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 .
Election / Restrictions
Newly submitted claims 54-55 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Newly submitted claims 54-55 are drawn to methods of producing watermelon plants, their progenies, or fruit. Restriction has been made to product claims drawn to triploid hybrid watermelon plants (i.e. Inventive Group I, see Applicant remarks mailed 5 May 2025). Newly submitted claims are distinct from the elected inventive group I.
Since Applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 54-55 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Status
Claims 1-2, 5-9, 12-17, 51 & 56-58 are under examination on the merits.
Claims 3-4, 10-11, 47 & 49-50 were previously cancelled.
Claims 18-46, 48 & 52-55 are withdrawn from examination.
Priority
Claims 1-2, 5-9, 12-17, 51 & 56-58 receive the U.S. effective filing date of 09/03/2020.
Previous objection to the specification is withdrawn in view of Applicant’s provision of sequence compliant files.
Previous objection to claims 13-14 & 17 is withdrawn in view of Applicant’s amendments to the claims.
Previous rejection of claims 1-2, 5-9, 12, 14, 16-17 & 51 on the ground of nonstatutory double patenting as being unpatentable over U.S. Patent No. 11102944B2 is withdrawn.
Previous 112b rejection of claims 1-2, 5-9, 12-14, 16-17 & 51 for inclusion of both a broad and narrow range regarding flesh color is withdrawn in view of Applicant’s amendment to the claims.
Previous 112b rejection of claim 5 for inclusion of both a broad and narrow range regarding fruit number is withdrawn in view of Applicant’s amendment to the claim.
Previous statutory type (35 U.S.C. 101) double patenting rejection of claim 13 is withdrawn in view of Applicant’s amendment to the claim.
Claim Rejections - Nonstatutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 5-9, 12-17, 51 & 56-58 are rejected on the ground of nonstatutory double patenting as being unpatentable over U.S. Patent No. 11102944B2.
Due to Applicant's amendment of the claims, the rejection is modified from that set forth in the Office action mailed 21 Aug 2025, as previously applied to claims 1-2, 5-9, 12, 14, 16-17 & 51. Applicant's arguments filed 18 Feb 2026 have been fully considered but they are not persuasive.
Claims of Applicant’s prior US11102944B2 patent are drawn to specific cultivars of seedless triploid watermelon of specific phenotype, with a genetic locus being selected or integrated into said germplasm using primer sequences SEQ ID NO.1 & 2, which are identical to the SEQ ID NO.1 & 2 of the instant application [See col.25 of issued patent and p.6, par.1 of instant application]. The loci and phenotypes described are inherent to the previously named genotypes/cultivars. The cultivars recited in US11102944B2 are resistant to powdery mildew (PM) due to the inherent properties of the identified locus, which confers disease resistance.
The inherent qualities of the disease resistance locus carried by the previously described cultivars is acknowledged by Applicant in the specification of the instant application. In their embodiments they describe use of male parents selected using markers for the PM resistance locus, and subsequent production of PM-tolerant triploid hybrids [p.42, par.3]. They go on to describe the inherent PM resistance function of the selected locus stating that it originates from the same source material [p.53, par.2-3]. This is the same disease-resistance locus of their previously issued patent US11102944B2, contributed by germplasm PI 482312, disclosed in the specification.
Similarly, the other phenotypic characteristics limited to in claims are inherent and described by the cultivars claimed in the previously issued patent.
The cultivars of the issued patent are species of the instant application claims, of which the parental male diploid lines are derived from PI482312 and triploid hybrids are resistant to PM1 & PM2 [col.10, ¶1] with an inherent total soluble solids range of 10-14% [col.8, l.58-60], inherently red fruit flesh [col.8, l.37-44], inherent flesh firmness of ‘60-80’ [col.8, l.45-47], inherent 2-3 fruit per plant [col.8, l.34-36], inherent vigor of ‘50-80’ [col.8, l.12-14], inherent fruit setting of ‘20-50’ [col.8, l.18-19], inherent rind crack of ‘10-30’ [col.8, l.48-51], and inherently round or oval fruit [col.8, l.61-65] weighing 2-10 kg [col.9, l.4-8]. The patent specification includes characterization of powdery mildew resistance using the Tetteh scale, wherein ‘resistant’ plants are described with ratings < 3.5 on the Tetteh scale [col.9, l.9-19]. Progeny of such varieties are also described [col.9, l.28-30].
As such, all claims of the instant application are clearly inherent to and encompassing ranges of phenotypic measures previously described by Applicant in their issued patent for PM resistant watermelon cultivars, US11006594B2. The PM resistant watermelon cultivars claimed in the issued patent are therefore a species of the genus of general triploid hybrid watermelon plants having the same inherent phenotypic characteristics which is currently being claimed in the instant application. The species of the previously issued patent therefore anticipate the larger genus of the instant application, which appears to be a general restatement of previously patented watermelon varieties.
Because of this, claims 1-2, 5-9, 12-17, 51 & 56-58 are rejected.
Response to Arguments
Applicant urges that the previous 101 rejection of claims on the ground of nonstatutory double patenting is improper due to filing of a terminal disclaimer [Remarks, p.12, ¶3, l.3-4]. Applicant additionally argues that claim amendments render the previous rejection moot due to alteration of the scope of the claims [Remarks, p.12, ¶3, l.7-8].
Review of the record shows no terminal disclaimer has been filed. As such, Applicant is found to be non-responsive to the previous nonstatutory double patenting rejection, which is maintained.
Further argument that claim amendments render previous rejection moot are also unconvincing, as amended claims merely recite specific phenotypic characteristics which are inherent to material previously patented, as outlined in the previous rejection.
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 35 U.S.C. 112 (pre-AIA ), second paragraph:
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 1-2, 5-9, 12-17, 51 & 56-58 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.
Due to Applicant's amendment of the claims, the rejection is modified from that set forth in the Office action mailed 21 Aug 2025, as previously applied to claims 1-2, 5-9, 12-14, 16-17 & 51. Applicant's arguments filed 18 Feb 2026 have been fully considered but they are not persuasive.
Claims 56 & 57 incorporate an external reference. The claims describe phenotypic measurements as defined by the reference “Tetteh AY, Wehner TC, Davis AR, 2010. "Identifying resistance to powdery mildew race 2W in the USDA" - ARS watermelon germplasm collection. Crop Sci. 50: 933-393”.
Claims of are to be as complete as possible without incorporating essential details by reference. The phenotypic measurement of the disease resistance trait is essential material because one would need to know this rating to understand the scope of the claims. Because the values referenced in the claims rely on information described only in an external reference (i.e. an external publication), this is an improper incorporation by reference.
Furthermore, claims recite a Tetteh scale rating of ‘3.5’ which is not a rating provided by the Tetteh scale. Referencing Applicant’s cited publication, the Tetteh scale is a discrete classification system of scores 0, 1, 2, 3, 4, 5, 6, 7, 8, or 9 with descriptions for each category. A Tetteh score of 3 is “chlorotic lesions covering 20% of leaves and necrotic spots covering less than 10% of stem” and a Tetteh score of 4 is “yellow chlorotic lesions on leaves turned to brown necrotic areas and first sign of active mycelium sporulation on leaves or stem” [Tetteh, p.935, col.1, par.1; Crop Sci. 50: 933-393]. There is no definition of a 3.5 score, and it is unclear what characteristics would distinguish a rating 3.5 because it does not conform to one of the categories delineated by the Tetteh scale.
Claims 1-2, 5-9, 12-14, 16-17, 51 & 56-58 are drawn to, and/or depend from, phenotype or trait descriptions utilizing subjective reference scales lacking objective reference or check varieties (vigor, fruit shape), which render them indefinite. Several of these (PM resistance, flesh firmness, rind crack, soluble solids) are also affected by environmental conditions. These metrics are not defined by their respective claims, the specification does not provide a definite standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. These metrics include:
Disease resistance; descriptions of disease resistance in claims 1, 14-15 & 56-58 are indefinite because (a) they refer to a scale not adequately described in the specification. The description of disease resistance in the specification does not provide an objective means to determine the metes and bounds of the claim limits drawn to disease resistance. Where Applicant mentions the scale used [Specification, p.17], they describe the numerical values of the Tetteh that uses discrete categories of 0, 1, 2, 3, 4, 5, 6, 7, 8, 9. It is unclear what a rating of ‘3.5’ represents because it is not one of the categorical ratings described by the Tetteh scale [see above, p.9, ¶3].
Further, PM race 1 tolerance is affected by environmental conditions not fully described by Applicant. Davis et al. [2007, J. Amer. Soc. Hort. Sci. 132:790-795] scored the powdery mildew race 1 resistance of same watermelon accessions [Table 1] and rescored some of them again in another test [Table 2]. Each test identified different accession as having resistance [pg. 793, left column, paragraph 2, to right column, paragraph 2]; only two accessions, PI388770 and PI386015, exhibited total resistance in both experiments [pg. 793, right column, paragraph 2]. However, a different test found that both these accessions showed moderate resistance at best [Ben-Naim et al., 2015, Phytopath.105:1446-1457; see Table 1]. Thus, environmental conditions affect powdery mildew race 1 tolerance and the specific environmental condition under which a particular rating is observed is critical information. One skilled in the art and reading the patent disclosure would not have complete information for determining the metes and bounds of these claims or how to avoid infringement.
Flesh firmness; flesh firmness is affected by irrigation [Bang et al., 2004, J. Hort. Sci. & Biotechnol. 79:885-890; see pg. 888, left column, paragraph 4, Figure 1]. Irrigation parameters under which fruit is to be assessed is not addressed. Thus, in absence of defining this critical covariate and/or a specific control variety for comparison, the ratings of ‘flesh firmness’ are relative that renders the claim indefinite. The specification does not provide a standard for ascertaining the requisite degree when considering the impact of management practices (i.e. irrigation), and one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the invention. Because the firmness rating would be dependent on watering practice, it is unclear to the reader under what conditions measurements must be recorded to characterize their own material or how to avoid infringement.
Vigor; similarly, vigor rating appears in claim 6 as a subjective range of ’50-80’. Referring to the specification for clarity, Applicant discusses vigor as being related to several measurable plant characteristics and acknowledges it is strongly influenced by environmental conditions. They do not use any of the quantitative measures they reference or outline. They go on to describe their subjective rating scale of 10-90 with no description of relevant check or control varieties to be included to allow objective comparison of germplasm or cultivars across variable environments. One skilled in the art of plant breeding would have no objective way to replicate such vigor measurements for comparison to the values claimed by Applicant, or by which to understand if their material was encompassed by the subjective vigor scale of ’10-90’ used and/or fell within the “vigor of between 50 and 80” as limited to in claim 6. At the bare minimum, a plant breeder would need to have a reference check variety which is readily obtainable that could be assessed in a similar environment to determine if one’s material had equivalent vigor ratings, or potentially could infringe, Applicant’s germplasm.
Rind crack; claim 8 limits to watermelons with a “rind crack of between 10 to 30” and Applicant defines this in the specification as a 10-90 scale, where the only specific description of numeric values provided is that a rind crack of ‘10’ is a melon with no cracking and ‘90’ is a melon whose rind cracks in the field. Once again there is no indication of the relative scaling of units in Applicant’s subjective measurement scale, no description of intermediate phenotypic values, and no indication of relevant check varieties that may help account for normalizing the effects of environmental factors between assessment locations. The specification does not indicate under what conditions a fruit has “no tendency to crack at all” or “is cracking by itself in the field”.
Further, rind crack is affected by fertilizer treatment [Sundstrom et al., 1983, J. Amer. Soc. Hort. Sci. 108:879-881; see Table 2]. One skilled in the art of plant breeding would have no objective way to replicate comparative conditions for such rind crack measurements or by which to understand if their material was encompassed by the arbitrary rind crack scale of ’10-90’ used by Applicant or fell within the “rind crack of between 10 to 30” as limited to in claim 8.
Fruit shape; The term “an essentially round/oval” in claims 9 & 51 is a relative term which renders the claim indefinite. The term “an essentially round/oval” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. What constitutes “an essentially round/oval” watermelon is so general as to be uninformative in what differentiates a round, an oval, or a ‘round/oval’ fruit from a blocky, cylindrical, oblong, flattened or other more technical characterization of fruit shape using quantitative descriptors of fruit shape. Broadest reasonable interpretation of this claim as currently written would potentially include any melon fruit. This prevents one from understanding the metes and bounds of the claim, and whether their particular melon fell within Applicant’s intended “essentially round/oval” limitation.
Total soluble solids; Claim 1 is indefinite in its recitation of “total soluble solid (TSS) of at least 10%” in lines 4-5. Soluble solid content (sugars) is affected by irrigation [Bang et al., 2004, J. Hort. Sci. & Biotechnol. 79:885-890; see pg. 888, left column, paragraph 3, Figure 1], soil type grown in and part of the fruit tested [Kano, 1991, Environ. Control in Biol. 4:159-166; see Figures 7 and 8], and day-time temperature [Kano, 2004, J. Hort. Sci. & Biotechnol. 79:142-145; see Figure 6]. Thus, TSS “in the range of 10% to 14%” is a relative phrase that renders the claim indefinite; it is relative to the environmental conditions the plant was grown in. The phrase is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree considering numerous environmental factors known to influence the trait, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention because one would not be able to ascertain the appropriate comparison parameters.
Because of these reasons, the claims to watermelon cultivar(s) by phenotypic measures and traits provided as limitations is indefinite. One would not have sufficient information to understand the metes and bounds of the claims, and their scope would vary depending on both environmental conditions and/or the subjective nature of the phenotypic values recited as limitations.
Claim 2 is indefinite in its recitation of “genetic background of a wild type watermelon PI482312”. It is not clear if what this means is that the claimed triploid watermelon has PI482312 as an ancestor, if the claimed triploid watermelon shares an ancestor with PI482312, or if the claimed triploid watermelon shares a gene, haplotype, or other stretch of DNA with PI482312.
Applicant has not clearly outlined to the reader what defines a plant ‘carrying a genetic background’ of PI482312. Because of this, claim 2 is rejected.
Response to Arguments
Applicant urges that 112b rejections drawn to indefiniteness surrounding reported phenotypes is improper because one of skill in the art is a plant breeder who would refer to UPOV guidelines regarding distinctness, uniformity and stability of a cultivar upon reading the patent claims [Remarks, p.13, ¶1-2].
Applicant argues that UPOV (a) guidance on uniformity aspects of open-pollinated cultivars is informative to their material [p.13, ¶3], (b) lack of uniformity due to inherent genetic variation (i.e. diversity or heterozygosity in open-pollinated cultivars) remedies issues raised [p.13, ¶4], and (c) ‘lack of observation of a characteristic’ should not be detrimental to the claiming of the subject matter [p.13, ¶4].
Further Applicant argues that UPOV outlines (d) material should be tested in appropriate environments for expression of measured characteristics [p.13, ¶6] and (e) characteristics measured are compulsory [p.13, ¶7].
Yet further, Applicant argues that UPOV provides guidance with respect to environmental conditions, (f) that differences may be so clear as to not warrant more than one observation in cases where the environment has little to no impact on expression of a phenotypic trait [p.14, ¶5].
Argument have been considered but are unconvincing for the following reasons:
With respect to (a) & (b); plant breeders assess uniformity of germplasm when determining its suitability to be designated a cultivar because a cultivar need be uniform enough for one to understand or distinguish it from other plant varieties. Some cultivars are of a ‘cross-pollinated variety’, such as maize or rye or sunflowers. In such cases, if the variety is not a genetically uniform hybrid comprised of a pedigree of known genetically inbred (i.e. homozygous) parent lines, but an open-pollinated (OP) variety, then there is typically a level of genetic diversity (i.e. heterozygosity) in such ‘OP cultivars’.
Uniformity guidelines are generally provided to inform plant breeders how much heterozygosity or genetic variability is permitted within a proposed cultivar – that is, it is meant to inform genetic uniformity in typically open-pollinated or synthetic varieties. It is not intended to negate the need for understanding or qualifying the impact of environment on the response of a cultivar or variation in trait response due to environmental effects. Thus, Distinctness, Uniformity & Stability (DUS) trials require both replication to account for impact of environment on quantitative traits, and reference check varieties to provide an objective benchmark for other breeders to compare to. As such, an argument that uniformity guidelines directed to heterozygous cultivars (i.e. guidance on genetic variation) makes Applicant’s claim language definite (i.e. addresses issues of environmental variation & lack of appropriate checks/controls) is not persuasive.
Regarding (c) – (e); rejections are not based on Applicant’s lack of providing any one specific phenotypic trait or characteristic, and rejections do not assert that Applicant has omitted any particular trait or plant characteristic for watermelon, of which there are many potential traits or characteristics a plant breeder could measure.
Rejection of claims is because the traits which Applicant chose to include as recited claim limitations are missing critical parameters for their objective classification. This is in view of the known influence of environmental factors on Applicant’s recited traits, which are recognized by the research community and cited in prior art [see previous Office action mailed 21 Aug 2025; p.10, ¶2, p.11, ¶2, p.13, ¶2, p.14,¶2]. Once again, Applicant’s arguments are pointing to external guidance regarding the number of phenotypic traits included rather than addressing the lack of informative definition of the objective conditions the included traits are to be measured. Such parameters are critical to others in determining if their particular watermelon plants might infringe Applicant, based phenotypic measurements.
Regarding (f); plant breeders recognize there are both qualitative traits and quantitative traits which need be characterized in new plant germplasm or cultivars. Some traits have very little interaction with the environment. Applicant’s argument appears to be applying guidance from UPOV for qualitative traits with little environmental impact (i.e. red roses don’t change color year to year) to traits which are clearly environmentally influenced in watermelon germplasm, as cited in the previous rejection. Arguments directed to trait categories of fundamentally different effects (i.e. no environmental influence) from those claimed by Applicant (i.e. those with distinct environmental factors influencing their values) are not persuasive.
Applicant is advised to amend or remove claims which do not provide unambiguous, publicly available check varieties from within the trials in which Applicant’s recited trait values are reported for comparison, and, amend or remove those that do not provide sufficient comparative information on environmental factors known to influence said phenotypes. Both are critical to a reader’s objective assessment of metes and bounds of claim limitations, and ability to objectively compare alternate germplasm to that claimed by Applicant.
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 1-2, 5-9, 12-17, 51 & 56-58 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 requirements. The claims contain subject matter 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 that set forth in the Office action mailed 21 Aug 2025, as previously applied to claims 1-2, 5-9, 12-14, 16-17 & 51. Applicant's arguments filed 18 Feb 2026 have been fully considered but they are not persuasive.
Newly added claim 58 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 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.
New matter has been added to the amended claims.
Claim 58 includes limitations of hybrids ‘devoid of both parents being tolerant to PM’. The specific genetic state of the parental lines as non-tolerant to PM is recited as a limitation, with their hybrid progeny also being limited as tolerant to PM (i.e. meeting limitations of claim 57). Review of the specification does not indicate any reference or description to embodiments where both parents are specifically ‘devoid’ of tolerance. Applicant describes crosses and hybrids wherein at least one parent carries PM resistance [Specification, p.5-6].
Because the newly added claim 58 introduces matter not originally presented by the instant Application, the claim is rejected.
Regarding claims 1-2, 5-9, 12-17, 51 & 56-57:
A. The genes that confer powdery mildew tolerance are not described.
The claims require that the watermelon plant have a resistance of less than about 3.5 on the Tetteh scale to PM race 1 and powdery mildew race 2. Further, race 1 tolerance is affected by environmental conditions. Davis et al. [2007, J. Amer. Soc. Hort. Sci. 132:790-795] scored the powdery mildew race 1 resistance of same watermelon accessions [Table 1] and rescored some of them again in another test [Table 2]. Each test identified different accession as having resistance [pg. 793, left column, paragraph 2, to right column, paragraph 2]; only two accessions, PI388770 and PI386015, exhibited total resistance in both experiments [pg. 793, right column, paragraph 2]. However, a different test found that both these accessions showed moderate resistance at best [Ben-Naim et al., 2015, Phytopath.105:1446-1457; see Table 1].
Thus, a description of the structures (i.e. genes) that confer that tolerance must be provided. After the filing of the instant application, it was found that there are at least 4 genes that contribute to powdery mildew race 1 resistance in watermelon [Ben-Naim et al., pg. 1453, right column, paragraph 2); only three are present in PI482312, which as used to generate all the watermelon lines mentioned in the specification. Thus, the species in the specification do not represent the full scope of powdery mildew race 1 resistance. The locus identified by the primers SEQ ID NO:1 and 2 would only identify one of these genes. As the 480 base long DNA fragment they identify is too short to span a resistance gene, the specification does not describe any of these specific resistance genes.
The claims also require the plant have tolerance to powdery mildew race 2. The specification provides no description of the structures (genes) that confer that tolerance.
B. The genes that confer the claimed total soluble solid contents are not described
The claims require the plants have total soluble solid in the range of at least 10%. However, soluble solid content (sugars) is affected by environmental conditions, including irrigation [Bang et al., 2004, J. Hort. Sci. & Biotechnol. 79:885-890; see pg. 888, left column, paragraph 3, Figure 1], soil type grown in and part of the fruit tested [Kano, 1991, Environ. Control in Biol. 4:159-166; see Figures 7 and 8], and day-time temperature [Kano, 2004, J. Hort. Sci. & Biotechnol. 79:142-145; see Figure 6].
Thus, as a given plant may produce total soluble solids within the claimed percentages under some growing conditions and not under others, a description of the structures (genes) that confer the claimed total soluble solid percentages must be provided. They are not.
C. The genes that confer the claimed flesh firmness are not described.
The claims require that the triploid watermelon plants have a flesh firmness within specific ranges. However, flesh firmness is affected by both the size of probed used to measure firmness [Tolla et al., US 2016/0029584, paragraph 12] and by environmental conditions, including irrigation [Bang et al., 2004, J. Hort. Sci. & Biotechnol. 79:885-890; see pg. 888, left column, paragraph 4, Figure 1].
Thus, as a given plant may have a flesh firmness within the claimed range under some growing conditions and not under others and under some measurement protocols and not under others, a description of the structures (genes) that confer the claimed total soluble solid percentages must be provided. They are not.
D. The structural features of genetic background of PI482312 are not described.
Claim 2 requires that the triploid watermelon plant have a genetic background of PI482312. The specification does not describe the genes or other DNA that identifies a triploid watermelon plant as having PI482312 as an ancestor, as sharing an ancestor with PI482312, or as having gene or other stretch of DNA with PI482312.
The structural features that distinguish triploid watermelon plants with genetic background of PI482312 from other triploid watermelon plants are not described in the specification.
E. The structural features that confer the claimed number of fruit are not described.
Claim 5 requires that the triploid watermelon plant have 2-5 fruit per plant. However, fruit yield and fruit per plant are affected by environmental conditions, including mulch treatment [Farias-Larios et al., 1997, New Zealand J. Crop & Hort. Sci. 25:369-374; see Figure 2], light intensity, daylength and temperature [Buttrose et al., 1978, Ann. Bot. 42:599-608; see Table 3], in-row spacing [Motsenbocker et al., 2002, HorTechnol. 12:437-440; see Tables 1-2], fertilizer treatment [Sundstrom et al., 1983, J. Amer. Soc. Hort. Sci. 108:879-881; see Table 1]. Thus, as a given plant may produce the claimed number of fruits under some growing conditions and not under others, a description of the structures (genes) that confer the claimed number of fruits must be provided. They are not.
F. The structural features that confer the claimed vigor are not described.
Claim 6 requires that the triploid watermelon plant have vigor within a specified range. The specification indicates that plant vigor metrics include biomass production, leaf traits, and general plant volume. Plant size and leaf area characteristics are affected by environmental conditions; light intensity, daylength and temperature affected shoot length, a measure of plant size [Buttrose et al., 1978, Ann. Bot. 42:599-608; see Figure 1] and these and fruiting affected leaf width and leaf area [Buttrose et al., Figures 3-5]. Thus, as a given plant may have the claimed vigor under some growing conditions and not under others, a description of the structures (genes) that confer the claimed vigor must be provided. They are not.
G. The structural features that confer the claimed rind crack are not described.
Claim 3 requires that the triploid watermelon plant have rind crack within a specified range. However, rind cracking is affected by environmental conditions, including fertilizer treatment [Sundstrom et al., 1983, J. Amer. Soc. Hort. Sci. 108:879-881; see Table 2]. Thus, as a given plant may have the claimed rind crack under some growing conditions and not under others, a description of the structures (genes) that confer the claimed vigor must be provided. They are not.
H. The structural features that confer the claimed fruit regularity are not described.
Claim 3 requires that the triploid watermelon plant have fruit regularity within a specified range. The specification describes no genes that control that confer the claimed fruit regularity. The structural features (genes) that distinguish a plant with a fruit regularity in the claimed range from one not in the claimed range are not described.
I. The structural features that characterize a tolerance locus being linked to a genetic determinant obtainable from the genome of a wild watermelon plant having resistance to PM are not described.
Claim 2 requires that the triploid watermelon plant have tolerance locus being linked to a genetic determinant obtainable from the genome of a wild watermelon plant having resistance to PM. The specification describes no tolerance loci from any wild watermelon plant with resistance to PM. While the specification describes markers that identify a locus linked to a locus from PI482312 that confers PM tolerance, it does not describe the locus (gene) that confers tolerance. As the markers, SEQ ID NO:1 and 2 amplify a fragment of only 480 basepairs, they cannot amplify the entire PM tolerance gene.
Further, even if SEQ ID NO:1 and 2 did describe a PM tolerance gene, it would only be a single gene from a single wild watermelon. As discussed above, there are at least 4 genes that contribute to powdery mildew race 1 resistance in watermelon [Ben-Naim et al., pg. 1453, right column, paragraph 2]; only three are present in PI482312, which as used to generate all the watermelon lines mentioned in the specification.
Genes that contribute to resistance to powdery mildew race 2 or other yet unidentified races are not identified in the specification, and it is unknown in the art, even after filing, how many are involved in PMW2 resistance.
J. One of the limitations of claim 1 is drawn to total soluble solids, “of at least 10%”. Broadest reasonable interpretation of this would include watermelon germplasm having any TSS value greater than 10%.
Referring to the specification for disclosure of watermelon plants with fruit representing the total range of TSS from 10% to the upper limit of 100%, there is not adequate support for the claim. The highest TSS value reported by Applicant is 13.5-14% [p.8, par.2]. It is clear that the germplasm and triploid hybrid melons pertinent to the claimed invention do not include material with TSS values greater than 14%, and as such, Applicant is not in possession of inventive material able to claim TSS values greater than 14%.
For these reasons, one of skill in the art would not recognize that Applicant was in possession of the necessary common attributes or features of the entire genus in view of the limited disclosed species. Since the disclosure fails to describe the common attributes that identify members of the genus, and because the genus is highly variant, ‘NCIMB 42044’, ‘NCIMB42172’, ‘NCIMB 42359’, ‘NCIMB 42360’ alone is insufficient to describe the claimed genus.
Claims 1-2, 5-9, 12-14, 16-17 & 51 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for producing a triploid plant by (i) introgressing the PM trait from PI-482312 into a recurrent diploid parent having the desired quality traits; and then (ii) crossing this current parent to a female tetraploid to generate a seedless triploid, does not reasonably provide enablement for recreating the specifically recited cultivars or their distinct phenotypes. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Due to Applicant' s amendment of the claims, the rejection is modified from that set forth in the Office action mailed 21 Aug 2025, as previously applied to claims 1-2, 5-9, 12-14, 16-17 & 51. Applicant's arguments filed 18 Feb 2026 have been fully considered but they are not persuasive.
The only species within the claimed genus described in the specification is
‘NCIMB 42044’, ‘NCIMB42172’, ‘NCIMB 42359’, or ‘NCIMB 42360’. These represent very specific cultivars from a singular breeding program with distinct germplasm.
One of skill in the art would not be enabled to practice the full scope of the invention in view of the limited disclosed species and the limited description of the genetic structures and/or environmental factors impacting the claimed phenotype(s). Since the disclosure fails to describe the common attributes that identify members of the genus, and because the genus is highly variant, providing ‘NCIMB 42044’, ‘NCIMB42172’, ‘NCIMB 42359’, and/or ‘NCIMB 42360’ alone is insufficient to fully describe the claimed genus.
Hence, Applicant has not, in fact, described triploid watermelon plant(s) within the full scope of the claims, and the specification fails to provide an adequate written description of the claimed invention commensurate with such claims. Therefore, given the lack of written description in the specification with regard to the structural and functional characteristics required to arrive at the claimed plants, Applicant has not enabled the full scope of the claimed genus at the time this application was filed.
The specification, while being enabling for producing a triploid plant by (i)
introgressing the PM trait from PI-482312 into a recurrent diploid parent having the desired quality traits; and then (ii) crossing this current parent to a female tetraploid to generate a seedless triploid, does not reasonably provide enablement for the recreating the specific genotypes, or fixed cultivars, consisting of the specific constellation of agronomic and quality traits contemplated in claims 1-2, 5-9, 12-14, 16-17 & 51. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
The instant claims are directed to a broad genus of genetically undefined plants, that when hybridized, are required to produce triploid progeny with PM tolerance and a specific set of phenotypic characteristics. The claims further contemplate wherein the male parent is an undefined filial generation progeny of PI482312 that maintain PM tolerance and various fruit characteristics.
It should be noted that producing a triploid having the claimed characteristics -or any plant for that matter- requires the combination of alleles from two specific parents. That being said, the necessary alleles must be present within each parent to allow for such a combination to occur and produce progeny that have the required characteristics. In the case of claims 1-2, 5-9, 12-14, 16-17 & 51, the breadth of the phenotype described permit for the use of virtually any recurrent diploid and tetraploid parent. This raises the matter of unpredictability with respect to arbitrary combination of alleles and the likelihood of such resulting in the production of a triploid having the required characteristics. For example, Gusmini et al. [Journal of Heredity, 2006] teaches that breeding for specific flesh colors, which is seemingly one of the most obvious characteristics of a watermelon, is often challenging due to frequent distortions encountered in the inheritance of some of these genes [see page 177, right column, second paragraph].
Similar issues are raised over using PI 482312 or some undefined progeny thereof as a diploid parent because PI 482312 is a not a domesticated watermelon variety; but rather, a wild germplasm accession. This point is relevant because wild watermelons differ dramatically from commercial varieties. For example, the GRIN accession data [see appended copy, NPL_GRIN_Accession_482312_1983] corresponding to PI 482312 indicates that has a bitter fruit (i.e. low TSS) with white to yellow flesh color. As such, a skilled artisan would readily appreciate the unpredictability of using a bitter, white-yellow fleshed wild watermelon or its derivatives as a parent to yield a triploid with red flesh and high brix.
Clearly, the disease resistance trait would have to be introgressed into a commercial diploid already having the relevant quality traits and then crossed with an appropriate tetraploid. One would know that this would require assessment of potentially many thousands of plants over many years owing to the unpredictable nature of genetic recombination and gene transfer. Keeping this in mind, attention is directed to Tables 1A-1C & 6 of the disclosure outlining Applicant’s process. In each of these examples, the PM trait from PI 482312 is first into specific diploid varieties to yield a diploid plant having the PM traits and the required characteristics. These final recurrent parents were then used as the male parent in a cross with specific female tetraploid parents to yield triploids with the required traits.
That being said, the narrow and quite specific breeding program outlined in Applicant’s working examples does not provide sufficient guidance to overcome the unpredictability associated with the broad scope of the claims. Such hindsight outlines of line or cultivar development programs are only retroactive descriptions and are not uniquely instructive guidelines capable of being used to reasonably arrive at the same claimed cultivar, even by those highly skilled in the art of plant breeding.
Therefore, given the breadth of the claims, the lack of guidance and working examples showing how to make the broad genus of genetically unrelated plants, and the unpredictability associated with the phenotypes, undue trial and error experimentation would have been required to practice the claimed invention.
Response to Arguments
Applicant urges that 112a rejection for scope of enablement is improper due to (a) provision of a deposit specimen of their germplasm and (b) description of selection of the singular powdery mildew resistance gene [Remarks, p.21, ¶8-9; p.23, ¶1-3]. Applicant argues such description is sufficient to enable one to recreate the watermelon plants described in the claim set.
Applicant’s arguments have been considered but are unpersuasive because independent claim 1 recites several traits in addition the PM resistance genes which Applicant has not sufficiently described either in terms of underlying genetic structure(s) or particular selection methodology. The written description provided would not predictably enable one to recreate a germplasm or cultivar displaying the specific suite of traits recited as the inventive product. Claim 1 does not require or recite the specific germplasm deposited by Applicant, and thus, the broad scope of the watermelon plants claimed by phenotype (i.e. the combination of specific genes providing any and all plants encompassed by the phenotypic ranges recited) is not enabled by the limited number of deposited seed accessions.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 5-9, 12-17, 51 & 56-58 are rejected under 35 U.S.C. 102(a)(2) as being clearly anticipated by US 2019/0216035A1 [Published 07-18-2019].
Due to Applicant's amendment of the claims, the rejection is modified from that set forth in the Office action mailed 21 Aug 2025, as previously applied to claims 1-2, 5-9, 12-14, 16-17 & 51. Applicant's arguments filed 18 Feb 2026 have been fully considered but they are not persuasive.
Claims of Applicant’s prior US 2019/0216035A1 recite a seedless triploid watermelon, specifically cultivars ‘NCIMB 42044’, ‘NCIMB42172’, ‘NCIMB 42359’, or ‘NCIMB 42360’, with a genetic locus being selected or integrated into germplasm using primer sequences SEQ ID NO.1 & 2, which are identical to the SEQ ID NO.1 & 2 of the instant application [See 0038 of patent application publication and p.6, par.1 of instant application]. The cultivars recited in US 2019/0216035A1 are those of claims 13 & 15 of the instant application.
The previously described plants are the named cultivars of the instant application’s claims, of which the parental male diploid lines are derived from PI482312 and triploid hybrids are resistant to PM1 & PM2 [0096] with a total soluble solids range of 10-14% [0085], red fruit flesh [0081], flesh firmness of ‘60-80’ [0082], 2-3 fruit per plant [0080], vigor of ‘50-80’ [0074], fruit setting of ‘20-50’ [0076], rind crack of ‘10-30’ [0083], essentially round or oval fruit [0087] weighing 2-10 kg [0088-0090]. The disclosure includes characterization of powdery mildew resistance using the Tetteh scale, wherein ‘resistant’ plants are described with ratings < 3.5 on the Tetteh scale [0091]. Progeny of such varieties are also described [0096].
As such, all claims of the instant application are clearly within ranges of phenotypic measures previously described by Applicant in their initial 2019 filing document, which corresponds to their issued patent for PM resistant watermelon cultivars, US 2019/0216035A1.
Because the instant application is an obvious restatement of Applicant’s previously described watermelon cultivar(s) from their prior patent disclosure, it would be obvious to one skilled in the art to simply repeat or recite, as limitations, the previously disclosed phenotypic description of known powdery-mildew resistant triploid watermelon cultivars, particularly when referring to the already known, characterized cultivars.
The instant application is clearly anticipated by prior art and claims 1-2, 5-9, 12-17, 51 & 56-57 are rejected.
Response to Arguments
The 102 rejection of the previous Office action mailed 21 Aug 2025 was not responded to. The Office considers this non-response as acceptance that the instant claims are anticipated by 2019/0216035.
Conclusion
No claims are 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 KEITH R WILLIAMS whose telephone number is (571)272-3911. The examiner can normally be reached Mon - Fri, 9:30 - 5:30 EST.
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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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/KEITH R. WILLIAMS/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
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