Detailed Action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Examiner’s Note
In view of the Appeal Brief filed on 3/31/2026, PROSECUTION IS HEREBY REOPENED, for the reasons set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
Status of claims
Claims 1-2, 6 and 9-11 are examined.
Withdrawn rejections
The rejection of claim 2 under 35 USC 112(d) is withdrawn in consideration of remarks made by Applicant.
The rejection of claims 1-2, 6 and 9-11 under 35 USC 102(a)(1) is withdrawn in consideration of remarks made by Applicant.
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2, 6 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Horiuchi (US8058505) taken with evidence from Munasinghe (Munasinghe and Agren. Current Opinion in Genetics and Development. 80: 102053. June 2023).
Applicant claims a cytoplasmic male sterile (CMS) Lactuca plant having low temperature growth ability comprising a mitochondrial DNA identical to a complete mitochondrial gnome of a plant deposited by number FERM BP-22373 (Claim 1). Applicant claims the mitochondrial genome is derived from a plant of the genus Helianthus (claim 2). Applicant claims the cytoplasmic male sterile plant is derived from Lactuca sativa or an interspecific hybrid plant of the genus Lactuca (claim 6). Applicant claims a plant part (claim 9), a seed of the plant (claim 10) and a mitochondrial genome of the plant of claim 1 (claim 11).
Regarding claim 1, Horiuchi discloses a cytoplasmic male sterile (CMS) plant of the genus Lactuca comprising a mitochondrial genome which would necessarily be identical to the one of the deposited plant. Applicant provides that the source of the cytoplasmic male sterility trait is from BF2MS1S (Specification, paragraph 113). Applicant provides “BF2MS1S” was developed by the asymmetric protoplast fusion using "50125-3-V1" as the cytoplasm donor (Specification, paragraph 146). Applicant discloses "50125-3-V1" is a progeny obtained by crossing a CMS lettuce line "50125-3" to “V lettuce” (Specification, paragraph 91). Horiuchi discloses “50125-3” was produced using “1216-2-T1” as donor material to provide cytoplasm (Example 2) and that the CMS line 1216-2-T1 comprises a mitochondrial genome derived from the sunflower mitochondrial sunflower (Helianthus), which Horiuchi discloses was transmitted stably (Column 9, Figure 8 Description). Munasinghe provides that, in contrast to nuclear genes that are passed on through both parents, mitochondrial genes are maternally inherited (page 1, left column, paragraph 1).
Regarding claim 6, the plant of Horiuchi, 50125-3-V1, from which the CMS of the instantly claimed plant is derived, is genus Lactuca (column 25, Table 7 header).
Regarding claims 9-11, the plant of Horiuchi, 50125-3-V1 comprises plant parts, seed, and a mitochondrial genome.
Regarding the limitation of “low temperature growth ability”, Applicant does not claim any structure or method step that differentiates the claimed plant based on “low temperature growth ability”.
Horiuchi does not teach a plant comprising a mitochondrial genome that is identical to a complete mitochondrial genome of a plant represented by deposit number FERM BP-22373.
Horiuchi teaches introducing the cytoplasmic male sterility trait into many lines by backcrossing and producing F1 varieties (column 3, lines 19-23). Horiuchi teaches that the progeny plants will all be sterile because the trait is inherited by cytoplasmic inheritance (column 3, lines 23-25). Therefore, the lines and progeny plants taught by Horiuchi would have at least a portion of the instantly claimed mitochondrial genome including the genetic determinant of the cytoplasmic male sterility trait absent evidence to the contrary.
It would have been obvious to one of ordinary skill in the art at the time of filing the instantly claimed invention to produce a CMS lettuce plant using “50125-3” to confer the CMS trait to progeny plants for development as a line and for production of an F1 variety. Changes to portions of the mitochondrial genome which do not interfere with the CMS trait would be immaterial and a mere design choice based on the other parent used which is obvious in view of the teachings of Horiuchi, which teaches that the CMS trait can be introduced into many lines. Therefore, a plant that reads on the instantly claimed lettuce plant is an obvious variant of the plants taught by Horiuchi.
Conclusion
Claims 1-2, 6 and 9-11 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R BYRNES whose telephone number is (571)270-3935. The examiner can normally be reached 9:00 - 5:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bratislav Stankovic can be reached at (571) 270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID R BYRNES/Examiner, Art Unit 1662
/BRATISLAV STANKOVIC/Supervisory Patent Examiner, Art Units 1661 & 1662
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