The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
1. The Office acknowledges the receipt of Applicant’s Request for Continued Examination and amendment filed September 2, 2025. Claims 21-26, 30-34 and 36-42 are pending and are examined in the instant application.
All previous rejections not set forth below have been withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112(b)
2. Claims 21-26, 30-34 and 36-42 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.
In claim 21, it is unclear what trait(s) the SMO2 QTL and the SMO3 QTL confer. The claim states the second parent plant has a total sugar content of at least 5.5%. However, there is no indication that these QTLs confer the total sugar content trait.
Claim 21 states that the first parent plant has a pungency of below 5 Scoville Heat Units (SHUs). However, it is unclear whether the claimed seed and plant also have a pungency of below 5 SHUs, or the pungency of the first parent is lost in the crossing with the second parent. The traits listed for the first parent do not correspond to the traits recited for the claimed seed and plant.
In claim 25, last line, the plant part cannot have all the characteristics of the C. annuum plant.
Claim 32 depends from a canceled claim. The metes and bounds of claim 32 cannot be determined. It is unclear how claim 32 further limits a canceled claim. Accordingly, claim 32 and dependent claims 33, 34 and 36 are not further examined on the merits.
Clarification and/or correction is required.
Claim Rejections – 35 USC § 112(a), enablement
3. Claims 21-26, 30, 31 and 37-42 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 enablement requirement. He claim(s) contains 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.
Since the seeds of Capsicum line ZSP8T14-6274, hybrid pepper PS009954859 and C. annuum hybrid SVPS2625 are 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 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 and it is not apparent if such a seed is readily available to the public. 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 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.
The specification does not indicate that the deposit has been accepted by the depository and that Applicant intends to comply with all requirements set forth under 37 C.F.R. 1.801-1.809 as set forth in statements (a)-(e) above. Evidence of an accepted deposit is requested.
Additionally, Applicant has not enabled the claimed seed and plant because no level of alpha-Cubebene, delta-Cadinene and 1,4-Cadinadiene are recited for the first parent plant. It is unclear whether the Relative GC/MS Response Scores for the claimed C. annuum seed and plant are from the first parent, the second parent, or the combination of the two parents. Neither the state of the prior art nor Applicant’s working examples show that any level of alpha-Cubebene, delta-Cadinene and 1,4-Cadinadiene in the first parent would produce the Relative GC/MS Response Scores of alpha-Cubebene, delta-Cadinene and 1,4-Cadinadiene in the claimed progeny C. annuum seed and plant. Accordingly, absent the Relative GC/MS Response Scores of alpha-Cubebene, delta-Cadinene and 1,4-Cadinadiene in the first parent, the claimed invention is not fully enabled as commensurate in scope with the claims without undue experimentation.
Applicant’s Traversals
Applicant states that claim 21 has been amended to recite that the first parent is Capsicum line ZSP8T14-6274.
Response to Applicant’s Traversals
Applicant traversal does not indicate that the deposits have been accepted by the depository and that Applicant intends to comply with all requirements of 37 C.F.R. 1.801-1.809 as set forth in statements (a)-(e) above. No evidence of an accepted deposit has been submitted. Applicant does not address the Relative GC/MS Response Scores of alpha-Cubebene, delta-Cadinene and 1,4-Cadinadiene in the first parent. Accordingly, the rejection is maintained.
Claim Rejections - 35 USC § 112(a), new matter
4. Claims 21-26, 30, 31 and 37-42 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
Claim 21 encompasses crossing a plant of line ZSP8T14-6274 with a plant of hybrid SVPS2625. Applicant is invited to point to the page and line number in the originally-filed disclosure where support for crossing line ZSP8T14-6274 and hybrid SVPS2625 can be found. Applicant has support for crossing line ZSP8T14-6274 with line SMO8T14-6275 to produce hybrid SVPS3625 (Example 2). Absent of support, Applicant is required to cancel the new matter.
Remarks
5. No claim is allowed.
6. 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.
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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.
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/PHUONG T BUI/Primary Examiner, Art Unit 1663