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 .
Claim Status
Claims 1-3, 6, 7, 10-12 and 17 are pending and examined. Claims 13-16 and 18 have been withdrawn from consideration, and claims 4, 5, 8 and 9 have been cancelled.
The rejection of claims 1-12 and 17 as being directed to a naturally occurring product without significantly more is withdrawn in light of the amendments to the claims.
The rejection of claims 3 and 10 under 35 U.S.C. 112(a) as containing subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention is withdrawn in light of the reply filed on 01 December 2025 (e.g., see p. 5).
The rejection of claim(s) 1-12 and 17 under 35 U.S.C. 102(a)(1) as being anticipated by Epstein (2017, Breeding of Disease-Resistant Celery) is withdrawn as Epstein does not disclose plants that are CMS.
Election/Restrictions
Applicant elected Group I directed to claims 1-12 and 17 in the reply filed on 22 July 2025. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 13-16 and 18 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
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, 6, 7, 10-12 and 17 REMAIN 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.
Instant claims 1-3, 6, 7, 10-12 and 17 are drawn to an apium graveolens plant with resistance to Fusarium oxysporum f. sp. appii race 4 wherein the resistance is encoded by a combination of at least two genomic regions located on linkage group 4 and 5 between 28 and 33 cM and 56 and 60 cM, respectively, wherein the genomic regions are obtainable or obtained from an apium graveolens plant deposited under deposit number NCIMB 43699, hybrid plants therefrom and seeds produced from said plant.
The specification describes that variety “1960176” was developed by treatment with Fusarium oxysporum f. sp. appii race 4 and was deposited with the NCIMB (see Example 1; see also p. 13, last ¶).
The written description requirement may be satisfied through sufficient description of a representative number of species by disclosing relevant and identifying characteristics such as structural or other physical and/or chemical properties, by disclosing functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the invention as claimed. See Eli Lilly,119 F.3d at 1568, 43 USPQ2d at 1406.
Here, and aside from describing variety “1960176”, the specification fails to describe any additional species or a representative number of species from the exhaustive genus of plants with resistance to Fusarium oxysporum f. sp. appii race 4 wherein the resistance is encoded by a combination of at least two or three or more genomic regions located on linkage group 4 and 5 between 28 and 33 cM and 56 and 60 cM, respectively.
This description is critical because the claims encompass plants that are defined by their function (i.e., Fusarium oxysporum f. sp. appii race 4 resistance) as opposed to any particular genes and/or genomic regions associated with the particularly claimed linkage groups while the claims encompass a vast genus of plants comprising any number of structures of genomic regions conferring said resistance.
Thus, the skilled artisan would not be led to believe that Applicant was in possession an apium graveolens plant comprising at least two genomic regions located on linkage group 4 and 5 between 28 and 33 cM and 56 and 60 cM, respectively, that confer resistance to Fusarium oxysporum f. sp. appii race 4.
Response to Arguments
Applicant traverses the rejection of the claims because the resistance is defined in a specific manner and structural location (Applicant reply dated 01 December 2025, p. 5, last ¶).
This argument is not persuasive because (1) the recited linkage group regions are large; (2) the specification fails to describe which alleles as encompassed by the sequence identifiers alone or in combination with one another confer resistance (e.g., see Example 4).
Applicant traverses the rejection because the claim has been amended to include markers of interest that associated with the resistance phenotype and because seed has been deposited (Applicant reply dated 01 December 2025, p. 5, last ¶).
This argument is unpersuasive because the specification fails to describe which alleles/markers alone or in combination with one another confer resistance. Here, and aside from describing variety “1960176”, the specification fails to describe any additional species or a representative number of species from the exhaustive genus of plants with resistance to Fusarium oxysporum f. sp. appii race 4 wherein the resistance is encoded by a combination of at least two or three or more genomic regions located on linkage group 4 and 5 between 28 and 33 cM and 56 and 60 cM, respectively.
In fact, Applicant’s own reply reinforces the position of the Office because Epstein does not, in fact, describe that one gene is responsible for resistance: introgression of more than one gene from PI 181714 may be required for resistance (p. 8, col. 1, ¶ 1). Thus, Epstein stands for the proposition that the genes/genomic regions responsible for conferring resistance are unknown.
Moreover, Applicant’s arguments are not commensurate in scope with what is claimed as the instant claims are not drawn to “two genes” that confer resistance but are directed at least two genomic regions comprising SNPs that are not associated with any described genes in the instant specification.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JASON DEVEAU ROSEN/Primary Examiner, Art Unit 1662