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 Objections
Claim 1 is objected to because of the following informalities: the species name hypogaea should not be capitalized. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 5 is 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. Claim 5 is indefinite in the recitation of “the rice seed of ‘IPG 517’”, because there is insufficient antecedent basis for this claim limitation.
Claim 9, and claims 10-13 dependent thereon, 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. Claim 9 is indefinite because the result of practicing the method as claimed is unclear, since the preamble indicates that the method is “for producing an F1 hybrid peanut plant”, the method recited in the body of the claim does not result in the production of an F1 hybrid peanut plant.
Claim 14, and claims 15-16 dependent thereon, 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. Claim 14 is indefinite because it is unclear whether or how transforming, mutating, genome editing or using RNA interference or gene silencing are intended to limit the claimed method, since the recited alternatives are preceded by the transitional phrase “comprising, which is open claim language.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 11 and 16 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Tillman et al. U.S. Patent No. 8,178,752, issued May 15, 2012.
Claim 11 is drawn to a peanut seed produced by the method of claim 10.
Claim 10 is drawn to the method of claim 9, further comprising the step of producing peanut seed from the resulting peanut plant.
Claim 9 is drawn to a method for producing an F1 hybrid peanut plant, said method comprising crossing a first parent peanut plant with a second parent peanut plant, wherein the first parent peanut plant or the second parent peanut plant is the peanut plant of claim 2.
Claim 16 is drawn to a peanut plant or part thereof, or peanut seed, produced by the method of claim 14.
Claim 14 is drawn to a method of producing a genetically modified peanut plant comprising transforming, mutating, genome editing or using RNA interference or gene silencing to genetically modify the peanut plant of claim 2, or a cell thereof to prepare a genetically modified peanut plant.
Because the method used to produce the peanut seed of claim 11 uses the open claim language “comprising” allowing for the inclusion of unlimited unspecified steps, and because the method used to produce the peanut seed of claim 11 is silent with respect to the type of plant actually produced by the method, and because claim 11 does not require the peanut seed of claim 11 to have any particular characteristics, claim 11 is interpreted to encompass any peanut seed.
Because the method used to produce the peanut plant or part thereof, or peanut seed of claim 16 is produced by uses the open claim language “comprising” allowing for the inclusion of unlimited unspecified steps, and because the method used to produce the peanut plant or part thereof, or peanut seed of claim 16 is silent with respect to the number and type of genetic modifications introduced into the peanut plant of claim 2, and because claim 16 does not require the peanut plant or part thereof, or peanut seed to have any particular characteristics, claim 16 is interpreted to encompass any peanut plant or part thereof, or peanut seed.
Tillman et al. teach a peanut plant or part thereof, or peanut seed. Accordingly Tillman et al. anticipate claims 11 and 16.
Closest Prior Art
With respect to a peanut plant with the characteristics of the peanut cultivar designated ‘IPG 517’ set forth in Table 2 and deposited under NCMA Accession No. 202312097, the closest prior art identified is Tillman et al. U.S. Patent No. 8,178,752, issued May 15, 2012, who teach a peanut plant that differs from the peanut cultivar designated ‘IPG 517’ at least with respect to flowering on the main stem, leaf arrangement, seed coat color and seed shape (columns 7-8).
Allowable Subject Matter
Claims 1-4, 6-8 and 17-20 are allowed.
Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CYNTHIA E COLLINS whose telephone number is (571)272-0794. The examiner can normally be reached M-F 8:30 am - 5:00 pm.
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/CYNTHIA E COLLINS/ Primary Examiner, Art Unit 1662
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