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 Request for Continued Examination filed June 29, 2026. Claims 1-9, 12-20 and 22-25 are pending and are examined in the instant application.
All previous rejections not set forth below have been withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
2. Claims 9, 24 and 25 are objected to because of the following:
In claim 9, “and” should be inserted before the last “wherein” clause.
In claim 24, line 3, “and” before “wherein” should be deleted. In line 6, “and” before “wherein” should be deleted.
In claim 24, “and” should be inserted before the last “wherein” clause.
In claim 24, line 7, “have” should be amended to “has”, because “sample” is singular.
Dependent claim 25 is included.
Appropriate correction is required.
Double Patenting
3. 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€ 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.
4. Claim 1-9, 12-20 and 22-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-10, 12, 13, 17-21 and 24-30 of copending Application No. 18/071140 (hereafter ‘140, allowed). Although the claims at issue are not identical, they are not patentably distinct from each other because variety NUN 71570 MEM of the instant application has the same parents as variety NUN 71550 MEM of ‘140, as disclosed in Applicant’s Submission of Trade Secret Material filed January 30, 2026. Moreover, most of the traits disclosed for variety NUN 71570 MEM of the instant application and NUN 71550 MEM of ‘140 are the same or are similar (+/- 10% std. dev.). Differences between variety NUN 71570 MEM of the instant application and NUN 71550 MEM of ‘140 may be attributable to environmental variations, grader subjectivity, linkage drag during backcrossing, donor plant traits and/or statistical insignificance. Paragraph [0165] states "In particular, variants which differ from melon variety NUN 71570 MEM in none, one, two, or three of the characteristics mentioned in Tables 1-3 are encompassed." Applicant further acknowledges these characteristics are influenced by environmental conditions, including temperature, light intensity, day length, humidity, soil, fertilizer use and disease vectors [0138]. Lastly, any morphological and physiological difference between these varieties needs to be unexpected and practically significant. See Ex Parte C (27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992)), Ex Parte McGowen (Application No. 14/996093, P.T.A.B. Jun 15, 2020) and MPEP 716.02(b). Applicant does not disclose an unexpected and practically significant difference in a trait between variety NUN 71570 MEM of the instant application and NUN 71550 MEM of ‘140. The plants, seeds, plant parts, cells, fruits, method of producing a plant by vegetative propagation, methods of producing a melon plant by crossing, method of producing a melon seed by crossing, method of producing doubled haploid cells, method of grafting, container comprising the plant, seed or fruit, a food product, method of introducing a desired trait, method of producing a melon fruit, method for developing a melon plant in a melon breeding program, and methods of producing a modified melon plant are claimed or taught in both applications.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
5. Claims 1-9, 12-20 and 22-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 12,342,774 (hereafter ‘774) and claims 1-29 of U.S. Patent No. 11,523,573 (hereafter ‘573). Although the claims at issue are not identical, they are not patentably distinct from each other because variety NUN 71570 MEM of the instant application has the same parents as variety NUN 71560 MEM of ‘774 and variety NUN 71248 MEM of ‘573, as disclosed in Applicant’s Submission of Trade Secret Material filed January 30, 2026. Moreover, most of the traits disclosed for variety NUN 71570 MEM of the instant application, variety NUN 71560 MEM of ‘774 and variety NUN 71248 MEM of ‘573 are the same or are similar (+/- 10% std. dev.). Differences between variety NUN 71570 MEM of the instant application, variety NUN 71560 MEM of ‘774 and variety NUN 71248 MEM of ‘573 may be attributable to environmental variations, grader subjectivity, linkage drag during backcrossing, donor plant traits and/or statistical insignificance. Paragraph [0165] states "In particular, variants which differ from melon variety NUN 71570 MEM in none, one, two, or three of the characteristics mentioned in Tables 1-3 are encompassed." Applicant further acknowledges these characteristics are influenced by environmental conditions, including temperature, light intensity, day length, humidity, soil, fertilizer use and disease vectors [0138]. Lastly, any morphological and physiological difference between these cultivars needs to be unexpected and practically significant. See Ex Parte C (27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992)), Ex Parte McGowen (Application No. 14/996093, P.T.A.B. Jun 15, 2020) and MPEP 716.02(b). Applicant does not disclose an unexpected and practically significant difference in a trait between variety NUN 71570 MEM of the instant application, variety NUN 71560 MEM of ‘774 and variety NUN 71248 MEM of ‘573. The plants, seeds, plant parts, cells, fruits, method of producing a plant by vegetative propagation, methods of producing a melon plant by crossing, method of producing a melon seed by crossing, method of producing doubled haploid cells, method of grafting, container comprising the plant, seed or fruit, a food product, method of introducing a desired trait, method of producing a melon fruit, method for developing a melon plant in a melon breeding program, and methods of producing a modified melon plant are claimed or taught in the instant application and the issued patents.
Conclusion
6. No claim is allowed. It is understood by the Office that “part” encompasses at least one regenerable cell. In claim 1, “seed of melon variety NUN 71570 MEM” is the seed as represented by the deposit. Additionally, claims directed to a fruit obtained from a plant of NUN 71570 MEM is understood to be the NUN 71570 MEM fruit as described in the Tables in Applicant’s disclosure.
7. 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 M-F 8am-5pm.
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/PHUONG T BUI/Primary Examiner, Art Unit 1663
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