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 .
Claim Status
Claims 1-25 are pending.
Claims 1-25 are examined on the merits.
Specification
The disclosure is objected to for the following reasons:
In Table 1, page 11, “at calyx detachment” should be amended to “at calyx attachment” to reflect the point at which the fruit detaches at harvest.
In paragraph 0093 on pages 28-29 in several places the specification indicates that there were multiple deposits. For example in line 4 of paragraph 0093 “The accession numbers” should be singular because only a single deposit has been made of tomato line PSQ-9Z15-3776V. Similarly, in line 6 of paragraph 0093 there is a recitation of “upon the deposits will be removed, and the deposits”. This occurs later in this paragraph as well.
Appropriate correction is required.
Claim Rejections - 35 USC § 112 (Enablement)
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.
DEPOSIT REJECTION
Claims 1-25 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. All dependent claims are included in this rejection unless they include a limitation that overcomes the deficiencies of the parent claim.
The claims are directed to plants and seeds comprising at least a first set of chromosomes of tomato line PSQ-9Z15-3776V or plants and plant parts derived from said line, and methods that utilize said tomato line. Since the plant is essential to the claimed invention it must be obtainable by a repeatable method set forth in the specification or otherwise be readily available to the public. If the plant is not so obtainable or available, the requirements of 35 USC § 112 may be satisfied by a deposit of the seeds. A deposit of 625 seeds of the cultivar is considered sufficient to ensure public availability.
The specification does not disclose a repeatable process to obtain the plant. It is noted that Applicant has deposited seeds (see paragraph 0093 on pages 28-29 of the specification) but the deposit statement does not make clear that the restrictions upon the deposit will be irrevocably removed.
(a) If a deposit is made under the terms of the Budapest Treaty, then a statement, affidavit or declaration by Applicants, or a statement by an attorney of record over his or her signature and registration number, or someone empowered to make such a statement, stating that the instant invention will be irrevocably and without restriction released to the public upon the issuance of a patent, would satisfy the deposit requirement made herein.
(b) If a deposit has not been made under the Budapest Treaty, then in order to certify that the deposit meets the criteria set forth in 37 CFR 1.801-1.809 and MPEP 2402-2411.05, Applicant may provide assurance of compliance by statement, affidavit or declaration, or by someone empowered to make the same, or by a statement by an attorney of record over his or her signature and registration number showing that:
(i) during the pendency of this application, access to the invention will be afforded to the Commissioner upon request;
(ii) all restrictions upon availability to the public will be irrevocably removed upon granting of the patent in accordance with 37 CFR § 1.808(a)(2);
(iii) the deposit will be maintained in a public depository for a period of 30 years or 5 years after the last request or for the effective life of the patent, whichever is longer;
(iv) a test of the viability of the biological material at the time of deposit (see 37 CFR § 1.807); and,
(v) the deposit will be replaced if it should ever become inviable.
Claim Rejections - 35 USC § 112(a) (Written Description)
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 8, 11, 12, 14 and 23-25 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 8, the claimed tomato plant having all of the physiological and morphological characteristics of the plant of claim 1 lacks adequate written description for the following reasons. Claim 1 is directed to a tomato plant comprising at least one set of chromosomes of tomato line PSQ-9Z15-3776V, which encompasses an F1 progeny plant of PSQ-9Z15-3776V. An F1 progeny plant of inbred tomato line PSQ-9Z15-3776V inherently has half of the chromosomes of PSQ-9Z15-3776V, even though its physiological and morphological characteristics are not disclosed. However, the plant of claim 8 is not required to have half of the chromosomes of PSQ-9Z15-3776V. In fact, the plant of claim 8 is not required to have PSQ-9Z15-3776V as a parent. The plant of claim 8 is only required to have “all the physiological and morphological characteristics of the plant of claim 1.” Because the physiological and morphological characteristics of the plant of claim 1 are undisclosed, the physiological and morphological characteristics of claim 8 are also undisclosed. As the plant of claim 8 is not defined structurally by its genetic makeup or by its physiological and morphological characteristics, the plant of claim 8 lacks adequate written description.
With regard to claims 11 and 12, it is unpredictable what morphological and physiological characteristics the plant utilized in the method of claim 11 and the claimed plant of claim 12 have. Claim 11(a) recites utilizing as a recurrent parent the plant of claim 1. The plant of claim 1 has one set of chromosomes of tomato line PSQ-9Z15-3776V and encompasses an F1 progeny plant obtained by crossing inbred parent line PSQ-9Z15-3776V with an undisclosed parent. Because the morphological and physiological characteristics of the plant of claim 1 are not disclosed, backcross progeny comprising the trait and otherwise comprising the morphological and physiological characteristics of the recurrent parent line used in step (a) is not adequately described. Thus, it is unpredictable what morphological and physiological characteristics the claimed tomato plant of claim 12 produced by the method of claim 11 has in addition to the trait.
With regard to claim 14, it is unpredictable what morphological and physiological characteristics the claimed plant has. Aside from the transgene introduced in the method claim 13, the resulting plant may have morphological and physiological characteristics which are significantly different from those disclosed for PSQ-9Z15-3776V. It is unclear how the transgene is introduced, as outcrossing with a genetically different plant would introduce characteristics which are not present in PSQ-9Z15-3776V, in addition to the transgene. However, it is not known what those characteristics are or how they differ from PSQ-9Z15-3776V. The claims do not require that the claimed plant comprises all of the physiological and morphological characteristics of tomato line PSQ-9Z15-3776V in addition to the added trait.
In claim 23-25, the claimed methods of determining the genotype of the plant of claim 1or a progeny plant or plant part thereof, comprising at least a first polymorphism in a sample of nucleic acids from said plant or plant part lacks adequate written description for the following reasons. Claim 1 is directed to a tomato plant comprising at least one set of chromosomes of tomato line PSQ-9Z15-3776V, which encompasses an F1 progeny plant of PSQ-9Z15-3776V. An F1 progeny plant of inbred tomato line PSQ-9Z15-3776V inherently has half of the chromosomes of PSQ-9Z15-3776V, even though its physiological and morphological characteristics are not disclosed.
Importantly, claim 1 includes hybrid plants which comprise half of the chromosomes which are unknown and undescribed in the instant disclosure. Therefore methods of detecting polymorphisms which may be found in these undescribed chromosomes are included within the scope of the claims. Because the genetics and structure of these undescribed chromosomes are undisclosed, the polymorphisms of claim 23 are also undisclosed. As these polymorphisms are not defined structurally the methods of identifying these polymorphisms lack written description. Claims 24-25 limit the method of claim 23 to those that use DNA sequencing or genetic marker analysis to detect the polymorphisms and to those methods that further comprise storing the results of the detecting on a computer readable medium or transmitting the results of the detecting. These additional limitations do not limit the claimed invention to methods having been adequately described in the instant disclosure and therefore those claims are rejected as lacking adequate written description.
Accordingly, the claimed plants in claims 12 and 14, the backcross progeny comprising the trait and the morphological and physiological characteristics of the recurrent parent line in claim 11(d) and the methods of claims 23-25, lack adequate written description.
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 1-25 are rejected under 35 U.S.C. 103 as being unpatentable over Bunn, US 10,226,000 B2 which was patented March 12, 2019 in view of Graham, US 11,479,788 B2, patented October,25, 2022.
Claim 1 is drawn to a tomato plant comprising at least a first set of the chromosomes of tomato line PSQ-9Z15-3776V, which the transmittal letter dated 08/21/2024 makes clear was made by backcrossing Fusarium oxysporum f. sp. lycopersici resistance from tomato line FDS-ZJ11002 into the recurrent parent tomato line PSQ9Z12-9061.
With respect to claim 1, Bunn teaches tomato line PSQ9Z12-9061, the recurrent parent of Tomato Line PSQ-9Z15-3776V (Bunn, Abstract; Bunn, Columns 11-15, Table 3; Instant Transmittal Letter dated 08/21/2024).
Further, Bunn teaches a tomato plant comprising at least a first set of the chromosomes of tomato line PSQ9Z12-9061, further comprising a single locus conversion which confers a trait selected from a group including disease resistance (Bunn, Column 26, Claims 12-13).
Bunn also teaches a method of introducing a trait into a tomato line comprising the steps of using PSQ9Z12-9061 as a recurrent parent plant by crossing this plant with a donor plant that comprises a trait to produce F1 progeny, selecting an F1 progeny that comprises the trait; backcrossing the selected F1 progeny with a plant of the same tomato line as the recurrent parent to produce backcross progeny, selecting a backcross progeny comprising the trait, and repeating the backcrossing and selecting steps three or more times to produce a selected fourth or higher generation backcross progeny, wherein the backcross progeny comprises the trait and otherwise comprises all of the morphological and physiological traits of tomato line PSQ9Z12-9061 (Bunn, Column 25, Claim 6).
Additionally, Bunn teaches that:
“plants of the present invention are particularly well suited for the development of new lines based on the elite nature of the genetic background of the plants. In selecting a second plant to cross with SV2756TM and/or tomato lines PSQ9Z12-9066 and PSQ9Z12-9061 for the purpose of developing novel tomato lines, it will typically be preferred to choose those plans which either themselves exhibit one or more selected desirable characteristics or which exhibit the desired characteristic(s) when in hybrid combination. Examples of desirable traits may include, in specific embodiments, high seed yield, high seed germination, seedling vigor, high fruit yield, disease tolerance or resistance, and adaptability for soil and climate conditions”
Bunn later states that single locus traits can be used to improve an inbred variety by backcrossing techniques and provides several examples of these traits including resistance to bacterial, fungal or viral disease (Bunn, Column 19, Line 63- Column 20, Line 4).
With respect to claim 1, Bunn does not explicitly teach plants produced by introgressing Fusarium oxysporum f. sp. lycopersici (Fol) resistance into the plants of Bunn.
With respect to claim 1, Graham teaches crossing a tomato plant comprising a specific Fol resistance allele using a backcrossing technique (Graham, Columns 39-40, Claims 1, 5 and 8-10). Further, Graham teaches that the Fol resistance allele comprises a deletion which prevents the resistance gene from also conferring a soft fruit trait to plants comprising this allele (Graham), Column 39, Claim 1). As such this represents motivation to use this specific allele when generating Fol resistant plants because Graham teaches that the soft fruit trait is “commercially unacceptable” and reduces marketability of the fruit (Graham, Column 4, Lines 20-25). Finally, Graham teaches that it is beneficial to introgress a Fol resistance allele which does not confer the soft fruit trait into elite lines which produce commercial quality fruit and are therefore the most valuable agronomically because this allows for fungal resistance in these plants without the negative effects of the soft fruit trait (Graham, Column 3, Lines 49-60).
At the time of filing it would have been obvious to modify the tomato line of Bunn in order to use a backcross breeding method as taught in Bunn in order to introduce a disease resistance trait into the plant of Bunn as taught in Bunn in order to produce elite tomato lines having enhanced disease resistance. Further, given that Bunn teaches introducing fungal disease resistance genes into the elite tomato line of Bunn it would have been obvious to introduce a fungal disease resistance gene. Finally it would have been obvious to use the plant of Graham in order to introduce the Fol fungal resistance gene of Graham into the elite tomato line of Bunn because of the inherent advantages of this gene which Graham teaches provides specific advantages to elite tomato lines such as that taught by Bunn.
Specifically the ordinary artisan would have found it obvious to introduce this specific allele into the elite line of Graham because it allows for fungal resistance without the soft fruit phenotype which appears to be linked with all other Fol resistance alleles. Graham notes that this soft fruit phenotype fruit phenotype is most evident in elite tomato lines and describes it as a commercially unacceptable trait which results in reduced marketability of the fruit.
Therefore given that Bunn teaches the recurrent parent of the instant variety, teaches that it serves as ideal material into which to introgress desirable traits including fungal disease resistance and that Graham teaches an abnormally effective and commercially significant fungal resistance traits which allows for increased disease resistance without the normal unacceptable soft fruit traits which reduce marketability of the fruits, the ordinary artisan would have found it obvious to introduce this desirable trait taught by Graham using the backcrossing breeding method taught in Bunn in order to produce elite tomato plants of line PSQ9Z12-9061 further comprising the Fol resistance allele taught in Graham. As such the instantly claimed tomato plant of claim 1 is obvious under Bunn in view of Graham.
With respect to claim 2, Bunn in view of Graham collectively teach all of the limitations of claim 1, see above.
Further, Bunn teaches tomato seeds that produce the elite tomato line plant comprising an additional resistance allele of claim 1 (Bunn, Column 25, Claim 6; Bunn, Colum 26, Claims 14-16).
With respect to claim 3, Bunn in view of Graham collectively teach all of the limitations of claim 1, see above.
With respect to claim 4, Bunn in view of Graham collectively teach all of the limitations of claim 1, see above.
Further, Bunn teaches plant comprising at least a first set of the chromosomes of tomato line PsSQ9Z12-9061 and further comprising an additional trait of interest including disease resistance (Bunn, Column 26, claims 12-13). Given that these plants comprise at least a first set of the chromosomes of the claimed line this claim teaches hybrid plants as well as inbred plants which would naturally comprise two sets of the chromosomes of the claimed line.
With respect to claim 5, Bunn in view of Graham collectively teach all of the limitations of claim 2, see above.
With respect to claim 6, Bunn in view of Graham collectively teach all of the limitations of claim 1, see above.
Further, Bunn teaches plant comprising at least a first set of the chromosomes of tomato line PsSQ9Z12-9061 and further comprising an additional trait of interest including disease resistance (Bunn, Column 26, claims 12-13). Given that these plants comprise at least a first set of the chromosomes of the claimed line this claim teaches hybrid plants as well as inbred plants which would naturally comprise two sets of the chromosomes of the claimed line.
With respect to claim 7, Bunn in view of Graham collectively teach all of the limitations of claim 1, see above.
Further, Bunn teaches a plant part comprising a cell of the plant (Bunn, Column 25, Claim 3).
With respect to claim 8, Bunn in view of Graham collectively teach all of the limitations of claim 1, see above.
With respect to claim 9, Bunn in view of Graham collectively teach all of the limitations of claim 1, see above.
Further, Bunn teaches a tissue culture of regenerable cells of the plant of claim 1 (Bunn, Column 25, Claim 4).
With respect to claim 10, Bunn in view of Graham collectively teach all of the limitations of claim 1, see above.
Further, Bunn teaches a method of vegetatively propagating the plant comprising collecting tissue capable of being propagated and propagating a tomato plant from said tissue (Bunn, Column 25, Claim 5).
With respect to claim 11, Bunn in view of Graham collectively teach all of the limitations of claim 1, see above.
Further, Bunn teaches a method of introducing a trait into a tomato line, comprising using the claimed parent as a recurrent parent, crossing the recurrent parent with another plant comprising a trait to produce progeny, selecting progeny comprising the trait, backcrossing the selected F1 progeny with the recurrent parent to produce backcross progeny, selecting backcross progeny comprising the trait and otherwise comprising the morphological and physiological characteristics of the recurrent parent and repeating the backcrossing and selecting steps three or more times (Bunn, Column 25, Claim 6).
With respect to claim 12, Bunn in view of Graham collectively teach all of the limitations of claim 11, see above.
Further, Bunn teaches a tomato plant produced by the backcrossing method (Bunn, Column 25, Claim 7).
With respect to claim 13, Bunn in view of Graham collectively teach all of the limitations of claim 1, see above.
Further, Bunn teaches a method of producing a tomato plant comprising an added trait, comprising introducing a transgene conferring the trait into the claimed plant (Bunn, Column 25, Claim 8).
With respect to claim 14, Bunn in view of Graham collectively teach all of the limitations of claim 13, see above.
Further, Bunn teaches a tomato plant produced by the method of claim 13 (Bunn, Column 25, Claim 9).
With respect to claim 15, Bunn in view of Graham collectively teach all of the limitations of claim 1, which include a tomato plant comprising at least a first set of the chromosomes of tomato line PSQ-9Z15-3776V, see above.
Further, Bunn teaches the plant further comprising a transgene (Bunn, Column 25, Claim 10).
With respect to claim 16, Bunn in view of Graham collectively teach all of the limitations of claim 15, see above.
Further, Bunn teaches the plant comprises a transgene which confers male sterility (Bunn, Column 26, Claim 11).
With respect to claim 17, Bunn in view of Graham collectively teach all of the limitations of claim 1, which include a tomato plant comprising at least a first set of the chromosomes of tomato line PSQ-9Z15-3776V, see above.
Further, Bunn teaches the plant further comprising a locus conversion (Bunn, Column 26, Claim 12).
With respect to claim 18, Bunn in view of Graham collectively teach all of the limitations of claim 17, see above.
Further, Bunn teaches the plant comprises a single locus conversion which confers male sterility (Bunn, Column 26, Claim 13).
With respect to claim 19, Bunn in view of Graham collectively teach all of the limitations of claim 1, see above.
Further, Bunn teaches a method of producing a tomato plant derived from the tomato line comprising the steps of crossing the plant with itself or a different tomato plant and allowing a seed of the tomato line-derived plant to form (Bunn, Column 26, Claim 14).
With respect to claim 20, Bunn in view of Graham collectively teach all of the limitations of claim 1, see above.
Further, Bunn teaches a method of producing a seed of a tomato plant derived from the tomato line comprising the steps of producing a tomato plant derived from the claimed line and crossing the derived plant to obtain a seed of a further derived tomato plant (Bunn, Column 26, Claim 15).
With respect to claim 21, Bunn in view of Graham collectively teach all of the limitations of claim 20, see above.
Further, Bunn teaches the method further comprising repeating the producing and crossing steps for at least one generation to produce a seed of an additional derived tomato plant (Bunn, Column 26, Claim 16).
With respect to claim 22, Bunn in view of Graham collectively teach all of the limitations of claim 1, see above.
Further, Bunn teaches a method of producing a tomato fruit comprising obtaining a mature plant of claim and collecting a tomato fruit from the plant (Bunn, Column 26, Claim 17).
With respect to claim 23, Bunn in view of Graham collectively teach all of the limitations of claim 1, see above.
Further, Bunn teaches that plant genetic complements can be assessed by genetic marker profiles (Bunn, Column 4, Lines 18-29). Additionally, Graham teaches the use of genetic marker analysis and specifically the use of sequencing to identify polymorphisms and the corresponding genotype of those plants (Graham, Column 8, Line 38-Column 9, Line 20).
With respect to claim 24, Bunn in view of Graham collectively teach all of the limitations of claim 23, see above.
With respect to claim 25, Bunn in view of Graham collectively teach all of the limitations of claim 23, see above.
Further, the transmittal letter dated 08/21/2025 indicates that the tomato line of Bunn is subject to a PVP grant and as such the data about the variety of Bunn was transmitted to the USDA in the application for plant variety protection.
As noted above with respect to claim 1 it would have been obvious to modify the plant of Bunn in order to introduce the extraordinary and valuable fungal resistance trait of Graham. The additional limitations introduced in claims 2-25 are all taught by Bunn or Bunn and Graham and as such these claims are obvious for the same reason as claim 1, see analysis above.
The Office does not interpret any of the claimed products to encompass plant material obtained by crossing an F1 hybrid progeny of PSQ-9Z15-3776V with a genetically different plant. Otherwise, additional rejections under 35 USC 112(a) may apply.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 3-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-13 of U.S. Patent No. US 10,226,000 B2 in view of US Patent No. US 11,479,788 B2.
Claims 1 is drawn to a tomato plant comprising at least a first set of the chromosomes of tomato line PSQ-9Z15-3776V, which the transmittal letter dated 08/21/2024 makes clear was made by backcrossing Fusarium oxysporum f. sp. lycopersici resistance from tomato line FDS-ZJ11002 into the recurrent parent tomato line PSQ9Z12-9061.
Claims 3 and 4 are drawn to the tomato plant of claim 1 wherein the plant is an inbred of tomato line PSQ-9Z15-3776V and wherein the plant is a hybrid, respectively.
As noted in the obviousness analysis above, Bunn is drawn to the recurrent parent used to produce the instant claim line while Graham is drawn to the donor parent (Bunn Abstract, Graham Abstract). Importantly, Bunn claims “A tomato plant comprising at least a first set of the chromosomes of tomato line PSQ9Z12-9061, further comprising a single locus conversion” (Bunn, Column 26, Claim 12). Further, Bunn claims the plant comprising a single locus conversion wherein the locus conversion confers a trait selected from a group including disease resistance (Bunn, Column 26, Claim 13).
Bunn, also makes clear that the disease resistance allele can confer fungal disease resistance (Bunn, Column 19, Line 63- Column 20, Line 4; Bunn, Column 22, Lines 50-61).
Finally, Graham provides motivation to introduce the specific fungal disease resistance gene of Graham, noting that it provides disease resistance without the undesirable soft fruit phenotype and that this allele is particularly well-suited for introduction into elite varieties, the recurrent parent of Bunn is an elite tomato line (Graham, Column 39, Claim 1; Graham, Column 3, Line 49 – Column 4, Line 32).
As such it is clear that claims 1 and 3-4 of the instant application share scope with claims 12-13 of the US 10,226,000 B2 patent in view of US Patent No. US 11,479,788 B2.
Conclusion
Claims 1-25 are rejected.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN JAMES SULLIVAN whose telephone number is (571)272-0561. The examiner can normally be reached 7:30 to 5:00.
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/BRIAN JAMES SULLIVAN/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663