REMARKS
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`A.
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`Status of the Claims
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`Claims 1-17, 19, and 20 were pending at the time of this Action.
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`B.
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`Amendmentto the Specification
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`Applicants note that the Non-Final Office Action dated September 30, 2021, objected to
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`the Specification for use of non-metric units. In response, Applicants amended the Specification
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`accordingly. However, the amendment was inadvertently based on a miscalculation. Therefore,
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`Applicants have further amended the Specification herein to correct the error.
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`Cc.
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`Rejection of Claims Under 35 U.S.C. §103(a)
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`The Action maintains the rejection of claims 1-17, 19, and 20 over Eby (US 9,210,899),
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`which teaches soybean cultivar 37273791, in view of Lussenden (US 9,844,201), which teaches
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`soybean variety 01050745, and De Beuckleer (US 8,017,756), which teaches event A5547-
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`127. The Action asserts that it would have been obvious to modify soybean cultivar 37273791 via
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`backcrossing to introduce event A5547-127 and event MON87708in order to obtain the instantly
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`claimed cultivar; and further asserts that backcrossing would account for any trait variation.
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`Applicants respectfully traverse.
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`Applicants note that submitted herewith is the Declaration of Mr. William H. Eby under 37
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`C.F.R. § 1.132. Mr. Eby provides a comparative analysis of the claimed and referenced cultivars,
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`whichestablishes that the referenced cultivar does not teach or suggest soybean cultivar 94112440.
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`For example, Mr. Eby explains that, while a head-to-head analysis of cultivars 94112440 and
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`37273791 was not available, head-to-head analyses have been collected in separate trials for
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`various traits between 94112440 and 37273791 versus the same check varieties, thereby allowing
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`an identification of the distinctiveness of the cultivars. As explained, each of the respective
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`cultivars were grown side-by-side with check varieties MGL1972, PG2Q0EO8N, PE200X, and
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`15MB60707-82-05 (Table 1); PE1900, 15MB60707-82-05, and PE1700 (Table 2); and MGL1972
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`and PG20E08N (Table 3). The claimed cultivar was found to exhibit significantly increased yield
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`compared to all check varieties, whereas the referenced variety does not differ significantly in
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`yield compared to these same check varieties. Additionally, the exhibits significantly increased
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`lodging resistance and height comparedto all the check varieties, whereas the referenced variety
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`does not differ significantly in either lodging or height to all the check varieties.
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`In this regard,
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`Mr. Eby further explainsthat:
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`The data therefore indicates that the phenotype of soybean variety
`94112440 differs at least in yield, lodging resistance, and height
`relative
`to variety 37273791 when grown under
`the
`same
`environmental conditions; and these differences are agronomically
`significant.
`It is my opinion that these agronomically significant
`performance differences would preclude one of ordinary skill in the
`art from characterizing the claimed variety as obvious in view ofthe
`referenced variety.
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`Applicants note that the claimed cultivar exhibits significantly increased yield in comparison
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`to soybean cultivar 37273791. The claimed cultivar therefore represents a significant and
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`surprising advanceoverthe referenced art. One ofskill in the art would also readily appreciate that
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`maximizing yield from the finite amount of arable land available is essential and provides a
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`practical, real world impact over soybean cultivar 37273791.
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`Applicants further note that the teachings of the cited references do not support a prima
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`facie case of obviousness. It is well settled that in order to support an obviousness rejection there
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`must be some expectation of success in arriving at the claimed invention based onthe prior art and
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`knowledge in the art. See MPEP § 2143.02. Furthermore, the reasonable expectation must be
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`shownasto the specific invention claimed, and not to the mere “gist” or “thrust” of the invention,
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`consistent with the requirementto analyze all elements of the claimed invention as a whole. W.L.
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`Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied,
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`469 U.S. 851 (1984).
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`A significant increase in yield as exhibited by the claimed cultivar would be unexpected.
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`In fact, Mr. Eby explainsin this regard that:
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`[I]t must be understood that the referenced variety itself was the
`end result of its own lengthy breeding protocol in an effort to
`develop the best possible variety.
`In particular, a significant
`increase in yield, as demonstrated herein, would therefore not be
`expected andis well beyondthelevel of variation associated with
`introducing an herbicide tolerancetrait via backcrossing. One of
`skill in the art would also readily appreciate the practical, real world
`impactof this significant increase in soybeanyield.
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`The surprising and unexpected results described in Mr. Eby’s Declaration, along with the lack of
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`any expectation in significantly improving yield establishes that the claimed cultivar is in no way
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`obvious in view of soybean cultivar 37273791. The rejection is thus believed to be moot and
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`withdrawalthereof is respectfully requested.
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`D.
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`Non-statutory Double Patenting
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`The Action maintains the rejection of claims 1-17, 19, and 20 over the US Application No.
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`17/410,679, which teaches soybean variety 03230124; and US Application No. 17/410,667, which
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`teaches soybean variety 04130514.
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`Regarding US Application No. 17/410,679, and US Application No. 17/410,667,
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`Applicants respectfully traverse. Under MPEP § 804(I)B(1)(b), if a provisional nonstatutory
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`double patenting rejection is the only rejection remaining in an application andthat application has
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`the earliest effective U.S. filing date compared to the reference application, the examiner should
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`withdraw the rejection in the application having the earliest effective U.S. filing date and permit
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`that application to issue. Applicant notes that the instant application has an effective filing date of
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`September 11, 2020, whereas the referenced applications were each filed on August 24, 2021. As
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`MPEP§ 804(I)B(1)(b) is believed to be applicable in the present case, withdrawalof the rejection
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`and allowanceofthe case is respectfully requested.
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`The Action also maintains the rejection of claims 1-17, 19, and 20 over claims 1-20 of Eby
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`(US 9,210,899), which teaches soybean cultivar 37273791, in view of Lussenden (US 9,844,201),
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`which teaches soybean variety 01050745, and De Beuckleer (US 8,017,756), which teaches event
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`A5547-127. The Action asserts that the claimed and referenced soybean cultivars share identical
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`or similar trait descriptions. Therefore, the claimed cultivar is obvious in view of soybean cultivar
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`37273791. In response, Applicant respectfully traverses.
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`Applicant notes that submitted herewith is the Declaration of Mr. William H. Eby Under
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`37 C.F.R. § 1.132. Mr. Eby provides a comparative analysis of the claimed and referenced cultivars
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`that demonstrates that the phenotypes of the claimed and referenced cultivars differ significantly and
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`that the phenotypic differences observed between these cultivars were not predictable or expected to
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`one of ordinary skill in the art, as discussed supra. Mr. Eby concludesin this regard that:
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`[OJne of ordinary skill in the art could not have predicted or expected
`the results of these performancetrials, even with prior knowledge of
`the initial cross and subsequent breeding paradigms that generated
`each variety. The differences observed are the outcome of a
`serendipitous combination of the selection and advancing methods
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`applied during the breeding protocols used to produce the claimed
`variety and the complex nature of genetic inheritance (e.g.,
`chromosomal segregation, and phenotypic penetrance). Based on the
`results of the performancetrials, it is my opinion that the referenced
`art in no wayteachesor suggests a plant with the traits of the claimed
`variety to one of ordinary skill in theart.
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`The claimed cultivar is therefore in no way an obvious variant of the referenced cultivar.
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`In view of the foregoing, the rejection is thus believed to be moot and withdrawal thereof is
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`respectfully requested.
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`E.
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`Conclusion
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`This is submitted to be a complete response to the referenced Final Office Action. In
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`conclusion, Applicant submits that, in light of the foregoing remarks, the present case is in
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`condition for allowance and such favorable action is respectfully requested.
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`The Examineris invited to contact the undersigned at (214) 259-0990 with any questions,
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`commentsor suggestionsrelating to the referenced patent application.
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`Respectfully submitted,
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`/Christopher L. Schardon/
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`Christopher L. Schardon
`Reg. No. 77,561
`Agent for Applicant
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`Dentons US LLP
`2000 McKinney Avenue, Suite 1900
`Dallas, Texas 75201
`(214) 259-0931
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`Date: October 21, 2022
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