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 .
Applicant’s Reply filed on 03/06/2026 is hereby acknowledged. Claims 61-62 and 70-71 were canceled without prejudice.
Claims 57-60, 63-69, and 72-76 are pending and examined herein on the merits.
The previous rejection under 35 USC 112b as being indefinite is overcome, however the claim amendments have necessitated new ground of rejection under 35 USC 112b as being indefinite presented herein.
Claim Rejections - 35 USC § 112
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.
Claims 57-60, 63-69, and 72-76 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claims appear to require the gene of the claims RLK2, to comprise specified SEQ ID Nos, 29 and 30, but also specifies a mutation within exon 1, which is encompassed by these sequences which do not appear to have the mutation required by the claims. This language is unclear both in the limitation it is intending to impart on the claim as well as the current claim scope as currently written. There are several possible interpretations. The most reasonably interpretation seem to be that the claim is requiring the mutation to be in the gene which is set forth in SEQ ID NO:29 and SEQ ID NO:30 and that the mutation is relative to the unmutated SEQ ID Nos 29 and 30, however the claims neither specify this, nor require it.
The metes and bounds of the claim are unclear. Accordingly, the claims as currently written is indefinite.
Claim 64 depends from a canceled claim.
Claim 73 depends from a canceled claim.
Claim 75-76 depend from a canceled claim.
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.
Claims 57-60, 63-68 and 74 remain rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
The claims are drawn to any solanaceous plant having literally any mutation in RLK2 wherein the mutation makes the protein non-functional and wherein the plant is resistant to tomato yellow leaf curl virus (tylcv), as well as mutations within certain regions of these genes, as well as mutations within certain regions of specified DNA sequences.
In contrast, the specification discloses very specific mutations in RLK2 in tomato plants specifically, that appear to impart TYLCV resistance in the tomato plant. The specification does not disclose large numbers of mutations in genes of RLK2 nor does the specification disclose mutating the gene in any other solanaceous plant.
The scope of the claims are currently written is quite large particularly with regard to the product claims, and particularly the product claims that have not been disclosed in the instant specification and could potentially read on natural mutations in the environment. The number of sequences encompassed by the claims as currently written would be numerous. The specification only appears to have 3-4 specified mutations on a portion tested for virus resistance, all in tomato. The number of working examples would not be considered to be representative of the vast scope of the claims as currently written. In the absence of adequate numbers of working example the specification may contain information about structure function relationships such that one of skill in the art would be reasonably apprised of which mutations are most likely to be able to be used within the context of the current invention. However, no mode of action or description is given as to what has to be mutated or how in order to achieve the function of virus resistance.
Given the breadth of the claims, a lack of the adequate number of representative working examples, and a lack of description of the structure function relationship such that one of skill in the art would be able to determine if they were in possession of the claimed invention or not.
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BRENT T PAGE whose telephone number is (571)272-5914. The examiner can normally be reached M-F 7-4 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham can be reached at 5712707058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRENT T PAGE/Primary Examiner, Art Unit 1663
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