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 .
Duty of Disclosure
Applicant is reminded of their “Duty of Disclosure, Candor, and Good Faith” (see 37 C.F.R. § 1.56 and MPEP § 2001). Information that would be considered pertinent to patentability includes: 1) any parent plants, progeny, siblings, half-siblings, or other closely genetically related plants that are either co-pending applications or previously published or publicly disclosed, 2) if backcrossing was used in the breeding history, then the recurrent parent should be disclosed along with any publications or public disclosures of the recurrent parent, and what events/loci/transgenes/traits were donated from the non-recurrent parent along with any publications or public disclosures of the events/loci/transgenes/traits or of the donor parent line itself, 3) if the parental varieties were developed via backcrossing this should be disclosed along with the grandparents, including which grandparent was the recurrent parent along with any publications or public disclosures of the recurrent parent and what events/loci/transgenes/traits were donated from the non-recurrent parent, 4) any alternative designations, experimental names, tradenames, etc. for the instant plant, parent plants, and grandparent plants should be disclosed. All of this information is pertinent for patentability. If, for example, one of the parent plants is published but with a different name/designation, then the publication should be included in the IDS along with an explanation that the different name/designation is a synonym and how this plant is related to the instantly claimed plant. If any of the publications included in the Information Disclosure Statement are directed to a parent plant, progeny, sibling, half-sibling, or other closely genetically related plant, then this relationship should be disclosed such that the Examiner will understand the relevance of that particular reference.
Claims
The amendments received on Oct. 23, 2025, have been entered. Claims 1-23 are pending and are examined in this Office Action.
Claim Objections and Rejections That Are Withdrawn
The objections to claims 1, 6, 10, 12, 16, and 17 are withdrawn in light of Applicant’s amendments to the claims
The rejection of claims 1-23 under 35 USC 112B for indefiniteness is withdrawn in light of Applicant’s amendments to the claims.
The rejection of claims 1-23 under 35 USC 112A for inadequate written description is withdrawn in light of Applicant’s amendments to the specification to include the breeding history for the instant cultivar. It is noted that claim 20 has an additional written description issue that remains (see below).
The rejection of claims 1-23 under 35 USC 112A for lack of enablement is withdrawn in light of Applicant’s amendments and their statement that the seed deposit was accepted under the terms of the Budapest Treaty (Response received on Oct. 23, 2025, page 10).
Claim Interpretation
Claims 8 and 9 are directed to F1 hybrid seeds and plants.
F1 is relative to the parent plants that were crossed to produce the F1 hybrid. In this instance claims 8 and 9 are interpreted to be first generation progeny of Tall Patton crossed with any second, distinct lettuce plant.
Claims 10-14 each require a “single” locus conversion. This is interpreted to require sufficient backcrossing to restore the genome of Tall Patton without a second locus converted relative to the deposited seeds.
Claim Rejections - 35 USC § 112
Inadequate Written Description
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.
Claim 20 is 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. Applicant’s arguments in the response received on Oct. 23, 2025, have been fully considered but were not found to be persuasive.
Claim 20 is directed to a lettuce plant produced by genetically modifying a Tall Patton lettuce plant via gene conversion, genome editing, RNA interference, or gene silencing, wherein the genetically modified lettuce plant comprises one genetic modification and otherwise comprises all of the morphological and physiological characteristics of cultivar Tall Patton. The words in italics are the newly added limitations from the amendments received on Oct. 23, 2025. Because the claim uses language of “comprises one” for the modification, the claim does not limit how many modifications because “comprises” is open language. There is no limit to how much of the genome can be edited relative to the seeds that will be deposited and no limit to how many traits can be changed relative to plants grown from the deposited seeds and relative to the traits disclosed in the trait table. Because there is no particular genomic DNA that is required to remain the same and no particular trait that is required to remain the same, this genus of lettuce plants is not described by either a shared structure (genomic DNA) or by a shared function (phenotypic traits). For this reason, the genus of plants encompassed by claim 20 is not sufficiently described across the breadth of the claim.
Applicant asserts that the claim amendment renders this rejection moot (Resp 10). This is not persuasive, however, because of the open language which does not limit the number of modifications. The Examiner suggests - - comprises only one genetic modification - - or - - comprises a single genetic modification - - as language that would exclude additional genetic modifications.
Close Prior Art
In the prior art, Knerr, L. D. teaches a very similar lettuce cultivar designated “21-0506018-B” (US Patent No. 7,579,519 B1; issued on Aug. 25, 2009). A comparison of the trait tables shows that both cultivars are Romaine type lettuces and they share the following traits: white seeds, a lack of light dormancy, intermediate shaped green cotyledons with elongated fourth leaves and with an absence of anthocyanins, green margins on the mature leaves, no anthocyanin, medium blistering, thick leaves, medium head size, medium raised midrib, and lateral shoots but no basal side shoots on the bolting (Spec 12-4, ‘519 col. 8).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 and 21-23 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-22 of prior U.S. Patent No. 11,700,806 B2 or, in the alternative as being unpatentable over claims 1-22 of U.S. Patent No. 11,700,806 B2. Claim 2o is unpatentable over claims 1-22 of U.S. Patent No. 11,700,806 B2 for nonsatutory double patenting. Applicant’s arguments in the response received on Oct. 23, 2025, have been fully considered but were not found to be persuasive.
The instant application is directed to seeds, plants, and plant parts of lettuce cultivar “Tall Patton”, and products derived from said cultivar and methods of using said cultivar.
The ‘806 Patent is directed to seeds, plants, and plant parts of lettuce cultivar “Patton”, and products derived from said cultivar and methods of using said cultivar.
The wording of instant claims 1-19 and 21-23 is almost identical to claims 1-22 of the ‘806 Patent with the exception of a different cultivar name. Instant claim 20 is directed to a genetically modified version of Tall Patton, however in the absence of a specific genetic alteration and/or a specific change in traits, such a plant is indistinguishable from “Patton” plants of the ‘806 Patent.
Given the absence of a breeding history in the ‘806 Patent, the Examiner cannot rely on a different genetic lineage to differentiate between the two cultivars. A comparison of the trait tables (Spec 12-4, ‘806 cols. 9-10), shows that the plants appear to be indistinguishable by traits. For this reason, claims 1-19 and 21-23 appear to be identical to claims 1-22 of the ‘806 Patent, meaning that they are claiming the same lettuce cultivar by a different name. Claim 20 is a slightly different scope but is indistinguishable from the plants claimed in the ‘806 Patent.
In the event a statistically significant difference can be shown to differentiate between the two cultivars, then the Examiner will have to perform an analysis to determine if such a difference is a non-obvious difference.
Applicant points out that they have amended the specification to include the breeding history of the instant cultivar and have amended the claims and the specification to include the seed accession number for the cultivar. Applicant argues that this is evidence that cultivar Tall Patton is not the same as cultivar Patton of the ‘806 Patent (Resp 12). This is not persuasive, however, because without knowing the breeding history of the ‘806 cultivar, this does not provide evidence that the cultivars are not the same. Furthermore, Applicant has not pointed to a single different in physiological or morphological characteristics.
It is noted that the ‘806 Patent has the exact same inventors and assignee. A review of the prosecution history of the ‘806 Patent reveals that the breeding history was provided in a response to the request for information under 37 CFR 1.105, but Applicant requested the breeding history to be expunged. This is evidence that Applicant has the information to provide as evidence of a different breeding history, and therefore, likely a different genetic background, depending on how the breeding histories differ. The Examiner would then have to determine if the difference in breeding history is significant enough to overcome identical traits. For example, if the two cultivars began with the same breeding program but diverged after several generations, it is possible they are very closely related, genetically. It is noted that the instant breeding history shows the final cultivar was not fixed until the F7 generation when seeds from 5 selected plants of the F6 generation were bulked.
Summary
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.
No claim is allowed.
Examiner’s Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHY KINGDON whose telephone number is (571)272-8784. The examiner can normally be reached M-F 9:00 - 5:30 EST.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad A 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.
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CATHY KINGDON
Primary Examiner
Art Unit 1663
/CATHY KINGDON/Primary Examiner, Art Unit 1663