DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-27 are pending.
Claims 1-27 are examined herein.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 12/16/2025 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/16/2025 was filed after the mailing date of the Notice of Allowance on 09/16/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 4 and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-3, 5, 7-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18785424 (reference application).
Applicant claims in the instant Application as follows:
1. (Original) A spinach plant comprising at least a first set of the chromosomes of spinach line MSA-S018-1288F, a sample of seed of said line having been deposited under NCMA Accession No. 202303014.
2. (Original) A spinach seed that produces the plant of claim 1.
3. (Original) The plant of claim 1, wherein the plant is a plant of said spinach line MSA- S018-1288F.
5. (Original) The seed of claim 2, wherein the seed is a seed of said spinach line MSA- S018-1288F.
7. (Original) A plant part of the plant of claim 1, wherein the plant part comprises a cell of said plant.
8. (Currently Amended) A spinach plant having all of the physiological and morphological characteristics of the plant of claim 4.
9. (Original) A tissue culture of regenerable cells of the plant of claim 1.
10. (Original) A method of vegetatively propagating the plant of claim 1, the method comprising the steps of:(a) collecting tissue capable of being propagated from the plant of claim 1; and(b) propagating a spinach plant from said tissue.
11. (Currently Amended) A method of introducing a trait into a spinach line, the method comprising:(a) utilizing as a recurrent parent the plant of claim 3 by crossing said plant with a donor plant that comprises a trait to produce F1 progeny;(b) selecting an F1 progeny that comprises the trait;(c) backcrossing the selected F1 progeny with a plant of the same line used as the recurrent parent in step (a) to produce backcross progeny;(d) selecting a backcross progeny comprising the trait and otherwise comprising the morphological and physiological characteristics of the recurrent parent line used in step (a); and(e) repeating steps (c) and (d) three or more times to produce a selected fourth or higher backcross progeny.
12. (Currently Amended) A spinach plant produced by the method of claim 11,wherein said plant comprises the trait and otherwise comprises all of the morphological and physiological characteristics of spinach line MSA-S018-1288F when grown under the same environmental conditions.
13. (Original) A method of producing a spinach plant comprising an added trait, the method comprising introducing a transgene conferring the trait into the plant of claim 1.
14. (Currently Amended) A spinach plant produced by the method of claim 13,wherein said plant comprises the transgene and otherwise comprises all of the morphological and physiological characteristics of spinach line MSA-S018-1288F or spinach hybrid SVVB2740 when grown under the same environmental conditions.
15. (Original) A spinach plant comprising at least a first set of the chromosomes of spinach line MSA-S018-1288F, a sample of seed of said line having been deposited under NCMA Accession No. 202303014, further comprising a transgene.
16. (Original) The plant of claim 15, wherein the transgene confers a trait selected from the group consisting of male sterility, herbicide tolerance, insect resistance, pest resistance,disease resistance, modified fatty acid metabolism, environmental stress tolerance, modified carbohydrate metabolism, and modified protein metabolism.
17. (Original) A spinach plant comprising at least a first set of the chromosomes of spinach line MSA-S018-1288F, a sample of seed of said line having been deposited under NCMA Accession No. 202303014, further comprising a single locus conversion.
18. (Original) The plant of claim 17, wherein the single locus conversion confers a trait selected from the group consisting of male sterility, herbicide tolerance, insect resistance, pest resistance, disease resistance, modified fatty acid metabolism, environmental stress tolerance, modified carbohydrate metabolism, and modified protein metabolism.
19. (Original) A method for producing a seed of a spinach plant derived from at least one of spinach hybrid SVVB2740 or spinach line MSA-S018-1288F, the method comprising the steps of:(a) crossing the plant of claim 1 with itself or a different spinach plant; and(b) allowing a seed of a spinach hybrid SVVB2740- or spinach line MSA-S018- 1288F-derived spinach plant to form.
20. (Original) A method of producing a seed of a spinach hybrid SVVB2740- or spinach line MSA-S018-1288F-derived spinach plant, the method comprising the steps of:(a) producing a spinach hybrid SVVB2740- or spinach line MSA-S018-1288F- derived spinach plant from a seed produced by crossing the plant of claim 1 with itself or a different spinach plant; and(b) crossing the spinach hybrid SVVB2740- or spinach line MSA-S018-1288F- derived spinach plant with itself or a different spinach plant to obtain a seed of a further spinach hybrid SVVB2740- or spinach line MSA-S018-1288F-derived spinach plant.
21. (Original) The method of claim 20, the method further comprising repeating said producing and crossing steps of (a) and (b) using the seed from said step (b) for producing the plant according to step (a) for at least one generation to produce a seed ofApplication No.: 18/365,439 an additional spinach hybrid SVVB2740- or spinach line MSA-S018-1288F-derived spinach plant.
22. (Original) A method of producing food, the method comprising:(a) obtaining the plant of claim 1, wherein the plant has been cultivated to maturity;and (b) collecting a plant part capable of being used as food from said plant.
23. (Original) A method of determining the genotype of the plant of claim 1 or a progeny plant thereof, or a part thereof, the method comprising detecting at least a first polymorphism in a sample of nucleic acids from said plant or part thereof.
24. (Original) The method of claim 23, wherein said detecting comprises DNA sequencing or genetic marker analysis.
25. (Original) The method of claim 23, the method further comprising storing the results of said detecting on a computer readable medium or transmitting the results of the detecting.
26. (New) The spinach plant of claim 1, wherein the plant is a hybrid spinach plant.
27. (New) A spinach seed that produces the plant of claim 26.
Application 18785424 claims as follows:
1. A spinach plant of spinach hybrid SVVB2646, wherein said plant comprises a first set of chromosomes and a second set of chromosomes, wherein the first set of chromosomes is a set of the chromosomes of spinach line MSA-S018-1288F and the second set of chromosomes is a set of the chromosomes of spinach line SMB-S016-1265M, a sample of seed of said lines having been deposited under NCMA Accession No. 202303014 and ATCC Accession No. PTA-126632, respectively.
2. A spinach seed that produces the plant of claim 1.
3. A plant part of the plant of claim 1, wherein said plant part comprises a cell of said plant.
4. A spinach plant having all of the physiological and morphological characteristics of the plant of claim 1.
5. A tissue culture of regenerable cells of the plant of claim 1.
6. A spinach plant regenerated from the tissue culture of claim 5, wherein said plant has all of the physiological and morphological characteristics of spinach hybrid SVVB2646.
7. A method of vegetatively propagating the plant of claim 1, the method comprising the steps of: (a) collecting tissue capable of being propagated from the plant of claim 1; and (b) propagating a spinach plant from said tissue.
8. A method of producing a spinach plant comprising an added trait, the method comprising introducing a transgene conferring the trait into the plant of claim 1.
9. A spinach plant produced by the method of claim 8.
10. A spinach plant of spinach hybrid SVVB2646, wherein said plant comprises a first set of chromosomes and a second set of chromosomes, wherein the first set of chromosomes is a set of the chromosomes of spinach line MSA-S018-1288F and the second set of chromosomes is a set of the chromosomes of spinach line SMB-S016-1265M, a sample of seed of said lines having been deposited under NCMA Accession No. 202303014 and ATCC Accession No. PTA-126632, respectively, further comprising a transgene.
11. The plant of claim 10, wherein said transgene confers a trait selected from the group consisting of male sterility, herbicide tolerance, insect resistance, pest resistance, disease resistance, modified fatty acid metabolism, environmental stress tolerance, modified carbohydrate metabolism, and modified protein metabolism.
12. A spinach plant of spinach hybrid SVVB2646, wherein said plant comprises a first set of chromosomes and a second set of chromosomes, wherein the first set of chromosomes is a set of the chromosomes of spinach line MSA-S018-1288F and the second set of chromosomes is a set of the chromosomes of spinach line SMB-S016-1265M, a sample of seed of said lines having been deposited under NCMA Accession No. 202303014 and ATCC Accession No. PTA-126632, respectively, further comprising a single locus conversion.
13. The plant of claim 12, wherein said single locus conversion confers a trait selected from the group consisting of male sterility, herbicide tolerance, insect resistance, pest resistance, disease resistance, modified fatty acid metabolism, environmental stress tolerance, modified carbohydrate metabolism, and modified protein metabolism.
14. A method for producing a seed of a spinach plant derived from spinach hybrid SVVB2646, the method comprising the steps of: (a) crossing the plant of claim 1 with itself or a different spinach plant; and (b) allowing a seed of a spinach hybrid SVVB2646-derived spinach plant to form.
15. A method of producing a seed of a spinach hybrid SVVB2646-derived spinach plant, the method comprising the steps of: (a) producing a spinach hybrid SVVB2646-derived spinach plant from a seed produced by crossing the plant of claim 1 with itself or a different spinach plant; and (b) crossing the spinach hybrid SVVB2646-derived spinach plant with itself or a different spinach plant to obtain a seed of a further spinach hybrid SVVB2646-derived spinach plant.
16. The method of claim 15, the method further comprising repeating said producing and crossing steps of (a) and (b) using the seed from said step (b) for producing the spinach plant according to step (a) for at least one generation to produce a seed of an additional spinach hybrid SVVB2646-derived spinach plant.
17. A method of producing food, the method comprising: (a) obtaining the plant of claim 1, wherein the plant has been cultivated to maturity; and (b) collecting a plant part capable of being used as food from said plant.
18. A method of determining the genotype of the plant of claim 1 or a progeny plant thereof, or a part thereof, the method comprising detecting at least a first polymorphism in a sample of nucleic acids from said plant or part thereof.
19. The method of claim 18, wherein said detecting comprises DNA sequencing or genetic marker analysis.
20. The method of claim 18, the method further comprising storing the results of said detecting on a computer readable medium or transmitting the results of the detecting.
Although the claims at issue are not identical, they are not patentably distinct from each other because the rejected claims of the instant application represent a genus of the claims of the reference application. The claims of the instant application are drawn to plants, parts, tissue cultures and methods of a plant having at least one chromosome of spinach line MSA-S018-1288F. The claims of the reference application closely mirror the those of the instant application with regard to the parts, tissue cultures and methods but are instead directed so a specific hybrid that has spinach line MSA-S018-1288F as one parent. As such, the claims of the reference application are a species of the instantly claimed genus and as such, the claims that are rejected herein (excluding claims directed to a different hybrid) they are prima facie obvious over the claims of the reference application. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No Claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES A LOGSDON whose telephone number is (571)270-0282. The examiner can normally be reached M-F 8:30 - 5:00 pm.
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/CHARLES LOGSDON/Primary Examiner, Art Unit 1662