Detailed Action
The present application is being examined under the pre-AIA first to invent provisions.
Claims 1, 3, 8-11, 13-15, 18, 22 and 25-26 are pending.
Claims 10-11, 13-15, 18, 22 and 25 are withdrawn.
Claims 1, 3, 8-9 and 26 are examined.
Plant nomenclature
CTR (PI 244019) is described as “CTR” in the Specification, e.g., Page 7 caption of Fig. 1, as “Delagoa” in the Declaration of Dr. Holst and in GRIN under the entry for accession PI 244019 and CTR-Delagoa in Prothro (PI 244019) (page 2, paragraph 2). Each of these names are interpreted as being synonymous.
ZWRM50 (PI 593359) is described as “ZWRM” in the Specification (page 7, description of Fig. 1; Declaration of Dr. Holst filed 11/20/2023, page 2, paragraph 3, for example) and “ZWRM 50” (page 12, last paragraph, for example). These names are interpreted as being synonymous.
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 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, 3, 8-9 and 26 remain 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.
Due to Applicant's amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 7/16/2025, as applied to claims 1, 3, 8-9 and 26.
In claim 1, Applicant recites “an inbred watermelon plant”. In Applicant’s Remarks filed on 9/22/2023, on page six, Applicant has provided that those of skill in the art readily understand that the term “inbred” refers to plants that are substantially homozygous such that progeny plants resulting from selfing breed true to type. However, it is not clear what degree of homozygosity can be considered “substantially homozygous”. Applicant also recites in claim 1, “of a cultivated variety”. This does not address the issue of the definition of “inbred” and further makes unclear what is required. For example, it is not clear if a cultivated variety would potentially not be inbred even if not an F1 hybrid.
Applicant’s arguments regarding rejection under 35 USC 112(b)
Applicant's arguments filed 10/15/202 have been fully considered but they are not persuasive.
Applicant argues that the term inbred would be understood by those of skill in the art that “substantially homozygous” is a degree of homozygosity that produce offspring identical to the parent. Applicant argues that because one of ordinary skill in the art would understand the meaning of the term inbred when read in light of the specification that the claims should not be rejected on this basis.
This argument has been fully considered but is not persuasive. The appearance of a plant to be identical to the plant from which it was produced by self-pollination may comprise different amounts of homozygosity from the self-pollinated plant. It is not clear what that amount is.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1, 3, 5 and 8-9 remain rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Prothro (Genetic mapping of phenotypic and quantitative trait loci underlying horticulturally important traits in watermelon, Thesis, University of Georgia, December 2010) taken with evidence from Kumar (Kumar and Wehner. Acta Horticulturae. Cucurbit Genetics Cooperative Report. 42-43. 2011), Hanson (Hanson and Weber. Genetics(46):1425-1434. 1961), PI 244019 (PI 244019. U.S. National Plant Germplasm System. GRIN-Global. 2022) and PI 593359 (PI 593359. U.S. National Plant Germplasm System. GRIN-Global. 2022).
The rejection is modified from the rejection set forth in the Office action mailed 7/25/2024, as applied to claims 1, 3, 5 and 8-9 to include evidence from Hanson to clarify the basis for rejection in response to the Remarks and Declaration filed by Applicant on 3/26/2025.
The applicant claims an inbred watermelon plant comprising an introgressed allele locus that confers a percent male flowers phenotype, wherein the locus comprises NW0249365 and NW0250112 or a progeny plant therefrom where the progeny plant comprises the allele locus.
Prothro discloses a cross between watermelons lines ZWRM50 (PI 593359) and CTR (PI 244019) (page 2, last paragraph). The specification confirms that the applicant also used these lines for the instant invention (Page 29, Example 1). Prothro further discloses a linkage map produced from F2 progeny of this cross and indicates that is comprises a genomic region flanked by NW0249365 and NW0250112, wherein this region is linked to female flowering frequency and hermaphroditic flowering frequency (Figure 4.4, caption on page 81, in particular (R) and (S) on page 85).
Prothro does not explicitly disclose that the watermelon lines used for crossing were inbred. Kumar provides evidence that the rate of natural outcrossing in watermelon is near zero (page 42, right column, paragraph 3). Hanson provides that “[t]he natural state for the individuals of a self-pollinated species is homozygosity” (page 1426, first paragraph). The GRIN deposit information for each PI 244019 and PI 593359 do not explicitly state the homozygosity nor confirm that they are “inbred”; however, they provide that the accessions were “wild material” and a “landrace”, respectively. Because Watermelons naturally have a near-zero outcrossing rate, PI 244019 and PI 593359 would be considered by one of ordinary skill in the art to be “inbred”. Further, self-pollinations of these accessions by the USDA for line maintenance would make them even more inbred. The applicant has not provided a special definition of “inbred” which would exclude these accessions from being defined as inbred. Further, in light of the rejection under 35 USC 112(b) for lack of clarity over the term “inbred”, PI 244019 and PI 593359 are interpreted as reading on “inbred” given the evidence provided by Kumar that the natural outcrossing rate in watermelon being near-zero and given the evidence provided by Hanson that the natural state of self-pollinating species is homozygosity.
Claim 5 requires that the percent male flowers are at least 90%. Given that the prior art plant is the same plant contemplated by the claims and has the same genomic region contemplated by the claims, it would be expected to comprise the instantly claimed traits including the limitation of percent male flowers being at least 90% as recited in claim 5.
Therefore, claims 1, 3, 5 and 8-9 are anticipated by Prothro.
See In re Best, 195 USPQ 430, 433 (CCPA 1977), which teaches that where the prior art product seems to be identical to the claimed product, except that the prior art is silent as to a particularly claimed characteristic or property, then the burden shifts to Applicant to provide evidence that the prior art would neither anticipate nor render obvious the claimed invention.
Applicant’s arguments regarding rejection under 35 USC 102(b)
Applicant's arguments filed 10/15/2025 have been fully considered but they are not persuasive.
Applicant argues that the parent plants in Prothro are not inbred or of a cultivated variety because cultivated varieties are bred by humans for desired traits. PI 244019 is classified as “wild material” and PI 593359 is classified as a “landrace” with “F1 characteristic” and therefore are not inbred plants of a cultivated variety.
This argument has been fully considered but it is not persuasive. The knowledge in the prior art supports that one of ordinary skill in the art would conclude that watermelon such as wild material as well as landraces would be likely to be highly homozygous and can be considered inbred given that watermelon is primarily a self-pollinating plant. Regarding the note of “F1 characteristic”, given that watermelon primarily self-pollinates, it appears to be more likely that this note is referring to uniformity, such as one might expect to observe in a highly inbred accession, than that the accession is an F1 with a very high amount of heterozygosity. Alternatively, if Applicant is arguing that “F1 characteristic” is indicative of some amount of heterozygosity which would exclude one or both of the parent lines used by Prothro as being considered inbreds, it is noted that multiple generations of self-pollination would not preclude the resulting plant from having at least low levels of heterozygosity. Therefore, even if the note is referring to heterozygosity, rather than uniformity, it appears that an inbred plant may nonetheless read on a plant with “F1 characteristic”, depending on the amount of heterozygosity tolerated by one’s definition of inbred. Additionally, “cultivated variety” does not obviate the rejection under 35 USC 112(b) but further introduces a lack of clarity as described in the rejection under 35 USC 112(b), above.
Applicant argues that hand-pollination is required to ensure that out-crossing caused by natural pollinators does not occur. Natural pollinators of watermelon flowers move between whichever male and female flowers are closest without a guarantee that these would be from the same plant. Therefore, Applicant argues, Kumar does not support the examiner’s argument that the parents used in the cross disclosed in Prothro are inbred.
This argument has been fully considered but it is not persuasive. While outcrossing can occur in watermelon, and hand-pollination as described by Dr. Megan Calvert in the Declaration is one method or part of a method to ensure exclusion of unwanted pollen for commercial seed production, the knowledge in the art teaching that watermelon primarily self-pollinates would lead one of ordinary skill in the art to recognize that most watermelons will naturally have high rates of homozygosity. Another example in the art is Allard (Allard. Principles of Plant Breeding. Edition 2. Page 36, paragraph 1), which provides that, “most individuals within predominantly selfing populations are vigorous homozygotes,”.
Applicant argues that Dr. Megan Calvert notes a more complete definition of landraces is provided in the article by Acquaah, “Exhibit A”. Acquaah describes landraces as often highly heterogenous and may be used as starting material in mass selection or pure line breeding projects. Applicant argues that these facts contradict the examiner’s conclusion that one of ordinary skill in the art would recognize PI 593359 as inbred.
This argument has been fully considered but it is not persuasive. Exhibit A is directed to plants generically. While plants with high and moderate rates of outcrossing occurring naturally would be expected to be highly heterogenous, a plant such as watermelon, which Kumar observed as having a near-zero rate of outcrossing, would not. Allard (Allard. Principles of Plant Breeding. Edition 2. Page 36, paragraph 1) provides that, “[t]he general pattern of the breeding program appropriate to any plant species is therefore determined, in large part, by its mating system” (Allard. Principles of Plant Breeding. Edition 2. Page 36, paragraph 1, last sentence).
Applicant argues that because Prothro, alone or with evidence, does not teach or suggest the claimed inbred watermelon plant or F1 hybrid plants therefrom, the claimed invention is not anticipated by Prothro.
This argument has been fully considered but it is not persuasive. It appears that at least one, or possibly both, of the parent lines PI 593359 and PI 244019 read on an inbred watermelon plant that comprises the claimed allele locus given that watermelon is known to be primarily self-pollinating and the F2 population resulting from the cross of Prothro comprised the allele locus. Therefore, it appears the F1 used by Prothro to produce the F2 comprising the allele locus would also comprise the allele locus.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of non-anticipation fails to outweigh the evidence of anticipation.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 26 remains rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Prothro (Genetic mapping of phenotypic and quantitative trait loci underlying horticulturally important traits in watermelon, Thesis, University of Georgia, December 2010) in view of Noh (Noh et al. Horticulture Environment and Biotechnology. 53(6): 521-529. 2012).
Prothro teaches the limitations of the claim 1, upon which claim 26 is dependent. See rejection under 35 USC 102(b) above.
Prothro does not teach the watermelons being tetraploid.
It would have been obvious to combine the teachings of Prothro with the teachings of Noh to make the watermelon of claim 1 wherein the watermelon is tetraploid. One of ordinary skill in the art would have been expected to arrive at an inbred watermelon with the specified loci whether the watermelons of Prothro were diploid or tetraploid. One would be motivated to make a tetraploid watermelon to produce a triploid watermelon in order to grow seedless watermelon. Therefore, the claimed invention is obvious over Prothro in view of Noh.
Applicant’s arguments regarding rejection under 35 USC 103
Applicant's arguments filed 10/15/2025 have been fully considered but they are not persuasive.
Applicant argues that the deficiencies of Prothro as argued against the rejection under 35 USC 102(b) are incorporated herein and that because neither Prothro nor Noh teach the claimed inbred watermelon plant or hybrid progeny plant therefrom, a proper prima facie case of obviousness had not been established.
This argument has been fully considered but it is not persuasive. For the reasons provided to the arguments Applicant has made against the rejection under 35 USC 102(b), the limitations of claim 26 would have been obvious to one of ordinary skill in the art at the time of filing.
Conclusion
Claims 1-3, 5, 8-9 and 26 remain rejected.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/DAVID R BYRNES/ Examiner, Art Unit 1662
/MYKOLA V. KOVALENKO/ Primary Examiner, Art Unit 1662