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 .
Claims 21-40 are pending and examined on their merit herein.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. US11690347B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The instant claims 23 and 33 are each drawn to a progeny seed of a crossing of two tobacco plants, wherein at least one of the two tobacco plants is a tobacco plant produced by growing a seed of tobacco cultivar dS1564, or dS1564MS. It is broadly interpreted such crosses encompass those of selfing, i.e., crossing with the plants of the same cultivar dS1564, or dS1564MS. Therefore, the progeny seed would be indistinguishable from the seed of dS1564, or dS1564MS, representative samples thereof deposited as ATCC Accession No. PTA-125408 or PTA-126413. Therefore, the claimed seed in claims 23 or 33 read on patented claim 1.
As such, claimed leaf, cured leaf, or tobacco product, of pending claims 24-30 and 34-40 also read on the Patented claims 2-9 since the Patented claims are drawn to the leaf, cured leaf, or tobacco product from the cultivar dS1564, or dS1564MS.
Alternatively, the claimed seed reads on patented claim 10, if the crosses are made with another plant.
Furthermore, pending claims 21-22 and 31-32 are rejected as being obvious over the Patented claims 1 and 10. Although the pending claims are drawn to a method of using the seed of dS1564, or dS1564MS, representative samples thereof deposited as ATCC Accession No. PTA-125408 or PTA-126413, in a process of breeding, such a utility is a contemplated utility in the Patent, see for example in claim 10 which implies a crossing by the recitation of a “F1 progeny”. Moreover, the Specification of ‘593 Patent teaches, e.g., “In another aspect, the present application includes a method for producing a tobacco seed comprising crossing two tobacco plants and harvesting the resultant tobacco seed, where at least one tobacco plant is a tobacco plant produced by growing the seed of tobacco cultivar dS1564.” (Col. 6, line 19, for example). Therefore, it would have been prima facie obvious that the instantly claimed methods of using in a process of crossing, are intended and obvious embodiments of the Patent. The instantly claimed see, leaf, and products in claims 23-30 and 33-40 are also included in this rejection.
Conclusion
No claims are allowed.
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WEIHUA . FAN
Primary Examiner
Art Unit 1663
/WEIHUA FAN/Primary Examiner, Art Unit 1663
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