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 .
Restriction/Election
In response to the communication received on August 5, 2026, from Kassandra Rittmer, the election with traverse of Group II, claims 8-10, is acknowledged.
The traversal is on the basis that the method of Invention I is specifically directed to producing hybrid seed, and that the product of Invention II is a grass plant and seed that results from performing the claimed method (Remarks).
Applicants’ arguments have been carefully considered but they are not persuasive.
Briefly, and as stated on pages 2-3 in the Office action dated 06/05/2026, inventions I and II are related as process of making and product(s) made. In the instant case the claimed microorganisms of Group I can be cultured without carboxylic acid, i. e., using different method steps. Further in contrast, the claimed plants of Group II can be produced using genetic engineering, plant transformation, vegetative propagation/cloning, and other processes that do not require determining the percent sexuality, which are processes unrelated to the instantly claimed method of Group I. Further in contrast, the methods of Group I require Kentucky bluegrass (at least cl. 4), but the methods as claimed can be also used to produce grass plants other than Kentucky bluegrass.
. The requirement is still deemed proper and is therefore made FINAL.
Specification
This application should be reviewed for errors. For example, at paragraph [076] of the specification, the word “breeching” should be replaced with the term “breeding” or alternatively applicant should explain how the term applies to the instant invention. Breeching is not a usual term of art in plant breeding, the common definition, of which, refers to a strong leather strap.
Information Disclosure Statement
Initialed and dated copy of Applicants’ information disclosure statement (IDS) filed on 08/05/2026 is attached to the instant Office action. The submission is in compliance with the provisions of 37 C.F.R. § 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Priority
This application is a divisional of 18/233,718 which claims priority to PRO 63/397,699 and has an effective filing date of 08/12/2022.
Status of Claims
Claims 1-10 are pending.
Claims 1-7 are withdrawn for being directed to non-elected invention(s).
Claims 8-10 are examined in this Office action.
Claim Objections
Claim 8 is objected to for the following informalities:
In line 6, the word “harvest” should be replaced with ---harvesting---, as an active method step;
In line 7, the word “grow” should be replaced with ---growing---, as an active method step.; and
In line 7, the phrase “along side” should be replaced with ---alongside---.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 8-10 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a method that includes an abstract step or a product of nature, which comprises the judicial exception, without significantly more. The claim(s) recite(s) a preamble directed to a method of producing seed capable of 100% sexual reproduction from seed of plants with facultative sexual or apomictic reproduction comprising the steps of:
Crossing a maternal completely sexual plant with a paternal facultative or apomictic cultivar to create a first hybrid generation;
Growing the first hybrid generation;
Selecting phenotypes of interest from a plant of the first hybrid generation;
Harvesting the selected plants individually; and
Growing the selected plants individually alongside clones a maternal parent of the selected plant to create a second hybrid generation.
The very definition of “facultative sexual reproduction” is a flexible reproductive strategy in which an organism can switch between sexual and asexual reproduction. Thus, included within these populations are plants which are “capable” of 100% sexual reproduction and are thus considered as a product of nature. Grass plants belong to the Poaceae family, one of the largest and most economically important plant families, with over 12,000 species worldwide.1 They are monocotyledonous flowering plants, typically herbaceous, with long, narrow leaves, hollow stems (culms), and fibrous root systems. Many grasses are paternal facultative, meaning they can reproduce both sexually (via seeds) and asexually (via vegetative propagation), often through underground stems (rhizomes) or above-ground stems (stolons). Grass plants are thus naturally paternal facultative because they can reproduce both sexually (via wind-pollinated seeds) and asexually (via vegetative stems), giving them flexibility in colonization and resilience in variable environments.
The instant claims do not require transformative manipulation steps. This judicial exception is not integrated into a practical application because while the claimed method includes growing the plants, there is no active step except for growing and harvesting, which occurs naturally, and thus the growing of the individual plants alongside clones, (presumable produced via apomixis) is a natural process. While the step of determining the percentage of sexual reproduction is merely data collection/mental step. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because this judicial exception is not integrated into a practical application because while the claims include abstract step, the application is recited at a high level of generality and without specific guidance regarding the need for or the manner of treatment. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the application into a method of treatment is recited at a high level of generality.
According to the 2019 Revised Patent Subject Matter Eligibility Guidance, an initial two step analysis is required for determining statutory eligibility. According to the Manual of Patent Examination Procedure (MPEP) sections 2103 through 2106.07(c), which now incorporates the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), October 2019 Patent Eligibility Guidance Update (October 2019 Update), and the Berkheimer Memo, an initial two step analysis is required for determining statutory eligibility.
Step 1 requires a determination of whether the claims are directed to a process, machine,
manufacture, or a composition of matter. In the instant case, the Step 1 requirement is satisfied as the claims are directed towards a process and product.
Step 2: the Step 2 analysis is a two-part analysis, Step 2A and Step 2B.
Step 2A. prong 1
Step 2A, prong 1 requires a determination of whether the claims are directed towards a
judicial exception, i.e. a law of nature, natural phenomenon, or an abstract idea, while step 2A, prong 2 requires an analysis of whether the judicial exception integrated into a practical application if the claim recites a judicial exception under Prong 1.
Step 2A. prong 2
Step 2A, prong 2 requires an analysis of whether the judicial exception integrated into a
practical application if the claim recites a judicial exception under Prong 1.
Step 2B
The second part, Step 2B of the two-step analysis is drawn to determining whether any
element or combination of elements, in the instant claims is/are sufficient to ensure that the
claims as a whole amount to significantly more than the judicial exception.
Following the analysis below the claims are not patent eligible under 35 U.S.C. 101.
Concerning Step 1: YES. Claims 1-7 are directed to methods and products, therefore the claims are directed to a statutory category.
Concerning Step 2A: YES. The claims recite methods of producing seed and products. Claim 1 relies on an abstract step of data collection and the natural process of reproduction. In other words, claim 1 rely on a judicially excluded abstract idea/product of nature associated with a method naturally producing seed, without significantly more. Claims 2-6 depend from claim 1 and do not correct the noted deficiency.
Concerning Step 2A, prong 2, the judicial exception of the abstract step of claim 1 is
not integrated into a practical application because of the following.
A claim that integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial
exception. When the exception is so integrated, then the claim is not directed to a judicial
exception.
Claim 1 does not recite steps beyond the growing, harvesting and determining percentage of sexual reproduction.
Claim 1 does not recite steps/elements that are construed to be a practical application that apply, rely on, or use the judicial exceptions. The steps of determining the level of sexual reproduction are not a practical application as this step must be applied to realize the judicial exception(s).
They are also recited with a high level of generality and therefore do not add any meaningful limitation to practicing the natural law and/or abstract idea.
Concerning Step 2B, claim 1 does not recite any additional elements
that ensure that the claims as a whole amount to significantly more than the judicial exception(s).
The step of determining the percentage of sexual reproduction is merely data collection and constitute well understood, routine, conventional activity. There is no inventive concept in claim 1, and in the claims that depend therefrom, and thus they are rejected as being ineligible under 35 U.S.C. 101.
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 the second paragraph of 35 U.S.C. 112:
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.
Indefiniteness
Claims 8-10 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. All dependent claims are included in these rejections unless they contain a limitation that overcomes the deficiencies of the parent claim from which they depend.
Claims 8-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: the claim fails to interrelate essential elements of the invention as defined by applicant(s) in the specification.
Claim 8 recites in the last two lines the limitation of “grow individually the selected phenotype plants along side a clone of a maternal parent of the select phenotype plant to create a second hybrid generation”. In the absence of a crossing/hybridization step between plants, it is unclear as to how a second hybrid generation would be created. A claim is indefinite where it merely recites an intended goal without adequate recitation of active, positive steps delimiting how this goal is actually accomplished/practiced.
The detailed description of the invention describes a method for producing a 100% sexually reproduced cultivar of Kentucky Bluegrass. The specification beginning at [037] documents that the process requires the crossing of a maternal-facultative sexual/apomictic plant with a second paternal facultative sexual/apomictic plant, followed by selfing, planting, selection, harvesting and cloning. Ther totality of these steps is recited in any of the claims presented for examination. There is inadequate interrelation between the various elements in claim 8 as the method of producing the claimed seed or plant does ends without interaction or hybridization. The step of selecting plants with phenotypes of interest is not linked to the process disclosed in the specification as these terms seems to refer to traits unrelated to sexual hybridization. For example, at [073] tillering is listed as a trait of interest. At [054] refers to traits that are desirable or of interest and different than the maternal line but are otherwise undefined. Nor is there any relationship set forth in growing the selected plants alongside clones of a material parent and as set claimed do not require any further interaction. The use of the indefinite article “a” in the phrase “a maternal parent” as opposed to “the” means that this is one of many possible maternal parents and no indication of how or why one would be selected over another. Finally, there is no procedure set forth to determine the percentage of sexual reproduction or its relationship to the growing the selected plants alongside of a maternal parent.
It is also unclear how the (selected phenotype) plants that have been harvested individually (line 6 of claim 8) can be subsequently grown individually (once they are harvested).
It is further unclear what is meant by the phrase “clone of a maternal parent”, as the disclosure does not appear to contemplate “cloning” of any plant(s)/maternal parent(s).
In the interest of compact prosecution, the claims are nevertheless examined.
SC 35 USC § 102
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.
Claims 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WIENERS (Wieners et al., 2006, Characterization of a USDA Bluegrass (Poa pratensis L.) core collection for reproductive mode and DNA content by flow cytometry, Genetic Resources and Crop Evolution 53: 1531-1541; see IDS filed 08/05/2026).
WIENERS teaches that it was well known in the art that sexual obligate accessions of Kentucky Bluegrass were well known and housed in the USDA core collection. “Mature seeds of 38 accessions of the Kentucky bluegrass core collection were obtained from the USDA Plant Introduction Station in Pullman, Washington” (Materials and Methods section, page 1532).
WIENERS teaches that “[w]hile the majority of the accessions exhibited facultative apomictic reproductive behavior with a combination of reduced, zygotic and unreduced, parthenogenic embryo production, obligate sexual or obligate apomictic accessions were also found to be present in this core collection. In addition, reduced, parthenogenic and unreduced zygotic embryos were also detected in several accessions.” See Abstract; data in Table 1 and accompanying text; and see the last paragraph of page 1533 to the first of page 1534.
WIENERS teaches that ten plants of each accession were grown, watered, and fertilized. Plants were subsequently selected for somatic tissue analysis (page 1533, left col., first full paragraph).
WIENERS teaches that characterization of Kentucky bluegrass germplasm for reproductive mode can provide valuable information for both commercial breeding programs and for basic genetic research as well (page 1532, left col., first full paragraph; page 1540, right col., first paragraph).
In the instant case, the Kentucky Bluegrass seed and plants, taught by WIENERS, anticipate the instantly claimed seed of (grass) plants, absent evidence to the contrary.
It is noted that, “[e]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). See MPEP § 2113.
The compositions (seeds, plants, germplasm, nucleotide sequences) taught by WIENERS would have inherently exhibited the claimed grass plant physiological and morphological characteristics, because they contained all the structural elements recited in the instant claims.
Accordingly, WIENERS anticipated the claimed invention.
Claims 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GRIEDER (Grieder et al., 2016, Variétés de paturin des prés d’Agroscope: performances accrues par la reproduction sexuée, Recherche Agronomique Suisse 7-8: 304-309; see English language abstract; see IDS filed 08/05/2026) as evidenced by SELISTA (Fact Sheet, SELISTA Kentucky Bluegrass, Agroscope, Reckenholzstrasse 191, 8046 Zürich, published 02/16/2018).
GRIEDER teaches two varieties of Kentucky Bluegrass, Selista and Sepia, from Agroscope’s breeding program, and are included in the Swiss List Recommended Varieties for Forage Plants. These varieties primarily reproduce sexually, like the known variety Lato. Both new varieties can be traced back to breeding and ecotype material systematically selected for sexual seed formation. Sepia particularly impressed with the best vigor during initial development, persistence, and the best dry-matter yield. Both new varieties (Selista and Sepia) also exhibited very good resistance to rust (Puccinia spp.) and leaf-spot (e.g., Drechslera poae) diseases (i.e., grass plant physiological and morphological characteristics).
SELISTA, referencing Grieder et al., 2016, provides evidence that the Kentucky Bluegrass Selista is one of the first two Agroscope varieties being on the recommended list of Switzerland since 2014. Heading date of Selista is 3 days earlier than for variety Sepia and 4 days earlier than for variety Lato. Selista shows a sexual reproduction system, allowing for a better adaptability to differing environmental conditions compared to the non-segregating apomictic varieties. In the official trials from 2010 to 2012, Selista reached nearly the same overall rank as the best existing variety and even showed best results for competitive ability and persistence (“Things to know” section).
In the instant case, the Kentucky Bluegrass seed and plants, taught by GRIEDER, anticipate the instantly claimed seed of (grass) plants, absent evidence to the contrary.
It is noted that, “[e]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). See MPEP § 2113.
The compositions (seeds, plants, germplasm, nucleotide sequences) taught by GRIEDER would have inherently exhibited the claimed grass plant physiological and morphological characteristics, because they contained all the structural elements recited in the instant claims.
Accordingly, GRIEDER anticipated the claimed invention.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to Applicants’ disclosure:
CARMAN, US 2021/0277408 A1, Method of inducing Apomictic or Sexual Reproduction, published 09/09/2021.
CARMAN teaches a method of inducing apomixis in a sexual eukaryote or sexual reproduction in an apomictic eukaryote, comprising increasing or decreasing glucose or sucrose signaling, osmotic stress, oxidative stress, perceived oxidative stress, or a combination thereof in a female germline cell and/or a female germline-associated tissue in the sexual eukaryote or apomictic eukaryote, wherein apomixis comprises apomeiosis and parthenogenesis and sexual reproduction comprises meiosis and syngamy.
SCHMIDT, WO 2015/193733 A2, Hybrid breeding method for facultative apomictic plants, published 12/23/2015; see IDS filed 08/05/2026.
SCHMIDT teaches materials and methods useful for improving the efficacy of a plant breeding program such as, for example, the method for producing hybrid seeds in a facultative apomictic crop species, which in turns are useful for, for example, commercial production of highly uniform hybrid progeny. Hybrid seeds produced by such improved breeding methods, and plant grown from such hybrid seeds are also within the scope of the present invention. The disclosure further relates to processes for making a plant-derived product derived from any of the foregoing hybrid plants, and plant-derived products produced by such processes.
Summary
No claim is allowed.
Examiner’s Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRATISLAV STANKOVIC whose telephone number is (571)270-0305. The examiner can normally be reached Monday-Friday, 08:00-17:00 h EST.
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BRATISLAV STANKOVIC, JD, PhD
Supervisory Patent Examiner
Art Units 1661 & 1662
/BRATISLAV STANKOVIC/SPE, Art Units 1661 & 1662
1 See “Poaceae” entry at Wikipedia, at https://en.wikipedia.org/wiki/Poaceae, accessed 08/20/2026.
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