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 .
DETAILED ACTION
1. Claims 1, 2, 7-10 and 13-22 are pending and are examined in the instant application.
Specification
2. The disclosure is objected to because of the following:
The status of parent Application No. 17/871523 should be updated in paragraph [0001] of the specification.
In paragraph [0214], the Deposit Information does not indicate that all restrictions upon availability to the public will be irrevocably removed upon granting of the patent..
Appropriate correction is required.
Claim Objections
3. Claims 1, 2, 7-10 and 13-22 are objected to because of the following:
In claims 1, 15 and 17, “a sample of seed” should be amended to “a sample of seeds” because more than one seed is deposited.
Dependent claims are included.
Correction is required.
Claim Rejections – 35 USC § 112(a)
4. 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.
5. Claims 1, 2, 7-10 and 13-22 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 claims contain 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.
Since the seed of hybrid SVSC3795 is essential to the claimed invention, it must be obtainable by a reproducible method set forth in the specification or otherwise be 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. The specification does not disclose a reproducible 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 the deposit of the seed is made 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 the seed have been deposited under the Budapest Treaty and that the seed 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. A minimum deposit of 625 seeds is considered sufficient in the ordinary case to assure availability through the period for which a deposit must be maintained.
If the deposit has not been made under the Budapest Treaty, then in order to certify that the deposit meets the criteria 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
(a) during the pendency of the application, access to the invention will be afforded to the Commissioner upon request;
(b) all restrictions upon availability to the public will be irrevocably removed upon granting of the patent;
(c) 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;
(d) the viability of the biological material at the time of deposit will be tested (see 37 CFR 1.807); and
(e) the deposit will be replaced if it should ever become unviable.
The specification does not indicate that all restrictions upon availability to the public will be irrevocably removed upon granting of the patent. Evidence of an accepted deposit is requested.
6. Claims 7, 9, 17 and 18 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 7 and 9 lack adequate written description because the plant part comprising a cell of the hybrid plant of claim 1 encompasses a progeny seed or embryo cell. Hybrid SVSC3795 has a genome that is heterologous at every locus. When said hybrid is crossed with an unknown parent, it is unpredictable what genetic material their progenies would inherit. The specification does not disclose a representative number of progenies of hybrid variety SVSC3795 to allow one skilled in the art to predict the genetic makeup or physiological and morphological characteristics of the claimed progeny cells. No identifying characteristics are set forth for the progenies. There are insufficient relevant identifying characteristics to allow one skilled in the art to predictably determine the genomic structure or morphological and physiological characteristics of the claimed progeny cells, absent further guidance. Accordingly, the claimed plant part and cells lack adequate written description.
With regard to claims 17 and 18, a corn plant of corn hybrid SVSC3795 further comprising a single locus conversion lacks adequate written description for the following reasons. Hybrid SVSC3795 is heterologous at every locus of its genome. When said hybrid is outcrossed with a genetically different plant to introduce a single locus conversion, it is highly unpredictable what combination of dominant and recessive alleles of hybrid SVSC3795 is present in a progeny plant. When this unknown set of dominant and recessive alleles of the hybrid SVSC3795 parent is combined with a second unknown set of dominant and recessive alleles of the undisclosed other parent, it is highly unpredictable what morphological and physiological characteristics of hybrid SVSC3795 are retained, lost or altered in a progeny plant. Even if the progeny plant is backcrossed to hybrid SVSC3795, due to the heterozygous genome of hybrid SVSC3795, the backcrossed progeny would not regain most the morphological and physiological characteristics of hybrid SVSC3795. Thus, the morphological and physiological characteristics of a plant of corn hybrid SVSC3795 cannot be adequate described. Applicant has no working example of a plant of hybrid SVSC3795 further comprising a single locus conversion. Thus, the claimed plant of hybrid SVSC3795 further comprising a single locus conversion lacks adequate written description.
Accordingly, one skilled in the art would not have recognized Applicant was in possession of the claimed invention at the time of filing. See Written Description Guidelines, Revision 1, March 25, 2008, published online at http://www.uspto.gov/web/menu/written/pdf.
Conclusion
7. No claim is allowed. The “cell” is understood by the Office to be a regenerable cell. The claims are free of the prior art. The closest prior art teaches corn hybrid SVSD7749 which shares at least 22 morphological and physiological characteristics (+/- 10% std. dev.) with hybrid SVSC3795, including type, emergence to 50% of plants in silk days, emergence to 50% of plants in pollen days, 50% silk to optimum edible quality days and heat units (HU), ear height, absence of anthocyanin of brace roots, width of ear node leaf, number of leaves above top ear, degrees leaf angle, marginal waves score, longitudinal creases score, tassel length, pollen shed score, anther color, silk color, fresh husk color, ear length, kernel rows appearance, kernel row alignment, extent of ear tape and cob diameter (Hellewell, K., US Pat. No. 10244701 (A), Table 1). However, at least their parents, emergence to 50% of plants in silk HU, emergence to 50% of plants in pollen HU, 10% to 90% pollen shed days and HU, plant height, length of top ear internode, average number of tillers, average number of ears per stalk, length of ear node leaf, sheath pubescence score, number of primary lateral branches, branch angle from central spike, absence of bar glumes, ear diameter at mid-point, ear weight, number of kernel rows, shank length and cob color differ.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHUONG T BUI whose telephone number is (571)272-0793. The examiner can normally be reached M-F 8am-5pm.
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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.
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/PHUONG T BUI/Primary Examiner, Art Unit 1663
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