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 Request for Continued Examination filed February 26, 2026 and claims Amendment filed April 6, 2026. Claims 20-23, 25, 27, 29 and 36-42 are pending. Claims 25, 27, 29 and 38-41 are withdrawn. Claims 20-23, 36, 37 and 42 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All previous rejections not set forth below have been withdrawn.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.
Claim Objections
2. Claims 20-23, 36, 37 and 42 are objected to because of the following:
In claim 20(a), “SNP 1 and SNP 10” should be amended to “SNP marker 1 and SNP marker 10” for language consistency.
Dependent claims are included.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
3. Claim 20-23, 36, 37 and 42 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.
With regard to claim 20(b)(xi), Applicant is invited to point to the page and line number in the originally filed disclosure where support for “any other DNA marker located within SNP markers 1 and 10 and co-segregating with the introgressed sequence from C. melo var. dudaim” can be found. The specification does not disclose the marker set forth in (xi) as one of the markers to be detected. Only markers (i)-(x) are listed as alternatives of each other. The specification does not disclose “any other DNA marker located within SNP markers 1 and 10 and co-segregating with the introgressed sequence from C. melo var. dudaim”. Absent of support, Applicant is required to cancel the new matter in response to the instant Office action.
4. Claims 20-23, 36, 37 and 42 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.
The recitation of “any other DNA marker located within SNP markers 1 and 10 and co-segregating with the introgressed sequence from C. melo var. dudaim” lacks adequate written description. No such marker is disclosed. There is no evidence that Applicant is in possession of other markers within SNP markers 1 and 10 for detecting at least one copy of the introgressed sequence from C. melo var. dudaim. The disclosure of the ten markers does not allow one skilled in the art to predict additional markers unique to the rind-turning phenotype located within SNP markers 1 and 10 that co-segregate with the introgressed sequence. Applicant is pre-empting and capturing innovations beyond what is described. Accordingly, the claimed plants lack adequate written description under current Written Description guidelines http://www.uspto.gov/web/menu/written.pdf.
Applicant’s traversals do not address the above rejection.
Accordingly, the rejection is maintained.
5. Claims 20-23, 36 and 37 and 42 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).
The recitation of “any other DNA marker located with SNP markers 1 and 10 and co-segregating with the introgressed sequence from C. melo var. dudaim” is not enabled for the following reasons.
The nature of the claimed invention is markers for detecting the presence of an introgressed sequence from C. melo var. dudaim for conferring a rind-turning phenotype The breadth of the claims encompasses a marker of any size and any structure located within the region flanked by SNP markers 1 and 10 that co-segregates with the introgressed sequence. SNP markers 1 and 10 span a region of approximately 5.7 million bp (Table 3). The actual gene for conferring the rind-turning phenotype within this 5.7 million bp region is not disclosed. The working examples disclose ten markers for detecting said introgressed sequence. No other marker that is specific for the introgressed sequence and co-segregates with the introgressed sequence is disclosed. Applicant provides no guidance as to how one skilled in the art would be able to determine markers that allow detection of the introgressed sequence and co-segregate with the introgressed sequence without resorting to random trial and error requiring undue experimentation. The state of the prior art does not teach other markers located within this approximately 5.7 million bp that are unique to the introgressed sequence to allow its detection and that co-segregate with the introgressed sequence. To require one skilled in the art to examine a region of approximately 5.7 million bp to determine a marker that allows for detection of the introgressed sequence and co-segregates with the introgressed sequence is an invitation to experiment requiring undue experimentation. It is highly unpredictable what structure the undisclosed marker has, and its location within this 5.7 million bp region, relative to the undisclosed gene for conferring the rind-turning phenotype.
Given these difficulties, notwithstanding a relatively high level of ordinary skill of those in the art, the amount of experimentation would likely be extensive and undue. Weighing all 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 do not address the above rejection.
Accordingly, the rejection is maintained.
Conclusion
6. No claim is allowed.
7. 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham can be reached on 571-270-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PHUONG T BUI/Primary Examiner, Art Unit 1663
Prosecution Insights