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 1-33 are pending.
Claims 13-29 are withdrawn.
Claims 1-12 and 30-33 are examined.
Election/Restrictions
Claims 23-33, added by Applicant in the amendments filed 2/18/2025 and instantly pending are acknowledged. Claim 13 was amended to be drawn to a method of inducing a mutation and is therefore included in Group III. Claim 14 was amended to be drawn to a method of producing a Torradovirus resistant plant by selection of a modified gene and is included in Group III. Claim 16 was amended to be drawn to a method of producing a Torradovirus resistant plant and is included in Group III. Claim 23 was amended to be drawn to a method for identifying a Torradovirus resistant plant and is included in Group III. Claims 24-29 are also included in Group III. Claims 30-33 are included in Group I.
Withdrawn objections
The objection to the drawings is withdrawn in light of amendments made by Applicant.
Withdrawn rejections
The rejection of claims 1-12 on the basis of having an improper Markush group is withdrawn in light of amendments made by Applicant.
The rejection of claims 1-12 under 35 USC 112(b) is withdrawn in light of amendments made by Applicant.
The rejection of claims 1-12 under 35 USC 103 is withdrawn in light of amendments made by Applicant.
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 1-12 and 30-33 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.
Due to Applicant' s amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 3/25/2025, as applied to claims 1-12.
Applicant claims a Solanaceae plant comprising a modified FBXL13 gene or a homolog thereof with a deletion at position 732 of SEQ ID NO: 1 resulting in a truncation of the resulting protein at position 244 of SEQ ID NO: 5 or a modification in wild-type SEQ ID NO: 4 resulting in a change in wild-type protein SEQ ID NO: 8. Applicant claims the modified FBXL13 gene confers resistance to a Torrado virus in the plant.
Applicant describes identification of a marker, SL09491, which correlated with Torrado virus resistance (paragraph 127). Applicant describes that “several tomato plant lines and varieties (from wild as well as domesticated species) were found to be resistant to the Tomato Torrado virus” (paragraph 129). Applicant describes that a deletion of position 732 of Solyc04g79810 is always present in resistant plants but that other resistant plants comprise an additional SNP can be found that circumvents the initial STOP codon produced by the deletion. Applicant describes that another premature STOP codon 5 amino acids upstream still provides a truncated protein that confers resistance. Applicant describes identifying similar sequences to the FBXL13 nucleotide sequence of SEQ ID NO: 1 and the amino acid sequence of SEQ ID NO: 5 using a BLAST program (paragraph 131). The modified FBXL13 sequences appear to be SEQ ID NO: 9 and 10 encoding SEQ ID NO: 12 and 13, respectively (paragraphs 138 and 140).
Applicant does not describe the genus of Solanaceae plants resistant to the genus of Torrado viruses as broadly claimed. The described embodiments are not representative of the breadth of the claimed genus such that one of ordinary skill in the art would be able to envision which members of the claimed genus possess the claimed function. Given the breadth of the genera encompassed by the claims, the described species are not sufficiently representative.
Applicant has not provided a structure-function relationship other than a specified mutation at position 732 of SEQ ID NO: 1 resulting in a truncation. Applicant has not described a representative number of species across the genus of deletion of a thymine at a position corresponding to position 732 of SEQ ID NO: 1 in any homologous sequences nor a structure-function relationship other than that addressed above. Applicant has only described resistance in unspecified species of tomato plants and to Tomato Torrado virus, i.e., only Torradovirus of tomato.
The knowledge in the prior art does not cure the deficiencies. Herrera-Vasquez (Herrera-Vasquez et al. Journal of Virological Methods. 221:90-94. 2015) provides that at least eight members of the genus Torradovirus have been described, four of which infect tomato (page 90, left column). It is not clear which member Applicant’s description is referring to and multiple species of Torradovirus are not described. Herrera-Vasquez is silent regarding the relationship of modified FBXL13 genes and resistance to any species of Torradovirus in any species of Solanaceae. This supports that the described species cannot be considered sufficiently representative and further indicates that the prior art fails to cure the lack of structure-function relationship set forth in the Specification for the FBXL13 gene and the claimed phenotype.
Given the breadth of the genera encompassed by the claims, the lack of a representative number of species and structure-function relationship described by Applicant in view of the known variability in the art, Applicant has not satisfied the written description requirement for the claimed invention.
Applicant’s arguments regarding rejection under 35 USC 112(a)
Applicant's arguments filed 7/25/2025 have been fully considered but they are not persuasive.
Applicant argues on page 16 of the Remarks that when the SNP at position 732 is present, the first stop codon is changed to a substitution but the protein is still truncated because of the second stop codon described in paragraph 130, which is 5 amino acids downstream. Thus, the deletion at position 732 is causative of the truncation and phenotype.
This argument has been fully considered but it is not persuasive. While Applicant has described this embodiment of the claimed invention, the scope of the claimed invention encompasses any Solanaceae plant being resistant to any Torradovirus by comprising any member of species within a genus of modifications to homologous sequences. The Solanaceae family includes many species and genera. One of ordinary skill in the art would not be able to envision which members would have resistance to which Torradoviruses from the description filed. Therefore, given the limited description provided by Applicant and the lack of knowledge in the prior art, the instant applicant does not comply with the written description requirement.
Conclusion
Claims 1-12 and 30-33 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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/DAVID R BYRNES/Examiner, Art Unit 1662