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 .
Claims 11-14, 16-17, and 21-31 are pending and examined.
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.
Claims 11-14, 16-17, and 21-31 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 claims are is broadly drawn to a grapevine that produces a white fruit due to a mutation that is not a VvMybA1 mutation. The claims further recite that the non-VvMybA1 mutation is comprised in Vitis labrusca. A non-VvMybA1 mutation also encompasses mutations outside of the VvMybA1 gene such as a genomic dislocation thousands of nucleotide bases away from the VvMybA1 gene. In essence Applicant is claiming a phenotype with little structural information.
Applicant and the prior art describe genes from the anthocyanin biosynthetic pathway that when directly mutated could possibly eliminate anthocyanin biosynthesis and produce a white fleshy fruit in grapevine. In addition, there are transcription activators like PhytochromeA that have been described in the art as possibly having a role in producing a white fleshy fruit in Vitis labrusca Alba.
However, Applicant has not described the multitude of non-VvMybA1 mutations either single mutations or multiple mutations when in combination that would produce a grapevine that produces a white fleshy fruit in a grapevine. Further, Applicant has not described any non-perfect flowered, bunched grapevine having white fruit due to a non-VvMybA1 mutation other than Vitis labrusca Alba.
See University of Rochester v. G.D. Searle & Co., 68 USPQ2d 1424, 1433 (DC WNY 2003) which teaches knowing the "starting point" is not enough; that is little more than a research plan. The court held that the disclosure of screening assays and general classes of compounds was not adequate to describe compounds having the desired activity: without disclosure of which peptides, polynucleotides, or small organic molecules have the desired characteristic, the claims failed to meet the description requirement of § 112.
Moreover, since there is no description of a representative number of genetic loci or specific genomic sequences that could adequately describe the multitude of mutations encompassing a ‘non-VvMybA1’ mutation resulting in a white fleshy fruit in grapevine, the specification does not support a written description for a mutagenized grapevine as broadly claimed.
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 11-14, 16-17, and 21-31 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 11 and 12 recite the broad recitation ‘having white fruit due a non-VvMybA1 mutation’ in lines 4-5 and 1-2 respectively, and the claims also recite ‘wherein Vitis labrusca Alba comprises the non-VvMybA1 mutation’ immediately following, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. It is not clear if Vitis labrusca is only an example of a non-VvMybA1 mutation but not required by the claim or a Vitis labrusca grapevine is an essential structural element. The limitation of ‘a white fruit due to a non-VvMybA1 mutation’ does not define anything, and thus fails to set forth the metes and bounds of the invention.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 23 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The last three grape cultivars listed in claim 23: Dakapo, Ruby Cabernet, and Ruby seedless are not white fruited as set forth in claim 11 as the phenotype of the 2nd grapevine. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
Claim(s) 11-14, 17, 21-22, and 24-31 are rejected under 35 U.S.C. 102(a)(1) as clearly anticipated by Cadle-Davidson, M.M. and Owens, C.L., Theor Appl Genet (2008) Vol. 116:1079-1094 in light of Liang, Z. et al., Food Chemistry (2012) pp. 730-738.
Claims 11-13 are broadly drawn to a white fruited, perfect-flowered, bunch grapevine having a white fruit due to the non-VvMybA1 mutation wherein Vitis labrusca Alba comprises the non-VvMybA1 mutation.
Claims 14, 17, 21-22, and 24-31 are products by process and recite nothing more than the limitations of claims 11 and 13 from which they depend; and those limitations are: a white fruited, perfect-flowered, bunch grapevine having a white fruit due to a non-VvMybA1 mutation wherein Vitis labrusca Alba comprises the non-VvMybA1 mutation. In addition, the commodity plant products of 28 and 29 recites grapes that are inherent to growing and propagating a white fruited, perfect-flowered, bunch grapevine having a white fruit due to the non-VvMybA1 mutation wherein Vitis labrusca Alba comprises the non-VvMybA1 mutation.
Cadle-Davidson teaches that the Vitis labrusca grapevines contained in the North American Vitis collection at Geneva New York has 4 white Vitis labrusca accessions; 3 of which are likely vinifera x labrusca hybrids (see Table 2 in the 8th entry on page 1082 and in Table 2 legend); and that the Gret1 retroelement has been identified as generating color variation in cultivated grape (Vitis vinifera L.) by insertion into the promoter of VvMybA1 (see Introduction in right column on page 1079 1st full paragraph); and in V. labrusca by insertion of Gret1 into PhytochromeA or PHYA (see left column in lines 10-12 on page 1090); evidence of Gret1 insertion into the VvMybA1 allele (lanes 10-11 presence of Gret1 in VvMybA1 of 2 of the white V. labrusca accessions), and absence of Gret1 insertion into the VvMybA1 allele (lanes 9 and 12 Gret1 is not present in VvMybA1 of 2 accessions) of the 4 white V. labrusca accessions (see page 1086 in right column in figure 3 in lanes 9-12 under the number 3); and thus the Gret1 insertion analysis indicates there are 2 white V. labrusca accessions that have a non-VvMybA1 mutation.
Liang et al. provide evidence in Supplemental Table 1 of the accessions analyzed in their experiments and state that 4 of the V. labrusca accessions from the Geneva, New York collection (see page 731 in left column Section 2.1 Material and Methods 1st paragraph; and on page 732 in left column section 3.2 lines 1-3).
A search of the GRIN database for the accession from Laing’s Supplemental Table 1 reveals 4 accessions having green-yellow skin and fruit flesh not colored: PI 588165 (Alba), PI 597104 (Bergonia), PI 597228 (Sugar Plum), and PI 597203 (Glenfield or GVIT 524); and 1 accession having a non-perfect or female pistillate flower (Alba); and 3 accessions having perfect flowers (i.e. hermaphroditic) (Bergonia, Sugar plum, and GVIT 524).
Since perfect flowers are considered a trait of vinifera and imperfect flowers a trait of labrusca, and since one of the two lanes in figure 3 not having a Gret1 insertion in VvMybA1 (lanes 9 and 12 in figure 3 on page 1086 of Cadle-Davidson) is V. labrusca Alba, then then one of the three hybrid vinifera x labrusca accessions is represented by lane 12 and is a white fruited, perfect-flowered, bunch grapevine having a white fruit due to the non-VvMybA1 mutation wherein Vitis labrusca Alba comprises the non-VvMybA1 mutation; and thus reference teaches all the limitations of claims 11-14, 17, 21-31.
Claim Rejections - 35 USC § 103
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.
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.
Claims 16 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Cadle-Davidson, M.M. and Owens, C.L., Theor Appl Genet (2008) Vol. 116:1079-1094.
Claim(s) 11-14, 17, 21-22, and 24-31 are rejected supra under 35 U.S.C. 102(a)(1).
Claim 16 is drawn to propagation of a white-fruited perfect-flowered, bunch grapevine having white fruit due to a non-VvMybA1 mutation;
and claim 23 is drawn to cross hybridization to a different cultivar.
Cadle-Davidson speculates that a possible reason why more color loci have not been identified in V. vinifera is that in V. vinifera many grape cultivars are propagated clonally (i.e. by tissue culture) for hundreds of years; and that cultivation of bud sports or spontaneous mutations in Vitis are discovered and propagated by breeders and viticulturists by grafting for example. In addition, cross hybridization between genotypes is a common practice in breeding grape new grape varieties (see page 1091 in right column beginning in 1st full paragraph); and thus tissue culturing and cross hybridization are well-developed and obvious practices in the art of viticulture.
It would be obvious at the time of filing to cross hybridize the white-fruited perfect-flowered, bunch grapevine having white fruit due to a non-VvMybA1 mutation taught by Cadle-Davidson with any one of the multitude of white varieties listed in claim 23 and clonally propagate the white-fruited perfect-flowered, bunch grapevine having white fruit due to a non-VvMybA1 mutation for future cross hybridizations. One of ordinary skill would have a reasonable expectation of success given the availability of a white-fruited perfect-flowered, bunch grapevine having white fruit due to a non-VvMybA1 mutation and the high level of the art of propagating Vitis cultivars clonally and developing new varieties through cross hybridization.
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL KALLIS whose telephone number is (571)272-0798. The examiner can normally be reached Monday-Friday 8AM-5PM.
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/RUSSELL KALLIS/Primary Examiner, Art Unit 1663