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 .
Claims 1, 3, 5-8, 12-18, 20-24, 27, 30-45 are pending.
New claims 36-45 are drawn to the invention of Group I (see previous Office action) and as such are examined along with the previously elected claims.
Claims 1, 3, 5, 12-18, 20-21, 23-24, 30, 32-34 and 36-45 are examined herein.
Claims 6-8, 22, 27, 31, and 35 remain withdrawn from consideration as being drawn to non-elected groups.
All rejections of claims 2, 4, 10, 19 and 28-29 are moot in light of Applicant’s cancellation of the claims.
The objection to claim 12 for minor informalities is withdrawn in light of Applicant’s amendment of the claim.
The rejection of claims 1, 3, 5, 12-18, 20-21, 23-24, 30, 32-34 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in light of Applicant’s amendment of the claim.
Applicant’s Response to Request for Information under 37 CFR § 1.105
In response to the Request for Information under 37 CFR § 1.105 included in the last Office action, Applicant has provided a response indicating the information therein is a Trade Secret. Upon review of this material, Examiner has concluded that all of the information provided in the response is material to patentability of the claims under examination. Applicant has provided the following information:
The ultimate source of the modified YSL9 genes claimed in the instant application and found in plant GBN1489 is a Cucumis sativus (i.e. cucumber) accession applicant “obtained from Asia under the name EastWest 20529”. According to Applicant, GFN1489 was developed from EastWest 20529, bred to make the accession into a uniform breeding line. GFN1489 is homozygous for the modified YSL9 gene. Based on Applicant’s disclosure, GFN1489 appears to be wholly derived from EastWest 20529. Applicant further discloses that the deposited seeds are the result of a cross including GBN1489 and that the deposit is “therefore homozygous for the claimed gene and claimed resistance”.
Claim Interpretation
Applicant does not provide a definition of “cultivated plants”. Merriam-webster defines cultivate as “to foster the growth of (i.e. cultivate vegetables)”( merriam-webster.com/dictionary/cultivate; accessed 10 Aug 2026). For examination purposes, a cultivated plant is interpreted as a plant which is intentionally grown, or seeds or seedlings thereof which are intentionally planted, by humans.
Specification
The disclosure is objected to because of the following informalities: in paragraph 00150, there appears to be a typographical error. The specification recites “a marker based on the frameshift mutation on position 184 of SEQ ID NO: 2”. However, Table 3 indicates that the frameshift mutation at position 184 corresponds to the residue numbering of SEQ ID NO: 3, which appears to be the correct sequence based on other information provided throughout Applicant’s disclosure.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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, 3, 5, 12-18, 20-21, 23-24, 30, 32-34 and 36-43 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 rejection has been modified from the rejection set forth in the previous Office action in light of Applicant’s amendment of the claims. Applicant’s arguments have been fully considered but are found not persuasive.
Applicant’s claims are broadly drawn to a Cucumis sativus or Cucumis melo plant that comprises at least one copy of a modified YLS9 gene, wherein the wildtype of said YLS9 gene has the coding sequence of SEQ ID NO: 2 and encodes the protein of SEQ ID NO: 3, or wherein the wildtype of said YLS9 gene encodes a protein with 95% identity to SEQ ID NO: 3, wherein the modification comprises at least a deletion of an adenine at position 551 in SEQ ID NO: 2, and wherein when the modified YLS9 gene is present homozygously, said plant is resistant to ToLCNDV or ToLCPMV; methods of making said plants and methods of using said plants.
Applicant discloses cucumber (i.e. Cucumis sativus) plants, that comprise a modified YSL9 gene which comprises a deletion of an adenine at position 551 in SEQ ID NO: 2 and a nucleotide substitution at position 76 of SEQ ID NO: 2, wherein a cytosine is replaced by an adenine, and that only when said modified YSL9 gene is present homozygously does the modified gene confer resistance to two Begomoviruses, ToLCNDV and ToLCPMV (¶0065-0066, 00151, 00154). Applicant further discloses that the frameshift mutation, in particular, is responsible for the resistance as it substantially alters the structure of the protein (¶0137).
Applicant discloses that said ToLCNDV and ToLCPMV resistant cucumber plants were derived from plants of an internal cucumber breeding accession GBN1489, which was itself derived from a publicly available cucumber plant, EastWest 20595 (see above, Applicant’s Response to Request for Information under 37 CFR § 1.105)
Applicant discloses SEQ ID NOs: 11 and 12, which are the wild type YLS9 coding sequence and protein, respectively, found in Cucumis melo.
SEQ ID NO: 11 has 71.2% sequence identity to SEQ ID NO: 2.
Query Match 71.2%; Score 450.8; Length 528;
Best Local Similarity 93.2%;
Matches 483; Conservative 0; Mismatches 32; Indels 3; Gaps 1;
Qy 1 ATGAGGAGTACTACTACACAGGGAGAAGGAGCATCATCCTCCATTATTGAGGCACCAAAA 60
||||||||||| |||||||| | ||||| |||||||||||||||| ||||||||||||||
Db 1 ATGAGGAGTACAACTACACAAGAAGAAGAAGCATCATCCTCCATTGTTGAGGCACCAAAA 60
Qy 61 CGAAGCTTCTGTAGACAACG---TGAGACAACAAAACGCACAAGAATCATAAGAATCATA 117
|||||||||| |||||||| |||||||||||||||||||||||||||||||||||||
Db 61 CGAAGCTTCTACAGACAACGTCATGAGACAACAAAACGCACAAGAATCATAAGAATCATA 120
Qy 118 GGAAGAAGTTTGTTGTCTGTAATAATCTTCTTGAGTGTTGCAATTATCACATGTTGGCTT 177
|||||||| ||||| | |||||| ||||| ||||||||||||||||||||||||||||||
Db 121 GGAAGAAGCTTGTTATGTGTAATCATCTTTTTGAGTGTTGCAATTATCACATGTTGGCTT 180
Qy 178 GTTGTTTTCCCCAGAACCCCACGTCTCATGGTGGAAACTAGCAAAGTGACAGCCCATGGT 237
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 GTTGTTTTCCCCAGAACCCCACGTCTCATGGTGGAAACTAGCAAAGTGACAGCCCATGGT 240
Qy 238 TCAACTAATAGACACCTCAATGCAACCATAGTTTTCTACATCAAAAGCTACAACCCTAAC 297
|||||||||||| | |||||||||||||| |||||||| ||||||||||||||||||||
Db 241 TCAACTAATAGAAAGCTCAATGCAACCATTGTTTTCTATATCAAAAGCTACAACCCTAAT 300
Qy 298 AAAAAAGCCTCCATTCACATGGATTCTGTGAAGATGATAGTCAGTGATTATATGGGGCTA 357
||||||||||||||| ||||||||||| ||||||||||||||| ||||||||||| |||
Db 301 AAAAAAGCCTCCATTTACATGGATTCTATGAAGATGATAGTCAAGGATTATATGGGCCTA 360
Qy 358 CCGTTTCACTCCACCATCCCCACCTTCACGTTGATGCCTCGAAACGAGATGGTCTTCAAC 417
|| ||||||||| |||||||||||||||||||||||||||||||||||| ||||||||||
Db 361 CCATTTCACTCCGCCATCCCCACCTTCACGTTGATGCCTCGAAACGAGACGGTCTTCAAC 420
Qy 418 TCAACCGTTCGTGTCAACTTCATGTACCCATTTGGGCGCCCGGTGCATTCGGACTGGGTA 477
|||||||||||||| ||||| || ||||||||||||||||||||||||||||||||| ||
Db 421 TCAACCGTTCGTGTAAACTTGATATACCCATTTGGGCGCCCGGTGCATTCGGACTGGATA 480
Qy 478 CATCTAGAGCTTCGCTTCTCTGCTCAAGTTAGTTACAT 515
|||||||||||||||||||||||| ||||||| ||| |
Db 481 CATCTAGAGCTTCGCTTCTCTGCTAAAGTTAGGTACGT 518
SEQ ID NO: 12 has 71.5% sequence identity to SEQ ID NO: 3.
Query Match 71.5%; Score 787.5; Length 175;
Best Local Similarity 89.6%;
Matches 155; Conservative 7; Mismatches 10; Indels 1; Gaps 1;
Qy 1 MRSTTTQGEGASSSIIEAPKRSFCRQR-ETTKRTRIIRIIGRSLLSVIIFLSVAIITCWL 59
||||||| | |||||:||||||| ||| ||||||||||||||||| ||||||||||||||
Db 1 MRSTTTQEEEASSSIVEAPKRSFYRQRHETTKRTRIIRIIGRSLLCVIIFLSVAIITCWL 60
Qy 60 VVFPRTPRLMVETSKVTAHGSTNRHLNATIVFYIKSYNPNKKASIHMDSVKMIVSDYMGL 119
|||||||||||||||||||||||| ||||||||||||||||||||:|||:|||| |||||
Db 61 VVFPRTPRLMVETSKVTAHGSTNRKLNATIVFYIKSYNPNKKASIYMDSMKMIVKDYMGL 120
Qy 120 PFHSTIPTFTLMPRNEMVFNSTVRVNFMYPFGRPVHSDWVHLELRFSAQVSYI 172
|||| ||||||||||| ||||||||| :|||||||||||:||||||||:| |:
Db 121 PFHSAIPTFTLMPRNETVFNSTVRVNLIYPFGRPVHSDWIHLELRFSAKVRYV 173
A search of prior art protein sequences (SEQ ID NO: 3 queried against the UniProt database; see Search Results of 23 July 2026; 20260723_125736_us-18-163-503-3.rup) returns an uncharacterized Cucumis melo protein with 90% identity to SEQ ID NO: 3 (UniProt Accession A0A1SCCGU2; 26 Feb 2020; uniprot.org/uniprotkb/A0A1S3CGU2/entry; accessed 11 August 2026).
Query Match 90.4%; Score 995.5; Length 211;
Best Local Similarity 90.0%;
Matches 190; Conservative 11; Mismatches 9; Indels 1; Gaps 1;
Qy 1 MRSTTTQGEGASSSIIEAPKRSFCRQR-ETTKRTRIIRIIGRSLLSVIIFLSVAIITCWL 59
||||||| | |||||:||||||| ||| ||||||||||||||||| ||||||||||||||
Db 1 MRSTTTQEEEASSSIVEAPKRSFYRQRHETTKRTRIIRIIGRSLLCVIIFLSVAIITCWL 60
Qy 60 VVFPRTPRLMVETSKVTAHGSTNRHLNATIVFYIKSYNPNKKASIHMDSVKMIVSDYMGL 119
|||||||||||||||||||||||| ||||||||||||||||||||:|||:|||| |||||
Db 61 VVFPRTPRLMVETSKVTAHGSTNRKLNATIVFYIKSYNPNKKASIYMDSMKMIVKDYMGL 120
Qy 120 PFHSTIPTFTLMPRNEMVFNSTVRVNFMYPFGRPVHSDWVHLELRFSAQVSYIVNRWRSK 179
|||| ||||||||||| ||||||||| :|||||||||||:||||||||:||||||||:||
Db 121 PFHSAIPTFTLMPRNETVFNSTVRVNLIYPFGRPVHSDWIHLELRFSAKVSYIVNRWKSK 180
Qy 180 PRLLEIYCDHLWLRINDSTPNFDKTKCRVDL 210
|||||||||||||:|||||||||:|||:||:
Db 181 PRLLEIYCDHLWLKINDSTPNFDRTKCKVDI 211
Applicant does not disclose any Cucumis melo plants with resistance to ToLCNDV or ToLCPMV which comprise the claimed modified YSL9 gene plants (i.e. a modified YLS9 gene, wherein the wildtype of said YLS9 gene has the coding sequence of SEQ ID NO: 2 and encodes the protein of SEQ ID NO: 3, or wherein the wildtype of said YLS9 gene encodes a protein with 95% identity to SEQ ID NO: 3, wherein the modification comprises at least a deletion of an adenine at position 551 in SEQ ID NO: 2).
Applicant does not disclose any other ToLCNDV and ToLCPMV resistant Cucurbitaceae comprising the claimed modified YLS9 gene aside from the cucumber plants discussed above.
Applicant does not disclose any Cucumis melo plants which comprise a “wildtype” YLS9 gene which has the coding sequence of SEQ ID NO: 2 and encodes the protein of SEQ ID NO: 3, or wherein the wildtype of said YLS9 gene encodes a protein with 95% identity to SEQ ID NO: 3 and such plants do not appear to be known in the prior art (see discussion above regarding prior art search of SEQ ID NO: 3).
Given Applicant’s disclosure regarding the severe structural changes present in the claimed modified YSL9 protein relative to a “wildtype” YSL9 protein (¶0137) and applicant’s description of embodiments of the invention encompassing plants with a modified YLS9 protein comprising a premature stop codon or a truncated YLS9 protein (¶0035-0036), it appears that the resistance to ToLCNDV and ToLCPMV is due to a non-functional YLS9 protein, or a YLS9 with reduced function. In light of this and absent any evidence to the contrary, at the time of filing it was unlikely that one could simply transform a Cucumis melo plant with constructs comprising the claimed modified YLS9 gene to make a C. melo plant with ToLCNDV and ToLCPMV and which comprises the claimed modified YLS9 gene homozygously because such a plant would still comprise the wildtype YLS9 genes present in said C. melo plant which would provide normally functioning YSL9 proteins.
Similarly one could not reasonably expect to introduce the claimed modified YLS9 protein into Cucumis melo by locus conversion through backcrossing as fertile interspecific crosses between C. sativus and C. melo are not known in the art.
For the reasons set forth above, applicant’s disclosure of only Cucumis sativus plants which comprise at least one copy of a modified YLS9 gene, wherein the wildtype of said YLS9 gene has the coding sequence of SEQ ID NO: 2 and encodes the protein of SEQ ID NO: 3, or wherein the wildtype of said YLS9 gene encodes a protein with 95% identity to SEQ ID NO: 3, wherein the modification comprises at least a deletion of an adenine at position 551 in SEQ ID NO: 2, and wherein when the modified YLS9 gene is present homozygously, said plant is resistant to ToLCNDV or ToLCPMV, is not sufficient to show possession of the claimed Cucumis melo plants. Applicant has not described any C. melo plants which comprise the claimed modified YLS9 genes. At the time of filing, it does not appear that any C. melo plants were known in the prior art to comprise a wildtype YLS9 gene with a coding sequence of SEQ ID NO: 2 and which encodes the protein of SEQ ID NO: 3, or wherein the wildtype YLS9 gene encodes a protein with 95% identity to SEQ ID NO: 3, if such plants even exist. Thus, one of ordinary skill in the art would not reasonably conclude that applicant had possession over the full scope of the claims and the written description requirement has not been met.
Response to Applicant’s arguments:
In the remarks filed 9 April 2026, Applicant argues on page 20 that given the disclosure of the wildtype YSL9 genes present in Cucumis melo and the modified YLS9 of Cucumis sativus, one of skill in the art could identify regions of homology between the two and arrive at Cucumis melo plants comprising the modified YLS9 genes.
This is not found persuasive.
The claims require that the Cucumis melo plants comprise a modified YSL9 gene, the wildtype of which a coding sequence of SEQ ID NO: 2 and which encodes the protein of SEQ ID NO: 3, or wherein the wildtype YLS9 gene encodes a protein with 95% identity to SEQ ID NO: 3. As set forth above, C. melo does not comprise such a wild type gene. And as all explained above, such a plant cannot be made by transformation or locus conversion.
Scope of enablement
Claims 1, 3, 5, 12-18, 20-21, 23-24, 30, 32-34 remain rejected and 36-43 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 Cucumis sativus plants comprising the claimed modified YLS9 genes, does not reasonably provide enablement for Cucumis melo plants comprising the claimed modified YLS9 genes. 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 the invention commensurate in scope with these claims. This rejection has been modified from the rejection set forth in the previous Office action in light of Applicant’s amendment of the claims. Applicant’s arguments have been fully considered but are found not persuasive.
Applicant’s claims are broadly drawn to a Cucumis sativus or Cucumis melo plant that comprises at least one copy of a modified YLS9 gene, wherein the wildtype of said YLS9 gene has the coding sequence of SEQ ID NO: 2 and encodes the protein of SEQ ID NO: 3, or wherein the wildtype of said YLS9 gene encodes a protein with 95% identity to SEQ ID NO: 3, wherein the modification comprises at least a deletion of an adenine at position 551 in SEQ ID NO: 2, and wherein when the modified YLS9 gene is present homozygously, said plant is resistant to ToLCNDV or ToLCPMV; methods of making said plants and methods of using said plants.
Applicant teaches cucumber (i.e. Cucumis sativus) plants, that comprise a modified YSL9 gene which comprises a deletion of an adenine at position 551 in SEQ ID NO: 2 and a nucleotide substitution at position 76 of SEQ ID NO: 2, wherein a cytosine is replaced by an adenine, and that only when said modified YSL9 gene is present homozygously does the modified gene confer resistance to two Begomoviruses, ToLCNDV and ToLCPMV (¶0065-0066, 00151, 00154). Applicant further teaches that the frameshift mutation, in particular, is responsible for the resistance as it substantially alters the structure of the protein (¶0137).
Applicant teaches that said ToLCNDV and ToLCPMV resistant cucumber plants were derived from plants of an internal cucumber breeding accession GBN1489, which was itself derived from a publicly available cucumber plant, EastWest 20595 (see above, Applicant’s Response to Request for Information under 37 CFR § 1.105).
Applicant teaches SEQ ID NOs: 11 and 12, which are the wild type YLS9 coding sequence and protein, respectively, found in Cucumis melo.
SEQ ID NO: 11 has 71.2% sequence identity to SEQ ID NO: 2.
Query Match 71.2%; Score 450.8; Length 528;
Best Local Similarity 93.2%;
Matches 483; Conservative 0; Mismatches 32; Indels 3; Gaps 1;
Qy 1 ATGAGGAGTACTACTACACAGGGAGAAGGAGCATCATCCTCCATTATTGAGGCACCAAAA 60
||||||||||| |||||||| | ||||| |||||||||||||||| ||||||||||||||
Db 1 ATGAGGAGTACAACTACACAAGAAGAAGAAGCATCATCCTCCATTGTTGAGGCACCAAAA 60
Qy 61 CGAAGCTTCTGTAGACAACG---TGAGACAACAAAACGCACAAGAATCATAAGAATCATA 117
|||||||||| |||||||| |||||||||||||||||||||||||||||||||||||
Db 61 CGAAGCTTCTACAGACAACGTCATGAGACAACAAAACGCACAAGAATCATAAGAATCATA 120
Qy 118 GGAAGAAGTTTGTTGTCTGTAATAATCTTCTTGAGTGTTGCAATTATCACATGTTGGCTT 177
|||||||| ||||| | |||||| ||||| ||||||||||||||||||||||||||||||
Db 121 GGAAGAAGCTTGTTATGTGTAATCATCTTTTTGAGTGTTGCAATTATCACATGTTGGCTT 180
Qy 178 GTTGTTTTCCCCAGAACCCCACGTCTCATGGTGGAAACTAGCAAAGTGACAGCCCATGGT 237
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 GTTGTTTTCCCCAGAACCCCACGTCTCATGGTGGAAACTAGCAAAGTGACAGCCCATGGT 240
Qy 238 TCAACTAATAGACACCTCAATGCAACCATAGTTTTCTACATCAAAAGCTACAACCCTAAC 297
|||||||||||| | |||||||||||||| |||||||| ||||||||||||||||||||
Db 241 TCAACTAATAGAAAGCTCAATGCAACCATTGTTTTCTATATCAAAAGCTACAACCCTAAT 300
Qy 298 AAAAAAGCCTCCATTCACATGGATTCTGTGAAGATGATAGTCAGTGATTATATGGGGCTA 357
||||||||||||||| ||||||||||| ||||||||||||||| ||||||||||| |||
Db 301 AAAAAAGCCTCCATTTACATGGATTCTATGAAGATGATAGTCAAGGATTATATGGGCCTA 360
Qy 358 CCGTTTCACTCCACCATCCCCACCTTCACGTTGATGCCTCGAAACGAGATGGTCTTCAAC 417
|| ||||||||| |||||||||||||||||||||||||||||||||||| ||||||||||
Db 361 CCATTTCACTCCGCCATCCCCACCTTCACGTTGATGCCTCGAAACGAGACGGTCTTCAAC 420
Qy 418 TCAACCGTTCGTGTCAACTTCATGTACCCATTTGGGCGCCCGGTGCATTCGGACTGGGTA 477
|||||||||||||| ||||| || ||||||||||||||||||||||||||||||||| ||
Db 421 TCAACCGTTCGTGTAAACTTGATATACCCATTTGGGCGCCCGGTGCATTCGGACTGGATA 480
Qy 478 CATCTAGAGCTTCGCTTCTCTGCTCAAGTTAGTTACAT 515
|||||||||||||||||||||||| ||||||| ||| |
Db 481 CATCTAGAGCTTCGCTTCTCTGCTAAAGTTAGGTACGT 518
SEQ ID NO: 12 has 71.5% sequence identity to SEQ ID NO: 3.
Query Match 71.5%; Score 787.5; Length 175;
Best Local Similarity 89.6%;
Matches 155; Conservative 7; Mismatches 10; Indels 1; Gaps 1;
Qy 1 MRSTTTQGEGASSSIIEAPKRSFCRQR-ETTKRTRIIRIIGRSLLSVIIFLSVAIITCWL 59
||||||| | |||||:||||||| ||| ||||||||||||||||| ||||||||||||||
Db 1 MRSTTTQEEEASSSIVEAPKRSFYRQRHETTKRTRIIRIIGRSLLCVIIFLSVAIITCWL 60
Qy 60 VVFPRTPRLMVETSKVTAHGSTNRHLNATIVFYIKSYNPNKKASIHMDSVKMIVSDYMGL 119
|||||||||||||||||||||||| ||||||||||||||||||||:|||:|||| |||||
Db 61 VVFPRTPRLMVETSKVTAHGSTNRKLNATIVFYIKSYNPNKKASIYMDSMKMIVKDYMGL 120
Qy 120 PFHSTIPTFTLMPRNEMVFNSTVRVNFMYPFGRPVHSDWVHLELRFSAQVSYI 172
|||| ||||||||||| ||||||||| :|||||||||||:||||||||:| |:
Db 121 PFHSAIPTFTLMPRNETVFNSTVRVNLIYPFGRPVHSDWIHLELRFSAKVRYV 173
A search of prior art protein sequences (SEQ ID NO: 3 queried against the UniProt database; see Search Results of 23 July 2026; 20260723_125736_us-18-163-503-3.rup) returns an uncharacterized Cucumis melo protein with 90% identity to SEQ ID NO: 3 (UniProt Accession A0A1SCCGU2; 26 Feb 2020; uniprot.org/uniprotkb/A0A1S3CGU2/entry; accessed 11 August 2026).
Query Match 90.4%; Score 995.5; Length 211;
Best Local Similarity 90.0%;
Matches 190; Conservative 11; Mismatches 9; Indels 1; Gaps 1;
Qy 1 MRSTTTQGEGASSSIIEAPKRSFCRQR-ETTKRTRIIRIIGRSLLSVIIFLSVAIITCWL 59
||||||| | |||||:||||||| ||| ||||||||||||||||| ||||||||||||||
Db 1 MRSTTTQEEEASSSIVEAPKRSFYRQRHETTKRTRIIRIIGRSLLCVIIFLSVAIITCWL 60
Qy 60 VVFPRTPRLMVETSKVTAHGSTNRHLNATIVFYIKSYNPNKKASIHMDSVKMIVSDYMGL 119
|||||||||||||||||||||||| ||||||||||||||||||||:|||:|||| |||||
Db 61 VVFPRTPRLMVETSKVTAHGSTNRKLNATIVFYIKSYNPNKKASIYMDSMKMIVKDYMGL 120
Qy 120 PFHSTIPTFTLMPRNEMVFNSTVRVNFMYPFGRPVHSDWVHLELRFSAQVSYIVNRWRSK 179
|||| ||||||||||| ||||||||| :|||||||||||:||||||||:||||||||:||
Db 121 PFHSAIPTFTLMPRNETVFNSTVRVNLIYPFGRPVHSDWIHLELRFSAKVSYIVNRWKSK 180
Qy 180 PRLLEIYCDHLWLRINDSTPNFDKTKCRVDL 210
|||||||||||||:|||||||||:|||:||:
Db 181 PRLLEIYCDHLWLKINDSTPNFDRTKCKVDI 211
Applicant does not teach any Cucumis melo plants with resistance to ToLCNDV or ToLCPMV which comprise the claimed modified YSL9 gene plants (i.e. a modified YLS9 gene, wherein the wildtype of said YLS9 gene has the coding sequence of SEQ ID NO: 2 and encodes the protein of SEQ ID NO: 3, or wherein the wildtype of said YLS9 gene encodes a protein with 95% identity to SEQ ID NO: 3, wherein the modification comprises at least a deletion of an adenine at position 551 in SEQ ID NO: 2).
Applicant does not teach any other ToLCNDV and ToLCPMV resistant Cucurbitaceae comprising the claimed modified YLS9 gene aside from the cucumber plants discussed above.
Applicant does not teach any Cucumis melo plants which comprise a “wildtype” YLS9 gene which has the coding sequence of SEQ ID NO: 2 and encodes the protein of SEQ ID NO: 3, or wherein the wildtype of said YLS9 gene encodes a protein with 95% identity to SEQ ID NO: 3 and such plants do not appear to be known in the prior art (see discussion above regarding prior art search of SEQ ID NO: 3).
Given Applicant’s teaching regarding the severe structural changes present in the claimed modified YSL9 protein relative to a “wildtype” YSL9 protein (¶0137) and applicant’s description of embodiments of the invention encompassing plants with a modified YLS9 protein comprising a premature stop codon or a truncated YLS9 protein (¶0035-0036), it appears that the resistance to ToLCNDV and ToLCPMV is due to a non-functional YLS9 protein, or a YLS9 with reduced function. In light of this and absent any evidence to the contrary, at the time of filing it was unlikely that one could simply transform a Cucumis melo plant with constructs comprising the claimed modified YLS9 gene to make a C. melo plant with ToLCNDV and ToLCPMV and which comprises the claimed modified YLS9 gene homozygously because such a plant would still comprise the wildtype YLS9 genes present in said C. melo plant which would provide normally functioning YSL9 proteins.
Similarly one could not reasonably expect to introduce the claimed modified YLS9 protein into Cucumis melo by locus conversion through backcrossing as fertile interspecific crosses between C. sativus and C. melo are not known in the art.
Applicant has not taught any Cucumis melo plants which comprise the claimed modified YLS9 genes. Applicant has not taught any Cucumis melo plants which comprise a wildtype YLS9 gene with a coding sequence of SEQ ID NO: 2 and which encodes the protein of SEQ ID NO: 3, or wherein the wildtype YLS9 gene encodes a protein with 95% identity to SEQ ID NO: 3. At the time of filing, it does not appear that any C. melo plants were known in the prior art to comprise a wildtype YLS9 gene with a coding sequence of SEQ ID NO: 2 and which encodes the protein of SEQ ID NO: 3, or wherein the wildtype YLS9 gene encodes a protein with 95% identity to SEQ ID NO: 3. Finding such a plant, if such plants even exist, would entail screening thousands of cultivars and landraces. This would constitute undue experimentation.
Therefore, given the breadth of the claims, the nature of the invention, the state of the prior art, the amount of direction provided in specification, the lack of working examples drawn to Cucumis melo plants comprising the claimed modified YLS9 genes, and the quantity of experimentation needed, the claims are not enabled across their full scope.
Response to Applicant’s arguments:
In the remarks filed 9 April 2026, Applicant argues on page 24 that given the disclosure of the wildtype YSL9 genes present in Cucumis melo and the modified YLS9 of Cucumis sativus, one of skill in the art could identify regions of homology between the two and arrive at Cucumis melo comprising the modified YLS9 genes by introgression of the gene from another plant or by breeding methods that result in the transfer of genetic information.
This is not found persuasive.
The claims require that the Cucumis melo plants comprise a modified YSL9 gene, the wildtype of which a coding sequence of SEQ ID NO: 2 and which encodes the protein of SEQ ID NO: 3, or wherein the wildtype YLS9 gene encodes a protein with 95% identity to SEQ ID NO: 3 and that the gene confers resistance to ToLCNDV or ToLCPMV when it is present homozygously . As set forth above, C. melo does not comprise such a wild type gene. And as all also explained above, such a plant cannot be made by transformation or locus conversion.
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.
Claim 43 is 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 43 is drawn to the plant of claim 36, comprising a deletion of an adenine at position 551 in SEQ ID NO: 2, or at the corresponding positions of the homologous sequence having at least 95% sequence identity to SEQ ID NO: 2. However, claim 36, is drawn to the plant of claim 1. Claim 1 is drawn to a plant with a deletion of an adenine at position 551 in SEQ ID NO: 2, or at the corresponding positions of the homologous sequence having at least 95% sequence identity to SEQ ID NO: 2. Thus claim 43 does not further limit claim 36.
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.
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, 12-16, 36, 38-41, and 43-45 rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention.
Applicant is claiming Cucumis sativus or Cucumis melo plants comprising a modified YSL9 gene, wherein said modified YSL9 gene comprises a deletion of an adenine at position 551 in SEQ ID NO: 2, or wherein said modified YSL9 gene comprises a deletion of an adenine at position 551 in SEQ ID NO: 2 and a cytosine-to-adenine substitution at position 76 of SEQ ID NO: 2, and wherein said modified YSL9 gene confers resistance to ToLCNDV and ToLCPMV when it is present homozygously; propagation material, fruits, and seeds thereof.
Examiner notes that none of the claims rejected here under 35 U.S.C. 102(a)(1) require that the modified YSL9 gene is present homozygously, but rather they only require that the presence of modified YSL9 gene homozygously confers resistance to ToLCNDV and ToLCPMV.
Applicant discloses that ToLCNDV and ToLCPMV resistant cucumber plants (Cucumis sativus) were derived from plants of an internal cucumber breeding accession GBN1489; that the instantly claimed modified YSL9 gene (i.e. a deletion of an adenine at position 551 in SEQ ID NO: 2 and a nucleotide substitution at position 76 of SEQ ID NO: 2, wherein a cytosine is replaced by an adenine) was identified from crosses made from internal cucumber breeding accession GBN1489; and that only when said modified YSL9 gene is present homozygously does the modified gene confer resistance to ToLCNDV and ToLCPMV (¶0065-0066, 00151, 00154).
Applicant further discloses that the frameshift mutation (i.e. the del a deletion of an adenine at position 551 in SEQ ID NO: 2), in particular, is responsible for the resistance as it alters the structure of the protein (¶0137).
In response to the Request for Information under 37 CFR § 1.105 included in the last Office action, Applicant has provided the following information that is material to the patentability of the instant claims:
The ultimate source of the modified YSL9 genes claimed in the instant application and found in plant GBN1489 is a Cucumis sativus (i.e. cucumber) accession applicant “obtained from Asia under the name EastWest 20529”. According to Applicant, GFN1489 was developed from EastWest 20529, bred to make the accession into a uniform breeding line. GFN1489 is homozygous for the modified YSL9 gene. Based on Applicant’s disclosure, GFN1489 appears to be wholly derived from EastWest 20529. Applicant further discloses that the deposited seeds are the result of a cross including GBN1489 and that the deposit is “therefore homozygous for the claimed gene and claimed resistance”.
In light of Applicant’s disclosure and the information provided by Applicant in response to the request for information, it appears that, prior to the filing date of the instant application, a Cucumis sativus plant comprising at least one copy of a modified YSL9 gene, wherein said modified YSL9 gene comprises a deletion of an adenine at position 551 in SEQ ID NO: 2 and a cytosine-to-adenine substitution at position 76 of SEQ ID NO: 2, was publicly available (i.e. EastWest 20529). Applicant’s disclosure, cited above, provides evidence that the presence of said modified YSL9 gene, homozygously, confers resistance to ToLCNDV and ToLCPMV.
Regarding the recitation of a “Cultivated Cucumis sativus” (see claim 1 for example), it appears that EastWest 20529 is a cultivated Cucumis sativus. As explained above, for examination purposes a cultivated plant is interpreted as a plant which is intentionally grown, or seeds or seedlings thereof which are intentionally planted, by humans (see Claim Interpretation). There is no indication by Applicant that EastWest 20529 is a wild plant and at the minimum EastWest 20529 has been intentionally grown (i.e. cultivated) to produce seeds or seedlings by whichever source provided EastWest 20529 to Applicant.
Furthermore plants of EastWest 20529 would inherently produce fruits and seeds, at least some of which would comprise a modified YSL9 gene as claimed by Applicant. Such plants would also inherently comprise propagation material suitable for producing a Cucumis sativus plant comprising a modified YSL9 gene by sexual or vegetative reproduction or tissue culture.
Therefore, the publicly available Cucumis sativus plant EastWest 20529 meets all the limitations of claims 1, 12-16, 36, 38-41, and 43-45.
Claims 20 and 34 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over the publicly available Cucumis sativus plant, EastWest 20529.
Claim 20 is drawn a progeny plant of the plant of claim 1, comprising the modified YLS9 gene homozygously.
Claim 34 is drawn to a ToLCNDV or ToLCPMV resistant Cucumis sativus or Cucumis melo plant comprising a modified YLS9 gene homozygously, wherein the modified gene is as present in a cucumber plant, representative seed of which is deposited under Deposit Number NCIMB 43586.
Regarding claim 20, as explained above, the plant of claim 1 is anticipated by the publicly available Cucumis sativus plant EastWest 20529. It is more likely than not that, in the course of maintaining seeds or seedlings of this plant, at some point in the past the source of EastWest 20529 would have had to cross said plant with itself to generate seed. As also explained above EastWest 20529 must comprise at least one copy of the claimed modified YLS9 gene. Therefore, one would reasonably expect approximately 25% of the seeds to be homozygous for the modified YLS9 gene. Such seeds would give rise to plants that anticipate all the limitations of claim 20.
Alternatively, given that EastWest 20529 is a publicly available Cucumis sativus plant, it would be obvious for a plant grower or gardener to cultivate plants of EastWest 20529. Such cultivation would lead to crossing between individual EastWest 20529 plants, resulting in seeds of which approximately 25% would be homozygous for the modified YLS9 gene. Growing such seeds would give rise to progeny plants of the plant of claim 1, comprising the modified YLS9 gene homozygously.
Regarding claim 34, as discussed above, Applicant has disclosed that the seeds deposited under Deposit Number NCIMB 43586 comprise the claimed modified YLS9 genes, i.e. the YLS9 gene present in EastWest 20529. Therefore, claim 34 is anticipated by or, alternatively, obvious over the publicly available Cucumis sativus plant, EastWest 20529 for the same rationale as claim 20.
Conclusion
No claims are allowed.
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/ALEKSANDAR RADOSAVLJEVIC/Examiner, Art Unit 1662 /BRENT T PAGE/ Primary Examiner, Art Unit 1663
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