DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first-inventor-to-file provisions of the AIA .
Status
Claims 1-18 as filed on 25 April 2023 are pending.
This application was transferred to the docket of Russell T. Boggs.
examined herein.
A restriction requirement was posted on 24 September 2025 requiring election between two groups: claim 1-10 and 13 AND claims 11-12 and 14-18.
In the response of 17 February 2026 Applicant elected the second groups of claims, claims 11-12 and 14-18; with traverse.
Applicant’s arguments are persuasive the requirement is withdrawn.
Claims 1-18 as filed on 25 April 2023 are examined herein.
Examiner’s Notes & Claim Interpretation
Citations to Applicant’s specification are abbreviated herein “Spec.”
Occasionally, “SIN:” may be used as an abbreviation “SEQ ID NO:” herein.
Spinach, that is, Spinacia oleracea, does not occur in the wild. Hallavant & Ruas (2014) Veget Hist Archaeobot 23:153–65 (Intro.). The claims are interpreted as if they encompass Spinacia oleracea, but not on wild spinaches.
Claim 13 is extremely broad since it just reads on a spinach plant produced by a method where the steps are set forth using open language – i.e., it is not a first generation offspring.
The “DEPOSIT” statement on pages 5-6 perfects the deposit. The deposit was accepted under the Budapest Treaty and will be irrevocably be released upon granting o f a patent.
This application claims priority to application serial no. 17/085,860 filed on 30 October 2020 (this application became U.S. Patent Publication No. 2022/0135995 A1 and then U.S. Patent No. 11,473,102 (‘102 Patent). Claims to the ‘102 Patent are also drawn to WOLF-27 and SEQ ID NO:10 as the overall sequence.
As can be seen in the alignment below, the polypeptide sequences of the’102 Patent and the instant application are the same.
On 4 May 2018, Kock et al., WO2018/060474 published claiming priority to PCT/EP 2017/074863 (priority in 2016).
. This publication teaches a large number of WOLF proteins and coding sequences. The corresponding US Patent Publication appears to be US 2019/0241905 A1, published 8 August 2019 (app. ser. no. 16,361,564).
Specification
The specification is objected to because it has an active hyperlink in paragraph 0035.
Claim Objections
Claims 1-4, 10, 14 and 17 are objected to because of the following informalities.
Claims 1, 2, 3, 4, 14 are objected because they recite Markush groups of values without using a conjunction such as ‘or’ or ‘and.’
Claim 17 is objected to because it recites the limitation “optional” and thus the limitations after “optional” are not considered while determining patentability.
Consequently, Applicant is advised that should claim 10 be found allowable, claims 17 will be objected to under 37 CFR § 1.75 as being a substantial duplicate. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01 (m).
Claim 10 is drawn to using the claimed allele in a cross of spinach plants. That is also the subject matter of claim 17 without the optional steps.
Appropriate correction is requested.
35 USC § 112(b)-Based Claim Rejections
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 35 U.S.C. 112 (pre-AIA ), second paragraph:
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 1-18 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 which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 1-18 are rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicants regard as the invention.
Claims 1, 2, and 14 are directed to preferred embodiments recited as a series of percentages "in order of increased “preference” (underlining added).
However, a description of examples and preferences may be set forth in the specification rather than in a single claim(s). A narrower range or preferred embodiment may also be set forth in another independent claim or in a dependent claim. If stated in a single claim, examples and preferences lead to confusion over the intended scope of the claim, because it is not clear whether the claimed narrower range is a limitation. See MPEP § 2173.05(c). A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), where broad language is followed by "such as" and then narrow language.
This renders a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Id. In the present instance, claims 1, 2, and 14 recite relatively broader embodiments followed by exemplary, narrower embodiments (limitations) with respect to percentages of sequence identity.
Claim 18 is also rejected because preceding claim 17 uses the term(s) "optionally". Because the limitation following the word "optionally" is only an optional part of the claimed invention, the limitation following the word fails to impart patentable weight to the claimed invention. Therefore, it is unclear whether the step of "selection of a plant" in claim 18 is required, when in preceding claim 17 it is optional.
Dependent claims are included in these rejections because they fail to contain limitations obviating these rejections.
35 USC § 101- Based Claim Rejections
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 2, 4 and 10 are rejected under 35 U.S.C. 101 because there is no evidence on the record that Applicant created the alpha-WOLF 27 allele.
Therefore it is reasonable to interpret the available information that Applicant identified the allele in a spinach plant. Therefore claim 1 reads on a naturally-occurring gene. Applicant defines “allele” in paragraph 0015 but it does not require it to be in a plant. Further the definition ends with confirming that it is a nucleic acid.
The genetic background of the spinach plant is not relevant to this analysis. Even if the allele was identified in a spinach plant, it falls within the scope of the Supreme Court’s Myriad decision. Under the Myriad decision, a naturally-occurring nucleic acid or fragment thereof, whether isolated or not, that is not patent-eligible pursuant to the Supreme Court decision in Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 133 S.Ct. 2107, 186 L.Ed.2d 124, 106 USPQ2d 1972 (2013).
Claim 1 reads on an allele. In view of Applicant’s definition, it is a nucleic acid.
Thus the claimed invention is directed to a natural phenomenon without significantly more. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claim does not require that the allele is in a plant. The resistance pattern is merely claimed as a property.
Claim 3 is not included because it is placed in a spinach plant. Spinach does not occur in the wild (see supra). The claims are interpreted herein as if “spinach” means S. oleracea.
Claim 10 is included because it includes a cell which is arguably a form of isolated DNA. Claim 9 is not included because it must be capable of giving rise to a plant.
Claim 4 is included because, for example, merely reads on a property of this allele without requiring that it is in a plant.
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 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.
Claim 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Den Braber, US Patent Publication No. 2013/0230635 A1.
Claim 13 reads on a spinach plant produced by a crossing method but requires no particular phenotype or genotype.
The plant is produced by the method of claim 10, but claim 10 uses the open transitional phrase “comprising:” and thus can include additional steps including additional breeding steps.
Under the product-by-process analysis required by the MPEP, patentability of a product claim must be analyzed based on the characteristics of the product. See MPEP § 2113(i). Therefore claim 13 reads on any hybrid spinach plant. Den Braber discloses such a plant and thus anticipates claim 13.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 11,473,102 B2 which issued from one of the parent applications in the instant family. Although the claims at issue are not identical, they are not patentably distinct from each other under the following analysis.
Instant claim 5 is drawn to a spinach plant as represented by the deposited seeds. The same deposit is referenced in claim 1 of the ‘102 Patent.
The SEQ ID NOs referenced in claim 1 of the ‘102 Patent are referenced in the instant claims but at narrower percentages in the Patent. Thus, with respect to the sequences, the patent are species of the instant claimed genera. The allele of instant claim 1 is obvious in view of the plants claimed in the ‘102 Patent.
The, e.g. sequencing, required in instant claims 8 and 15-16 is obvious in view of claims 11 and 12.
Instant claim 17 is obvious in view of the Patent’s claim 13.
Instant claim 13 as explained supra reads on a spinach plant.
The other claims have limitations corresponding to those in the ‘102 Patent.
The ‘t02 Patent also uses the previous “Pfs” terminology while the instant claims use “effusa” terminology. See specification paragraph 0005.
Conclusion
No claim is allowed.
Allowable Subject Matter
The claimed WOLF-27 sequence, SEQ ID NO:10, is free of the prior art of record. A similar sequence is taught by Kock et al.; U.S. Patent Publication No. 2022/0195453; but it falls outside the scope of the claims.
US-17-526-107-125
Sequence 125, US/17526107
GENERAL INFORMATION
APPLICANT: Rijk Zwaan Zaadteelt en Zaadhandel B.V.
TITLE OF INVENTION: METHOD FOR MODIFYING THE RESISTANCE PROFILE
TITLE OF INVENTION: OF SPINACIA OLERACEA TO DOWNY MILDEW
FILE REFERENCE: L/2VX25/JGE/467
CURRENT APPLICATION NUMBER: US/17/526,107
CURRENT FILING DATE: 2021-11-15
PRIOR APPLICATION NUMBER: US 16/361,564
PRIOR FILING DATE: 2019-03-22
PRIOR APPLICATION NUMBER: PCT/EP2017/074863
PRIOR FILING DATE: 2017-09-29
PRIOR APPLICATION NUMBER: PCT/EP2016/001621 DIFFERENT
PRIOR FILING DATE: 2016-09-30
NUMBER OF SEQ ID NOS: 175
SEQ ID NO 125
LENGTH: 465
TYPE: PRT
ORGANISM: Spinacia oleracea
Query Match 93.3%; Score 2283; Length 465;
Best Local Similarity 94.8%;
Matches 440; Conservative 5; Mismatches 19; Indels 0; Gaps 0;
Qy 1 WMCLRMLDLSRPDVKNLPNSIGKLLHLRYLNLSCNDDLLILPDAITRLHNLQTLLLKDCG 60
||||||||||| ||||||||||||||||||||| | | |||||||:|||||||||: ||
Db 2 WMCLRMLDLSRSDVKNLPNSIGKLLHLRYLNLSGNRKLEILPDAITKLHNLQTLLLEGCG 61
Qy 61 SLKELPKDFCKLVKLRHLDLRYCWRLIGMPLGMDMLTSLRVLPYFVVGRKKQSVDDELKA 120
|||||||||||||||||||| | |||||||||||||||||||||||||||||||||||
Db 62 SLKELPKDFCKLVKLRHLDLWGCDDLIGMPLGMDMLTSLRVLPYFVVGRKKQSVDDELKA 121
Qy 121 LKGLTEIKGSINIKICENYRIVEGMNDTGGAGYLKSMKHLTGVDITFDGGCVNPEAVLET 180
||||||||| |:|||| ||||||||||||||||||||||||||||||||||||||||| |
Db 122 LKGLTEIKGDIDIKICSNYRIVEGMNDTGGAGYLKSMKHLTGVDITFDGGCVNPEAVLAT 181
Qy 181 LEPPSNIKRLSIDNYDGTTIPVWGRAEINWAISLSHLVDIWFCGCSNLQEMPVLSKLPHL 240
|||||||| ||||||||||||||||||||||||||||||||| ||:|||||||||||||
Db 182 LEPPSNIKSLSIDNYDGTTIPVWGRAEINWAISLSHLVDIWFWDCSDLQEMPVLSKLPHL 241
Qy 241 KSLNLFKFCKLEYMESRSSSSSSDTEAATPELPTFFPSLEKLTLWYLEKLKGLGNRRSSS 300
||| ||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 242 KSLELFKFCKLEYMESRSSSSSSDTEAATPELPTFFPSLEKLTLWYLEKLKGLGNRRSSS 301
Qy 301 FPRLSELEIWECPDLTWFPPCPSLKTLKLEKNNEALQIIVKITTTRGKEEKEEDKNAGVG 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 302 FPRLSELEIWECPDLTWFPPCPSLKTLKLEKNNEALQIIVKITTTRGKEEKEEDKNAGVG 361
Qy 361 NSQDDDNVKLRKAEIDNLGYLKSLPTNCLTHLDITIRDSKEGEGEWEVGEAFQKCVSSLR 420
|||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||
Db 362 NSQDDDNVKLRKVEIDNLGYLKSLPTNCLTHLDITIRDSKEGEGEWEVGEAFQKCVSSLR 421
Qy 421 KLSIIGNHGINKVKRLSGRTGLEHFTLLDSLKFSKIEDQEDEGE 464
|||||||||||||||||||||||||||||||||| |:|||||||
Db 422 KLSIIGNHGINKVKRLSGRTGLEHFTLLDSLKFSDIDDQEDEGE 465
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL T BOGGS whose telephone number is (571)272-2805. The examiner can normally be reached Monday - Friday, 0800 to 1830 Mtn.
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/RUSSELL T BOGGS/Examiner, Art Unit 1663
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