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 .
DETAILED ACTION
1. The Office acknowledges the receipt of Applicant’s amendment filed March 2, 2026. Claims 1, 27-32, 34 and 36-48 are pending. Claims 1, 27-32, 34, 40 and 41 are withdrawn. Claims 36-39 and 42-48 are examined.
All previous rejections not set forth below have been withdrawn.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.
This action is made FINAL.
Specification
2. The disclosure is objected to because of the following:
The Abstract is objected to because of the following: scientific names should be italicized.
On page 12, third paragraph, “on line” should be amended to “online”.
On page 13, last paragraph, “( )” should be deleted.
On page 14, in the “Deposit” paragraph, “were provided” should be amended to “was provided”.
Clarification and/or correction is required.
Claim Objections
3. Claims 36-39 and 42-48 are objected to because of the following:
In claim 36(a), the two recitations of “WmCSV virus” should be amended to “WmCSV”. The recitation of “virus” is redundant.
In claim 36(a), the recitation of “virus” in “high virus tolerant” should be amended to “WmCSV” for language consistency.
In claims 36(a), 36(b), 42(a) and 42(b), “the high virus tolerant” is grammatically incorrect. The recitation of “the” indicates the use of a noun. However, “tolerant” is an adjective.
In claims 36(a), 36(b), 36(e), 42(a), 42(b) and 42(e), “similar in position, structure and evolutionary origin from said tetraploid watermelon plant and said diploid watermelon plant” is grammatically incorrect. It is suggested a “wherein” clause be utilized.
In claim 36(b), “virus sensitive” should be amended to “’WmCSV sensitive” for language consistency.
In claim 36(b) and 36(c), “virus tolerant” should be amended to “WmCSV tolerant” for language consistency.
In claims 36(d) and 42(d), “female” should be inserted before “tetraploid” for language consistency.
In claims 36(d) and 42(d), “a male parent” should be amended to “the male parent”.
In claim 36(f), “step(d)” should be amended to “step (d)”.
In claim 36(f), “viruses” should be amended to “WmCSV tolerant” for language consistency.
In claim 37, the added comma after “(d)” should be underlined because it was not present in the previous claim 37.
In claim 39, “the female of backcrossing of (b)” should be amended to “the female parent in the backcrossing step of (b)”.
In claim 42(b), “a virus sensitive watermelon plant” should be amended to “the virus sensitive watermelon plant” because step (b) is a backcrossing step to the same plant.
In claim 42(f), “viruses” should be amended to “the virus”, because none of the steps in claim 42 introduces additional viruses.
In claim 46, “plant” should be inserted before “being sown”.
In claim 46, “have” should be amended to “having” for grammatical correctness.
In claim 48, “and” before the first “wherein” clause should be replaced with a comma.
Dependent claims are included.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
4. Claims 36-39 and 42-48 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 pre-AIA the Applicant regards as the invention.
In claim 36, it is unclear which is the NCIMB accession number: “12.607-S14” or NCIMB 42400. It is unclear whether the parentheses indicate these are the same accession numbers or these two recitations are of different scopes. The parentheses should be deleted. Applicant states that the parentheses have been deleted. However, the claim currently includes parentheses.
In claims 36(a), 36(b), 36(c), 42(a), 42(b) and 42(c), “high virus tolerant” lacks a comparative basis. It is unclear how “high virus tolerant” can be objectively determined.
In claim 36(a), 36(b), 36(e), 42(a), 42(b) and 42(e), the metes and bounds of “similar in position, structure and evolutionary origin” cannot be determined. It is unclear how they are similar and dissimilar.
In claims 36(a), 36(e), 42(a) and 42(e), “said tetraploid watermelon plant” lacks antecedence. The claim recites two diploid plants.
In claims 36(a), 36(e), 42(a) and 42(e), it is unclear whether “said diploid watermelon plant” refers to the virus tolerant plant or the virus sensitive plant, as both are diploid watermelon plants.
In claim 36(c), it is unclear whether “including” refers to the selecting step or the “further treatments”. If Applicant intends the latter, then “chromosome doubling” is not required in step (c). If Applicant intends for step (c) to select and double the chromosomes, it is suggested that an “and” be inserted.
In claims 36(f) and 42(f), it is unclear how “tolerance” differs from “resistance”.
In claim 36(f) and 42(f), it is unclear how “tolerance” can be objectively distinguished from “intermediate resistance”.
In claims 36(a), 36(b), 36(e), 42(a), 42(b) and 42(e), it is unclear how “selected be a delimitation by nucleotides 1 – 2,555,000” is defined. What does Applicant mean by “be a delimitation”? Do these numbers indicate nucleotide positions of the introgressed sequence in chromosome 6 or the number of nucleotides in chromosome 6? If Applicant is referring to positions, it is unclear what reference genome is used. Applicant states that the reference genome is (91703).v1 – http://cucurbitgenomics.org/organism/1 and Applicant discloses markers in the region that are correlated to the trait. This traversal is unpersuasive because the claims do not recite the reference genome and thus are not limited to said reference genome. No marker sequence is disclosed in the application or recited in the claims.
Claim 36 is an incomplete method claim because it does not result in producing a watermelon seed “12.607-S14” having NCIMB accession number 42400 that is tolerant to WmCSV. Applicant states that claim 36 has been amended to include production of the tolerant seed. This traversal is unpersuasive because the last step produces a plant characterized by tolerance or intermediate resistance to viruses and does not produce a watermelon seed “12.607-S14” having NCIMB accession number 42400 that is tolerant to WmCSV.
In claim 42(a), lines 1-2, “the virus sensitive” lacks antecedence. Further, it is unclear whether the two recitations of virus in (a) refers to the same virus or different viruses.
In claim 42(a), when two plants are crossed, a seed is produced, not a fruit. Further, a fruit is not used for breeding. Does Applicant mean seed from the fruit? Applicant states that claim 42 has been amended to “seed”. However, the claim recites “fruit”.
In claim 42(b), it is unclear what is meant by “selecting high virus tolerant fruit from said seed”. A fruit contains a seed, and not vice versa.
In claim 46, “the seeds of the triploid hybrid watermelon being sown” lacks antecedence.
In claim 46, it is unclear how a fruit is characterized by the seeds, because fruit and seeds have different characteristics.
Claim 46 states “The method of Claim 42, wherein the triploid hybrid watermelon fruit is characterized by the seeds of the triploid hybrid watermelon being sown, to produce said triploid watermelon fruit have a weight of 1,000 seeds being between 30 to 70g.” The specification, p. 2, discloses that “A triploid hybrid plant produces a seedless watermelon fruit.” It is unclear what seeds claim 46 is referring to if the plant produces a seedless fruit. Applicant states that claim 46, when read with the specification, clarifies what seeds are sown to produce the watermelon fruit which is seedless. Applicant’s traversal is unpersuasive because “the seeds of the triploid hybrid watermelon” encompasses seeds from the triploid hybrid watermelon fruit, which Applicant indicates is seedless. It is unclear whether Applicant is claiming the seeds of the fruit of the triploid watermelon fruit, or the seeds that produce the triploid watermelon plant. Moreover, limitations from the specification are not read into the claims. “[I]t is the language itself of the claims which must particularly point out and distinctly claim the subject matter which the applicant regards as his invention, without limitations imported from the specification. … Limitations in the specification not included in the claims may not be relied upon to impart patentability to an otherwise unpatentable claim.” In re Lundberg, 244 F.2d 543, __, 113 USPQ 530, 534 (CCPA 1957).
In claim 47, it is unclear whether “(0-11 lbs.)” is part of the instrument name or a claim limitation. If Applicant intends the latter, the parentheses should be deleted.
In claim 48, “said watermelon plant” lacks antecedence.
In claim 48, “dark” is a relative term lacking a comparative basis. Applicant traverses that “dark” is used in several US patent publications to describe watermelon rind color. Applicant’s traversal is unpersuasive because what constitutes as “dark” to one skilled in the art may not be “dark” to another skilled in the art. The term “dark” is a subjective term absent an objective parameter to define “dark”.
Correction and/or clarification is required.
Claim Rejections - 35 USC § 112(a)
5. Claims 36-39 and 42-48 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.
Applicant is invited to point to the page and line number in the originally-filed disclosure where support for “similar in position, structure and evolutionary origin from said tetraploid watermelon plant and said diploid watermelon plant” can be found. Absent of support, Applicant is required to cancel the new matter in response to the instant Office action.
6. Claims 36-39 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 instant specification fails to satisfy the written description requirement of 35 U.S. Code § 112(a) because it does not provide a description sufficient to conduct an examination, including search of the prior art, nor does it provide enough description to be sufficient to aid in the resolution of questions of infringement.
MPEP 2163 (I) states “The written description of the deposited material needs to be as complete as possible because the examination for patentability proceeds solely on the basis of the written description. See, e.g., In re Lundak, 773 F.2d 1216, 227 USPQ 90 (Fed. Cir. 1985); see also 54 Fed. Reg. at 34,880 ("As a general rule, the more information that is provided about a particular deposited biological material, the better the examiner will be able to compare the identity and characteristics of the deposited biological material with the prior art.").”
MPEP 2163(I) states “The description must be sufficient to permit verification that the deposited biological material is in fact that disclosed. Once the patent issues, the description must be sufficient to aid in the resolution of questions of infringement." Id. at 34,880.)” (Quoting the Deposit of Biological Materials for Patent Purposes, Final Rule, 54 Fed. Reg. 34,864 (August 22, 1989) at 34,880).
In the instant application, a full examination cannot be conducted because Applicant fails to provide the breeding history for the instantly claimed plant variety. Specifically, Applicant claims a new watermelon plant variety. A plant variety is defined by both its genetics (breeding history) and its traits. In the instant application, Applicant has only provided a description of some of the plant traits as shown in the specification. The instant application is silent or incomplete as to the breeding history used to produce the claimed plant variety.
The criticality of a breeding history in assessing the intellectual property rights of a plant is well recognized in the field of plant breeding. With regard to Plant Patents, MPEP 1605 states that a complete detailed description of a plant includes “the origin or parentage”. Other bodies that grant intellectual property protection for plant varieties require breeding information to evaluate whether protection should be granted to new varieties. A breeding history, including information about parentage and breeding methodology, is part of the requirements of Plant Variety Protection (PVP) applications. That information is used to “determine if development is sufficient to consider the variety new” (See “Applying for a Plant Variety Certificate of Protection”, USDA, https://www.ams.usda.gov/services/pv po/application-help/apply, downloaded 05/01/2023, (previously cited)). Additionally, the International Union for the Protection of New Varieties of Plants (UPOV) considers breeding history and methodology part of its evaluation of essentially derived plant varieties (UPOV, Explanatory Notes on Essentially Derived Varieties Under the 1991 Act of the UPOV Convention, April 6, 2017, See UPOV EDV Explanatory Notes 14 and 30 (previously cited)). While the USPTO, USDA, and UPOV have different laws governing intellectual property rights, all recognize that a breeding history is an essential part of adequate description of the plant sought to be protected.
The breeding history is also necessary to aid in the resolution of patent infringement by providing information necessary to determine whether differences in the plants are genetic differences, differences caused by the environment, or differences within the accepted variation within a variety. Historically, the USPTO has considered breeding history information when determining the patentability of a new plant variety. (See Ex Parte C (USPQ 2d 1492 (1992) (previously cited) and Ex Parte McGowen Board Decision in Application 14/996,093, decided June 15, 2020 (previously cited)). In both of these cases, there were many differences cited by the Applicant when comparing the prior art and the new plant variety. However, because the breeding history was available, these differences were deemed to be obvious and within the natural variation expected in a backcrossing breeding process. Without a breeding history in these cases, a complete comparison with the prior art could not have been possible.
Moreover, a specification devoid of a breeding history hampers the public’s ability to resolve infringement analysis with plants already in the prior art as well as plants that have not yet been patented. Because the instant specification lacks the breeding history, the public will not be able to fully resolve questions of infringement. Since the breeding history, including the parents, is not known to the public, the public could only rely on the phenotypes of the claimed plants for assessing potential infringement.
As seen above in Ex Parte C and Ex Parte McGowan, a trait table is insufficient to differentiate varieties by itself. It has been long established that intracultivar heterogeneity exists in crop species. Haun et al. (Plant Physiology, Feb. 2011, Vol. 155, pp. 645-655 (previously cited)) teaches that the assumption that elite cultivars are composed of relatively homogenous genetic pools is false (p. 645, left column). Segregation, recombination, DNA transposition, epigenetic processes, and spontaneous mutations are some of the reasons elite cultivar populations will maintain some degree of plant-to-plant variation (p. 645, right column and p. 646, left column). In addition to genetic variation, environmental variation may lead to phenotypic variation within a cultivar (Großkinsky et al., J. Exp. Bot., Vol. 66, No. 11, pp. 5429-5440, 2015 (previously cited), p. 5430, left column, 1st full paragraph, and right column, 2nd full paragraph). In view of this variability, a breeding history is an essential and the least burdensome way to provide genetic information needed to adequately describe a newly developed plant.
Thus, an application that does not clearly describe the breeding history does not provide an adequate written description of the invention.
To overcome this rejection, Applicant must amend the specification/drawing to provide the breeding history used to develop the instant variety or cultivar, specifically the deposited seed having NCIMB accession number 12.607-S14 and/or 42400 as recited in claim 36. When identifying the breeding history, Applicant should identify any and all other potential names for all parental lines utilized in the development of the instant variety. For example, if Applicant’s breeding history uses proprietary line names, Applicant should notate in the specification all other names of the proprietary lines, especially publicly disclosed or patented line information. If the breeding history encompasses a locus conversion or a backcrossing process, Applicant should clearly indicate the recurrent parent and the donor plant and specifically name the trait or transgenic event that is being donated to the recurrent parent. If one of the parents is a backcross progeny or locus converted line of a publicly disclosed line, Applicant should provide the breeding history of the parent line as well (i.e. grandparents). Applicant should identify the breeding method used, such as whether it is single seed descent, bulk method, backcross method, etc., and the filial generation in which the instant plant was chosen. Information pertaining to the homozygosity or heterozygosity of the parents as well as the instant plant should be set forth.
Applicant is reminded that they have a duty to disclose information material to patentability. Applicant should also notate the most similar plants which should include any other plants created using similar breeding history (such as siblings of the instant variety). If there any patent applications or patents in which sibs or parents of the instant plant are claimed, the serial numbers and names of the sibs or parents should be disclosed. This information can be submitted in an Information Disclosure Statement with a notation of the relevancy to the instant application or as information submitted as described in MPEP 724 (e.g., trade secret, proprietary, and Protective Order).
Accordingly, absent a complete disclosure of the breeding history of the deposited watermelon line as set forth above, the claimed invention lacks adequate written description.
Applicant’s Traversals
Applicant traverses primarily the following: Examples 1-3 and Table 1 provide the breeding history of the claimed plants, fruits and seeds.
Response to Applicant’s Traversals
Applicant’s traversals have been considered but are deemed unpersuasive for the following reasons. The claims are drawn to a method of producing a watermelon seed of deposited variety 12.607-S14. However, the steps are generic to the crossing of any WmCSV tolerant diploid watermelon variety with any WmCSV sensitive diploid watermelon variety. Due to genetic heterogeneity among different varieties, the exact parents utilized to produce deposited variety 12.607-S14 must be recited in the claims. Moreover, Applicant does not address potential other names for all parental lines utilized in the development of variety 12.607-S14, their public availability, potential other names for variety 12.607-S14, the existence of siblings of variety 12.607-S14, the homozygosity or heterozygosity of the parents and of variety 12.607-S14, and information regarding patent applications or patents in which siblings or parents of the instant variety are claimed. Accordingly, the rejection is maintained.
7. Claims 36-39 and 42-48 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 pre-AIA 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 the process for producing a diploid male parent line. Specifically, Citrullus colocynthis, hereafter “C.c.”, is the male donor source for WmCSV resistance. However, “C.c.” has undesirable bitter taste, white flesh, stripped rind and brown seeds. Male parent “C.c.” was crossed with Origene Seeds proprietary line “112” female parent. A progeny from the cross was designated “419-F1”, which was backcrossed to “112” to produce “419BC1-F1”, which was self-pollinated to produce “419C1-F2”, which was backcrossed again to “112” to produce “419BC2-F1”, which was self-pollinated to produce “419BC2-F2”. Flowers of “419C2-F1” were crossed with Origene Seeds proprietary line “422” (cross between sensitive line “113” and resistant line “420-1-1”) to produce “549-BC3-F1”. Further selections were conducted to obtain “549-BC3-F2” – “549-BC3-F15” to achieve uniformity and desirable fruit characteristics.
Example 2 discloses the process for producing a tetraploid female parent line. Specifically, tetraploid line “645” was obtained from crossing two Origene Seeds proprietary lines: “367-a” (sensitive tetraploid line) and “623-3-6-1” (obtained by doubling diploid line “419-F1”, whereby “419-F1” was obtained from crossing line “112” and “C.c.”. The first cross of tetraploid line “645” was designated “W08-F1-645-B1” after two generations of self-pollination to line “623.3”.
Example 3 discloses the process for producing triploid hybrids tolerant to WmCSV. The WmCSV tolerant tetraploid female lines and WmCSV tolerant triploid male lines were crossed. The resulting WmCSV tolerant triploid hybrids “12.607” are shown in Table 1: “12.607-S12”, “12.607-W13”, “12.607-S14” and “12.607-W14”. The characteristics of triploid hybrids “12.607-S12” and “12.607-W13” are shown in Table 2. Additional WmCSV tolerant triploid hybrid series of “OCR7” having different designations are disclosed on p. 34. However, there is no disclosure as to how these were obtained. Page 34 also discloses “newest and latest hybrids series” having various designations but again, there is no disclosure as to how these were obtained. Applicant states that the triploid watermelon hybrid is not tolerant to WmCSV if only one parent is tolerant.
The claimed invention lacks adequate written description for the following reasons.
In addition to lacking adequate written description with regard to the breeding history as set forth above, the claimed invention does not provide adequate written description for “an introgressed sequence located on chromosome 6 similar in position, structure and evolutionary origin from said tetraploid watermelon plant and said diploid watermelon plant, within the chromosome region selected be a delimitation by nucleotides 1 - 2,255,000”. The Office interprets this recitation to mean that the introgressed sequence is located on chromosome 6 somewhere between positions 1 - 2,255,000 of the hybrid progeny plant. There is no disclosure as to what position is “similar” to the parent plants. There is no disclosure as to what genomic structure the parents share. There is no disclosure as to how far back in evolution when the parents first originated. There is no disclosure as to what reference genome is used to determine positions 1 - 2,255,000. The structure of the introgressed sequence on chromosome 6 is undisclosed. The size and location of the introgressed sequence is undisclosed. No markers flanking the introgressed sequence are disclosed. No structure and function relationship between the introgressed sequence and the virus resistance phenotype is known or disclosed. It should be noted that claims 42-48 are not limited to a particular virus, however, the only introgressed sequence on chromosome 6 disclosed is for conferring WmCSV tolerance. No other virus is disclosed. Accordingly, there is insufficient disclosure of the introgressed sequence to produce a watermelon seed or fruit containing “an introgressed sequence located on chromosome 6 similar in position, structure and evolutionary origin from said tetraploid watermelon plant and said diploid watermelon plant, within the chromosome region selected be a delimitation by nucleotides 1 - 2,255,000” that is tolerant to WmCSV as deposited at NCIMB Accession No. 42400 or to another virus.
Given the breadth of the claims and lack of guidance of the specification, the specification fails to provide an adequate written description of the claimed method for producing a cultivated watermelon plant as commensurate in scope with the claims. Accordingly, the claimed plants lack adequate written description under current Written Description guidelines http://www.uspto.gov/web/menu/written.pdf.
Applicant’s Traversals
Applicant traverses primarily the following: (1) watermelon genome (91703).v1 – http://cucurbitgenomics.org/organism/1 was used to determine positions 1- 2,255,000, and markers that correlate with the trait are disclosed. (2) US Pub. No. 20170006791, issued as US Pat. No. 10271503, provides a road map to narrate the disclosure of the present invention, supplants the Office’s arguments above for the finding of the present application and conjunctively meets the requirements of details and enablement.
Response to Applicant’s Traversals
Applicant’s traversals have been considered but are deemed unpersuasive for the following reasons. With regard to traversal (1), neither the reference genome nor the markers are recited in the claims to address the lack of adequate written description issues set forth above. With regard to traversal (2), every application is determine on its own merits. US Pub. No. 20170006791 was not incorporated by reference in the instant application and cannot provide the necessary written description required to be present application. Moreover, Applicant does not substantiate how US Pub. No. 20170006791 provides a road map for “an introgressed sequence located on chromosome 6 similar in position, structure and evolutionary origin from said tetraploid watermelon plant and said diploid watermelon plant, within the chromosome region selected be a delimitation by nucleotides 1 - 2,255,000”. Accordingly, the rejection is maintained.
8. Claims 36-39 and 42-48 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. The 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.
Enablement 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.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Applicant’s disclosure is as set forth above in the written description rejection.
Because no description of the introgressed sequence is disclosed, other than it is somewhere on chromosome 6 within a region spanning 2,255,000 nucleotides, one skilled in the art cannot make and use the claimed method as commensurate in scope with the claims without undue experimentation. There is no evidence in the prior art or in Applicant’s disclosure that a virus resistant watermelon plant would inherently have the introgressed sequence, as disease resistance may be due to various other factors, including a mutation of a protein that is targeted by the virus, up-regulation of response proteins, down-regulation of response inhibitors, and alterations in plant morphological and physiological characteristics, just to name a few. Additionally, there is no disclosure as to how one skilled in the art can readily determine that the hybrid plant contains the introgressed sequence. No structure of the introgressed sequence is disclosed; no size and location of the introgressed sequence is disclosed; no markers flanking the introgressed sequence is disclosed; and no structure and function relationship between the introgressed sequence and the virus resistance phenotype is disclosed. None of the steps recite how the deposited seed of variety 12.607-S14 is produced. Even if the virus resistant plant has the undisclosed introgressed sequence, when said plant is crossed with any virus sensitive watermelon plant, it would not produce the exact combination of alleles as present in the deposit. Lastly, the specification states that “it was found that the triploid watermelon hybrid is not tolerant to WmCSV if only one parent is tolerant” (p. 34). Step (a) in claims 36 and 42 recites crossing a virus resistant watermelon plant with a virus sensitive plant to produce a hybrid plant (RR x rr = Rr). However, the Rr phenotype would not be “among the high virus tolerant”, because only one of its parents is tolerant. In step (b), the hybrid plant is backcrossed to a virus sensitive plant (Rr x rr = Rr, rr). The backcrossed progeny plants would not be “among the high virus tolerant”, because again, only one of its parents is tolerant. Applicant provides no guidance as to how the “high virus tolerant” plant can be selected in the crossing and backcrossing step, as the specification clearly indicates that both parents must have WmCSV tolerance.
Weighing all 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.
Applicant’s Traversals
Applicant traverses as set forth in the written description rejection above.
Response to Applicant’s Traversals
Applicant’s traversals are unpersuasive for the reasons set forth above. Accordingly, the rejection is maintained.
Claim Rejections - 35 USC § 102
9. Claims 36-39 and 42-48 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Assouline et al. (US Pub. No. 20170006791 (previously cited)).
This rejection is made based on the Office’s broadest reasonable interpretation that the claims are directed to a method of producing a watermelon seed having the WmCSV tolerance as shown in the deposited seed, and not to a method of producing the deposited seed, because the steps are generic to crossing any WmCSV tolerant diploid watermelon plant with any WmCSV sensitive diploid watermelon plant.
With regard to claim 36, Assouline teaches a method of producing a watermelon seed that is tolerant to WmCSV by (a) crossing a virus tolerant diploid watermelon plant with a virus sensitive diploid watermelon plant, and selecting for a virus tolerant hybrid seed/plant containing the sequences conferring virus tolerance when present homozygously; ([0088], [0126]-[0128]); (b) backcrossing the selected hybrid plant produced from said seed with the virus sensitive plant and selecting a virus tolerant backcrossed hybrid plant containing the sequence conferring virus resistance when present homozygously ([0133]-[0134]); (c) treating a diploid plant to produce a tetraploid plant [0248]; (d) pollinating the tetraploid plant with pollen from backcrossed hybrid diploid male parent plant ([0088], [0251]); (e) selecting a triploid seed containing the sequences conferring virus tolerance when present homozygously [0088]; and (f) planting said triploid seed to produce triploid water plant that is virus tolerance [0096]. Because the introgressed sequence of Assouline is from the same source C. colocynthis and is also present on chromosome 6 [0051], and given the very large region (nucleotides 1 - 2,255,000) recited in the claims, the introgressed sequence of Assouline for conferring WmCSV resistance is encompassed by Applicant’s introgressed sequence and is “similar in position, structure and evolutionary origin from said tetraploid watermelon plant and said diploid watermelon plant” as commensurate in scope with the claims.
With regard to claim 37, Assouline teaches multiple backcrossings [0204].
With regard to claims 38 and 39, Assouline teaches the hybrid can be utilized as a male or a female parent [0106].
With regard to claims 42-45, Assouline teaches a method for producing a watermelon fruit as discussed above for claims 36-39 (see also [0109], claim 14).
With regard to claim 46, even though Assouline is silent with regard to the weight of 1,000 seeds from a triploid hybrid watermelon plant, it would appear that the 1,000 seeds of Assouline are within the claimed 30-70g, because “seedless” fruits from a triploid plant are not per se seedless but produce sterile seeds [0043] or seed coats.
With regard to claim 47, because the claimed method steps are identical to those taught by Assouline, and identical plants are utilized, the “less than 4” or “5” flesh firmness of Assouline is the same as Applicant’s “pressure of 20-27 ounces measured by Penetrometer Fruit Pressure Tester Mod. FT 011 (0-11 lbs.), IRC when using an 8mm tip on the penetrometer” ([0023], [0165]).
With regard to claim 48, Assouline teaches a seedless watermelon fruit and tiger rind color with distinctive stripes on lighter rind color, which appears to be the same as Applicant’s claimed rind color and as shown in Applicant’s Fig. 3 ([0204], [0247]).
Accordingly, the claimed invention is anticipated by the prior art.
Applicant’s Traversals
Applicant traverses primarily the following. (1) Claims 36 and 42 have been amended. (2) Claim 46 is amended such that the triploid watermelon fruit that is grown on the triploid watermelon plant from the seeds sown have a weight of 1,000 seeds between 30-70 g. (3) Claim 47 is amended to indicate that the 20-27 ounces firmness is measured by Penetrometer Fruit Pressure Tester Mod. Ft 011 (0-11 lbs.), IRC. (4) The recitation of “gray striped rind” has been deleted from claim 48.
Response to Applicant’s Traversals
Applicant’s traversals are unpersuasive for the following reasons. With regard to traversal (1), because the steps are generic to crossing any WmCSV tolerant diploid watermelon plant with any WmCSV sensitive diploid watermelon plant, for prior art purposes, the Office interprets claim 36 to be directed to a method of producing a watermelon seed having the WmCSV tolerance as shown in the deposited seed. Claim 42 does not require the deposit or the WmCSV tolerance. With regard to traversal (2), amended claim 46 does not exclude the seeds produced by the triploid watermelon fruit. As indicated in the 35 USC 112(b) rejection above, it is unclear what seeds Applicant is referring to, because a triploid plant produces seedless fruits. Alternatively, since the plants used to produce the triploid seeds of Applicant are identical to those of Assouline, the triploid seeds would inherently have a weight of 30-70g for 1,000 seeds. With regard to traversal (3), claim 47 recites the flesh firmness and does not recite the step of “measuring the fruit firmness using Penetrometer Fruit Pressure Tester Mod. Ft 011 (0-11 lbs.), IRC.” Because the method steps and plants of Assouline are identical those claimed, the fruit of Assouline inherently has the same flesh firmness as that of claim 47. Assouline is not required to specify the exact range of fruit firmness as claimed. Assouline only has to teach one value within Applicant’s claimed range. Since the Patent Office does not have the facilities to examine and compare firmness of Applicant’s fruit with that of the prior art, the burden of proof is upon the Applicant to show an unobvious distinction between the claimed “pressure of 20-27 ounces measured by Penetrometer Fruit Pressure Tester Mod. Ft 011 (0-11 lbs.), IRC.” and the “less than 4” or “5” fruit firmness of the prior art. See In re Best, 562F.2d 1252, 195 USPQ 430 (CCPA 1977). With regard to traversal (5), Assouline teaches a seedless watermelon fruit and tiger rind color with distinctive stripes on lighter rind color, which appears to be the same as Applicant’s claimed rind color and as shown in Applicant’s Fig. 3. Because the claims are generic to producing a triploid watermelon plant, no variety name(s) is recited, “dark” is a subjective term, and the drawings in both Applicant’s disclosure and Assouline are in black and white, Applicant’s claimed rind color is the same as that of the prior art. Accordingly, the rejection is maintained.
Conclusion
10. No claim is allowed.
11. 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.
12. 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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/PHUONG T BUI/Primary Examiner, Art Unit 1663
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