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 .
Status of the Claims
Claims 1-15 are pending and they are examined in this office action.
Examiner’s Note
Applicant has provided breeding history in the specification in Spec, page 10, paragraph [0044] wherein the parental line 'BIO142404' used in the three-way cross to produce the applicant’s wheat variety is unknown line in our search. Applicant states the line 'BIO142404' is an internal experimental variety (Spec, page 10, paragraph 0044). Therefore, for following analysis office assumes that the parental line 'BIO142404' is a non-public proprietary line that is not known by other commercial or public names nor is it a conversion of another publicly available line.
Duty to Disclose
Applicant is reminded of their “Duty of Disclosure, Candor, and Good Faith” (see 37 C.F.R. § 1.56 and MPEP § 2001). Information that would be considered pertinent to patentability includes: 1) any progeny, siblings, half-siblings, or other closely genetically related plants that are either co-pending applications or previously published or publicly disclosed, 2) if the parental varieties that are crossed to arrive at the instantly claimed hybrid were developed via backcrossing this should be disclosed along with the grandparents, including which grandparent was the recurrent parent along with any publications or public disclosures of the recurrent parent and what events/loci/transgenes/traits were donated from the non-recurrent parent, 3) if there is a locus converted or multiple loci converted between the deposited seeds and the seeds used for the parents of the plants grown for the trait table in the specification, then Applicant should specify which loci were converted and which traits differ when compared to F1 hybrid plants produced by crossing the non-converted parents whose seed is deposited, 4) any alternative designations, experimental names, tradenames, etc. for the instant plant, parent plants, and grandparent plants should be disclosed. All of this information is pertinent to patentability. If, for example, one of the parent plants is published but with a different name/designation, then the publication should be included in the IDS along with an explanation that the different name/designation is a synonym and how this plant is related to the instantly claimed plant.
Specification
The disclosure is objected to because of the following informalities: on page 36, paragraph 0120 of the specification, it states “ATCC number X1” as accession number and states “DATE” as date of deposit where there should be an Accession number and a be a date of deposit. Applicants are advised to include actual accession number and dates.
Appropriate correction is requested.
Claim Rejections - 35 USC § 112 - Indefiniteness
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.
Claims 1-15 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 include a limitation that overcomes the deficiencies of the parent claim.
Claims 1, 11 and 15 are indefinite in their recitation of “Accession Number X1”, because the actual NCMA accession number is missing. Amending the claims to recite the NCMA accession number, or the assurance that the claims will be so amended, would overcome the rejection.
Claims 1, 8, 11, and 15 are indefinite in their recitation of '25074375' given that a name does not clearly identify the claimed plants, and does not set forth the metes and bounds of the claimed invention. The use of only the name '25074375' does not carry any art recognized limitations as to the specific characteristics or essential characteristics that are associated with that denomination. In addition, the name appears to be arbitrary, and the specific characteristics associated therewith could be modified. The amendment of the independent claims to recite the NCMA accession number, or the assurance that the claims will be so amended, would overcome the rejection.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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.
Lack of Enablement
Claims 1-15 are rejected under 35 U.S.C. 112(a) as containing subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claims are drawn to a plant, plant part, seed or plant cell of wheat variety ‘25074375’, and methods of their use. Since the seed and/or plant claimed is essential to the claimed invention, it must be obtainable by a reproducible method set forth in the specification or otherwise be readily available to the public. If a seed, or seed of the claimed plant is not so obtainable or available, a deposit thereof may satisfy the requirements of 35 U.S.C. 112. The specification does not disclose a reproducible process to obtain the exact same seed in each occurrence, the specification in paragraph 0120 states that applicant has made a deposit in ATCC wherein there are no deposit number and date (i.e. states “ATCC Number X1” and deposit date “DATE in place of actual deposit number and date).
If the deposit of the seed is made under the terms of the Budapest Treaty, then an affidavit or declaration by the Applicant, or a statement by an attorney of record over his or her signature and registration number, stating the seed have been deposited and accepted under the Budapest Treaty, and that the seed will be irrevocably, and without restriction or condition, released to the public upon the issuance of a patent, would satisfy the deposit requirement made herein. A minimum deposit of 625 seeds is considered sufficient in the ordinary case to assure availability through the period for which a deposit must be maintained.
If the deposit has not been made under the Budapest Treaty, then in order to certify that the deposit meets the criteria set forth in 37 CFR 1.801-1.809, Applicant may provide assurance of compliance by an affidavit or declaration, or by a statement by an attorney of record over his or her signature and registration number showing that
(a) during the pendency of the application, access to the invention will be afforded to the Commissioner upon request;
(b) all restrictions upon availability to the public will be irrevocably removed upon granting of the patent;
(c) the deposit will be maintained in a public depository for a period of 30 years or 5 years after the last request or for the enforceable life of the patent, whichever is longer;
(d) the viability of the biological material at the time of deposit will be tested (see 37 CFR 1.807); and
(e) the deposit will be replaced if it should ever become unviable.
For each deposit made pursuant to these regulations, the specification shall be amended to contain (see 37 CFR 1.809):
(1) The accession number for the deposit;
(2) The date of the deposit;
(3) A description of the deposited biological material sufficient to specifically identify it and to permit examination; and
(4) The name and address of the depository.
Summary
No claims are allowed.
The claims appear to be free of prior art. The closest prior art is Newell et al. (US Patent Pub. No.: US 10,638,702 B1, Pub. Date: May 5 , 2020). Newell et al. hard red spring type common wheat cultivar 01071766 (col. 4, lines 27-34) which has many of the similar physiological and morphological traits (cols. 5-6, Table 1) but some of the traits as oval seed shape, hard seed texture, large germ size are different from the Applicant’s wheat variety. Furthermore, the patentable distinction is the Newell et al. wheat cultivar 01071766 is produced by crossing distinct parental wheat varieties with subsequent selections (col. 4, lines 35-65), therefore the underlying genetics would have been different.
Examiner’s Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANTOSH SHARMA whose telephone number is (571)272-8440. The examiner can normally be reached Mon-Fri 8:00 AM - 5:00 PM.
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/SANTOSH SHARMA/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
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