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 January 9, 2026. Applicant elects Group III, directed to tomato hybrid SVTH5912, with traverse. However, because no traversal argument is presented, this election is treated as an election without traverse. Claims 1-25 are pending. Claims 1-3, 5, 7-17 and 22-25 are withdrawn. Claims 4, 6 and 19-21 are examined in the instant application to the extent of the elected tomato hybrid SVTH5912.
The restriction is made FINAL
Specification
2 The disclosure is objected to for the following reasons:
The Title should be amended to more clearly define the claimed invention. It is suggested the Title be amended to --TOMATO HYBRID SVTH5912--.
The Abstract should be amended to more clearly define the claimed invention. It is suggested the recitations of “tomato line FIR-A820-8142” and “tomato line FDR-A820-8126” be deleted.
Appropriate correction is required.
Claim Objections
3. Claims 4, 6 and 19-21 are objected to because of the following: claims 4, 6 and 19-21 depend from withdrawn claims, and claims 19-21 recite non-elected inventions.
Appropriate correction is required.
Claim Rejections – 35 USC § 112(b)
4. 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.
5. Claim 21 is 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 claim 21, the plant of step (a) cannot be produced from the seed of step (b) because the seed of step (b) is a progeny of the plant of step (a). It is suggested “for producing the tomato plant according to step (a)” be deleted.
Clarification and/or correction is required.
Claim Rejections - 35 USC § 112(a)
6. 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.
7. Claims 4, 6 and 19-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for crossing tomato line FIR-A820-8142 with tomato line FDR-A820-8126 to produce hybrid SVTH5912, does not reasonably provide enablement for producing hybrid SVTH5912 using only one of parent lines FIR-A820-8142 and tomato line FDR-A820-8126. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Claim 4, which depends from claim 1, states that tomato hybrid SVTH5912 contains a first set of the chromosomes of tomato line FIR-A820-8142 or a first set of the chromosomes of tomato line FDR-A820-8126. The specification discloses line FIR-A820-8142 was crossed with line FDR-A820-8126 to produce hybrid SVTH5912. Thus, hybrid SVTH5912 contains a set of the chromosomes of tomato line FIR-A820-8142 and a set of the chromosomes of tomato line FDR-A820-8126. No other tomato plant is disclosed that can be crossed with line FIR-A820-8142 or with line FDR-A820-8126 to produce hybrid SVTH5912. Each inbred line has a unique set of chromosomes that are homozygous at every locus and result in a unique set of morphological and physiological characteristics. When two inbred lines are crossed, they produce a hybrid that has one set of the chromosomes of each parent line, wherein the hybrid is heterozygous at every locus and has its own unique set of morphological and physiological characteristics. Applicant does not disclose any other parent lines that can be crossed, with either inbred line FIR-A820-8142 or inbred line FDR-A820-8126, to produce tomato hybrid SVTH5912 having all the morphological and physiological characteristics disclosed for hybrid SVTH5912. Accordingly, Applicant has not enabled crossing line FIR-A820-8142 or line FDR-A820-8126 with an undisclosed line to produce hybrid SVTH5912 without excessive burden and undue experimentation.
With regard to claim 6, a seed of tomato hybrid SVTH5912 cannot produce line FIR-A820-8142 or line FDR-A820-8126 because these lines are the inbred parent lines of the claimed hybrid. The hybrid SVTH5912 has a genome that is heterozygous at every locus. Selfing hybrid SVTH5912 would not produce inbred line FIR-A820-8142 or inbred line FDR-A820-8126. Neither the state of the art to date nor Applicant’s disclosure teaches how hybrid SVTH5912 can produce its inbred parent lines. Accordingly, a hybrid SVTH5912 seed for producing a tomato plant of tomato line FIR-A820-8142 or of tomato line FDR-A820-8126 is not enabled as commensurate in scope with the claims without undue experimentation.
With regard to claims 19-21, step (a) in claims 19 and 20 is not enabled for the following reasons. There is no disclosure of crossing line FIR-A820-8142 or line FDR-A820-8126 with itself or a different tomato plant to produce a tomato hybrid SVTH5912-derived tomato plant. There is no combination of plants, other than crossing line FIR-A820-8142 with line FDR-A820-8126, to produce hybrid SVTH5912. Hybrid SVTH5912 must be obtained before it can be crossed with itself or a different tomato plant to produce a hybrid SVTH5912-derived tomato plant. However, none of the claims recites a first step of crossing line FIR-A820-8142 with line FDR-A820-8126 to produce hybrid SVTH5912. Applicant provides no guidance and has no working example of any other cross to produce hybrid SVTH5912 or a hybrid SVTH5912-derived tomato plant. Accordingly, Applicant has not fully enabled the claimed methods that do not include crossing line FIR-A820-8142 with line FDR-A820-8126 as commensurate in scope with the claims without undue experimentation.
Conclusion
8. No claim is allowed.
9. The claims are free of the prior art. The closest prior art teaches tomato line FIRXM12-4126 which shares at least 54 physiological and morphological characteristics with Applicant's hybrid SVTH5912, including (+/- 10% std. dev.) anthocyanin in hypocotyl seedling, mature plant height, growth type, stem branching, surface of major leaflets, inflorescence type, average number of flowers in inflorescence, anthers, fruit surface, fruit base color, shape of stem end, shape of blossom end, point of fruit detachment at harvest, length of mature fruit, diameter of mature fruit, weight of mature fruit, number of locules, fruit color full ripe, locular gel color, seeding to 50% flowers days, fruiting season, culture and pH (US Publication No. 20170339857, Table 3, (A)). However, at least their plant habit, branching at cotyledon or first leafy node, number of nodes between first inflorescence, number of nodes between early inflorescences, number of nodes between later developing inflorescences, margin of major leaflets, pubescence of mature leaf beneath the 3rd inflorescence, calyx lobes, shape of fruit in longitudinal section, shape of fruit in transverse/cross section, shape of pistil scar, core presence, flesh color full-ripe, flesh color pattern, ripening patterns, titratable acidity, total solids and soluble solids as Brix differ.
10. 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