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 .
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant’s response filed 02/18/2026 has been entered. Claims 1-2, 4-6, 10, 12-13, 21 and 26 are amended. Claims 1-2, 4-6, 10, 12-21 and 26 are pending.
Claims 5-6, previously withdrawn as being directed to the non-elected invention, have been rejoined with the elected claims in view of Applicant’s amendment to the claims. Therefore, claims 1-2, 4-6, 10, 12-21 and 26 are examined.
Claim Rejections - 35 USC § 112
Claims 1-2, 4-6, 10, and 12-21 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.
The amended claims are rejected because of the recitation of “an amino acid sequence of SEQ ID NO: 3” in claims 1 and 21, “an amino acid sequence of SEQ ID NO: 6” in claim 5, “ an amino acid sequence of SEQ ID NO: 9”, “ an amino acid sequence of SEQ ID NO: 12”, “ an amino acid sequence of SEQ ID NO: 15”, “ an amino acid sequence of SEQ ID NO: 18”, “an amino acid sequence of SEQ ID NO: 21”, or “an amino acid sequence of SEQ ID NO: 24” in claim 12. The recitation of “an amino acid sequence” reads on a genus of fragments of any size or length of SEQ ID NO: 3, 6, 9, 12 15, 18, 21 and 24. The specification fails to describe a single species of “an amino acid sequence” of SEQ ID NO: 3, 6, 9, 12, 15, 18, 21 and 24 having PPO activity. Therefore, the specification fails to describe an avocado plant cell, plant, plant part or fruits comprising said avocado plant cell comprising one or more genome edited, loss of function mutations in a Polyphenol Oxidase A (PPO-A) gene resulting in reduced polyphenol oxidase activity in the avocado plant cell compared to an avocado plant cell without the one or more genome edited, loss of function mutations, wherein the PPO-A gene encodes an amino acid sequence of SEQ ID NO: 3, 6, 9, 12, 15, 18, 21 or 24 as broadly claimed.
This rejection can be obviated by amending the claims to replace “an amino acid sequence of SEQ ID NO: ” with ---the amino acid sequence of SEQ ID NO:---.
Claim Rejections - 35 USC § 112
Claim 26 is 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.
Claim 26 is indefinite for lacking a correlation between the preamble and the last method step. The claim is drawn to a method of making an avocado plant cell, and the last method step is “regenerating an avocado plant”. Clarification is required to more clearly define the metes and bounds of the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 18-20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th 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. Claim 18 depends from claim 17, drawn to an avocado plant, plant part or fruit propagated from the avocado plant of claim 15 comprising the avocado plant cell of claim 1. Claim 1 recites “genome edited, loss of function” in the PPO gene encoding an amino acid sequence of SEQ ID NO: 3. Therefore, the avocado plant, plant part or fruit that is free of exogenous DNA as recited in claim 18, or having polyphenol oxidase activity that is reduced by at least 40% or 80%” as recited in claims 19-20, do not further limit parent claim 17. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDINA AHMED IBRAHIM whose telephone number is (571)272-0797. The examiner can normally be reached Monday-Friday, 9:00 - 6:00.
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MEDINA AHMED. IBRAHIM
Primary Examiner
Art Unit 1662
/MEDINA A IBRAHIM/ Primary Examiner, Art Unit 1662
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