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 .
DETAILED ACTION
1. The Office acknowledges the receipt of Applicant’s restriction election filed November 25, 2025. Applicant elects Group I, drawn to hybrid variety E15M43069, without traverse. Claims drawn to nonelected hybrid varieties E15T43094 and E15T43096 have been canceled. Claims 1-19 are pending and are examined to the extent of hybrid variety E15M43069. The restriction is made FINAL.
Specification
2. The disclosure is objected to because of the following:
The Abstract is objected to because it recites the nonelected varieties E15T43094 and E15T43096.
The deposit information throughout the specification is missing. Compliance with the deposit requirements may be held in abeyance until allowability is indicated.
In Tables 1, 3 and 5, for Leaf Morphology, it is unclear what “Type 2” denotes.
Appropriate correction is required.
Drawings
3. Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Applicant’s Petition to accept color drawings under 37 CFR 1.84(a)(2) filed February 8, 2024 has been dismissed. Applicant should refer to the Petition decision filed April 23, 2024 for further guidance on compliance.
Claim Objections
4. Claim 14 is objected to because of the following:
In claim 14 “and” should be inserted before step (b).
Appropriate correction is required.
Claim Rejections - 35 USC § 101
5. 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.
6. Claims 4, 5, 7 and 8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature. The claims are not patent eligible because “a portion thereof” encompasses sub-cellular components, such as water, oils, proteins and nucleic acids. The claimed invention encompasses a naturally-occurring nucleic acid or fragment thereof, whether isolated or not, that is not patent-eligible pursuant to the Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics, Inc., --U.S.-- (June 13, 2013). It is suggested “or a portion thereof” be deleted.
Claim Rejections - 35 USC § 112(b)
7. 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.
8. Claims 1-19 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.
Paragraph [0078] states “When the terms “tomato plant”, “hybrid”, “cultivar” or “tomato line” are used in the context of the present disclosure, this also includes any single gene conversions of that variety.” Thus, the scope of the claimed hybrid and plant encompasses multiple gene conversions. It is unclear which characteristics in Table 1 are retained, deleted or altered upon the introduction of the single gene conversions. It is unclear how hybrid tomato E15M43069, with its single gene conversions, is distinguishable from other tomato varieties. It is further unclear how the seed deposit is “representative” of the variety. Is the seed deposit a mixture of seeds with and without the single gene conversions? Subsequent recitations of “hybrid” and “plant” are rejected.
In claims 1, 12, 14 and 17, the deposit information is incomplete. Because E15M43069 is not an art-recognized term, it is unclear what is encompassed by this recitation. Compliance with the deposit requirements may be held in abeyance until allowability is indicated.
In claims 4, 5, 7 and 8, it is unclear whether “or a portion thereof’ is intended to encompass subcellular materials, such as DNA, oils and proteins. Applicant’s disclosure does not define this term. For examination purpose, “or a portion thereof’ is interpreted to encompass subcellular materials.
In claims 6 and 12, the metes and bounds of “essentially all” are unclear. Paragraph [0043] does not adequately define said term because the definition also includes the recitation of said unclear term. It is unclear what morphological and physiological characteristics of variety E15M43069 are retained in the claimed plant.
In claim 14(a), it is unclear what the “hybrid tomato” recitation refers to, e.g., plant, seed, fruit, etc. It is suggested “plant” be inserted after “hybrid tomato”.
Clarification and/or correction is required.
Claim Rejections - 35 USC § 112(a)
9. 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.
10. Claims 1-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains 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.
Since the seed claimed is essential to the claimed invention, it must be obtainable by a reproducible method set forth in the specification or otherwise be readily available to the public. If a seed is not so obtainable or available, a deposit thereof may satisfy the requirements of 35 U.S.C. 112. The specification does not disclose a reproducible process to obtain the exact same seed in each occurrence and it is not apparent if such a seed is readily available to the public. If the deposit of the seed is made under the terms of the Budapest Treaty, then an affidavit or declaration by the Applicant, or a statement by an attorney of record over his or her signature and registration number, stating the seed has been deposited under the Budapest Treaty and that the seed will be irrevocably, and without restriction or condition, released to the public upon the issuance of a patent would satisfy the deposit requirement made herein. A minimum deposit of 625 seeds is considered sufficient in the ordinary case to assure availability through the period for which a deposit must be maintained.
If the deposit has not been made under the Budapest Treaty, then in order to certify that the deposit meets the criteria set forth in 37 CFR 1.801 -1.809, Applicant may provide assurance of compliance by an affidavit or declaration, or by a statement by an attorney of record over his or her signature and registration number showing that
(a) during the pendency of the application, access to the invention will be afforded to the Commissioner upon request;
(b) all restrictions upon availability to the public will be irrevocably removed upon granting of the patent;
(c) the deposit will be maintained in a public depository for a period of 30 years or 5 years after the last request or for the enforceable life of the patent, whichever is longer;
(d) the viability of the biological material at the time of deposit will be tested (see 37 CFR 1.807); and
(e) the deposit will be replaced if it should ever become unviable.
The specification and claims must be amended to include the deposit accession number. The specification should also be amended to indicate that the deposit has been accepted, and include the statements set forth in (a)-(e) above. Compliance with the deposit requirement may be held in abeyance until the application is otherwise in condition for an allowance. Evidence of an accepted deposit is requested.
Additionally, with regard to claim 12, the tissue culture of claim 11 encompasses pollen and anther haploid cells. The haploid cells are formed during meiosis when the diploid genome segregates during sexual hybridization. Variety E15M43069 is a hybrid, whereby its genome is heterologous at every locus. The state of the art teaches that the tomato genome has about 35,000 genes (US Pub. No. 20240415127 (A), [0002]). When its diploid genome segregates to form haploid cells, it is highly unpredictable which combination of alleles from each of the 35,000 genes are present in the haploid cells. There is no disclosure as to the genetic makeup of these haploid cells and how they can be used to produce a plant expressing all or essentially all of the physiological and morphological characteristics of hybrid variety E15M43069. Applicant has no working examples and provides no guidance as how the anther and pollen cells can produce a plant having all or essentially all the physiological and morphological characteristics of hybrid variety E15M43069. Accordingly, claim 12 is not enabled as commensurate in scope with the claims without undue experimentation.
11. Claims 1-19 are 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.
35 USC 112 (a) states “The specification shall contain a written description of the invention” (emphasis added). In evaluating written description, the threshold question is: what is an adequate written description? This is question of fact that is evaluated by the factfinder (examiner). MPEP 2163.04 clearly states that “The inquiry into whether the description requirement is met must be determined on a case-by-case basis and is a question of fact. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).”
The instant invention is a new tomato hybrid variety (E15M43069). So, the examiner will evaluate what is an adequate written description for a new tomato hybrid. In reviewing this question of fact, the examiner analyzes how plant varieties are evaluated in the public domain. The review concludes that generally the minimum requirements for an adequate description of a new plant variety are a trait table and genetic information (via a breeding history). In reviewing Applicant’s specification, there is a phenotypic description of hybrid variety E15M43069 in Tables 1 and 2. However, there is no accompanying breeding history in the specification for the claimed hybrid variety. Because the specification lacks a breeding history and that breeding history is part of the minimum description of a plant variety, Applicant has not fulfilled the requirement of 35 USC 112(a) to provide a written description in the specification. The Office’s reasonable basis for challenging the adequacy of written description is supported by a review of the following:
With regard to Plant Patents, MPEP 1605 states that a complete detailed description of a plant includes “the origin or parentage”.
A breeding history, including information about parentage and breeding methodology, is part of the requirements of Plant Variety Protection (PVP) applications. That information is used to “determine if development is sufficient to consider the variety new” (See “Applying for a Plant Variety Certificate of Protection”, USDA, https://www.ams.usda.gov/services/pv po/application-help/apply, downloaded 05/01/2023, (U)).
The International Union for the Protection of New Varieties of Plants (UPOV) considers breeding history and methodology part of its evaluation of essentially derived plant varieties (UPOV, Explanatory Notes on Essentially Derived Varieties Under the 1991 Act of the UPOV Convention, April 6, 2017, See UPOV EDV Explanatory Notes 14 and 30 (V)).
Historically, the USPTO has considered breeding history information when determining the patentability of a new plant variety. (See Ex Parte C (USPQ 2d 1492 (1992) (W) and Ex Parte McGowen Board Decision in Application 14/996,093, decided June 15, 2020 (X)). In both of these cases, there were many differences cited by the Applicant when comparing the prior art and the new plant variety. However, because the breeding history was available, these differences were deemed to be obvious and within the natural variation expected in a backcrossing breeding process. Without a breeding history in these cases, a complete comparison with the prior art could not have been possible. As seen in Ex Parte C and Ex Parte McGowen, a trait table is insufficient to differentiate varieties by itself.
It has been long established that intraline heterogeneity exists in crop species. Haun et al. (Plant Physiology, Feb. 2011, Vol. 155, pp. 645-655 (Y)) teaches that the assumption that elite lines are composed of relatively homogenous genetic pools is false. (p. 645, left column). Segregation, recombination, DNA transposition, epigenetic processes, and spontaneous mutations are some of the reasons elite line populations will maintain some degree of plant-to-plant variation (p. 645, right column and p. 646, left column). In addition to genetic variation, environmental variation may lead to phenotypic variation within a line. (Großkinsky et al., J. Exp. Bot., Vol. 66, No. 11, pp. 5429-5440, 2015 (Z), p. 5430, left column, 1st full paragraph, and right column, 2nd full paragraph). In view of this variability, a breeding history is an essential and the least burdensome way to provide genetic information needed to adequately describe a newly developed plant.
The above factual evidence provides a reasonable basis that a breeding history is necessary written description. With this information the examiner has met the initial burden of presenting by a preponderance of evidence why a person of ordinary skill in the art would not recognize in Applicant’s disclosure a description of the invention defined by the claims. (See MPEP 2163.04). Importantly, it should be noted that the citations above are not referenced for legal authority. The legal authority relied by the examiner is the 35 USC 112(a) statute. The citations are presented to support the finding of fact that a breeding history is necessary for the adequate description of a plant variety.
Although not directly relied upon for the above written description position, a complete written description additionally helps drive examination and help with infringement verification.
MPEP 2163 (I) states “The written description of the deposited material needs to be as complete as possible because the examination for patentability proceeds solely on the basis of the written description. See, e.g., In re Lundak, 773 F.2d 1216, 227 USPQ 90 (Fed. Cir. 1985); see also 54 Fed. Reg. at 34,880 ("As a general rule, the more information that is provided about a particular deposited biological material, the better the examiner will be able to compare the identity and characteristics of the deposited biological material with the prior art.").”
MPEP 2163(I) further states “The description must be sufficient to permit verification that the deposited biological material is in fact that disclosed. Once the patent issues, the description must be sufficient to aid in the resolution of questions of infringement." Id. at 34,880.)” (Quoting the Deposit of Biological Materials for Patent Purposes, Final Rule, 54 Fed. Reg. 34,864 (August 22, 1989) at 34,880).
The breeding history aids in the resolution of patent infringement by providing information necessary to determine whether differences in the plants are genetic differences, differences caused by the environment, or differences within the accepted variations of a variety. A specification devoid of a complete breeding history hampers the public’s ability to resolve infringement analysis with plants already in the prior art as well as plants that have yet to be patented. Because the instant specification lacks a complete breeding history, the public will not be able to fully resolve questions of infringement. Since the breeding history, including the parents of the claimed variety, is not known to the public, the public could only rely on the phenotypes of the claimed plants for assessing potential infringement.
Thus, an application that does not clearly describe the breeding history does not provide an adequate written description of the invention. An adequate written description is essential to preclude the issuance of a patent that would otherwise issue due to Applicant’s omission of critical information from the Specification.
To overcome this rejection, Applicant must amend the specification/drawing to provide the breeding history used to develop the instant variety. When identifying the breeding history, Applicant should identify any and all other potential names for all parental lines utilized in the development of the instant variety and all other potential names for the claimed variety. If Applicant’s breeding history uses proprietary line names, Applicant should notate in the specification all other names of the proprietary lines, especially publicly disclosed or patented line information. If the breeding history encompasses a locus conversion or a backcrossing process, Applicant should clearly indicate the recurrent parent and the donor plant and specifically name the trait or transgenic event that is being donated to the recurrent parent. If one of the parents is a backcross progeny or locus converted line of a publicly disclosed line, Applicant should provide the breeding history of the parent line as well (i.e., grandparents). Applicant should identify the breeding method used, such as single seed descent, bulk method, backcross method, etc., and the filial generation in which the instant plant was chosen. Information pertaining to the homozygosity or heterozygosity of the parents as well as the instant plant should be set forth.
Applicant is reminded that they have a duty to disclose information material to patentability. Applicant should also notate the most similar plants which should include any other plants created using similar breeding history (such as siblings of the instant line). If there any patent applications or patents in which sibs or parents of the instant plant are claimed, the serial numbers and names of the sibs or parents should be disclosed. This information can be submitted in an Information Disclosure Statement with a notation of the relevancy to the instant application or as information submitted as described in MPEP 724 (e.g., trade secret, proprietary, and Protective Order).
The claims indicate seeds representative of hybrid tomato variety E15M43069 are deposited. The claims are not directed to the deposited seeds or plants grown therefrom. Neither the Specification nor the claims indicate that the claimed seed is genetically identical to the deposited seeds. When two inbred parents are crossed, one skilled in the art would reasonably expect to obtain a population of progeny plants that shares most of the phenotypic characteristics but are not necessarily genetically identical due to naturally-occurring genetic and environmental factors. Thus, the recitation of “E15M43069” in the claims is understood by the Office to encompass a genus of seeds/plants that are not are not genotypically identical. Additionally, paragraph [0078] states “When the terms “tomato plant”, “hybrid”, “cultivar” or “tomato line” are used in the context of the present disclosure, this also includes any single gene conversions of that variety.” This statement indicates that the claimed genus of plants do not necessarily have all the morphological and physiological characteristics of hybrid variety E15M43069 as disclosed in the Specification. In fact, the Specification goes on to state that the claimed plant has “essentially all of the desired morphological and physiological characteristics” of a variety [0078], whereby “essentially” and “desired” are not defined. Furthermore, Applicant acknowledges these characteristics are influenced by environmental conditions [0060]. The claims encompass a genus of plants that do not have the same genotype or phenotype, and the Specification is silent with regard to the breeding history of hybrid variety E15M43069, including the parent plants used to produce the claimed hybrid variety and their public availability. It should be noted that Applicant does not provide marker information to distinguish the claimed genus of plants from other plants when Applicant is in the best position to do so. Polymorphisms exist within the genus of plants claimed. Applicant’s failure to provide this information is evidence that it is not practical to do a marker analysis to distinguish plants from one another.
Applicant’s disclosure is insufficient because it does not address the issues set forth above.
Correction is required.
12. Claims 1-19 are 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.
The specification defines “hybrid” and “plant” [0078] as set forth in the 35 USC 112(b) rejection above, and “plant” encompasses plant parts [0077]. The specification does not disclose what single gene conversions are encompassed by the claimed variety. Thus, the claims encompass plants that have any number of heritable traits and differ from variety E15M43069 as disclosed in Tables 1 and 2 by an unknown number of physiological and morphological characteristics. The specification describes no structural features that distinguish plants that differ from variety E15M43069 in any number of traits from other tomato plants. The specification only describes variety E15M43069 as disclosed in Tables 1 and 2. The specification fails to describe a representative number of plants with heritable traits that differ from those in variety E15M43069 as disclosed in Tables 1 and 2. Thus, the full scope of the claimed genus of plants has not been adequately described and is not in Applicant’s possession at the time of filing. Because the claimed plants lack adequate written description, the claimed methods of using said plants also lack adequate written description.
Claims 3-5, 7, 8 and 10 encompass an F1 progeny embryo and seed cell of hybrid tomato E15M43069. The genome of hybrid tomato E15M43069 is heterologous at every locus. When hybrid tomato E15M43069 is crossed with an unknown parent, it is unpredictable what genetic material its F1 progenies would inherit. The specification does not disclose a representative number of F1 progenies of hybrid tomato E15M43069 to allow one skilled in the art to predict the genetic makeup or physiological and morphological characteristics of the claimed F1 progenies. No identifying characteristics are set forth for the F1 progenies. There are insufficient relevant identifying characteristics to allow one skilled in the art to predictably determine the genomic structure or morphological and physiological characteristics of the claimed F1 progenies, absent further guidance. Accordingly, the claimed plant part and protoplast encompassing embryo and seed cells of hybrid tomato E15M43069 lack adequate written description.
With regard to claims 3, 4, 7 and 9-11, which encompass a pollen, pollen grain, anther and ovule (contains haploid cells), these claims lack adequate written description because Applicant is claiming haploid cells of hybrid tomato E15M43069. The genome of hybrid tomato E15M43069 is heterologous at every locus. During meiosis to produce the haploid cells, it is unpredictable which reassortment of dominant and recessive alleles of hybrid tomato E15M43069 would be present in the haploid cells. One skilled in the art cannot predict the genetic makeup of the claimed pollen, pollen grain, anther and ovule, or the morphological and physiological characteristics of a plant produced from these haploid cells. Accordingly, the claimed pollen, pollen grain, anther and ovule, and claims that encompass haploid cells, are not adequately described.
With regard to claim 6, there is no disclosure of a plant having essentially all the physiological and morphological characteristics of the tomato plant of claim 2. It is not known how many of the characteristics disclosed in Tables 1 and 2 are retained, altered or deleted, and which characteristics constitute “essentially all” the physiological and morphological characteristics of the tomato plant of claim 2. It is unpredictable what physiological and morphological characteristics the claimed plant has. Accordingly, the claimed plant lacks adequate written description.
Claim 12 lacks adequate written description because there is no disclosure of a plant regenerated from tissue culture that has essentially all the physiological and morphological characteristics of hybrid tomato E15M43069. Larkin et al. (Theor. Appl. Genet. 60, 197-214, 1981 (UU)) teaches somaclonal variations occur in plant tissue culture resulting in a plant having new physiological and morphological characteristics (p. 198, “Variation in Cultures”). Thus, it is unpredictable what physiological and morphological characteristics are present in the claimed plant, and how they differ from hybrid tomato E15M43069 as a result of somaclonal variations. Accordingly, the claimed plant regenerated from tissue culture lacks adequate written description.
For the above reasons, there is a lack of adequate description to inform a skilled artisan that Applicant was in possession of the claimed invention at the time of filing. See https://www.uspto.gov/sites/default/files/web/menu/written.pdf.
Claim Rejections - 35 USC §§ 102 and 103
13. 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 (i.e., changing from AIA to pre-AIA ) 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.
14. 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.
15. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
16. Claim 12 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ramon, G. (US Pub. No. 20090255010 (B)) in light of Larkin et al. (Theor. Appl. Genet. 60, 197-214, 1981 (UU)).
As stated in the written description rejection above, the claimed plant lacks adequate written description due to somaclonal variations that occur in plant tissue culture resulting in a plant having new physiological and morphological characteristics (Larkin, p. 198, “Variation in Cultures”). The claimed plant is not required to retain all the morphological and physiological characteristics of hybrid tomato E15M43069. The prior art teaches a plant of tomato variety BS 01031842 which shares at least 40 morphological and physiological characteristics with Applicant’s hybrid tomato variety E15M43069, including anthocyanin in hypocotyl seedling, mature plant height, indeterminate plant growth, number of nodes between first inflorescence, pubescence on younger stems, marginal rolling or wiltiness, inflorescence type, anthers, shape of pistil scar, abscission layer, point of detachment of fruit at harvest, fruit color full-ripe, flesh color full-ripe, core, fruiting season, culture, principle use, machine harvest adaptation, and resistance to blotchy ripening, bursting, cracking concentric, cracking radial, tobacco mosaic virus races 0-2, tomato spotted wilt virus, Fusarium oxysporum f. lycopersici races 0-1 (same as US races 1-2) and Verticillium albo-atrum (Table 1).
Accordingly, the claimed invention is anticipated by, or in the alternative, is obvious in view of the prior art. See In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985), which teaches that a product-by-process claim may be properly rejected over prior art teaching the same product produced by a different process, if the process of making the product fails to distinguish the two products. Since the Patent Office does not have the facilities to examine and compare the plant of Applicant’s with that of the prior art, the burden of proof is upon the Applicant to show an unobvious distinction between the claimed plant and the plant of the prior art. See In re Best, 562F.2d 1252, 195 USPQ 430 (CCPA 1977).
17. Claims 1-11 and 13-19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ramon, G. (US Pub. No. 20090255010 (B)).
Because Applicant’s definition of “hybrid” and “plant” includes single gene conversions, it is not known what morphological and physiological characteristics of variety E15M43069 as disclosed in Tables 1 and 2 are retained, deleted or altered, and what additional traits variety E15M43069 has in addition to those disclosed in Tables 1 and 2. The claimed plants/seeds are not required to retain all the morphological and physiological characteristics of variety E15M43069 as disclosed in Tables 1 and 2.
The prior art teaches tomato variety BS 01031842 which shares at least 40 morphological and physiological characteristics with Applicant’s hybrid tomato E15M43069, including anthocyanin in hypocotyl seedling, mature plant height, indeterminate plant growth, number of nodes between first inflorescence, pubescence on younger stems, marginal rolling or wiltiness, inflorescence type, anthers, shape of pistil scar, abscission layer, point of detachment of fruit at harvest, fruit color full-ripe, flesh color full-ripe, core, fruiting season, culture, principle use, machine harvest adaptation, and resistance to blotchy ripening, bursting, cracking concentric, cracking radial, tobacco mosaic virus races 0-2, tomato spotted wilt virus, Fusarium oxysporum f. lycopersici races 0-1 (same as US races 1-2) and Verticillium albo-atrum (Table 1). Ramon further teaches a seed, plant, plant parts, protoplast, tissue culture, methods of producing seeds, , methods of vegetatively propagating a plant and methods of producing a fruit (claims). Accordingly, the claimed invention is anticipated by, or in the alternative, is obvious in view of the prior art. See In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985), which teaches that a product-by-process claim may be properly rejected over prior art teaching the same product produced by a different process, if the process of making the product fails to distinguish the two products. Since the Patent Office does not have the facilities to examine and compare the plant of Applicant’s with that of the prior art, the burden of proof is upon the Applicant to show an unobvious distinction between the claimed plant and the plant of the prior art. See In re Best, 562F.2d 1252, 195 USPQ 430 (CCPA 1977).
Conclusion
18. No claim is allowed.
19. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHUONG T BUI whose telephone number is (571)272-0793. The examiner can normally be reached on M-F 8am-5pm.
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 Abraham can be reached on 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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/PHUONG T BUI/Primary Examiner, Art Unit 1663