (U.S. Patent No. 12,660,786 B2). Kalvig et al describe a soybean variety 5PYYV54, where 5PYYV54 is cross between 5PPTW67 and traited line not available to the public. 5PPTW67 was produced from a cross between XB24N13 and proprietary soybean variety not available to the public (col. 38) which is the grandparent of the claimed plant as described in instant specification [0193]. The plant described in Table 1 of instant specification on pages 60-61 discloses 5PSDW72 with glyphosate, 2,4-D and glufosinate resistance, indeterminate plant growth habit, purple flower color, light tawny pubescence color, brown hila color, brown pod color and yellow seed coat same as 5PYYV54. The main difference between 5PYYV54 and 5PSDW72 is the harvest standability, Phytophthora field tolerance, white mold and canopy width.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUNE HWU whose telephone number is (571)272-0977. The examiner can normally be reached on M-TH 5:00AM-3:00PM.
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, Bratislav Stankovic can be reached on 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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/June Hwu/
Primary Examiner, Art Unit 1661
Prosecution Insights