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 .
Priority
Acknowledgment is made of applicant’s claim for benefit under 35 U.S.C. 119(e).
Status of the Claims
Claims 1-23 are pending.
Claims 1-23 are examined herein.
The rejection to Claims 1-22 under 35 USC 112(a) for failure to satisfy the written description requirement as it relates to the breeding history is withdrawn in view of Applicant’s identification of the breeding history in a transmittal letter dated 07/02/2024.
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.
Claim 8 remains rejected as failing to satisfy the written description requirement.
Claim 8 recites a pepper plant having all the physiological and morphological characteristics of the plant of claim 3.
Claim 1 recites a pepper plant comprising at least a first set of the chromosomes of pepper line SBY-E719-1050, a sample of seed of said line having been deposited under NCMA Accession No. 202211003.
Claims 3 recites the plant of claim 1, wherein the plant is a plant of said pepper line SBY- E719-1050.
The disclosure describes SBY-E719-1050 and SVPB2713 with respect to physiological and morphological characteristics. (Tables 1 and 2). Applicant also describes the breeding history of a different hybrid (SVPB8193) and the breeding history of its parents.
Applicant does not describe any plant that has the physiological and morphological characteristics of the plant of Claim 3. Even though said plant is limited to hybrid SVPB2713, the genus of plants that happen to share the physiological and morphological characteristics of the hybrid are not described. No deposit or genomic information with respect to said genus is described except for the deposits of SBY-E719-1050 and SVPB2713. Applicant has only demonstrated possession of two plants in the claimed genus and has not described the genetics of said genus of plants and has not provided a breeding history or sufficient number of deposits to describe the claimed genus via exemplar species.
Response to Remarks
Applicant urges that the rejection under 35 USC 112(a) to Claim 8 should be withdrawn. Applicant argues that the amendments to the claim render the rejection moot.
This is not found persuasive. The amendment failed to limit the claimed genus to described species. As set forth in the rejection, the genus still encompasses plants that are not described by either a deposit or breeding/genetic history. The only description is that of several traits of the plant, which can be duplicated by plants having different genetics. Because no examples of plants with different genetic backgrounds having the traits of the varieties recited in the claims (SBY-E719-1050 and SVPB2713) are described by Applicant, the size and members of this genus cannot be determined. As such the subject matter of the claim are not described and Applicant has not demonstrated possession of the claimed genus of inventions.
Conclusion
Claims 1-7, 9-23 are allowed.
The claims appear to be free of the prior art. The closest prior art is McCarthy US 20100115656 A1, which discloses sweet pepper hybrid 9927864. Although hybrid 9927864 and the instantly claimed hybrid share many traits, they differ in several characteristics including fruit color and gloss.
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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bratislav Stankovic can be reached at (571) 270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES LOGSDON/Primary Examiner, Art Unit 1662
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