www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/939,236
`
`07/27/2020
`
`Haoyang Duo
`
`82166-US-REG-
`ORG-NAT-1
`
`1041
`
`SYNGENTA CROP PROTECTION LLC
`PATENT DEPARTMENT
`PO BOX 12257
`9 DAVIS DRIVE
`
`RESEARCH TRIANGLE PARK, NC 27709-2257
`
`1663
`
`BUI, PHUONG T
`
`04/07/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`global.patents @syngenta.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Paper No(s)/Mail Date U.S. Patent and Trademark Office
`
`Disposition of Claims*
`1-35 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`(1) Claim(s)__ is/are allowed.
`(1) Claim(s)___ is/are rejected.
`C) Claim(s)
`is/are objected to.
`Claim(s) 1-35 are subject to restriction and/or election requirement
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)C2 The specification is objected to by the Examiner.
`11)C) The drawing(s) filed on
`is/are: a)(] accepted or b)(_) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12).) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)D) None ofthe:
`b)7) Some**
`a)D All
`1.1) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.2.) Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`3) [Interview Summary (PTO-413)
`Paper No(s)/Mail Date____
`4) [(¥] Other: Requestfor Information under 37
`CFR 1.105,
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210330
`
`Office Action Summary
`
`Application No.
`16/939 236
`Examiner
`PHUONG T BUI
`
`Applicant(s)
`Duo etal.
`Art Unit
`1663
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 2 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)C) Responsive to communication(s) filed on
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`2a)C) This action is FINAL. 2b)¥)This action is non-final.
`3)0) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\() Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/939,236
`Art Unit: 1663
`
`Page 2
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Election/Restrictions
`
`1.
`
`Restriction to one of the following inventions is required under 35 U.S.C. 121:
`
`I. Claims 1-8, 12, 14-21, 26-33 and 35, drawn to tomato hybrid T311457R,
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`classified in AO1H 6/825.
`
`Il. Claims 1-11, 13-28 and 31-34, drawn to tomato hybrid L1OTENO14, classified
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`in AO1H 6/825.
`
`2.
`
`The inventions are independent or distinct, each from the other because:
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`Inventions I-Il are unrelated. Inventions are unrelatedif it can be shownthat they
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`are not disclosed as capable of use together and they have different designs, modes of
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`operation, and effects (MPEP § 802.01 and § 806.06). In the instant case, the different
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`inventions have different designs. The tomato varieties of Inventions | and II are
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`chemically, structurally and biologically distinct from each other. Additionally, the
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`parentalline can be used for breeding purposes. The hybrid can be used to make
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`commodity plant products.
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`Restriction for examination purposes as indicated is proper becauseall the
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`inventions listed in this action are independent or distinct for the reasons given above
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`and there would be a serious search and/or examination burden if restriction were not
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`required because one or more of the following reasons apply:
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`(a) the inventions have acquired a separate status in the art in view of their
`
`different classification;
`
`

`

`Application/Control Number: 16/939,236
`Art Unit: 1663
`
`Page 3
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`(b) the inventions have acquired a separate status in the art due to their
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`recognized divergent subject matter;
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`(c) the inventions require a different field of search (for example, searching
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`different classes/subclasses or electronic resources, or employing different
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`search queries);
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`(d) the prior art applicable to one invention would notlikely be applicable to
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`another invention;
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`(e) the inventions arelikely to raise different non-prior art issues under 35 U.S.C.
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`101 and/or 35 U.S.C. 112, first paragraph.
`
`Applicant is advised that the reply to this requirement to be complete must
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`include (i) an election of an invention to be examined even though the requirement
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`may be traversed (37 CFR 1.143) and(ii) identification of the claims encompassing
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`the elected invention.
`
`The election of an invention may be made with or without traverse. To reserve a
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`right to petition, the election must be made with traverse. If the reply does notdistinctly
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`and specifically point out supposederrors in the restriction requirement, the election
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`shall be treated as an election without traverse. Traversal must be presented at the time
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`of election in order to be considered timely. Failure to timely traverse the requirement
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`will result in the loss of right to petition under 37 CFR 1.144. If claims are added after
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`the election, applicant must indicate which of these claims are readable upon the
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`elected invention.
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`Should applicant traverse on the ground that the inventions are not patentably
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`distinct, applicant should submit evidence or identify such evidence nowof record
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`

`

`Application/Control Number: 16/939,236
`Art Unit: 1663
`
`Page 4
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`showing the inventions to be obvious variants or clearly admit on the record thatthis is
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`the case. In either instance, if the examiner finds one of the inventions unpatentable
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`overthe prior art, the evidence or admission maybe usedin a rejection under 35 U.S.C.
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`103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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`3.
`
`Applicant is reminded that upon the cancellation of claims to a non-elected
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`invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one
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`or more of the currently named inventors is no longer an inventor of at least one claim
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`remaining in the application. A request to correct inventorship under 37 CFR 1.48(a)
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`must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that
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`identifies each inventor by his or her legal name and by the processing fee required
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`under 37 CFR 1.17(i).
`
`Conclusion
`
`4.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to PHUONG T BUI whose telephone number is (571)272-
`
`0793. The examiner can normally be reached on M-F 8am-5pm.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Amjad Abraham can be reached on 571-270-7058. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 16/939,236
`Art Unit: 1663
`
`Page 5
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`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see https://ppair-
`
`my.uspto.gov/pair/PrivatePair. Should you have questions on accessto the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`If you would like assistance from a USPTO Customer Service Representative or access
`
`to the automated information system, call 800-786-9199 (IN USA OR CANADA)or 571-
`
`272-1000.
`
`/PHUONG T BUI/
`Primary Examiner, Art Unit 1663
`
`

`

`Application/Control Number: 16/939,236
`Art Unit: 1663
`
`Page 6
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`Requestfor Information under 37 CFR § 1.105
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`1.
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`Applicant and the assigneeof this application are required under 37 CFR § 1.105
`
`to provide the following information that the examiner has determined is reasonably
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`necessary to the examination of this application.
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`2.
`
`This request is being made for the following reasons:
`
`Applicant is claiming two deposited varieties, but the instant specification is silent
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`about whatstarting materials and methods were used to produce the plant varieties.
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`The requested information is required to make a meaningful and complete search of the
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`prior art.
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`3.
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`In response to this requirement, if known, please provide answers to each of the
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`following interrogatories eliciting factual information:
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`Please supply the breeding methodology and history regarding the development
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`of the instant varieties.
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`a) Such information should include all of the public or commercial designations/
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`denominations used for the original parental lines and the claimed varieties.
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`b) Information pertaining to the public availability of the original parental lines
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`should be set forth.
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`c) The breeding method used should be set forth, such as whether single seed
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`descent, bulk method, backcross method, or some other method wasused.
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`d) The filial generation in which the instant plants were chosen should be set
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`forth.
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`e) Information pertaining to the homozygosity or heterozygosity of the parents as
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`well as the instant plants should be setforth.
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`

`

`Application/Control Number: 16/939,236
`Art Unit: 1663
`
`Page 7
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`f) Are there any patent applications or patents in which sibs or parents of the
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`instant plants are claimed? If so, please set forth serial numbers and namesof the
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`sibs or parents.
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`4.
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`If Applicant views any or all of the above requested information as a Trade
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`Secret, then Applicant should follow the guidance of MPEP § 724.02 when submitting
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`the requested information.
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`5.
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`In responding to those requirements that require copies of documents, where the
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`document is a bound text or a single article over 50 pages, the requirement may be met
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`by providing copies of those pages that provide the particular subject matter indicated in
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`the requirement, or where such subject matter is not indicated, the subject matter found
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`in applicant’s disclosure. Please indicate where the relevant information can be found.
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`6.
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`The fee and certification requirements of 37 CFR § 1.97 are waived for those
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`documents submitted in reply to this requirement. This waiver extends only to those
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`documents within the scope of this requirement under 37 CFR § 1.105 that are included
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`in the applicant’s first complete communication responding to this requirement. Any
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`supplemental replies subsequent to the first communication responding to this
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`requirement and any information disclosures beyond the scope ofthis requirement
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`under 37 CFR § 1.105 are subject to the fee and certification requirements of 37 CFR §
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`1.97 if submitted subsequentto a first Office action on the merits.
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`7.
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`The applicant is reminded that the reply to this requirement must be made with
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`candor and goodfaith under 37 CFR § 1.56. Where the applicant does not have or
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`cannot readily obtain an item of required information, a statement that the item is
`
`

`

`Application/Control Number: 16/939,236
`Art Unit: 1663
`
`Page 8
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`unknownor cannotbe readily obtained may be accepted as a complete reply to the
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`requirement for that item.
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`8.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Phuong Bui whose telephone number is (571)272-
`
`0793.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Amjad Abraham can be reached on 571-270-7058. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`/SHUBO (JOE) ZHOU/
`Supervisory Patent Examiner, Art Units 1661 and 1662
`
`