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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-13 in the reply filed on 09/18/2025 is acknowledged.
Claims 1-19 are pending. Claims 14-19 are withdrawn by the Examiner as being drawn to nonelected subject matter.
Claims 1-13 are examined herein on the merits.
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.
Claims 1-13 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
The claims are all drawn to a potato, potato part or potato seed comprising an S-RNase allele encoding a transcript 95% or more identical to SEQ ID NO:1 and lacking an S-RNase allele encoding a transcript 95% or more identical to SEQ ID NO:2, wherein the S-RNase allele encoding a transcript 95% or mor identical to SEQ ID NO:1 is from potato variety PG6359.
In contrast, the specification only teaches potato variety PG6359 which according to the specification comprises both of the recited alleles and therefore does not meet the limitations of the claims (see Example 2 where transcript is measured for both alleles and is present). The specification does not teach any other potato let alone any other potato meeting the limitations of the instant claims. Additionally the specification does not describe how one would obtain such a potato, what starting materials would be required, and indeed the prior art is silent about what potato starting material would be lacking the ssub12 allele as described in the instant specification as SEQ ID NO:2.
This is problematic because the claims further require the potato to be a self-compatible diploid potato. In an article entitled “Overcoming Self-Incompatibility in Diploid Potato Using CRISPR-Cas9”, Enciso-Rodriguez et al (2019 Frontiers in Plant Science 10:1-12) state “A significant barrier to this approach is the occurrence of gametophytic self-incompatibility (SI) in a majority of the diploid potato germplasm, thereby preventing the ability to generate diploid homozygous lines.
In diploid potato, the gametophytic SI system is controlled by a single multiallelic locus called the S-locus (Porcher and Lande, 2005). This locus is composed of tightly linked genes, S-RNase (S-locus RNase) and SLFs (S-locus F-box) genes known also as S-haplotype-specific F-box brothers (SFBB), expressed in the style and pollen, respectively”. Accordingly, with tightly linked genes, unlinking the incompatible genes would be difficult.
The specification does not provide any description of how to arrive at the claimed potato, nor does it describe a potato with the claimed characteristics.
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.
Claims 1-13 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claims contain 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.
The claims are all drawn to a potato, potato part or potato seed comprising an S-RNase allele encoding a transcript 95% or more identical to SEQ ID NO:1 and lacking an S-RNase allele encoding a transcript 95% or more identical to SEQ ID NO:2, wherein the S-RNase allele encoding a transcript 95% or mor identical to SEQ ID NO:1 is from potato variety PG6359.
In contrast, the specification only gives guidance to potato variety PG6359 which according to the specification comprises both of the recited alleles and therefore does not meet the limitations of the claims (see Example 2 where transcript is measured for both alleles and is present). The specification does not teach any other potato let alone any other potato meeting the limitations of the instant claims. Additionally the specification does not give guidance how one would obtain such a potato, what starting materials would be required, and indeed the prior art is silent about what potato starting material would be lacking the ssub12 allele as described in the instant specification as SEQ ID NO:2.
This is problematic because the claims further require the potato to be a self-compatible diploid potato. In an article entitled “Overcoming Self-Incompatibility in Diploid Potato Using CRISPR-Cas9”, Enciso-Rodriguez et al (2019 Frontiers in Plant Science 10:1-12) state “A significant barrier to this approach is the occurrence of gametophytic self-incompatibility (SI) in a majority of the diploid potato germplasm, thereby preventing the ability to generate diploid homozygous lines.
In diploid potato, the gametophytic SI system is controlled by a single multiallelic locus called the S-locus (Porcher and Lande, 2005). This locus is composed of tightly linked genes, S-RNase (S-locus RNase) and SLFs (S-locus F-box) genes known also as S-haplotype-specific F-box brothers (SFBB), expressed in the style and pollen, respectively”. Accordingly, with tightly linked genes, unlinking the incompatible genes would be difficult.
Given the state of the art, the lack of working examples, the lack of starting material, and the unpredictability in the art as described by Eciso-Rodriguez et al as mentioned above, it would be undue experimentation for one of skill in the art to arrive at the instantly claimed potato without the starting material or guidance of how to break linkage of the two incompatible loci,
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENT T PAGE whose telephone number is (571)272-5914. The examiner can normally be reached M-F 7-4 EST.
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/BRENT T PAGE/Primary Examiner, Art Unit 1663