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
The claims filed 01December2025 are acknowledged and have been fully considered. Claims 5, 10-11, 22-23 are canceled. Claims 1-4, 6-9, 12-21, 24-25 are pending. Claims 3-4, 6-7, 16-18, 24-25 are currently amended. Claims 1-2, 8-9, 12-15, 19-21 are original.
Claims 1-4, 6-9, 12-21, 24-25 are examined on the merits herein.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) [US provisional 63415819 filed 13October2022] is acknowledged. Claims 1-4, 6-9, 12-21, 24-25 maintain an effective filing date of 13October2022.
Withdrawn Objections and/or Rejections
Objections and/or rejections made of record in the nonfinal office action dated 29August2025 that are not otherwise discussed herein are withdrawn. In particular:
RE ¶ 5: The objection to the specification is withdrawn in view of the amendments thereto;
RE ¶ 6: The objections are withdrawn in view of the amendments to the claims;
RE ¶ 7: The Deposit Rejection is withdrawn in view of Applicant’s assurance that (Remarks page 6)
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RE ¶ 10: The Written Description rejection regarding claims 11, 17, 25 is withdrawn in view of the amendments to the claims;
and
RE ¶ 11: The Written Description rejection regarding Breeding History is withdrawn in view of the amendment to the specification.
Claim Objections
Claim 25 is objected to because the phrase “when grown under the same environmental conditions” appears to have been inadvertently omitted (after “…. NUN 76520 MEM”, compare to claims 4, 7, 16, 17, 18, and 24). Also, given the nature of the claim, please add the term “otherwise” into the claim as in “… wherein the modified plant otherwise comprises all of the ….” Appropriate correction is required.
Claim Rejections - 35 USC § 112 - Indefiniteness
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.
Claims 1, 6, 7, 9, 12, 18 REMAIN rejected and claims 3, 24 are rejected (therefore, also claims 2, 4, 8, 13-17, 19-21, and 25 which refer thereto without correcting the issue) 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
[Copied from Nonfinal 29August2025 →] These claims refer to a deposit accession number without actually providing the number (there is just a blank placeholder recited in these claims). For at least this reason, these claims are indefinite. Please perfect the deposit and, when known, update the claims (and specification) to recite the corresponding deposit accession number.
Response to Applicant’s Remarks 01December2025:
Applicant states that the deposit accession number will be added once available and the application is in condition for allowance.
This rejection is maintained for the sake of a clear record and will be withdrawn if the application is placed in condition for allowance but-for an outstanding deposit of representative seed.
Claim 3 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As amended, claim 3 is directed toward a “seed of the plant of claim 1”, i.e., a “seed of a plant of melon variety NUN 76520 MEM”. It is not clear if “seed of“ here means a seed of melon variety NUN 76520 MEM (a representative sample of which will/is deposited) or whether “seed of” here means a seed produced from a plant of melon variety NUN 76520 MEM, i.e., a next generation seed such as an F10 seed produced via outcrossing a plant of melon variety NUN 76520 MEM. Because this claim language may be interpreted in at least two, disparate ways; this claim is indefinite. Please also note that while deposited seed is now referenced in claim 3, it is not clear to what extent that reference is actually relevant due to the indefinite recitation “seed of the plant of claim 1” (deposited hybrid NUN 76520 MEM seed would not be “representative” of next generation seed and, as said above, it is not clear whether next generation seed is encompassed by claim 3). It would be remedial of this rejection if claim 3 is amended to be directed toward “A seed melon variety NUN 76520 MEM according to claim 1, wherein a representative sample of seed of said melon variety NUN 76520 MEM has been deposited under Accession Number NCIMB ___.”
Claim Rejections - 35 USC § 112 – 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 3 REMAINS 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.
Further to the indefiniteness rejection herein above, claim 3 now recites a “seed of the plant of claim 1”, i.e., a “seed of a plant of melon variety NUN 76520 MEM”. It is not clear if “seed of“ here means a seed of melon variety NUN 76520 MEM (a representative sample of which will/is deposited) or whether “seed of” here means a seed produced from a plant of melon variety NUN 76520 MEM, i.e., a next generation seed such as an F10 seed produced via outcrossing a plant of melon variety NUN 76520 MEM. Please also note that while deposited seed is now referenced in claim 3, it is not clear to what extent that reference is actually relevant due to the indefinite recitation “seed of the plant of claim 1” (deposited hybrid NUN 76520 MEM seed would not be “representative” of next generation seed and, as said above, it is not clear whether next generation seed is encompassed by claim 3). It would be remedial of this rejection if claim 3 is amended to be directed toward “A seed melon variety NUN 76520 MEM according to claim 1, wherein a representative sample of seed of said melon variety NUN 76520 MEM has been deposited under Accession Number NCIMB ___.”
This rejection is maintained in so far as claim 3 is directed toward next generation seed because there is no meaningful limit to the structures/sequences of the seed being claimed. As amended, the products of claim 3 still have no nexus to the genomic structure of melon variety NUN 76520 MEM (they need not have a genomic structure that is the same or very similar to that of a plant/part of melon variety NUN 76520 MEM). For the sake of a clear record, please note that because NUN 76520 MEM is a hybrid variety, limiting claim 3 to a particular downstream generation of seed (such as to “F1 seed” obtained from a plant of melon variety NUN 76520 MEM) is not helpful here due, again, to the fact that hybrid seed do not breed true. To that end, it would not be remedial of this rejection to say that the seed of claim 3 is “F1 seed”.
Claim 4 is now amended to be directed toward any melon plant or part that is derived from a plant of melon variety NUN 76520 MEM (no limit as to how such “derivation” is conducted, which means any number of outcrosses may be performed) and that, nonetheless, has all of the physiological and morphological characteristics/traits of a plant of melon variety NUN 76520 MEM (i.e., those traits listed in Table 1). It is known in the art, for example when introducing a locus conversion (and an accompanying desirable trait such as pest resistance) into a plant of a variety, that a plant may be outcrossed to introduce a locus conversion (and desirable trait) then, via backcrosses, brought back to a particular list of characteristics. Based on this common practice, claim 4 (as amended 01December2025) is removed from this Written Description rejection. Please note though, that such backcrosses would require access to (use of) the inbred parent plants ME0930 and ME0896 which remains an issue for this application (see the Scope of Enablement rejection maintained herein).
Applicant has only described plants/parts of hybrid melon variety NUN 76520 MEM and certain traits/characteristics which distinguish it from other varieties (Table 1). For the reasons stated above, claim 3 is not limited to plants/parts of hybrid melon variety NUN 76520 MEM. In fact, a skilled artisan could not reasonably expect what traits/characteristics the plants grown from claim 3 seed may have because claim 3 broadly encompasses any downstream generation of seed (obtained from any number of outcrosses, for example). Furthermore, claim 4 encompasses
The prior art does not supplement the deficiencies of this specification.
Without more information from Applicant, a skilled artisan at the time this application was filed would not reasonably recognize Applicant as being in possession of the full metes and bounds of these claims including a reasonable expectation of what traits/characteristics the claimed seed (or plants grown therefrom) would have.
It would be remedial of this rejection to amend claim 3 so that it is directed toward “A seed melon variety NUN 76520 MEM according to claim 1, wherein a representative sample of seed of said melon variety NUN 76520 MEM has been deposited under Accession Number NCIMB ___.”
Response to Applicant’s Remarks 01December2025:
Applicant asserts that the claim amendments are sufficient to overcome this rejection (Remarks at the top of page 7). This is not persuasive for the reasons stated above.
Claim Rejections - 35 USC § 112 – Scope of Enablement
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.
Claims 1, 3-4 REMAIN rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for using the deposited hybrid seed (including growing plants therefrom, transformation or gene editing thereof, and clonal propagation therefrom), does not reasonably provide enablement for making such hybrid seed (claims 1 and 3) or performing backcross steps (which is necessary to, for example, return to “all the morphological and physiological characteristics of the hybrid melon variety NUN 76520 MEM” at claim 4). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
This rejection is based on the fact that Applicant has only deposited hybrid seed and these claims are directed toward products or methods that can only be made/practiced via access to seed of the inbred parent varieties.
With the claim amendments filed 01December2025, claims 5-7, 10-11, and 22-23 are removed from this rejection. Unlike other rejections herein, claim 3 would not be removed from this rejection if claim 3 is amended to be directed toward “A seed melon variety NUN 76520 MEM according to claim 1, wherein a representative sample of seed of said melon variety NUN 76520 MEM has been deposited under Accession Number NCIMB ___.” because like the seed of claim 1, and without access to the inbred parent varieties, a skilled artisan still could not make the deposited seed (they could use it, including use the deposited seed to make/grow a plant therefrom, but not make the hybrid seed without access to the inbred parent varieties). Claim 4 remains rejected here because it encompasses outcrossed plants/parts that nonetheless have “all of the physiological and morphological characteristics of [a plant of melon variety NUN 76520 MEM]” which, as discussed in the Written Description rejection above and of record, is understood to require backcross steps and such backcrossing can only be done with access to the inbred parents. 1
In particular, while a skilled artisan may grow a plant of hybrid melon variety NUN 76520 MEM by planting the deposited hybrid seed, that artisan cannot make/reproduce seed of hybrid melon variety NUN 76520 MEM because hybrid seed do not breed true to type (meaning that seed generated from hybrid melon variety NUN 76520 MEM will produce plants with materially different structure and function/phenotype than what is described of hybrid melon variety NUN 76520 MEM at Table 1—a skilled artisan needs to cross the inbred parents to regenerate F1 hybrid seed2). To do so, a skilled artisan needs access to the seed of each inbred parent variety. These claims still encompass seed that, to be made, requires access to inbred parent plants ME0930 and ME0896. According to the Applicant via the specification amendment 01December2025, parent inbred plants ME0930 and ME0896are not publicly available.
Because the inbred parent varieties at issue here are not publicly available, and representative seed for each of the inbred parent varieties are not being made available by Applicant (e.g., via Deposit practice); it would require undue trial and error experimentation for a skilled artisan to make the full scope of subject matter being claimed.
It would be remedial of this rejection if Applicant either (1) deposited representative samples of seed of both of the inbred parent varieties (in compliance with the Deposit rules including accompanying amendments to the specification and claims) or (2) amended the claims to exclude subject matter that is not enabled for the reasons set forth above (e.g., remove reference to “seed” at claim 1 and cancel claims 3-4).
Response to Applicant’s Remarks 01December2025:
Applicant asserts that the claim amendments are sufficient to overcome this rejection (Remarks at the bottom of page 7). This is not persuasive for the reasons stated above.
Conclusion
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.
[Copied from the Nonfinal 20August2025 →] To ensure a clear record, the commercial name for a plant/part of melon variety NUN 76520 MEM appears to be “Gracy” (the tech sheet for which is attached to this action).
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rebecca STEPHENS whose telephone number is (571)272-0070. The examiner can normally be reached Monday through Friday 8:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad 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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/REBECCA STEPHENS/Examiner, Art Unit 1663
/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663
1 See WALTER “Backcross Method” Chapter 28 in Principles of Cultivar Development:Theory and Technique (1991, 17 total pages); available at https://dr.lib.iastate.edu/entities/publication/b12f8493-0f67-4dfb-b9bb-45e082b2268f. WALTER teaches that “[t]he term backcrossing refers to the repeated crossing of hybrid progeny back to one of the parents. The parent contributing the genes that control the desired character is called the nonrecurrent or donor parent. Nonrecurrent indicates that the parent is used only once in the backcross procedure and it does not recur. The parent to which the genes are transferred is called the recurrent parent. Recurrent indicates that the parent is used (recurs) repeatedly in the backcrossing procedure.” (page 360). WALTER further teaches that “[t]he objective of backcrossing is to recover the genes of the recurrent parent, except for the ones being transferred from the donor parent” (page 369) and that backcrossing is used “when the objective is to recover all of the features of the recurrent parent” (page 375).
2 See US Pat. No. 7612261 at Column 1, lines 60-65 regarding tomato plants/parts of hybrid variety “SX 387”, explaining that “a single-cross hybrid is produced when two inbred lines are crossed to produce the F1 progeny” and “the hybrid seed can be produced indefinitely, as long as the homogeneity and the homozygosity of the inbred parents is maintained”. See also LABROO et al. (“Heterosis and Hybrid Crop Breeding: A Multidisciplinary Review” 24February2021 Frontiers in Genetics 12:643761 doi:10.3389/fgene.2021.643761 (19 total pages)).
3 Available at https://www.nunhems.com/us/en/Varieties/US-Variety-Patents; last visited 15August2025.