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 restriction election filed March 23, 2026. Applicant elects Group I, claims 1-4 and 7-10, with traverse. Applicant traverses primarily that the International Searching Authority found Unity of Invention in the international application of which the present application is a national stage entry. Applicant’s traversal has been considered but is deemed unpersuasive because the International Searching Authority does not govern US lack of unity practice. The claimed products and methods have been shown to lack unity of invention for reasons of record. However, method claims may be rejoined in accordance with In re Ochiai when allowability is indicated. Claims 1-13 are pending. Claims 5, 6 and 11-13 are withdrawn. Claims 1-4 and 7-10 are examined in the instant application. The restriction is made FINAL.
Information Disclosure Statement
2. Applicant’s Information Disclosure Statement (IDS) filed February 8, 2024 has been considered. A signed copy is attached.
Specification
3. The disclosure is objected to because of the following:
Scientific names should be italicized. See “Rubus glareosus” on p. 2, ln. 31, and “Rubus rudis”, “Rubus oreades” and “Rubus drymophilus” on p. 3, first complete paragraph.
Appropriate correction is required.
Claim Objections
4. Claims 2 and 4 are objected to because of the following:
In claim 2, “Rubus glareosus” should be italicized.
In claims 2 and 4, a hyphen should be inserted after “intra” and “inter”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
5. 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.
6. Claims 2-4 and 10 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.
In claims 2 and 4, the metes and bounds of “intra specific and inter specific hybrids” are unclear. It is unclear whether these hybrids retain the genus and species names recited in the claims or they have a different scientific designation. If so, it is unclear what the new scientific designations are. It is unclear how these intra-specific and inter-specific hybrids can be distinguished from other plants.
In claim 3, it is unclear whether “a hybrid thereof” implies that the Rubus idaeus plant is homozygous and the hybrid is heterologous, or Applicant is referring to a cross between R. idaeus and another plant.
In claim 10, it is unclear what plant (raspberry?) suckers Applicant is referring to.
Correction and/or clarification is required.
Claim Rejections - 35 USC § 102
7. 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.
8. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
9. Claims 1-4 and 7-10 are rejected under 35 U.S.C. 102(a)(1) as 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 claims 1, 3 and 4, Laurent teaches a grafted raspberry plant comprising a Rubus idaeus raspberry scion grafted on a blackberry rootstock (p. 34, second paragraph).
With regard to claim 2, because it is unclear what plants are encompassed by “intra specific and inter specific hybrids thereof”, the claim encompasses the Rubus fruticosus blackberry rootstock of Laurent.
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 imply 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.
Conclusion
10. No claim is allowed.
11. 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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