DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
1. Claims 1-2, 4-5, 7, 9, and 13-20 are pending and under examination to the extent of the elected species of ALG82 and SEQ ID NO:2.
Claims 3, 8, 12, and 21-22 are withdrawn.
Claims 6 and 10-11 are cancelled.
Information Disclosure Statement (IDS)
2. The Information Disclosure Statement (IDS) submitted on October 21, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered to the extent of the English translations provided. A signed copy is attached.
Response to Arguments – Objections to the Drawings
3. Applicant’s arguments and amendments filed August 25, 2025 have overcome the objections of record.
Response to Arguments – Objections to the Specification
4. Applicant’s arguments and amendments filed August 25, 2025 have been fully considered but do not overcome all of the objections of record.
With regards to the objection to the specification due to the presence of embedded hyperlinks, Applicant’s amendments are insufficient to remove all such hyperlinks. Embedded hyperlinks remain at p. 10 (ln. 5), p. 45 (ln. 31), and p. 46 (ln. 3). Accordingly, this objection to the specification is maintained.
Objections to the Specification
5. The disclosure of the specification is objected to because of the following:
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. See p. 10 (ln. 5), p. 45 (ln. 31), and p. 46 (ln. 3). There are multiple instances of embedded hyperlinks throughout the specification. The examples cited herein are non-exhaustive. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Appropriate correction is required.
Response to Arguments – Claim Objections
6. Applicant’s arguments and amendments filed August 25, 2025 have overcome the objections of record. However, said amendments have necessitated new grounds of objection to the claims.
Claims 6 and 10-11 are cancelled and claims 8 and 12 are withdrawn; thus, any objections to these claims are rendered moot.
Claim Objections
7. Claims 1-2, 4-5, 7, 9, and 13-20 are objected to for the following reasons:
Claim 1 contains a grammatical error. In ln. 9, it is suggested Applicant amend “(SPC) demonstrated by having a green stem” to “(SPC), which is demonstrated by having a green stem”. However, it is recommended Applicant amend the claim as deemed appropriate to resolve all grammatical issues. See also: claim 2 (ln. 6 and ln. 8); claim 16 (ln. 2); claim 18 (ln. 3); and claim 20 (ln. 3).
Claim 1 contains a typographical error in ln. 6. The phrase “in AGAMOUS-like 82 (AGL82) gene” should be amended to “in the AGAMOUS-like 82 (AGL82) gene”.
Claim 16 contains grammatical and syntactical errors that obscure the intended recitation. If Applicant intends to recite an AGL82 gene consisting of SEQ ID NO:3, it is recommended Applicant amend “AGL82 as set forth in SEQ ID NO:3” to “the AGL82 gene set forth in SEQ ID NO:3”.
Dependent claims are included. Appropriate correction is required.
Response to Arguments – Claim Rejections - 35 USC § 112(b)
8. Applicant’s arguments and amendments filed August 25, 2025 have been fully considered but do not overcome all of the rejections of record. Furthermore, Applicant’s amendments have necessitated new grounds of rejection.
Regarding the rejection of claim 2 due to the objective of claim 2 being unclear, Applicant’s arguments and amendments have been carefully considered but are not persuasive. In traversing the rejection, Applicant amended claim 2 to recite a green color in relation to increased SPC. However, this is not sufficient to overcome the rejection of claim 2, because the objective of the claim remains unclear. It is unclear how providing a progeny of a cross between a domesticated P. dulcis plant and a donor P. dulcis plant and selecting a progeny plant exhibiting increased SPC can increase the SPC of the domesticated P. dulcis plant; it is unclear how increasing the SPC of one plant can or does affect the SPC of another plant. Accordingly, this rejection is maintained.
Regarding the rejection of claim 13 due to the indefiniteness of “Southern analysis” and “Northern analysis”, Applicant has not amended the claim or provided an argument sufficient to clarify the metes and bounds of “Southern analysis” and “Northern analysis”. Accordingly, this rejection is maintained.
Claims 6 and 10-11 are cancelled and claims 8 and 12 are withdrawn; thus, any objections to these claims are rendered moot.
Claim Rejections - 35 USC § 112(b)
9. 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.
10. Claims 1-2, 4-5, 7, 9, and 13-20 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.
The metes and bounds of claim 1 are indefinite because embodiment (a) implies there is a single progeny provided in the recitation of “a progeny” (ln. 3), but embodiment (b) implies there are multiple progenies from which one must identify a progeny plant in the recitation of “the progeny” (ln. 10). It is unclear how one could select a progeny from multiple progenies if provided only a single progeny from which to select.
The metes and bounds of claim 1 are indefinite because claim 1 does not result in the breeding of a domesticated P. dulcis plant. While embodiment (a) recites “providing” a progeny of a cross and embodiment (b) recites identifying a progeny, neither embodiment of claim 1 recites, describes, or requires breeding any plants. The claim requires only providing and identifying a progeny plant, not breeding any plant. If Applicant intends for claim 1 to recite a method of breeding plants, it is recommended Applicant amend the claim to positively recite such a breeding or crossing step.
The metes and bounds of claim 2 are indefinite because it is unclear how providing a progeny of a cross between a domesticated and donor P. dulcis plant and selecting a progeny plant exhibiting increased SPC can increase the SPC of a domesticated P. dulcis plant. It is unclear how increasing the SPC of one plant can or does affect the SPC of another plant. While the recited method may result in the production of offspring with increased SPC in comparison to a parent plant, said method does not increase the SPC of either parent plant (e.g., the domesticated P. dulcis plant). If Applicant intends for claim 2 to recite a method of breeding plants with increased SPC, it is recommended Applicant amend the claim to reflect that the claimed method generates plants having increased stem photosynthetic capacity.
The metes and bounds of claim 13 are undefined, because “Southern analysis” and “Northern analysis” are not art-recognized terms/phrases and Applicant has not provided a definition for these methods. Does Applicant intend to recite “Southern/Northern blot analysis”?
Dependent claims are included. Clarification and/or correction is required.
Any new grounds of rejection presented herein are necessitated by Applicant’s amendments filed August 25, 2025.
Response to Arguments – Claim Rejections - 35 USC § 101
11. Applicant’s arguments and amendments filed August 25, 2025 have overcome the rejections of record.
Response to Arguments – Claim Rejections - 35 USC § 112(a)
12. Applicant’s arguments and amendments filed August 25, 2025 have been carefully considered but are not sufficient to overcome the rejections of record.
Regarding the rejection of claim 2 under the Enablement requirement of 35 U.S.C. 112(a), Applicant traverses the rejection and argues that: 1) the progeny is defined as having SPC which provides a green stem during dormancy; and 2) the examples section of the instant application explain how to measure SPC. Applicant’s argument is not persuasive because the claim suggests that the increase in SPC is demonstrated by a greener color in the stem, however, the state of the art teaches that stem color varies based on combinatorial interactions between genetic and environmental factors (Gonzalo et al., Tree Genetics & Genomes. 2012; 8:943-955 (previously cited)). For example, leaf greening in Prunus species in heavily impacted by exposure to iron and a particular Prunus species’ genetic resistance to iron chlorosis (Gonzalo et al.; Abstract). Accordingly, one of ordinary skill in the art would not be able to accurately infer SPC from a visual inspection of stem color; in particular, a slight difference in the greening of one stem in comparison to another stem could be due to a variety of factors independent of SPC. One of ordinary skill in the art would not be able to determine which plants having a greener stem are characterized by increased SPC without engaging in extensive and undue experimentation. Therefore, this rejection is maintained.
Applicant’s amendments have also necessitated new grounds of rejection under 35 U.S.C. 112(a).
Claims 6 and 10-11 are cancelled and claims 8 and 12 are withdrawn; thus, any objections to these claims are rendered moot.
Claim Rejections - 35 USC § 112(a)
13. 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.
Written Description Rejections
14. Claims 1-2, 4-5, 7, 9, and 13-20 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.
Applicant’s disclosure is as follows. Example 1 discloses that P. arabica assimilates CO2 through its green stems throughout the year while P. dulcis develops a grey cork layer. Example 2 discloses that wild donor P. arabica was crossed with domesticated P. dulcis U.E.F. to obtain an F1 population. In Examples 3-4, the genomes of P. arabica and U.E.F. were sequenced to identify SNPs and genotype the F1 population. Example 3 further discloses that the allelic compositions of the parents are AA (P. arabica) x Aa (U.E.F.). Examples 5-6 disclose two QTLs regulate the SPC trait in an additive manner on chromosomes 1 and 7. Table 4 discloses markers associated with the QTLs. Table 5 lists possible genes of the QTLs by gene IDs. Examples 7-8 disclose a modified AGL82 Arabidopsis homolog gene which has a 21 bp deletion in the first allele and a 17 bp deletion in the second allele of P. arabica when compared to U.E.F. as responsible for conferring the SPC trait. Figure 9 discloses that the F1 progenies comprising the P. arabica AA allele produce higher yield than those that have the P. dulcis Aa allele.
The claimed invention lacks adequate written description for the following reasons.
With regard to claim 1, Applicant does not describe any P. dulcis plants having edible seed and characterized by having a green stem during dormancy. Applicant’s working examples describe the presence of the SPC trait, as assessed via gas exchange measurements, in the stems of three-year-old F1 hybrids obtained from the crossing of P. dulcis with P. arabica (Example 2). The examples do not describe P. dulcis plants having green stems during dormancy or P. dulcis plants obtained by crossing domesticated P. dulcis with P. dulcis plants characterized by an SPC trait. The state of the art teaches the presence of photosynthetic activity (i.e., gas exchange) in the non-green bark of trees such as Boswellia papyrifera (Girma et al. ISPRS Journal of Photogrammetry and Remote Sensing. 2015; 105:30-37 (U)). The state of the art does not teach P. dulcis plants having green stems during dormancy. Applicant provides no evidence that the SPC observed in the reported F1 hybrids is associated with a green stem during dormancy as claimed. Accordingly, P. dulcis plants having edible seed and characterized by having a green stem during dormancy lack adequate written description so as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Dependent claims 2, 4-5, 7, 9, and 13-20 do not address the limitation regarding P. dulcis plants having edible seed and characterized by having a green stem during dormancy. Claim 2 does not even require or recite SEQ ID NO:2, which appears to be essential for the green stem color phenotype recited in the claims. Therefore, dependent claims 2, 4-5, 7, 9, and 13-20 also lack adequate written description.
This new ground of rejection is necessitated by Applicant’s amendments filed August 25, 2025.
Enablement Rejections
15. Claim 2 is 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. The claims contain 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.
When determining whether a claimed invention complies with the enablement requirement, factors to consider include: “(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.” Id.
Applicant’s disclosure is as set forth above. The claimed invention is not enabled for the following reasons.
With regard to claim 2, Applicant does not provide sufficient guidance with regard to how to identify a progeny plant exhibiting the SPC trait.
Applicant discloses the SPC trait is demonstrated by a green stem (p. 11, lns. 28-32). The state of the art at the time of filing teaches that the color of photosynthetic tissues is impacted by both genetic and environmental factors (Gonzalo et al., Tree Genetics & Genomes. 2012; 8:943-955 (U)). If increased SPC is demonstrated by a green stem, it is unclear how to determine if the green stem is due specifically to the SPC trait and not to some other factor, such as environmental conditions. For example, a parent plant that demonstrates a less green stem than its offspring may be experiencing iron chlorosis as opposed to a lower or reduced level of SPC in comparison to its offspring.
While one of ordinary skill in the art can identify the coloration of any almond plant, one of skill in the art cannot reliably predict which P. dulcis plants exhibiting a green stem inherently possess the SPC phenotype. Thus, one of ordinary skill in the art would not be able to identify a progeny plant exhibiting increased SPC without resorting to random trial and error requiring undue experimentation.
In making this determination, the Office has weighed each of the Wands factors. The breadth of the claim is to a method of increasing the SPC of a P. dulcis plant. The nature of the invention comprises breeding almond varieties comprising genetic variations that affect SPC. The level of skill in the plant genetics art is high. The state of the prior art does not disclose genetic or phenotypic markers for the SPC trait in cultivated or wild almonds. Applicant discloses only the phenotypic trait of a green stem as indicative of the SPC trait. However, the green stem characteristic is not a definitive indicator of the SPC trait. Given these difficulties and notwithstanding a relatively high level of ordinary skill of those in the art, the amount of experimentation would likely be extensive and undue.
Weighing all of the Wands factors based on the totality of the record as discussed above, the Office determines that it would require undue experimentation for a person of ordinary skill in the art to make and use the invention as claimed.
Response to Arguments – Claim Rejections - 35 USC § 102
16. Applicant’s arguments and amendments filed August 25, 2025 have been carefully considered but are not sufficient to overcome the rejections of record.
Regarding the rejection of claim 19 under 35 U.S.C. 102, Applicant has amended the claim to recite that the seed is of the domesticated P. dulcis plant of claim 18. However, this amendment is insufficient to overcome the rejection of record because the recited seed is not required to have the SPC trait due to gene segregation from a cross between two P. dulcis plants. Because claim 19 encompasses products processed from seed lacking the SPC trait, claim 19 is anticipated by Martinez et al. (Journal of Food Engineering. 2013; 119(1):40-45 (previously cited)), which teaches a method comprising processing the seed of a P. dulcis plant to produce a processed product (p. 41, right column, “2.2.2 Screw-press extraction”). Accordingly, this rejection is maintained. However, Applicant’s amendments have necessitated modification to the language of this maintained rejection.
Claim Rejections - 35 USC § 102
17. The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
18. Claim 19 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Martinez et al. (Journal of Food Engineering. 2013; 119(1):40-45 (previously cited)).
Regarding claim 19, Martinez teaches a method of producing a process product of the domesticated P. dulcis plant comprising processing a seed of the plant (p. 41, right column, “2.2.2 Screw-press extraction”). The Office interprets “a seed of the plant of claim 18” to comprise a seed produced by the plant of claim 18. Because “a seed of the plant of claim 18” is not required to have the SPC trait due to gene segregation from a cross between two P. dulcis plants, claim 19 encompasses products processed from seeds lacking the SPC trait and is anticipated by Martinez.
Accordingly, the claimed invention is anticipated by the prior art.
Conclusion
19. No claim is allowed. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Examiner’s Contact Information
20. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEQUANTARIUS JAVON SPEED whose telephone number is (703)756-4779. The examiner can normally be reached M-F; 9AM-5PM ET.
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, 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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/DEQUANTARIUS JAVON SPEED/Junior Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
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