DETAILED ACTION
Claims 1-20 are pending.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Deposit of Biological Material
This application requires public availability of specific biological material to make and use the claimed invention. A rejection under the appropriate sections of 35 USC 112 would have been made but for Applicant’s statement in ¶244 indicating that an acceptable deposit of the specific biological material in compliance with the requirements under 37 CFR 1.801-1.809 will be made with a recognized IDA, at or before the payment of the issue fee, in the event that the application should be determined to be allowable.
Because viability testing of all deposits is required before they can be considered to meet the requirements of 37 CFR 1.801-1.809, applicants are advised to perfect the deposit as early as is possible, and before the payment of the issue fee. Failure to perfect a deposit by the date of payment of the issue fee may result in abandonment of the application for failure to prosecute.
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.
Claims 1-20 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 that the inventor or a joint inventor, or for pre-AIA the applicant, regards as the invention. Dependent claims are included in all rejections.
The claims are indefinite because of the definition of “soybean plant” in (¶186):
[0186] When the term "soybean plant" is used in the context of the present invention, this also includes any single gene conversions of that cultivar. The term single gene converted plant as used herein refers to those soybean plants which are developed by a plant breeding technique called backcrossing wherein essentially all of the morphological and physiological characteristics of a cultivar are recovered in addition to the single gene transferred into the cultivar via the backcrossing technique. By "essentially all" as used herein in the context of morphological and physiological characteristics it is meant that the characteristics of a plant are recovered that are otherwise present when compared in the same environment, other than occasional variant traits that might arise during backcrossing or direct introduction of a transgene. It is understood that a locus introduced by backcrossing may or may not be transgenic in origin, and thus the term backcrossing specifically includes backcrossing to introduce loci that were created by genetic transformation.
It is not clear if this definition only applies when the phrase “soybean plant” is used or if it also applies when “soybean cultivar” or “ a plant of soybean cultivar” is used.
The use of “cultivar” in this definition, makes “soybean cultivar” and “soybean plant” appear to be interchangeable terms, as “the term ‘soybean plant’ … includes any single gene conversions of that cultivar” (emphasis added).
Further, the claims use “soybean plant” to refer to “soybean cultivar 07230211”. Claim 11 is a method of introducing a single locus conversion into a soybean plant, where the plant into which the single locus conversion is introduced is a plant of soybean cultivar 07230211.
The recitation “A soybean plant of soybean cultivar 07230211” in claim 13 uses both phrases. In this recitation, “soybean plant”, which by definition “includes any single gene conversions of that cultivar” is a subspecies of “soybean cultivar 07230211”, suggesting that “soybean cultivar 07230211” is even broader than the definition of “soybean plant” in ¶186.
Regardless, the definition of “essentially all of the phenotypic characteristics or morphological and physiological characteristics” in ¶186 indicates that plants with variant traits are encompassed by “single gene conversions” as well as by “soybean plant”, and under the interpretation above, “soybean cultivar”.
It is not clear what is meant by “occasional variant traits”, as it is not clear how the time word “occasional” applies to a product. It is also not clear how many “variant traits” are encompassed by the phrase.
It thus appears from these definitions that a large amount of variation is encompassed by “soybean plant”, and under the interpretation above, “soybean cultivar 07230211” and that “soybean cultivar 07230211” encompasses a genus of plants.
The “soybean plant of soybean cultivar 07230211, further comprising a single locus conversion” recited in claim 13 has a locus or loci converted relative to their own loci and have variants relative to its own genetic background. This is circular logic and renders this phrase and definition in ¶186 indefinite. The metes and bounds of what a “locus conversion” of 07230211 would be is completely unclear, especially since the loci are converted relative to the undefined genus “07230211”.
Further, it is not clear how many of these variations and conversions it takes for the plant to no longer be a member of the genus of plants encompassed by “soybean plant” or named “soybean cultivar 07230211”.
If the phrase “soybean plant” does not encompass “soybean cultivar”, it is not clear if the definition in ¶186 only applies when “soybean plant” is used or if “soybean seed” is also encompassed. The definition of “plant” includes “seeds” (¶55):
Plant. As used herein, the term "plant" includes reference to an immature or mature whole plant, including a plant from which seed, grain, or anthers have been removed. Seed or embryo that will produce the plant is also considered to be the plant.
For purposes of examination, it was assumed that both “soybean plant” and “soybean seed” “includes any single gene conversions of that cultivar”. Such treatment does not relieve Applicant of the responsibility to respond to this rejection.
Claims 11 and 13 are indefinite in their recitation of “single locus conversion”.
The specification defines “Single Locus Converted (Conversion)” as follows (¶68):
[0068] Single Locus Converted (Conversion). Single locus converted (conversion), also known as coisogenic plants, refers to plants which are developed by a plant breeding technique called backcrossing and/or by genetic transformation to introduce a given locus that is transgenic in origin, wherein essentially all of the morphological and physiological characteristics of a soybean variety are recovered in addition to the characteristics of the locus transferred into the variety via the backcrossing technique or by genetic transformation.
It is not clear from the phrase “introduce a given locus that is transgenic in origin” if the locus introduced by either backcrossing or transformation is limited to those that are “transgenic in origin” or if the locus introduced by backcrossing can be non-transgenic.
Lastly, it is not clear if “a single locus conversion” means one and only one locus conversion. The specification defines “a” as follows (¶243):
[00242] The use of the terms "a" and "an" and "the" and similar referents in the context of describing the invention (especially in the context of the following claims) are to be construed to cover both the singular and the plural, unless otherwise indicated herein or clearly contradicted by context. The terms "comprising," "having," "including," and "containing" are to be construed as open-ended terms (i.e., meaning "including, but not limited to,") unless otherwise noted.
This definition implies multiple locus conversions are encompassed by the phrase. However, the word “single” implies one and only one locus conversion.
This is further made confusing in claim 13, which is drawn to a “soybean plant of soybean cultivar 07230211, further comprising a single locus conversion”. As discussed above, “soybean plant”, under any interpretation, “includes any single gene conversions”. In claim 13 the soybean plant with single gene conversions further comprises a single locus conversion. It is unclear how many gene conversions are encompassed by the claimed plant, and how many loci are different from those in “soybean cultivar 07230211”, if “soybean cultivar 07230211” is not itself a genus.
Claims 11, 13 and 18 are indefinite in their recitation of “otherwise comprises all of the morphological and physiological characteristics of soybean cultivar 07230211”. Because it is not clear what is encompassed by “soybean cultivar 07230211”, it is not clear what its morphological and physiological characteristics are.
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Claims 1-20 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The definitions and interpretations of the phrases “soybean plant”, “soybean seed”, “soybean cultivar 07230211”and “single gene conversion” presented in the rejection under 35 U.S.C. 112(b) above are incorporated herein.
The instant claims are broadly drawn to plants and seeds of soybean cultivar 07230211, and plants and seed derived from said cultivar, and methods of using said cultivar.
Under the interpretation that “soybean cultivar 07230211” encompasses “any single gene conversions of that cultivar”, the specification does not describe the full scope of 07230211 plants with unspecified numbers of locus conversions relative to the plant describe in Table 1 or the plant whose seeds are to be deposited.
The recitation in (¶186) that “single gene converted plant” “refers to those soybean plants which are developed by a plant breeding technique called backcrossing wherein essentially all of the morphological and physiological characteristics of a cultivar are recovered in addition to the single gene transferred into the cultivar” means that plants with variant traits are encompassed by “single gene conversions” as well as by “soybean plant” and “soybean cultivar”.
The specification does not describe soybean plants with an unspecified number of “variant traits” relative to “soybean cultivar 07230211”, whether “soybean cultivar 07230211” means only plants with a single fixed genome or plants that are some genus of genetics and/or morphological and physiological characteristics.
Under the interpretation that “soybean plant” means a plant includes any single gene conversions only when the phrase “soybean plant” is recited, the specification does not describe soybean cultivar 07230211 plants further comprising a single locus conversion.
As single locus converted plants “have essentially all of the morphological and physiological characteristics of a soybean variety” (¶68), single locus converted plants of soybean cultivar 07230211 have an unspecified number of differences from plants soybean cultivar 07230211. Further, claim 13, which is drawn to a “soybean plant of soybean cultivar 07230211, further comprising a single locus conversion” encompasses a cultivar 07230211 soybean plant with single gene conversions further comprising a single locus conversion.
The specification describes no structural features that distinguish plants of “soybean cultivar 07230211” from other soybean plants. The specification does not describe the structural features and/or morphological and physiological characteristics that are required for a plant to be of “soybean cultivar 07230211”.
The specification describes no structural features that distinguish plants of “soybean cultivar 07230211, further comprising a single locus conversion” from other soybean plants. The specification does not describe the structural features and/or morphological and physiological characteristics that are required for a plant to be of “soybean cultivar 07230211 further comprising a single locus conversion”.
Lastly, claim 18 is drawn to a mutagenized soybean that comprises a mutation and otherwise comprises all the morphological and physiological characteristics of soybean cultivar 07230211.
EMS mutagensis of soybean can produce over 20,000 mutations per plant (Tsuda et al, 2015, BMC Genomics 16:1014; pg 4, right column, paragraph 1).
Thus, the claim encompasses soybean plants that can have almost any number of mutations in any number of morphological and physiological characteristics relative to soybean cultivar 07230211, regardless how broadly “soybean cultivar 07230211” is interpreted.
The specification describes no structural features that distinguish soybean plants that differ in any number of morphological and physiological characteristics from soybean cultivar 07230211 from other soybean plants.
The specification describes no plants that differ from morphological and physiological characteristics of soybean cultivar 07230211 in an unspecified number of traits. The specification only describes soybean cultivar 07230211 (Table 1).
Hence, Applicant has not, in fact, described the claimed soybean plants over the full scope of the claims, and the specification fails to provide an adequate written description of the claimed invention.
Therefore, given the lack of written description in the specification with regard to the structural and functional characteristics of the claimed compositions, Applicant does not appear to have been in possession of the claimed genus at the time this application was filed.
Claim Rejections - 35 USC §§ 102, 103
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mason (2019, US 10,492,404).
The definitions and interpretations of the phrases “soybean plant”, “soybean seed”, “soybean cultivar 07230211”and “single gene conversion” presented in the rejections under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) above are incorporated herein.
Mason teaches soybean variety 61332840. Like the instant 07230211, 61332840 has yellow, dull seed coats, yellow cotyledons, ovate leaves, purple flowers, imperfect black hila, indeterminate growth, gray pubescence, tan pods, the DAS-44406-6 herbicide resistance event, and the rhg1 soybean cyst nematode resistance gene (Table 1; column 7, lines 9-17). 61332840 has similar values for the quantitative traits lodging, height, seed size, percent protein and oil, and relative maturity as 07230211 (Table 1).
Relative maturity, lodging, plant height, seeds/lb, and % seed oil and protein are all affected by the environmental conditions in which the plant is grown.
Relative maturity is affected by growing temperature and the amount of daylight (Iowa State University Extension and Outreach, 2018, Soybean Planting and Decision Tool, https://crops.extension.iastate.edu/facts/soybean-planting-decision-tool; see Figure 4).
Lodging score is affected by planting date and seeding rate (Pioneer, 2021, https://www.pioneer.com/us/agronomy/planting_date_effects_lodging_yield_soybeans.html, see Fig 4, 5, pg 5, ¶1, 4).
Plant height is affected by a wide range of environmental conditions (Yang et al, 2021 BMC Plant Biology 21:63; see paragraph spanning the columns on pg 2).
Seed size is affected by weather conditions during seed-filling, particularly extreme late- season stress (Wiebold, 2015, https://ipm.missouri.edu/ipcm/2008/11/Soybean-Seed-Size-Does- Not-Affect-Yield-Performance/, ¶2 and 5) and can vary as much as 20% within a given variety (Staton, 2017, Recommendations for planting large soybean seed, MSU Extension, https://www.canr.msu.edu/news/recommendations_for_planting_large_soybean_seed; ¶1).
Protein and oil concentrations are affected by fertilizer application (Assefa et al, 2019, Front. Plant Sci. 10:298; see pg 10, left column, paragraph 2).
This can be seen in the data for these traits for soybean variety AG2931 as cited in 7 patents:
PNG
media_image1.png
415
758
media_image1.png
Greyscale
Thus, it appears that the variation in these traits between the instant cultivar and 61332840 can be accounted for by differing environmental conditions and/or any differences fall within the genus that is the instant 07230211.
61332840’s parents are 941127-35 and Exp4406 (column 6, lines 36-45). The parents of the instant 07230211 are 14539206 and 14530049 (¶68). The response filed 12 August 2024 in parent 17/495,242 to the Request for Information mailed 9 April 2024 indicates that parent 14539206 was produced from parents 941127-35 and (6464006-09 x (6464006-09 x (6464327-09 x (6464327-09 x (6464327-09 x (6464327-09 x (6464327-09 x 4406-001)))))) and that 4406-001 provided the Enlist E3 event. Thus, 07230211 and 61332840 share common parentage.
Mason claims a cell and tissue culture of 61332840 (claims 3-4), methods of crossing 61332840 with itself or another soybean plant (claims 5-6), F1 progeny seeds (claim 7), introducing transgenes into 61332840, including those conferring male sterility, herbicide resistance, insect or pest resistance, disease resistance, modified fatty acid metabolism, abiotic stress tolerance, or modified carbohydrate metabolism, and plants thereby produced (claims 8-10), a method of introducing a single locus conversion into 61332840, including one conferring male sterility, herbicide resistance, insect or pest resistance, disease resistance, modified fatty acid metabolism, abiotic stress tolerance, or modified carbohydrate metabolism, and plants thereby produced (claims 11-13), a method of using the plant to produce a different inbred soybean plant (claims 14-16), a method of mutagenizing 61332840 and plant thereby produced (claims 17-18), and methods of producing commodity products, including protein isolates, protein concentrate, hulls, meal, flour and oil (claims 19-20). The claims are identical to the instant claims except for the name of the variety.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
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 1-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of, or, in the alternative, as being unpatentable over claims 1-20 of prior U.S. Patent No. 10,492,404.
The definitions and interpretations of the phrases “soybean plant”, “soybean seed”, “soybean cultivar 07230211”and “single gene conversion” presented in the rejections under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) above are incorporated herein.
‘404 claims soybean variety 61332840. Like the instant 07230211, 61332840 has yellow, dull seed coats, yellow cotyledons, ovate leaves, purple flowers, imperfect black hila, indeterminate growth, gray pubescence, tan pods, the DAS-44406-6 herbicide resistance event, and the rhg1 soybean cyst nematode resistance gene (Table 1; column 7, lines 9-17). 61332840 has similar values for the quantitative traits lodging, height, seed size, percent protein and oil, and relative maturity as 07230211 (Table 1).
Relative maturity, lodging, plant height, seeds/lb, and % seed oil and protein are all affected by the environmental conditions in which the plant is grown.
Relative maturity is affected by growing temperature and the amount of daylight (Iowa State University Extension and Outreach, 2018, Soybean Planting and Decision Tool, https://crops.extension.iastate.edu/facts/soybean-planting-decision-tool; see Figure 4).
Lodging score is affected by planting date and seeding rate (Pioneer, 2021, https://www.pioneer.com/us/agronomy/planting_date_effects_lodging_yield_soybeans.html, see Fig 4, 5, pg 5, ¶1, 4).
Plant height is affected by a wide range of environmental conditions (Yang et al, 2021 BMC Plant Biology 21:63; see paragraph spanning the columns on pg 2).
Seed size is affected by weather conditions during seed-filling, particularly extreme late- season stress (Wiebold, 2015, https://ipm.missouri.edu/ipcm/2008/11/Soybean-Seed-Size-Does- Not-Affect-Yield-Performance/, ¶2 and 5) and can vary as much as 20% within a given variety (Staton, 2017, Recommendations for planting large soybean seed, MSU Extension, https://www.canr.msu.edu/news/recommendations_for_planting_large_soybean_seed; ¶1).
Protein and oil concentrations are affected by fertilizer application (Assefa et al, 2019, Front. Plant Sci. 10:298; see pg 10, left column, paragraph 2).
This can be seen in the data for these traits for soybean variety AG2931 as cited in 7 patents:
PNG
media_image1.png
415
758
media_image1.png
Greyscale
Thus, it appears that the variation in these traits between the instant cultivar and 61332840 can be accounted for by differing environmental conditions and/or any differences fall within the genus that is the instant 07230211.
61332840’s parents are 941127-35 and Exp4406 (column 6, lines 36-45). The parents of the instant 07230211 are 14539206 and 14530049 (¶68). The response filed 12 August 2024 in parent 17/495,242 to the Request for Information mailed 9 April 2024 indicates that parent 14539206 was produced from parents 941127-35 and (6464006-09 x (6464006-09 x (6464327-09 x (6464327-09 x (6464327-09 x (6464327-09 x (6464327-09 x 4406-001)))))) and that 4406-001 provided the Enlist E3 event. Thus, 07230211 and 61332840 share common parentage.
The claims of ‘404 are identical to the instant claims except for the name of the variety.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,839,194. Although the claims at issue are not identical, they are not patentably distinct from each other.
Like the instant 07230211, 04020201 has yellow, dull seed coats, yellow cotyledons, ovate leaves, purple flowers, imperfect black hila, indeterminate growth, gray pubescence, tan pods, the DAS-44406-6 herbicide resistance event, and the rhg1 soybean cyst nematode resistance gene (Table 1; column 7, lines 9-17) and parents 14539206 and 14530049 (column 6, lines 26-45). 04020201 and 07230211 have the same or similar values for the quantitative traits lodging, height, seed size, percent protein and oil, and relative maturity (Table 1).
As discussed in the rejection under 35 USC §§ 102, 103 above and incorporated herein, relative maturity, lodging, plant height, seeds/lb, and % seed oil and protein are all affected by the environmental conditions in which the plant is grown.
Thus, it appears that the variation in these traits between the instant cultivar and 61332840 can be accounted for by differing environmental conditions and/or any differences fall within the genus that is the instant 07230211.
Further, 04020201 and 07230211 have identical yield values and identical differences from comparison lines ME3333, PE340X and PE3409 (Table 2 in ‘194 and the instant application).
Thus, 04020201 and 07230211 are either identical or obvious variants.
Claims 1-19 of ‘194 are identical to the instant claims 1-18 and 20 except for the name of the variety. The instantly claimed mutagenized soybean is obvious in view of the method of making such a plant claimed in ‘194.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,133,502. Although the claims at issue are not identical, they are not patentably distinct from each other.
Like the instant 07230211, 04140201 has yellow, dull seed coats, yellow cotyledons, ovate leaves, purple flowers, imperfect black hila, indeterminate growth, gray pubescence, tan pods, the DAS-44406-6 herbicide resistance event, and the rhg1 soybean cyst nematode resistance gene (Table 1; column 7, lines 9-17). 04140201 has similar values for the quantitative traits lodging, height, seed size, percent protein and oil, and relative maturity as 07230211 (Table 1) and parents 14539206 and 14530049 (column 6, lines 26-45).
As discussed in the rejection under 35 USC §§ 102, 103 above and incorporated herein, relative maturity, lodging, plant height, seeds/lb, and % seed oil and protein are all affected by the environmental conditions in which the plant is grown.
Thus, it appears that the variation in these traits between the instant cultivar and 04140201 can be accounted for by differing environmental conditions and/or any differences fall within the genus that is the instant 07230211.
Further, 04140201 and 07230211 have similar yield values and similar differences from comparison line ME3333 (Table 2 in ‘502 and the instant application).
Thus, 04140201 and 07230211 are either identical or obvious variants.
Claims 1-19 of ‘502 are identical to the instant claims 1-18 and 20 except for the name of the variety. The instantly claimed mutagenized soybean is obvious in view of the method of making such a plant claimed in ‘502 (claim 17).
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anne R. Kubelik, Ph.D., whose telephone number is (571) 272-0801. The examiner can normally be reached Monday through Friday, 9:00 am - 5:00 pm Eastern.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham, can be reached at (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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/Anne Kubelik/Primary Examiner, Art Unit 1663
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