Detailed Action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-2, 9-22, 25-28 and 30-37 are pending.
Claims 12-15, 21-22, 25-27, 30-37 are withdrawn.
Claims 1-2, 9-11, 16-20 and 28 are examined.
Election/Restrictions
Claims 12-15, 21-22, 25-27, 30-37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/10/2025.
Applicant’s election of Group I in the reply filed on 4/10/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 112
Written Description
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.
Claim 11 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 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.
Applicant claims a lettuce plant and parts thereof wherein a representative sample of seed of the plant was deposited under ATCC Accession No. PTA-127514.
Applicant describes a lettuce plant and parts thereof represented by ATCC Accession No. PTA-127514 (paragraph 236).
Applicant does not, however, describe the genus of plants obtained by the vegetative reproduction of the claimed lettuce plant. As one having ordinary skill in the art would recognize, vegetative reproduction includes regeneration of a plant from tissue culture. Regeneration of a plant from a tissue-cultured plant part can cause mutations called somaclonal variations (see Jain (2001) Euphytica; Vol. 118; pp. 153-166). Tissue-culture can induce dramatic changes such as changes in chromosome number, changes in ploidy and rearrangements, alterations in nuclear and cytoplasmic genetic elements, point mutations, changes in DNA methylation, and altered sequence copy number (Jain, last paragraph on page 153 and paragraph bridging left and right columns on page 154).
A plant produced by this method may not retain the characteristics of the plant from which it was derived. For example, Jain discloses plants having heavier tillering, slower growth rate, increased erectness, albino, altered leaf-shape, altered vigor (Jain, last paragraph on page 153). This means that claim 11 encompasses a genus of plants that may differ from the plant represented by the deposited seed. Applicant has failed to describe any plants encompassed by that genus, besides the lettuce plant represented by the deposited seed.
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, 9-11, 16-20 and 28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 and 23-31 of copending Application No. 18/119,464. Although the claims at issue are not identical, they are not patentably distinct from each other.
The instantly claimed invention is drawn to a lettuce plant comprising a mutant GGLS allele conferring a long stem phenotype. Applicant claims deposited line PTA-127514 is representative of the claimed lettuce plant.
The co-pending claims are drawn to a lettuce plant comprising a mutant GGLS allele conferring a long stem phenotype. The co-pending claims are also drawn to deposited line PTA-127514 being representative of the claimed lettuce plant (co-pending claim 8). The co-pending claims are also drawn to methods of making and using a lettuce plant with a mutant GGLS allele conferring a long stem phenotype.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-2, 9-11, 16-20 and 28 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R BYRNES whose telephone number is (571)270-3935. The examiner can normally be reached 9:00 - 5:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bratislav Stankovic can be reached at (571) 270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID R BYRNES/Examiner, Art Unit 1662