DETAILED ACTION
Claims 1-26 are pending. Claims 1-11, 22 and 25-26 are examined. Claims 12-21 and 23-24 are withdrawn from consideration as being drawn to a nonelected without traverse in the reply filed on 14 August 2025.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The specification remains objected to for using non-metric units without citing the metric units on pg 11, ¶3; pg 13, ¶5; pg 20, ¶1; and pg 27, ¶6. See MPEP 608.1 IV.
Claim Objections
Claims 22 and 25-26 are objected to because of the following informalities:
Claim 22 is objected to because although it recites “selected from the group consisting of”, there is only one member of the group; it is suggested that “leaves with …consisting of” be deleted.
Claim 22 is also objected to for having parts (a) and (c), but not part (b).
In claims 25-26 “paradigm” should be capitalized and in claim 25, “essence” should be capitalized, as they are names.
The previous objections to claims 1, 3-4, and 22 were overcome by Applicant’s amendment to the claims.
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 the second paragraph of 35 U.S.C. 112:
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 1-11, 22 and 25-26 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 that the inventor or a joint inventor, or for pre-AIA the applicant, regards as the invention. Dependent claims are included in all rejections.
Due to Applicant’s amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 24 November 2025, as applied to claims 1-11 and 22. Applicant’s arguments filed 23 March 2026 have been fully considered but they are not persuasive.
Claims 1, 3, 4, 22 and 25 contain what appears to be a trademark/trade name, “PENETROMETER FRUIT PRESSURE TESTER model FT 011 (0-5 kg)”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a fruit pressure tester and, accordingly, the identification/description is indefinite.
Claim 1, lines 1-2, claim 22, lines 4-5, and claim 25, lines 1-2, are indefinite in their recitation of “tolerance to water feed conditions of less than 190-210 m3 per 1000 m2”, claim 3 is indefinite in its recitation of “tolerance to water feed conditions of less than 380-420 m3 per 1000 m2”, and claim 4 is indefinite in its recitation of “tolerance to water feed conditions of less than 420 liters per said plant”. Drought tolerance is affected by root growth, which is affected by growth medium properties, temperature and nutrients (Malabane et al, 2023, Front. Plant. Sci 13:1074395, see paragraph spanning pg 2-3). Thus, “tolerance to water feed conditions” is relative to the environmental conditions under which a plant is grown. A given plant of a given genotype will be encompassed by the claims when grown under some environmental conditions and not others.
The phrase “flesh firmness of at least 0.9 kg” in claims 1, 3-4, 22 and 25 is a relative phrase that renders the claims indefinite. The phrase is not defined by the claims, 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. Although the claims specify that flesh firmness is measured using a specific tester and a specific sized plunger attachment, flesh firmness is affected by the environmental conditions under which a plant is grown. Irrigation condition and location affect fruit firmness (Leskovar et al, 2003, Acta Hort. 628:147-151 - see paragraph bridging pages 148-149 and table 2; and Bang et al, 2004, J. Hort. Sci., 76:885-890 - see figure 1B and paragraph spanning the columns on pg 888). Thus, “flesh firmness” is relative to the environmental conditions under which a plant is grown. A given plant of a given genotype will be encompassed by the claims when grown under some environmental conditions and not others.
The term “red fruit flesh” in claims 1, 3-4, 22, and 25 is a relative term that renders the claims indefinite. The term is not defined by the claims, 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. The location a watermelon plants is grown affects red hue and chroma (color intensity) (Perkins-Veazie, 2001, J. Sci. Food Agric, 81:983-987; see Table 2). Thus, “red fruit flesh” is relative to the environmental conditions under which the plant is grown. For example, a plant can have red flesh when grown under some environmental conditions and pink flesh when grown under others. A given plant of a given genotype will be encompassed by the claims when grown under some environmental conditions and not others.
Claim 22 is indefinite because it requires the plant be one of Paradigm, Essence, or Kon-Tiki (lines 2-3) and that be progeny of a tetraploid watermelon having at least 70 seeds per fruit (part c). Paradigm, Essence, and Kon-Tiki all appear to be triploids; Guan et al (2016, Variety Trials in Southwest Indiana - 2016, https://ag.purdue.edu/department/ arge/swpap/_docs/2016-presentation.pdf) teach that watermelon varieties ORS6227 and ORS 6064 are triploid (Table on pg 6) and the claims specify that the varieties are seedless. Triploids are produced by crossing a tetraploid and diploid, and because ORS6227, ORS 6064, Paradigm, Essence, and Kon-Tiki are varieties, they have specific tetraploid and diploid parents. The specification does not describe which of Paradigm, ORS 6064, Essence, ORS6227, and Kon-Tiki have a tetraploid parent having at least 70 seeds per fruit and which do not. If they all have a tetraploid parent having at least 70 seeds per fruit, then it is unclear how the recitation limits the claim. If one or more does not, it is not clear which of Paradigm, Essence, and Kon-Tiki is not encompassed by the claim. Further, it is unclear how a plant can be both specifically recited as being a plant of the claim and excluded by a property of its parent (part c).
Third, the claim requires the plant be one of Paradigm, Essence, or Kon-Tiki and that be obtained by cultivation of a parent having a root structure attribute (part d). However, the root structure attributes listed, root length, dry weight of the root, surface area of the root, root diameter and the number of lateral roots or "branches" a root has per square inch; are characteristics of all root structures. It is thus unclear how this is a limitation in any form.
Fourth, it is unclear what it means for a plant to have been obtained by cultivation using at least one parent with a specific characteristic. It is not clear what has been cultivated - the claimed plant or its parent.
Claim 25 is indefinite in its recitation of “includes a breeding history of a variety selected from the group consisting of: a paradigm watermelon and an essence watermelon”, It is entirely unclear what the breeding histories of Paradigm and Essence are. Further, it is not clear if the limitation is met if the plant shares only a portion of the breeding history of Paradigm or Essence or if it must have the same breeding history as Paradigm or Essence.
Response to Arguments
Applicant urges that the person skilled in the art is a plant breeder, who would look to UPOV and the European Union Community Plant Variety Office for the "definite standard for ascertaining the requite degree, and one of ordinary skill in the art" that such a POSITA would look to UPOV and the European Union Community Plant Variety Office; UPOV is an international treaty body and the International Union for the Protection of New Varieties of Plants defines a blueprint regulation to be implemented by its members in national law (response pg 11).
This is not found persuasive because none are binding on claims of US utility patents, which are controlled by laws under 35 USC.
Applicant urges that a POSITA would follow the guidelines in section 4.5.5 of UPOV TGP/13 (response pg 11).
This is not found persuasive. UPOV TGP/13 could not be considered because it was not sent. However, it is noted that this rejection is under 35 USC 112(b) not under UPOV.
Applicant urges that the lack of an observation of a characteristic should not be detrimental to the ascertaining of particularly pointing out and distinctly claiming the subject matter which applicant regards as the invention (response pg 11).
This is not found persuasive. It is not clear what Applicant is arguing here
Applicant urges that CPVO-TP/142/1 Final provides that "All the characteristics shall be used, providing that...the expression of a characteristic is prevented by the environmental conditions under which the test is conducted" (response pg 11-12).
This is not found persuasive. CPVO-TP/142/1 Final could not be considered because it was not sent. However, it is noted that 35 USC 112(b) requires that claims be distinctly claimed. Relative terms in a claim, including those that are relative because of the environmental conditions under which a plant is grown, mean the claim is not distinct.
Applicant urges that the standard applied with regard to plant breeders is not as strict as with exact sciences; CPVO stipulates that although all characteristics... are compulsory, except for some resistances (response pg 12).
This is not found persuasive. CPVO could not be considered because it was not sent. However, guidelines of the European Union Community Plant Variety Office have no bearing on claims in a US patent or patent application.
Applicant urges that CPVO-TP/142/1 Final provides 9 separate characteristics of leaf blades and 21 separate characterizes for watermelon fruit for the purpose of determining distinctness of a variety out of a total of 48 characteristics the CPVO provides to ascertain distinctness (response pg 12).
This is not found persuasive. CPVO-TP/142/1 Final could not be considered because it was not sent. However, it is noted that most of the instant claims are not drawn to a variety, but instead claim genus of plants by characteristics that are affected by the environmental conditions under which a watermelon plant is grown.
Applicant urges that CPVO-TP/142/2-Rev.3 provides a visual standard for ascertaining resistance by observing the leaves; an absolute "number" is not used to ascertain and establish resistance (response pg 12).
This is not found persuasive. CPVO-TP/142/2-Rev.3 could not be considered because it was not sent. However, it is noted that none of the claims are drawn to “resistance”.
Applicant urges that CPVO-TP/142/2-Rev.3 states “the influence of the environment is not such that more than a single growing cycle is required to provide assurance that the differences observed between varieties are sufficiently consistent"; thus, the skilled breeder would clearly understand that adverse or unusual environmental conditions are clearly and distinctly excluded (response pg 12).
This is not found persuasive. CPVO-TP/142/2-Rev.3 could not be considered because it was not sent. However, it is noted that 35 USC 112(b) requires that claims be distinctly claimed. Relative terms in a claim, including those that are relative because of the environmental conditions under which a plant is grown, mean the claim is not distinct. A claim to a plant claimed by a trait that is present when grown under some environmental conditions and not present when grown under other environmental conditions is indefinite under 35 USC 112(b).
Applicant urges that UPOV document TGP/13 explains that the absence of "special growing" conditions connotes that there were no special conditions pertaining to the environment other than "normal for the given species" (response pg 12-13).
This is not found persuasive. UPOV document TGP/13 could not be considered because it was not sent. However, it is noted that the claims do not define the environmental conditions under which the trait is present. It is also noted that watermelon is grown in a wide range of environmental conditions, as demonstrated by the teachings of Leskovar et al, Bang et al, Malabane et al, and Perkins-Veazie, cited above.
Applicant urges that UPOV document TGP/13 explicitly notes that a "variety shall be deemed to be uniform, if subject to the variation that may be expected from the particular features of its propagation, it is sufficiently uniform in the relevant characteristics" (response pg 13).
This is not found persuasive. UPOV document TGP/13 could not be considered because it was not sent. However, it is noted that most of the instant claims are not drawn to a variety, but instead claim genus of plants by characteristics that are affected by the environmental conditions under which a watermelon plant is grown.
Applicant urges that in the field of plant breeders the protocols negate the environmental parameters from creating a skewed understanding of the novelty and distinctness of the invention subject matter (response pg 13).
This is not found persuasive. Novelty and distinctness are not considerations under 35 USC 112(b).
Applicant urges that the UPOV teaches a POSITA that is it "important that users of these technical protocols are familiar with the recommendations contained in the UPOV-General introduction to DUS prior to making decisions regarding distinctness" (response pg 13).
This is not found persuasive. UPOV could not be considered because it was not sent. However, distinctness is not a consideration under 35 USC 112(b).
Applicant urges that UPOV document TGP/13 states "the agreed UPOV template of variety descriptions gives the possibility to add specific features” (response pg 13).
This is not found persuasive. UPOV document TGP/13 could not be considered because it was not sent. However, it is noted that definiteness of claims in a US patent or patent application are controlled by 35 USC 112(b), not outside bodies.
Applicant urges that each of US20190343061 and US20170079228 use the term “dark” to specify a color (response pg 13).
This is not found persuasive. Examiners cannot discuss the prosecution of other patent applications.
Applicant urges that CPVO-TP/142/1 describes fruit main color and differentiates between pink, pinkish red and red; intensity of flesh color and differentiates between light medium and dark (response pg 13).
This is not found persuasive. CPVO-TP/142/2-Rev.3 could not be considered because it was not sent. However, it is noted that Applicant has not rebutted Perkins-Veazie’s teaching that the location a watermelon plants is grown affects red hue and chroma (Table 2). Because of this, a given plant would be encompassed by the instant claims under grown in some locations, i.e., under some environmental conditions, and not under others.
Applicant urges that the claims are been amended to overcome rejections (response pg 13-14).
This is not found persuasive because the remaining ones have not been overcome, for the reasons detailed in the rejection.
Applicant urges that the difference in water consumption is in lieu of the difference between grafted and non-grafted plants and well known in the art of plant breeding that grafted and non-grafted plants require significantly different quantities of water to achieve a specific yield (response pg 14).
This is not found persuasive. Applicant has not provided any evidence to support their assertions about what is known in the art regarding grafted and non-grafted plants. Further, the rejection was made because Malabane et al teaches that drought tolerance is affected by root growth, which is affected by growth medium properties, temperature and nutrients (paragraph spanning pg 2-3). “tolerance to water feed conditions” is thus affected by the environmental conditions under which a plant is grown and thus a relative term that is indefinite under 35 USC 112b).
Applicant urges that the Johnson article provides further and better particulars to the fact that a skilled artisan would look to select the highest yielding varieties for the purpose of selective breeding; selection of several varieties was performed based on the above indicia; in the instant application Applicant specifically selected several varieties and save for only one variety, all varieties selected for crossing are not part of the examples provided by Johnson on page 5, paragraphs 2 and 4; thus, Johnson actually "teaches away" from the present invention and provides prima facie support for the asserted inventiveness by the Applicant (response pg 15-16).
This is not found persuasive. This an argument against an art rejection, not indefiniteness, and will be addressed below.
Applicant urges that the fact that OriGene located, selected and cultivated the specific varieties in the specification is indicative of the inventiveness behind this application (response pg 16).
This is not found persuasive. This an argument against an art rejection, not indefiniteness, and will be addressed below.
Applicant urges that Johnson and the other articles are evidentiary conducive to establishing "enablement" due to the fact that skilled artisans in the field of plant breeding follow, as an integral part of exercising their skill in the art, analogous description and details to those enumerated by the Applicant the specification and claims, are sufficient to skilled artisans in the field of plant breeding to understand, fathom and create a repeatable methodology (response pg 16).
This is not found persuasive. This an argument against an enablement rejection, not indefiniteness, and will be addressed below.
Applicant urges that one skilled in the art of breeding would refer and use CPVO-TP/142/2-Rev.3 and CPVO-TP/142/1 Final to allow objective comparison or germplasm or cultivars (response pg 16).
This is not found persuasive. CPVO-TP/142/2-Rev.3 and CPVO-TP/142/1 Final could not be considered because they were not sent.
Applicant urges that CPVO-TP/142/1 Final provides that "All the characteristics shall be used, providing that...the expression of a characteristic is prevented by the environmental conditions under which the test is conducted" (response pg 16).
This is not found persuasive. CPVO-TP/142/1 Final could not be considered because it was not sent. However, based on that statement, it appears that the document acknowledges that characteristics are affected by the environmental conditions under which the plant is grown. Characteristics that are present under some conditions and not under others are indefinite it those conditions are not recited in the claim or if some other definite means of comparison are not recited.
Applicant urges that CPVO-TP/142/2-Rev.3 provides that the "differences observed between varieties may be so clear that more than one growing cycle is not necessary. In addition, in some circumstances, the influence of the environment is not such that more than a single growing cycle is required to provide assurance that the differences observed between varieties are sufficiently consistent" (response pg 16).
This is not found persuasive. CPVO-TP/142/2-Rev.3 could not be considered because it was not sent. However, it is noted that most of the instant claims are not drawn to a variety, but instead claim genus of plants by characteristics that are affected by the environmental conditions under which a watermelon plant is grown.
Applicant urges that UPOV TGP/13 explains and narrates that the absence of "special growing" conditions connotes that there were no special conditions pertaining to the environment other than "normal for the given species"; thus, the skilled breeder would clearly understand that adverse or unusual environmental conditions are clearly and distinctly excluded (response pg 17).
This is not found persuasive. UPOV TGP/13 could not be considered because it was not sent. However, none of Leskovar et al, Bang et al, Malabane et al, and Perkins-Veazie indicated that the traits they found were affected by the environmental conditions under which a watermelon plant is grown were unusual.
Applicant urges that UPOV TGP/13 explicitly notes that a "variety shall be deemed to be uniform, if subject to the variation that may be expected from the particular features of its propagation, it is sufficiently uniform in the relevant characteristics" (response pg 17).
This is not found persuasive. UPOV TGP/13 could not be considered because it was not sent. However, it is noted that most of the instant claims are not drawn to a variety, but instead claim genus of plants by characteristics that are affected by the environmental conditions under which a watermelon plant is grown.
Applicant urges that thus in the field of plant breeders, the protocols negate the environmental parameters from creating a skewed understanding of the novelty and distinctness of the invention subject matter (response pg 17).
This is not found persuasive. Novelty and distinctness are not considerations under 35 USC 112(b).
Applicant urges that the lack of an observation of a characteristic should not be detrimental to the ascertaining of particularly pointing out and distinctly claiming the subject matter which applicant regards as the invention (response pg 17).
This is not found persuasive. The rejection was not made because of a lack of an observation of a characteristic but because the claimed characteristics are affected by the environmental conditions under which a watermelon plant is grown, thereby making them indefinite.
Applicant urges that the standard applied with regard to plant breeders is not as strict as with exact sciences; CPVO stipulates that although all characteristics... are compulsory; notwithstanding, in the case of resistance characteristics, only those resistances marked with an asterisk (*) in the CPVO are compulsory" (response pg 17).
This is not found persuasive. CPVO could not be considered because it was not sent. However, the standards of 35 USC 112(b) are not relaxed for plant breeders or any other group.
Applicant urges that claim 1 now clearly recites only required features of the claim and thus, it respectfully submitted that claim 1 and its dependent claims 1-11 and 22 are also inclusive of required features of the claims and not mere exemplary (response pg 17).
This is not found persuasive because the claims are still indefinite.
Applicant urges that US Patent No. 5,691,473 discloses the use of Penetrometers to test flesh firmness. Specifically, in addition to the entire document describing the exemplary methodologies to testing flesh firmness, page 7 lines 2-5 and page 8 lines 44-53 describe exemplary flesh firmness and flesh firmness testing methodology known in the art (response pg 17).
This is not found persuasive. There are no page numbers in US Patents, so it is unclear what page 7 lines 2-5 and page 8 lines 44-53 refer to. Additionally, ‘473 claims a method of measuring the firmness of a fruit or vegetable. It does not claim a plant by that firmness.
Lastly, in light of the numerous references used in arguments but not provided, Applicant is reminded that evidence submitted after final will not be considered unless Applicant provides a showing of good and sufficient reasons of why they were necessary and not earlier presented.
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 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 and 8-9 are rejected under 35 U.S.C. 112(d) or 35 U.S.C. 112(pre-AIA ), fourth 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.
Due to Applicant’s amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 24 November 2025. Applicant does not appear to have responded to this rejection in the response filed 23 March 2026.
Claim 1, parent to claim 3, is drawn to a watermelon plant characterized by a tolerance to water feed conditions of less than 190-210 m3 per 1000 m2. Dependent claim 3 recites that the plant is characterized by a tolerance to water feed conditions of less than 380-420 M3 per 1000 m2. Claim 3 thus fails to include all the limitations of the claim upon which it depends.
Claim 4, parent to claim 8, is drawn to a watermelon plant with seedless fruits. Dependent claim 8 recites that the plant is one of a list that includes Essence and Kon-Tiki.
The specification describes Essence and Kon-Tiki as having more than 70 seeds per female fruit (pg 28, ¶4). Claim 8 thus fails to include all the limitations of the claim upon which it depends.
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.
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 1-11, 22 and 25-26 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 contain subject matter that 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.
Due to Applicant’s amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 24 November 2025, as applied to claims 1-11 and 22. Applicant’s arguments filed 23 March 2026 have been fully considered but they are not persuasive.
A. The specification does not describe the genes that confer tolerance to water feed conditions of less than 190-210 m3 or 380-420 m3 per 1000 m2, a flesh firmness of between 1.1-1.6 kg or of at least 0.9 kg, and red flesh.
The claims require watermelon plants with tolerance to water feed conditions of less than 190-210 m3 or 380-420 m3 per 1000 m2 or flesh firmness of between 1.1-1.6 kg or of at least 0.9 kg. However, drought tolerance is affected by root growth, which is affected by growth medium properties, temperature and nutrients (Malabane et al, 2023, Front. Plant. Sci 13:1074395, see paragraph spanning pg 2-3). Thus, “tolerance to water feed conditions” is relative to the environmental conditions under which a plant is grown. A plant of a given genotype will be encompassed by the claims when grown under some environmental conditions and not others.
The claims require watermelon plants with a flesh firmness of between 1.1-1.6 kg or of at least 0.9 kg. However, irrigation conditions and location affect fruit firmness (Leskovar et al, 2003, Acta Hort. 628:147-151 - see paragraph bridging pages 148-149 and table 2; and Bang et al, 2004, J. Hort. Sci., 76:885-890 - see figure 1B and paragraph spanning the columns on pg 888). Thus, “flesh firmness” is relative to the environmental conditions under which a plant is grown. A plant of a given genotype will be encompassed by the claims when grown under some environmental conditions and not others.
The claims require watermelon plants with red flesh. However, the location the plant is grown affects red hue and chroma (color intensity) (Perkins-Veazie, 2001, J. Sci. Food Agric, 81:983-987; see Table 2). Thus, “red fruit flesh” is relative to the environmental conditions under which the plant is grown. For example, a plant can have red flesh when grown under some environmental conditions and pink flesh when grown under others. A plant of a given genotype will be encompassed by the claims when grown under some environmental conditions and not others.
Thus, the claimed characteristics are functional, rather than structural. In other words, they are simply the function of the genetic characteristics of the plant in response to the environment in which the plant was grown. However, functional characteristics that are subject to change based on environmental conditions cannot serve as the sole basis to describe the invariable structural features common to members of the claimed genus.
These environmental effects mean that a plant of a given genotype may have the claimed phenotype(s) when grown under certain environmental conditions and not under others, and that a plant of a given genotype would be encompassed by the claims when grown under certain environmental conditions and not when grown under others. Thus, the public would not know when they are infringing or when they might infringe the claimed plants.
Thus, when taken with the evidence above, the instant claims are not directed to a specific variety with a constant genetic basis, but rather are directed to an extremely large genus of plants whose structure (i.e., genome) could vary dramatically as the plants are only required to have phenotypes that could change yearly or due to any number of environmental influences. There is no way that a practitioner would be able to determine if a particular watermelon plant in a given year would infringe the instant claims.
Because the phenotypic manifestations of the gene(s) that confer the claimed traits are affected by environment, the genes (i.e., structures) that confer these traits must be described. They are not. The structural features that distinguish watermelon plants with the genes that confer the claimed drought tolerance, flesh firmness, and flesh color traits from other watermelon plants are not described in the specification.
The only species mentioned in the specification are Paradigm, ORS 6064, Essence, ORS6227 and Kon-Tiki. All of these appear to have PI 482312 in their genetic background (based on dependency of the claim in which they are claimed on claim 5). The specification describes no watermelon plants with the claimed drought resistance phenotype derived from other drought resistant watermelon plants.
The specification does not describe any source of the flesh firmness and flesh color traits; whether Paradigm, ORS 6064, Essence, ORS6227 and Kon-Tiki represent the full scope of genes conferring those traits cannot be determined.
Thus, the specification does not describe watermelon plants over the full scope of the claims.
One of skill in the art would not recognize that Applicant was in possession of the necessary common attributes or features of the genus in view of the disclosed species.
Since the disclosure fails to describe the common attributes that identify members of the genus, and because the genus is highly variant, Paradigm, ORS 6064, Essence, ORS6227 and Kon-Tiki are insufficient to describe the claimed genus.
Hence, Applicant has not, in fact, described watermelon plants over the full scope of the claims, and the specification fails to provide an adequate written description of the claimed invention.
Therefore, given the lack of written description in the specification with regard to the structural and functional characteristics of the claimed compositions, Applicant does not appear to have been in possession of the claimed genus at the time this application was filed.
B. The specification fails to describe Essence and Kon-Tiki
35 USC 112 requires that the specification have a written description of the invention:
35 U.S.C. 112 Specification.
(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. (emphasis added)
The instant Specification fails to satisfy the written description requirement of 35 U.S. Code § 112(a) because it does not provide a description sufficient to conduct an examination, including a complete search of the prior art.
MPEP 2163 (I) states
The written description of the deposited material needs to be as complete as possible because the examination for patentability proceeds solely on the basis of the written description. See, e.g., In re Lundak, 773 F.2d 1216, 227 USPQ 90 (Fed. Cir. 1985); see also 54 Fed. Reg. at 34,880 ("As a general rule, the more information that is provided about a particular deposited biological material, the better the examiner will be able to compare the identity and characteristics of the deposited biological material with the prior art.").
The instant Specification fails to satisfy the written description requirement of 35 U.S. Code § 112(a) because it does not provide enough description to be sufficient to aid in the resolution of questions of infringement.
MPEP 2163(I) states
The description must be sufficient to permit verification that the deposited biological material is in fact that disclosed. Once the patent issues, the description must be sufficient to aid in the resolution of questions of infringement." Id. at 34,880.) (Quoting the Deposit of Biological Materials for Patent Purposes, Final Rule, 54 Fed. Reg. 34,864 (August 22, 1989) at 34,880).
In the instant application, a full examination cannot be conducted because applicant failed to provide the breeding history for Essence and Kon-Tiki. A plant variety is defined by both its genetics (i.e., its breeding history) and its traits. In the instant application, Applicant has not provided a description of the plant traits and is silent or incomplete as to the breeding history used to produce these varieties.
The only trait the specification describes for Essence and Kon-Tiki is that they have more than 70 seeds per female fruit (pg 28, ¶4). By claim dependency, Essence and Kon-Tiki are described as having a tolerance to water feed conditions of less than 420 liters per said plant, seedless fruits with a flesh firmness of between 1.1-1.6 kg as measured using a specific tester, and red fruit flesh. The description for Essence and Kon-Tiki that they both have more than 70 seeds per female fruit and have seedless fruit is contradictory.
Regardless, these are an insufficient description of the phenotypic traits of Essence and Kon-Tiki.
The criticality of a breeding history in assessing the intellectual property rights of a plant is well recognized in the field of plant breeding. With regard to Plant Patents, MPEP 1605 states that a complete detailed description of a plant includes “the origin or parentage”. Other bodies that grant intellectual property protection for plant varieties require breeding information to evaluate whether protection should be granted to new varieties. A breeding history, including information about parentage and breeding methodology, is part of the requirements of Plant Variety Protection (PVP) applications. That information is used to “determine if development is sufficient to consider the variety new” (USDA, “Applying for a Plant Variety Certificate of Protection”, https://www.ams.usda.gov/services/pvpo/application-help/apply, accessed 1 May 2023). Additionally, the International Union for the Protection of New Varieties of Plants (UPOV) considers breeding history and methodology part of its evaluation of essentially derived plant varieties (UPOV, 2017, Explanatory Notes on Essentially Derived Varieties Under the 1991 Act of the UPOV Convention, see notes 14 and 30). While the USPTO, USDA, and UPOV have different laws governing intellectual property rights, all recognize that a breeding history is an essential part of adequate description of the plant sought to be protected.
The breeding history is also necessary to aid in the resolution of patent infringement by providing information necessary to determine whether differences in plants where genetic differences, differences caused by the environment, or differences within the accepted variation within a variety. Historically, the USPTO has considered breeding history information when determining the patentability of a new plant variety (See Ex Parte C (USPQ 2d 1492 (1992) and Ex Parte McGowen, Board Decision in Application 14/996,093, 2020). In both of these cases, there were many differences cited by the applicant when comparing the prior art and the new plant variety. However, because the breeding history was available, these differences were deemed to be obvious and within the natural variation expected in a backcrossing breeding process. Without a breeding history in these cases, a complete comparison with the prior art could not have been possible.
Moreover, a specification an incomplete breeding history hampers the public’s ability to resolve infringement analysis with plants already in the prior art as well as plants that have not yet been patented. Because the instant specification lacks the breeding history, the public will not be able to fully resolve questions of infringement. Since the breeding history, including the parents, is not known to the public, the public could only rely on the phenotype of the claimed plant for assessing potential infringement.
As seen above in Ex Parte C and Ex Parte McGowan, a trait table is insufficient to differentiate varieties by itself. It has been long established that intracultivar heterogeneity exists in crop species. The assumption that elite cultivars are composed of relatively homogenous genetic pools is false (Haun et al, 2011, Plant Physiol. 155:645-655; see pg 645, left column). Segregation, recombination, DNA transposition, epigenetic processes, and spontaneous mutations are some of the reasons elite cultivar populations will maintain some degree of plant-to-plant variation (pg 645, right column, paragraph 2, to pg 646, left column, paragraph 3). In addition, environmental variation may lead to phenotypic variation within a cultivar. (Großkinsky et al, 2015, J. Exp. Bot. 66:5429-5440; see pg 5430 left column, paragraph 2, and right column, paragraph 2). In view of this variability, a breeding history is an essential and the least burdensome way to provide genetic information needed at adequate describe a newly developed plant.
Thus, an application that does not clearly describe the breeding history does not provide an adequate written description of the invention.
To overcome this rejection, Applicant must amend the specification to provide the breeding history used to develop Essence, Kon-Tiki and OR60511. When identifying the breeding history, Applicant should identify any and all other potential names for all parental lines utilized in the development of the instant variety. For example, if Applicant’s breeding history uses proprietary line names, Applicant should notate in the specification all other names of the proprietary lines, especially publicly disclosed or patented line information. If the breeding history encompasses a locus conversion or a backcrossing process, Applicant should clearly indicate the recurrent parent and the donor plant and specifically name the trait or transgenic event that is being donated to the recurrent parent. If one of the parents is a backcross progeny or locus converted line of a publicly disclosed line, Applicant should provide the breeding history of the parent line as well (i.e., grandparents).
Applicant is also reminded that they have a duty to disclose information material to patentability. Applicant should also notate the most similar plants which should include any other plants created using similar breeding history (such as siblings of the instant variety). This information can be submitted in an IDS with a notation of the relevancy to the instant application or as information submitted as described in MPEP 724 (e.g., trade secret, proprietary, and Protective Order).
PI 482312 and Paradigm are not included in this rejection because they are known in the prior art (see the art cited in the 35 USC 102 rejections below for Paradigm and Table 2 of Zhang et al, 2011, HortSci. 46:1245-1248 for PI 482312).
Response to Arguments
Applicant urges that UPOV TG/244/1 Rev allows certain breeding history information to be provided in a confidential section of the Technical Questionnaire (response pg 17-18).
This is not found persuasive. UPOV TG/244/1 Rev could not be considered because it was not sent. However, written description is controlled by 35 USC 112(a). Descriptions of claimed inventions must be in the specification, not in secret information.
Applicant urges that with regard to IUPOV breeding history and methodology being part of its evaluation of essentially derived plant varieties, the present invention is not an essentially derived plant variety (response pg 18).
This is not found persuasive because both the phenotype and breeding history must be described in the specification, as discussed in the rejection.
The first 10 words of 35 USC 112 (a) are critical.
(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. (emphasis added)
The strict interpretation of the law is clear: Applicant must provide in the specification a written description of the invention. The only question is what an “adequate written description” is. This is a fact-based inquiry done by the factfinder (i.e., the examiner) when analyzing the nature of the instant invention. The references cited, including USDA and UPOV, establish that in the plant variety art, a breeding history is part of the description of a plant variety.
It is noted that Applicant did not respond to the part of the rejection regarding a description of the genes that confer tolerance to water feed conditions of less than 190-210 m3 or 380-420 m3 per 1000 m2, a flesh firmness of between 1.1-1.6 kg or of at least 0.9 kg, and red flesh (part A above).
It is noted that Applicant did not respond to the part of the rejection regarding a description of the phenotypes of Essence and Kon-Tiki, but argued on pg 12 of the response that CPVO-TP/142/1 Final specifies 48 characteristics to describe a watermelon variety the CPVO provides to ascertain distinctness. The specification does not describe 48 characteristics of each of Essence and Kon-Tiki.
Lastly, in light of the reference used in arguments but not provided, Applicant is reminded that evidence submitted after final will not be considered unless Applicant provides a showing of good and sufficient reasons of why they were necessary and not earlier presented.
Claims 1-11, 22 and 25-26 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 claims contain subject matter that 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.
Due to Applicant’s amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 24 November 2025, as applied to claims 1-11 and 22. Applicant’s arguments filed 23 March 2026 have been fully considered but they are not persuasive.
The claims require seeds of Essence and Kon-Tik watermelon.
Since the seed claimed is essential to the claimed invention, it must be obtainable by a repeatable method set forth in the specification or otherwise be readily available to the public.
The specification does not disclose a repeatable process to obtain the exact same seed in each occurrence and it is not apparent if such a seed is readily available to the public.
If a seed is not so obtainable or available, a deposit thereof may satisfy the requirements of 35 U.S.C. 112. So long as the number of seeds deposited complies with the requirements of the IDA where the deposit is made, the USPTO considers such a compliant submission as satisfying the rules under 37 CFR 1.801 through 1.809.
It is noted that Applicant intends to deposit seeds for Kon-Tiki at the ATCC (pg 28, ¶4), but there is no indication that the seeds have been deposited. Applicant also appears to have deposited seeds for Essence (claim 8). For both of these varieties there is no affirmative statement in the specification that all restrictions upon availability to the public will be irrevocably removed upon granting of the patent and no indication of whether or not the deposit of these seeds was/will be made under the terms of the Budapest Treaty.
If the deposit of these seeds was/will be made and accepted under the terms of the Budapest Treaty, then an affidavit or declaration by the Applicant, or a statement by an attorney of record over his or her signature and registration number, stating that the seeds will be irrevocably and without restriction or condition released to the public upon the issuance of a patent would satisfy the deposit requirement made herein. Applicant must also indicate whether the deposits were accepted under the terms of the Budapest Treaty.
If the deposits have not been/will not be made under the Budapest Treaty, then in order to certify that the deposit, meets the requirements set forth in 37 CFR 1.801-1.809, Applicant may provide assurance of compliance by an affidavit or declaration, or by a statement by an attorney of record over his or her signature and registration number showing that
(a) during the pendency of the application, access to the invention will be afforded to the Commissioner upon request;
(b) all restrictions upon availability to the public will be irrevocably removed upon granting of the patent;
(c) the deposit will be maintained in a public depository for a period of 30 years or 5 years after the last request or for the enforceable life of the patent, whichever is longer; and
(d) the viability of the biological material at the time of deposit will be tested (see 37 CFR 1.807).
In addition, the identifying information set forth in 37 CFR 1.809(d) should be added to the specification. See 37 CFR 1.801 - 1.809 [MPEP 2401-2411.05] for additional explanation of these requirements.
Paradigm is not included in this rejection because it is known in the prior art (see the art cited in the 35 USC 102 rejection below).
Response to Arguments
Applicant urges that the deposit was made in an International Depositary Authority (IDA) as established under the Budapest Treaty and all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the granting of the patent (response pg 18-19).
This is not found persuasive. The rejection requires deposit of both Essence and Kon-Tik. It is not clear to which variety Applicant’s reference to a deposit refers. Further, a deposit under the Budapest Treaty must be accepted under the terms of the Budapest Treaty; Applicant has not provided any indication that the deposit was so accepted. Lastly, Applicant has not added the identifying information set forth in 37 CFR 1.809(d) to the specification.
Applicant urges that Johnson and the other articles are evidentiary conducive to establishing "enablement" due to the fact that skilled artisans in the field of plant breeding follow, as an integral part of exercising their skill in the art, analogous description and details to those enumerated by the Applicant the specification and claims, are sufficient to skilled artisans in the field of plant breeding to understand, fathom and create a repeatable methodology (response pg 16).
This is not found persuasive. The claimed Essence and Kon-Tik verities are not enabled because they are not obtainable by a repeatable method set forth in the specification or otherwise be readily available to the public. They can be enabled by deposit as specified above.
Claim Rejections - 35 USC § 102
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.
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 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.
Claims 1-2, 4-11, 22 and 25-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson et al (2018, “Seedless Watermelon Variety Trial Results 2018”, University of Delaware Cooperative Extension, Georgetown, DE).
Due to Applicant’s amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 24 November 2025, as applied to claims 1-2, 4-11 and 22. Applicant’s arguments filed 23 March 2026 have been fully considered but they are not persuasive.
Johnson et al teach watermelon varieties Paradigm and ORS 6064 (Table 2, pg 17 and 25). Because the plants were started from seed (pg 3, ¶5), they are not grafted.
Because instant claim 8, which recites Paradigm, is dependent upon claim 4, Paradigm has tolerance to water feed conditions of less than 420 liters per said plant, produces seedless fruits that have a flesh firmness of between 1.1-1.6 kg, measured by PENETROMETER FRUIT PRESSURE TESTER model FT 011 (0-5 kg), using an 11mm plunger attachment, where flesh firmness of at least 0.9 kg is indicative of a firm flesh, and a red fruit flesh, as well as bearing genetic background from PI 482312 or a progeny thereof. PI 482312, which is diploid and a Citrullus lanatus var. citroides plant, or a progeny thereof, would be for readily producing a drought resistant tetraploid watermelon, and by the language in instant claim 4, PI 482312 is a wild type drought resistant watermelon plant. Paradigm is indistinguishable from a plant produced from a progeny of any generation of a tetraploid watermelon with at least 70 seeds per fruit or of a ORS60511 plant.
The instant specification teaches that water feed conditions of less than 420 liters per said plant is “essentially equivalent” to 190-210 m3 per 1000 m2 (pg 26, ¶3). Paradigm would share a parental history with itself. Thus, Johnson et al’s teaching of Paradigm anticipates claims 1-2, 4-11, 22 and 25-26.
Because originally filed claim 8, which recited ORS 6064, was dependent upon claim 4, ORS 6064 has tolerance to water feed conditions of less than 420 liters per said plant, produces seedless fruits that have a flesh firmness of between 1.1-1.6 kg, measured by PENETROMETER FRUIT PRESSURE TESTER model FT 011 (0-5 kg), using an 11 mm plunger attachment, where flesh firmness of at least 0.9 kg is indicative of a firm flesh, and a red fruit flesh, as well as bearing genetic background from PI 482312 or a progeny thereof. PI 482312, which is diploid and a Citrullus lanatus var. citroides plant, or a progeny thereof, would be for readily producing a drought resistant tetraploid watermelon, and by the language in instant claim 4, PI 482312 is a wild type drought resistant watermelon plant. Paradigm is indistinguishable from a plant produced from a progeny of any generation of a tetraploid watermelon with at least 70 seeds per fruit or of a ORS60511 plant. Thus, Johnson et al’s teaching of ORS 6064 anticipates claims 1-2, 4-7, and 10-11.
Response to Arguments
Applicant urges that ORS 6064 has been removed from claims 8 and 22 (response pg 21).
This is not found persuasive because Johnson et al teach Paradigm and ORS 6064. Johnson et al’s teaching of Paradigm anticipates claims 1-2, 4-11, 22 and 25-26 and their teaching of ORS 6064 anticipates claims 1-2, 4-7, and 10-11 for the reasons above. Deletion of a limitation from a dependent claim does not exclude it from parent claims.
Applicant urges that the Johnson article provides further and better particulars to the fact that a skilled artisan would look to select the highest yielding varieties for the purpose of selective breeding; selection of several varieties was performed based on the above indicia; in the instant application Applicant specifically selected several varieties and save for only one variety, all varieties selected for crossing are not part of the examples provided by Johnson on page 5, paragraphs 2 and 4; thus, Johnson actually "teaches away" from the present invention and provides prima facie support for the asserted inventiveness by the Applicant (response pg 15-16).
This is not found persuasive. “Teaching away” does not apply to an anticipation rejection. Johnson teaches one of the claimed varieties, Paradigm, and teaches a species of the genus claims 1-2, 4-7, and 10-11.
Applicant urges that the fact that OriGene located, selected and cultivated the specific varieties in the specification is indicative of the inventiveness behind this application (response pg 16).
This is not found persuasive. The actions of an Applicant are not how novelty is evaluated under 35 USC 102.
Claims 1-2, 4-7, and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guan et al (2016, Variety Trials in Southwest Indiana - 2016, /https://ag.purdue.edu/department/ arge/swpap/_docs/2016-presentation.pdf).
Due to Applicant’s amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 24 November 2025, as applied to claims 1-2, 4-11 and 22. Applicant’s arguments filed 23 March 2026 have been fully considered but they are not persuasive.
Guan et al teach watermelon varieties ORS6227 and ORS 6064 (Tables on each of pg 6-9, Figure on pg 10). Because the plants were started from seed (2nd table on pg 3), they are not grafted.
Because originally filed claim 8, which recited ORS6227 and ORS 6064, was dependent upon claim 5, which is dependent upon claim 4, ORS6227 and ORS 6064 have tolerance to water feed conditions of less than 420 liters per said plant, produce seedless fruits that have a flesh firmness of between 1.1-1.6 kg, measured by FRUIT PRESSURE TESTER model FT 011 (0-5 kg) using an 11 mm plunger attachment indicative of a firm flesh and a red fruit flesh, as well as bearing genetic background from PI 482312 or a progeny thereof. PI 482312, which is diploid and a Citrullus lanatus var. citroides plant, or a progeny thereof, would be for readily producing a drought resistant tetraploid watermelon, and by the language in instant claim 4, PI 482312 is a wild type drought resistant watermelon plant. ORS6227 and ORS 6064 are indistinguishable from a plant produced from a progeny of any generation of a tetraploid watermelon with at least 70 seeds per fruit or of a ORS60511 plant.
The instant specification teaches that water feed conditions of less than 420 liters per said plant is “essentially equivalent” to 190-210 m3 per 1000 m2 (pg 26, ¶3).
Response to Arguments
Applicant urges that ORS 6064 and ORS 6227 have been removed from claims 8 and 22 (response pg 21).
This is not found persuasive because Guan et al’s teaching of ORS 6064 and ORS 6227 anticipates claims 1-2, 4-7, and 10-11 for the reasons above. Deletion of a limitation from a dependent claim does not exclude it from parent claims. Claim 22 is no longer part of this rejection.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-11, 22 and 25-26 are rejected under 35 U.S.C. 103(a) as being unpatentable over Johnson et al (2018, “Seedless Watermelon Variety Trial Results 2018”, University of Delaware Cooperative Extension, Georgetown, DE) in view of Miguel et al (2004, Scientia Hort. 103:9-17).
Due to Applicant’s amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 24 November 2025, as applied to claims 1-11 and 22. Applicant’s arguments filed 23 March 2026 have been fully considered but they are not persuasive.
The claims are drawn to a grafted watermelon plant and has a tolerance to water feed conditions of less than 380-420 m3 per 1000 m2 and having properties such that seedless fruits are produced with a flesh firmness of between 1.1-1.6 kg, measured by FRUIT PRESSURE TESTER model FT 011 (0-5 kg) using an 11mm plunger attachment, and a red fruit flesh.
The teachings of Johnson et al are discussed in the 35 USC 1002 rejection above. As explained in the that rejection, Paradigm and ORS 6064 are watermelon plants that have a tolerance to water feed conditions of less than 380-420 m3 per 1000 m2 and having properties such that seedless fruits are produced with a flesh firmness of between 1.1-1.6 kg, measured by FRUIT PRESSURE TESTER model FT 011 (0-5 kg) using an 11mm plunger attachment, and a red fruit flesh. Johnson et al do not teach grafted Paradigm and ORS 6064.
Miguel et al teach grafting triploid watermelon plants onto Shintoza rootstock (paragraph spanning pg 10-11). The resulting plants had an over 3-fold higher yield (pg 15, ¶2).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to graft Paradigm and/or ORS 6064 plants taught by Johnson et al onto Shintoza rootstock as described in Miguel et al. One of ordinary skill in the art would have been motivated to do so because doing so would increase yields (Miguel et al, pg 15, ¶2).
Response to Arguments
Applicant urges that Johnson et al do not teach grafted Paradigm and ORS 6064 (response pg 20).
This is not found persuasive because this is not an anticipation rejection or an obviousness rejection based on a single reference; this is a rejection based on a combination of references.
Applicant urges that Bigdelo, Fallik and Edelstein teach that Shintosa and other rootstock affcetd some traits of watermelon plants and not others; thus the art of grafting watermelons directed towards reduced water consumption, "teaches away" from the use of hybrid rootstock Shintosa (response pg 20).
This is not found persuasive. None of Bigdelo, Fallik or Edelstein could be considered because they were not sent.
Applicant urges that ORS 6064 has been removed from claims 8 and 22 (response pg 21).
This is not found persuasive because Johnson et al teach Paradigm and ORS 6064. Johnson et al’s teaching of Paradigm in view of Miguel et al make obvious claims 1-11, 22 and 25-26 and Johnson et al’s teaching of ORS 6064 in view of Miguel et al make obvious claims 1-7, and 10-11 for the reasons above. Deletion of a limitation from a dependent claim does not exclude it from parent claims.
Lastly, in light of the numerous references used in arguments but not provided, Applicant is reminded that evidence submitted after final will not be considered unless Applicant provides a showing of good and sufficient reasons of why they were necessary and not earlier presented.
Claims 1-7 and 10-11 are rejected under 35 U.S.C. 103(a) as being unpatentable over Guan et al (2016, Variety Trials in Southwest Indiana - 2016, /https://ag.purdue.edu/department/arge/ swpap/_docs/2016-presentation.pdf) in view of Miguel et al (2004, Scientia Hort. 103:9-17).
Due to Applicant’s amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 24 November 2025, as applied to claims 1-11 and 22. Applicant’s arguments filed 23 March 2026 have been fully considered but they are not persuasive.
The claims are drawn to a grafted watermelon plant and has a tolerance to water feed conditions of less than 380-420 m3 per 1000 m2 and having properties such that seedless fruits are produced with a flesh firmness of between 1.1-1.6 kg, measured by FRUIT PRESSURE TESTER model FT 011 (0-5 kg) using an 11mm plunger attachment, and a red fruit flesh.
The teachings of Johnson et al are discussed in the 35 USC 1002 rejection above. As explained in the that rejection, ORS6227 and ORS 6064 are watermelon plants that have a tolerance to water feed conditions of less than 380-420 m3 per 1000 m2 and having properties such that seedless fruits are produced with a flesh firmness of between 1.1-1.6 kg, measured by FRUIT PRESSURE TESTER model FT 011 (0-5 kg) using an 11mm plunger attachment, and a red fruit flesh. Johnson et al do not teach grafted ORS6227 and ORS 6064.
Miguel et al teach grafting triploid watermelon plants onto Shintoza rootstock (paragraph spanning pg 10-11). The resulting plants had an over 3-fold higher yield (pg 15, ¶2).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to graft ORS6227 and/or ORS 6064 plants taught by Johnson et al onto Shintoza rootstock as described in Miguel et al. One of ordinary skill in the art would have been motivated to do so because doing so would increase yields (Miguel et al, (pg 15, ¶2).
Response to Arguments
Applicant urges that ORS 6064 and ORS 6227 have been removed from claims 8 and 22 (response pg 21).
This is not found persuasive because Guan et al’s teaching of ORS 6064 and ORS 6227 in view of Miguel et al make obvious claims 1-7 and 10-11 for the reasons above. Deletion of a limitation from a dependent claim does not exclude it from parent claims. Claim 22 is no longer part of this rejection.
Applicant urges that it would be clear to a person skilled in the art, the quantity of experimentation necessary, the amount of direction and guidance presented is sufficient for a person skilled in the art, the presence of the examples in the specification and the relative skill of those in art is that of a watermelon breeder and does not require specialized skills beyond those of general watermelon breeders in conjunction with overcoming the prior art claim 1-11 and 22, as amended and new claims 24 and 25, overcome the rejections under 35 USC § 102 and 35 USC 103 (response pg 21).
This is not found persuasive because the art and the rejections have not been overcome, for the reasons above.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anne R. Kubelik, Ph.D., whose telephone number is (571) 272-0801. The examiner can normally be reached Monday through Friday, 9:00 am - 5:00 pm Eastern.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham, can be reached at (571) 270-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Anne Kubelik/Primary Examiner, Art Unit 1663
Prosecution Insights