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 .
Claims 1, 7-9, 12 and 14 are examined.
Claims 5-6 are cancelled.
Claims 1, 7, 9 and 12 are currently amended.
Withdrawn rejections
The rejection of claims 7, 12 and 14 under 35 USC 112(b) is withdrawn in light of amendments made by Applicant.
Claim Objections
Claims 1, 7, 9 12 and 14 are objected to because of the following informalities: the convention for sequence identifiers is “SEQ ID NO:”. The abbreviated form of the word “number” should have both letters capitalized, i.e., “NO” instead of “No” and be followed by a colon instead of a period. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Written description
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 7-9, 12 and 14 remain 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.
Due to Applicant's amendment of the claims, the rejection is modified from the rejection set forth in the Non-Final Office action mailed 6/11/2025, as applied to claims 1, 5-9, 12 and 14.
Applicant claims a plant of any species resistant to any strain of tomato spotted wilt virus (TSWV) wherein the plant comprises each of the claimed sequences and is a member of a Markush group of plant species (claim 1), a method of identifying a plant resistant to TSWV wherein the plant comprises each of the claimed sequences (claim 9), a method of providing a TSWV resistant plant comprising introgressing a first or a first and second genomic fragment from a deposited Chicorium plant (claim 12). Claims dependent on claim 1 require the plant and sequences are from a deposited Chicorium plant (claim 7) and that the plant is a hybrid plant (claim 8).
Applicant describes the development of a population from an F1 of Cichorium intybus var. foliosum (radicchio rosso) crossed with another, unnamed plant. Applicant describes the F1 population was self-pollinated producing an “F1S1” population for identification of QTL (Example 3, pages 7-10). Applicant describes identifying SNPs based on the susceptible and resistant lines in Table 1 which were used for genotyping the phenotyped F1S1 population (page 7, lines 20-25). Applicant describes a total of 26 sequences which are associated with TSWV resistance (Table 2, lines comprising an “R” under column “code”). Observations of resistance to TSWV was conducted in field experiments with naturally occurring TSWV.
Applicant does not describe the genus of plants and methods as claimed. Regarding claim 12, Applicant has not described a plant comprising any one, or two, genetic fragments from the deposited line as broadly claimed; the recited sequences are not required by claim 12, only that the plant from which the one, or two, genetic fragments are from has those sequences. Further, Regarding the claims requiring all sequences described in Table 2, Applicant has only demonstrated resistance to TSWV limited to the endemic population in the field used for observation and only in a single member of genus Chicorium, radicchio rosso. Applicant has not described any causal locus or polymorphism which confers resistance to one or more strains of TSWV but only sequences representing markers across two QTLs associated with resistance to TSWV endemic to a field used for observing resistance which have not been shown to confer resistance to any strain of TSWV in any other plant.
The lack of written description is confirmed by the lack of teachings in the prior art. Oncu (Oncu and Yesil. “Tomato Spotted Wilt Virus and Resistance to the Virus on Tomato”. 6th International Conference on Sustainable Agriculture and Environment. Konya, Turkey. Pages 534-542) teaches that different biological variants of TSWV exist which have altered host ranges and symptoms. Oncu further teaches that this plant pathogenic virus is characterized by having enormous genetic heterogeneity, that TSWV can evolve by reassortment of its genome segments which occurs during mixed infections, exploiting the genetic variability in its population. Oncu teaches that several strains of TSWV have been identified in various regions around the world, which have been elucidated as being due to amino acid substitutions in the TSWV movement protein (page 538, paragraph 3). For example, Zhu (Zhu et al. The Plant Cell. 29: 2214-2232. 2017) teaches a structure-function relationship of a TSWV resistance gene, Sw-5b, against American-type tospovirsuses by recognizing a conserved 21-amino acid region within the viral movement protein, wherein the gene must comprise four polymorphisms to mediate broad-spectrum resistance by recognition of a small conserved pathogen-associated molecular pattern-like region within the pathogen effector (Abstract).
Given the breadth of the genera encompassed by the claims, the described species is not sufficiently representative. Applicant has not described a structure and one was not known in the prior art which would allow one of ordinary skill in the art to envision which members of the claimed genus possess the claimed function. The structure-function relationship described, i.e., Cichorium intybus var. foliosum which comprises each of the sequences described in Table 2, is not representative of the breadth of the claimed genus. One of ordinary skill in the art would not be able to envision which members of the genera claimed, including the plant species would comprise resistance to TSWV virus and to which strains. Particularly given that TSWV is known for having high diversity resulting in multiple strains of the virus that overcame a known source of resistance.
Applicant’s arguments regarding written description
Applicant's arguments filed 10/9/2025 have been fully considered but they are not persuasive.
Applicant argues in the Remarks that the amendment to claim 1 now recites a small genus, which Chichorium intybus is a representative sample of.
This argument has been fully considered but it is not persuasive. It is not clear that the QTLs discovered by Applicant to confer TSWV resistance in Chichorium intybus would confer TSWV resistance to the other plant species recited. Given the knowledge of diversity of TSWV in the art and the lack of knowledge that resistance can be effective across the species claimed, either in the art or in the instant disclosure, the Markush group of Chichorium species does not have written support.
Applicant argues, regarding diversity of TSWV strains, that the instant application provides written support in which resistance was observed in fields with endemic TSWV populations in both Italy and Guatemala. Applicant argues that this demonstrates the QTLs of the instant application are not TSWV variant restricted.
This argument has been fully considered but it is not persuasive. Examiner acknowledges, based on the knowledge in the art, that the demonstration of TSWV resistance in fields with endemic TSWV populations in both Italy and Guatemala is more likely than not to demonstrate that the instantly claimed sequences indicating the presence of the QTL discovered in the instant application confers resistance across multiple strains of TSWV, it is not clear which strains. Examiner acknowledges that if this was the only deficiency of written support for the scope of the claims that it may not be found to be sufficient rationale for rejection by itself; however, Applicant has not demonstrated that the presence of the claimed sequences in any other species but Chichorium intybus comprised resistance to any TSWV strain. Further, claim 12 does not require the claimed sequences but any fragment or two fragments from anywhere in the genome of a plant which has the claimed sequences. Applicant has not described a representative number of species comprising the claimed sequences as comprising TSWV resistance nor a structure-function relationship other than the Cichorium intybus var. foliosum comprising all of the markers associated with the two described QTLs. As provided in the references cited above, Oncu teaches that TSWV has very high diversity which has been known to overcome resistance. Zhu teaches an example of a structure-function relationship by describing four polymorphisms required for identification of a structure in the pathogen for American-type tospoviruses. By contrast, Applicant has only described structures which are associated by proximity to an unknown structure that provides resistance to TSWV specifically endemic to the field used for observation in the instant disclosure. This lack of description does not provide one of ordinary skill in the art to recognize which members of the claimed genera of plants would comprise resistance to which members of the claimed genus of TSWV.
Closest Prior art
The claims are deemed free of the prior. The closest prior art is JI606160 (GenBank Accession No. JI606160, submitted on April 4, 2011). JI606160 shares 84% identity with elected SEQ ID NO: 36.
Conclusion
Claims 1, 7-9, 12 and 14 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.
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. 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://www.uspto.gov/interviewpractice. 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
/MYKOLA V. KOVALENKO/ Primary Examiner, Art Unit 1662