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 amendment filed August 18, 2026. Claims 1 and 5-10 are pending. Claims 5 and 6 are withdrawn. Claims 1 and 7-10 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All previous rejections not set forth below have been withdrawn.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.
This action is made FINAL.
Claim Rejections - 35 USC § 112(a)
2. 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.
3. Claims 1 and 7-10 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. This is a new matter rejection.
Applicant is invited to point to the page and line numbers in the originally-filed disclosure where support for grafting a Rubus idaeus raspberry scion on a Rubus subg. Rubus blackberry rootstock can be found. Absent of support, Applicant is required to cancel the new matter in response to the instant Office action.
Claim Rejections - 35 USC § 102
4. Claims 1 and 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Laurent, A. (“Creating a Multi-Berry Shrub via Cross Grafting”, The Pegasus Review: University of Central Florida, Undergraduate Research Journal, Vol. 11.2:32-38, 14 November 2019 (Applicant’s IDS)).
With regard to claim 1, Laurent teaches a grafted raspberry plant comprising a Rubus idaeus raspberry scion grafted on a blackberry R. fruticosus rootstock (p. 34, second paragraph). The “Rubus subg. Rubus” is a subgenus grouping that encompasses R. fruticosus.
With regard to claims 7-9, these are inherent properties of the claimed grafted raspberry plant. If there are other structures necessary to produce the recited phenotypes, they must be recited in the claims. Moreover, Laurent teaches “The shoots of R. idaeus were able to bend and contort as needed to reach upward to the sunlight and competed among themselves for resources. The stronger base on the sturdier R. fruiticosus [sic] showed signs of being able to support the scion to a higher degree, allowing a better chance for the tissues to fuse and nutrients to be passed to the scion.” (p. 36, second paragraph). Laurent further teaches “while the scion on the R. idaeus rootstocks were turing [sic] yellow or brown and becoming brittle, the scions on the R. fruiticosus [sic] plants were still showing signs of life though a soft, green hue.” (p. 35, last paragraph). Lauren additionally teaches grafting can increase plant productivity (p. 37, first paragraph), fruit yields and increased disease resistance (p. 33, third paragraph). These teachings suggest that the grafted raspberry plant exhibits greater fruit yield, greater disease resistance and greater vigor compared to an ungrafted raspberry plant.
With regard to claim 10, Laurent is silent with regard to root suckers during cultivation. However, given the detailed description of the grafted plants, and the fact that none of the observations of Laurent refers to root suckers, it would appear that the grafted raspberry of Laurent does not produce root suckers during cultivation.
Accordingly, the claimed invention is anticipated by the prior art.
Applicant’s Traversals
Applicant traverses primarily the following: 1) Laurent discloses a Rubus idaeus scion grafted on a Rubus fruiticosus rootstock, not the claimed Rubus subg. Rubus rootstock. (2) Examples 1 and 2 show that the resulting raspberry plants have an increased fruit yield, an absence of root suckers, increased disease resistance and increased vigor. (3) There is no motivation to modify the Laurent rootstock.
Reply to Applicant’s Traversals
Applicant’s traversals have been considered but are deemed unpersuasive for the following reasons. With regard to traversal (1), “Rubus subg. Rubus” is a subgenus grouping that includes the R. fruticosus species of Laurent. With regard to traversal (2), these characteristics are inherent of the claimed grafted plant. No additional structures are required to produce increased fruit yield, an absence of root suckers, increased disease resistance and increased vigor. With regard to traversal (3), there is no need to provide motivation to modify the Laurent rootstock in a 35 USC 102(a) rejection. Accordingly, the rejection is maintained.
Conclusion
5. No claim is allowed.
6. 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.
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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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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/PHUONG T BUI/Primary Examiner, Art Unit 1663
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