DETAILED ACTION
Claims 1-12, 14-17, 19-20, and 24-30 are pending.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The rejection of claim 6 under 35 U.S.C. 112(d) or 35 U.S.C. 112(pre-AIA ), fourth paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends is withdrawn in light of Applicant’s amendment to the claims.
The rejection of claims 1-30 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Suelmann (2020, US 10,716,272) is withdrawn in light of Applicant’s amendment to the specification.
The rejection of claims 1-28 and 30 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mazereeuw et al (2010, US 7,834,251) is withdrawn in light of Applicant’s amendment to the specification.
The rejection of claims 1-11, 14-18, 20, 23, and 25-28 under 35 U.S.C. 101 as claiming the same invention as that of claims 1-27 of prior U.S. Patent No. 10,716,272, or, in the alternative, on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 10,716,272 is withdrawn in light of Applicant’s amendment to the specification.
The rejection of claims 13, 18, and 21-23 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35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement is withdrawn in light of Applicant’s cancellation of the claims.
Claim Objections
Claim 12 is objected to because of the following informalities:
Claim 12 is objected to because “producing” in line 1 should be replaced with --introducing--. “producing a trait into the plant” makes no sense grammatically.
Applicant is advised that should claim 4 be found allowable, claim 10 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Both claims are drawn to a cucumber plant having all the physiological and morphological characteristics of NUN 53062 CUP.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the second paragraph of 35 U.S.C. 112:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4-5, 10, and 30 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 that the inventor or a joint inventor, or for pre-AIA the applicant, regards as the invention. Dependent claims are included in all rejections.
Due to Applicant’s amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 23 July 2025. Applicant’s arguments filed 23 October 2025 have been fully considered but they are not persuasive.
Claims 4-5, 10, and 30 are indefinite in their recitation of “all the physiological and morphological characteristics of cucumber variety NUN 53062 CUP”. The specification provides the following definition (¶62-63):
[0062] A plant having "all the physiological and morphological characteristics" of a referred-to-plant means a plant showing the physiological and morphological characteristics of the referred-to-plant when grown under the same environmental conditions, preferably in the same experiment; the referred-to-plant can be a plant from which it was derived, e.g., the progenitor plant, the parent, the recurrent parent, the plant used for tissue- or cell culture, etc. A physiological or morphological characteristic can be a numerical characteristic or a non- numerical characteristic. In one aspect, a plant has "all but one, two or three of the physiological and morphological characteristics" of a referred-to-plant, or "all the physiological and morphological characteristics" of Tables 1-2 or "all or all but one, two or three of the physiological and morphological characteristics" of Tables 1-2.
[0063] The physiological and/or morphological characteristics mentioned above are commonly evaluated at significance levels of 1%, 5% or 10% if they are numerical, or for having an identical degree (or type) if not numerical, measured under the same environmental conditions. For example, a progeny plant or a Single Locus Converted plant or a mutated plant of variety NUN 53062 CUP, may have one or more (or all) of the essential physiological and/or morphological characteristics of said variety listed in Tables 1-2, as determined at the 5% significance level (i.e., p < 0.05), when grown under the same environmental conditions.
Because of this definition, it is not clear if a plant with “all the physiological and morphological characteristics of cucumber variety NUN 53062 CUP” in claims 4-5 and 10 is actually required to have all the physiological and morphological characteristics of NUN 53062 CUP or if it merely must have all but one, two or three of the physiological and morphological characteristics of NUN 53062 CUP or only all the physiological and morphological characteristics of Tables 1-2 or all but one, two or three of the physiological and morphological characteristics of Tables 1-2. This lack of definiteness also applies to claims to a plant with another trait or locus conversion or transgene and “otherwise all the physiological and morphological characteristics of cucumber variety NUN 53062 CUP” (claims 13, 18, 21 and 23).
It is noted that the physiological and morphological characteristics in Tables 1-2 are only a subset of all the physiological and morphological characteristics of cucumber variety NUN 53062 CUP and the specification only requires that they be evaluated at a 10% significance level.
For purposes of examination, the phrase was treated as meaning the broadest of the definitions above, that is, all but one, two or three of the physiological and morphological characteristics" of Tables 1-2 at only a 10% significance level. Such treatment does not relieve Applicant of the responsibility to respond to this rejection.
Response to Arguments
Applicant urges that the claims have been amended (response pg 7).
This is not found persuasive because no amendment was made to address the indefiniteness of “all the physiological and morphological characteristics of cucumber variety NUN 53062 CUP” detailed in the rejection.
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Claim 30 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 written description requirement. The claim(s) contains subject matter that 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.
The rejection is repeated for the reasons of record as set forth in the Office action mailed 23 July 2025. Applicant’s arguments filed 23 October 2025 have been fully considered but they are not persuasive.
C. Mutated cucumber plants are not described
Claim 30 is drawn to a cucumber plant produced by mutating a target gene by targeted gene editing in a plant of NUN 53062 CUP.
The claim places no limits on the number of mutated traits in the claimed plant. The claim thus reads on a cucumber plant with any number of differences in physiological and morphological characteristics and genetics compared to NUN 53062 CUP.
The specification describes no structural features that distinguish plants of cucumber variety NUN 53062 CUP comprising any number of mutated traits or differences in physiological and morphological characteristics and/or genetics from other cucumber plants.
Hence, Applicant has not, in fact, described mutated NUN 53062 CUP plants over the full scope of the claims, and the specification fails to provide an adequate written description of the claimed invention.
Therefore, given the lack of written description in the specification with regard to the structural and functional characteristics of the claimed plants, Applicant does not appear to have been in possession of the claimed genus at the time this application was filed.
Response to Arguments
Applicant urges that 30 is amended to recite that the modified cucumber plant contains the desired trait and otherwise has all the physiological and morphological characteristics of NUN 53062 CUP (response pg 8).
This is not found persuasive because there is no limit on the number of desired traits in the plant, as long as the other physiological and morphological characteristics of NUN 53062 CUP are present. The claim encompasses plants that differ from NUN 53062 CUP in dozens or hundreds of traits.
The rejection detailed in part A of the previous Office action was overcome by Applicant’s amendment to the specification. The rejection detailed in part B of the previous Office action was overcome by Applicant’s amendment to the claims
Claims 1-3, 7-9, 11, 14-17, 19-20, and 24-29 are allowed. Claim 12 would be allowable if rewritten or amended to overcome the objection set forth in this Office action.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anne R. Kubelik, Ph.D., whose telephone number is (571) 272-0801. The examiner can normally be reached Monday through Friday, 9:00 am - 5:00 pm Eastern.
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/Anne Kubelik/Primary Examiner, Art Unit 1663