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 1-8 are pending and examined herein on the merits.
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.
Claims 1-8 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1, 2 and 7 recite the term “normal cytoplasm”. This term is confusing as it is not clear what is meant by “normal” within the context of the invention. Although the specification does appear to attempt to define the term, the phrasing is ambiguous. Applicant’s state “In the present invention, the term "normal cytoplasm" is typically used in the meaning that the cytoplasm does not exhibit sterility and is normal in contrast to a plant cytoplasm exhibiting male sterility, i.e., a male sterile cytoplasm”. While it appears that this means the cytoplasm is non-male sterile or intended to mean this, the phrase “typically used” is open language indicated that other meanings may apply to the term. In order to clarify the record and scope of the claims it is suggested to amend the claim to say ---having cytoplasm that does not exhibit male sterility---.
Claim 1 recites “A method for improving a mitochondrial genome of a cytoplasmic male sterile Brassica rapa plant” comprising “using the cytoplasmic male sterile Brassica rapa plant as a cytoplasm donor parent”. This would appear that the mitochondria are unchanged and that the genome is unedited or modified for the mitochondria. Accordingly, it is unclear how the mitochondria genome is “improved” as it is unchanged. The claim appears to indicate that compatibility is improved. Accordingly it appears the claim scope and clarity would be improved as a method to improve compatibility between a mitochondrial genome and nuclear genome as indicated by both the claim and the specification.
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.
Claims 1-8 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
The claims are broadly drawn to improving any mitochondrial genome or any CMS Brassica rapa plant comprising using the Brassica rapa plant as a cytoplasm donor into any Brassica plant or any derived Brassica plant wherein compatibility is improved.
In contrast, the specification describes specific crosses between deposited lines wherein compatibility is improved and cytoplasm for the CMS Brassica rapa plant is improved. The specification does not describe the large genus claimed in the instant claims, and does not describe the instantly claimed method for use with starting material commensurate in scope with the claims such that one of skill in the art would readily be able to determine whether or not they had practiced the invention or whether or not they were in possession of the invention.
Accordingly the claims are not adequately described over their full breadth.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENT T PAGE whose telephone number is (571)272-5914. The examiner can normally be reached M-F 7-4 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham can be reached at 5712707058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRENT T PAGE/Primary Examiner, Art Unit 1663
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