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 1-20 are under examination on the merits.
Priority
Claims 1-20 receive the U.S. effective filing date of 22 October 2021.
Drawings
The drawings are objected to because Figures 1 & 3B are of such low resolution that their data and/or axes labels are illegible. Applicant is advised to provide a higher resolution image of these figures that is fully legible.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The use of the term ‘LightCycler’ [p.12, par.10], which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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.
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.
Claims 1-20 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.
Claim 10 recites the limitation "a tomato" in line 1 but is dependent from claim 4 which lists four different categories of tomatoes. Because it is unclear to which of the different categories the tomato in claim 10 is referring to, there is insufficient antecedent basis for this limitation in the claim.
Claims 4-20 are indefinite because independent claim 4 lacks recitation of active method steps or limitations. Claims 5-20 all depend from claim 4.
Claim 4 merely recites ‘a method of regulating and controlling’, ‘a method of breeding’, or ‘a method of identifying’ without indicating what steps are involved in any of the methods or what actions are involved in the recited methods.
Because the claims are drawn to ‘a method’ but do not specify or provide a description of said method, one would not be able to understand the metes and bounds of claim 4 and its dependents. Because claims 5-20 depend from claim 4, they are also rendered indefinite.
As such, and without further limitation(s) recited in the claims, one would not be able to understand or avoid potentially infringing the metes and bounds of claims 4-20 as currently written.
Because of this lack of descriptive method steps, claims 4-20 are rejected.
Claims 1-20 are indefinite in their recitation of ‘a protein having 90% identity to the amino acid sequence shown in SEQ ID No.1’ relevant to tomato yield. It is unclear what the protein recited consists of and its function in relation to yield. Several mutually exclusive possibilities exist for variants of proteins with only 90% identity to SEQ ID NO.1. Numerous biochemical pathways contribute to yield.
Looking to the specification for clarity, we see the specification only describes methods and constructs encoding the BFNE protein (i.e. SEQ ID NO.1). Applicant does not describe their use of any protein of variable sequence from BFNE, nor describe what features, domains, or structures of the BFNE protein are relevant to its function (i.e. influencing yield). Thus, the specification does not describe species over the full scope of the polypeptide variants, and thus does not describe the full scope of the claimed proteins.
Because of this, the scope of the claims is unclear and a reader would not know what proteins are encompassed, what their relevant structural elements are, or how one would avoid infringing with potential variants of SEQ ID NO.1 involved in tomato yield response. This makes claims 1-20 indefinite.
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 1-20 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 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, 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.
The claims all require a protein having at least 90% identity to SEQ ID NO.1 and which are relevant to plant architecture or yield.
The claim is drawn to a genus of polypeptides that hybridize to SEQ ID NO.1 under non-specified stringency conditions and with variable sequence identity; thus, the claim is broad and reads on virtually any enzyme. Further, the function of such enzymes is described as impacting yield; ‘yield’ is a complex trait involving many biochemical pathways – almost any physiologically active protein could reasonably be considered to have some role in determining yield of a plant.
While the claims are drawn to any protein variant of at least 90% identity to SEQ ID NO.1, the specification only describes methods and constructs encoding the BFNE protein (i.e. SEQ ID NO.1). Applicant does not describe their use of any protein of variable sequence from BFNE, nor describe what features, domains, or structures of the BFNE protein are relevant to its function (i.e. influencing yield). Thus, the specification does not describe species over the full scope of the polypeptide variants, and thus does not describe the full scope of the claimed proteins.
Prior art does not teach the newly described ‘BFNE’ gene or encoded protein, nor is there prior art teaching what domains or identifying structures can be used to classify or group Applicant’s protein with similar proteins for comparison purposes. It is well established in the art that the specific structural elements of a protein are critical to its biological function and are the basis for identifying functional analogs. This critical information is not present in the written description, and the specification fails to make up for the lack of knowledge on the art.
Since the disclosure fails to describe the common attributes that identify members of the genus and/or impact yield, and because the genus is highly variant, SEQ ID NO.1 alone is insufficient to describe the claimed genus.
Hence, Applicant has not, in fact, described proteins encoding the functional variants of BFNE over the full scope of the claims, and the specification fails to provide an adequate written description of the claimed invention. Therefore, given the lack of written description in the specification with regard to the structural and functional characteristics of the claimed compositions, Applicant does not appear to have been in possession of the claimed genus at the time this application was filed.
Regarding claims 4-20; these depend from claim 4 which is drawn generally to methods of ‘regulating and controlling’, ‘identifying or distinguishing’, and ‘breeding’ tomatoes. Broadest reasonable interpretation of these claims would encompass all methods of breeding/manipulating tomato yield and/or plant architecture.
Referring to Applicant’s specification, their invention is specific to methods of manipulating the BFNE gene disclosed therein, and no description is provided for universal breeding methods, all methods of ‘regulating and controlling’ tomato form, of any form of diagnosis that is universal to the varied species of tomato. There are no additional features describing methods of such claimed universal function(s) in all tomatoes.
Because of this, claims 4-20 which all depend from the methods of claim 4, also lack full description.
Applicant discloses and appears to be in possession of specific breeding methods, drawn to a specific protein, with specific structure and specific function.
However, their disclosure does not reasonably convey to one skilled in the relevant art that they are in possession of an invention which (a) fully describes the breadth of the protein genus claimed or (b) a method fully describing any and all methods of breeding tomatoes, any and all methods of regulating or controlling yield and/or architecture of tomatoes, or any and all methods of differentiating wild and cultivated tomato plants.
Because of this, as written, claims 1-20 are rejected. One of skill in the art would not recognize that Applicant was in possession of the necessary common attributes or features of the claimed protein genus, or broad methods, in view of the limited disclosed species.
Claims 1-20 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 specific methods of using the BFNE protein in tomato breeding, does not reasonably provide enablement for any and all proteins involved in tomato yield as in claim 1(a3) or claim 2(A1), or, claim 4. These claims, as written, encompass any and all methods of breeding tomatoes, controlling their yield and/or architecture, or diagnosing wild from cultivated.
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 such claims.
Claims 1 & 2 are drawn to a protein or a biological material relevant to a protein, encompassing any protein. This is because claims state any number of amino acid residues can be added, deleted, or substituted from SEQ ID NO.1 [See claim 1, ‘a3’; claim 2, ‘A1’]. Further, Applicant is claiming any protein of 90% identity, which would include a wide array of protein variants not described by the specific sequence disclosed, which is the distinct structure of SEQ ID NO.1.
Broadest reasonable interpretation of these claims encompasses a protein, or any protein, affecting tomato yield and having at least one dipeptide in common with SEQ ID NO.1. Thus, Applicant is claiming a protein, of potentially any polypeptide form, influencing yield of tomatoes. Applicant is also claiming varied, undescribed forms of the protein of <90% identity.
Referring to Applicant’s specification, their invention is specific to the BFNE protein (i.e. SEQ ID NO.1) disclosed therein, and no description is provided for a protein of potentially any form that can influence tomato yield, or what additional characteristics or limitations would define such a protein. No description is provided for proteins <90% identity to the disclosed sequence, nor of their alleged function. There are no additional features described for a protein(s), or encoding gene(s), having the claimed function and variable structure.
They do not teach or disclose how one would arrive at such a hyper-variable and universally applicable protein that changes tomato yield and/or plant architecture. Therefore, claim 3 which depends from claim 2, is also not fully described.
Regarding claims 4-20; these depend from claim 4 which is drawn to several recited methods of ‘regulating and controlling’, ‘identifying or distinguishing’, and ‘breeding’ tomatoes. Broadest reasonable interpretation of these claims as currently written encompasses any and all methods of breeding or manipulating tomato yield and/or plant architecture.
Referring to Applicant’s specification, their invention is specific to methods of manipulating the BFNE protein disclosed therein, and no description is provided for universal breeding methods, universal methods of ‘regulating and controlling’ tomato form, or diagnostic test spanning all the varied species of tomato. There are no additional features describing methods of such claimed universal function. They do not teach or disclose how one would make use of all such all methods of tomato improvement.
Because of this, claim 4 and dependents 5-20 lack full description.
In the current instance, Applicant discloses and appears to be in possession of specific breeding methods, drawn to a specific protein, with specific structure and specific function.
However, their disclosure does not reasonably provide full scope of enabling description for such an invention that (a) utilizes a protein of potentially any form comprising a dipeptide or more that alters yield or plant structure in tomato or (b) any and all methods of breeding tomatoes, any and all methods of regulating or controlling yield and/or architecture of tomatoes, or any and all methods of differentiating wild and cultivated tomato plants.
Because of this, claims 1-20 are rejected due to lack of enabling description, commensurate with the full scope of the claims as currently written.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 4-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because they are drawn to an abstract idea.
Claim 4 merely recites ‘a method of regulating and controlling’, ‘a method of breeding’, or ‘a method of identifying’ without indicating what steps are involved in any of the methods or what actions are involved in the recited methods.
As such, and without further limitation(s), these claims are merely drawn to the abstract idea of ‘a method of regulating and controlling’, ‘a method of breeding’, or ‘a method of identifying’ without describing further inventive steps. Because claims 5-19 depend from claim 4 and do not recite any further limitations describing the steps or processes of the claimed method(s), they are also drawn to an abstract idea. Therefore, claims 4-20 are rejected.
Claims 1-3 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a naturally occurring gene and/or its encoded protein without significantly more. This judicial exception is not integrated into a practical application.
The claims are drawn to a protein, SEQ ID NO.1, and its encoding nucleotide (i.e. gene), SEQ ID NO.2. This is a product of nature because the claimed gene and protein product are naturally occurring in wild tomato germplasm.
Claim 1 recites the additional element of a protein comprising one or more amino acids substituted, added, or deleted from SEQ ID NO.1. However, SEQ ID NO.1 is a naturally occurring allele from wild germplasm and the ability to potentially modify a component of it, without specifying the corresponding structure and/or functional change, does not include additional elements that are sufficient to amount to significantly more than the judicial exception. This is because nondescript changes to amino acids may have no functional impact, essentially being equivalent to the natural allelic forms of the protein claimed. Thus, lacking details of the recited structural changes, the claim is not directed to significantly more than a product of nature.
Claim 2 recites the additional element of a biological material relevant to a protein including a nucleic acid encoding a protein. However, this claim is directed to a protein produced by a plant that is encoded by a nucleic acid molecule and this encompasses naturally occurring genes and proteins, such as SEQ ID NO.1. Thus, this claim is not directed to significantly more than a product of nature.
Claim 3 recites the additional element of a biological material wherein the encoding nucleotide sequence(s) are those of SEQ ID NO.2 & 3. However, this claim is directed to a gene or allele of BFNE, as SEQ ID NO.2, which is naturally occurring in wild tomato. Thus, this claim is not directed to significantly more than a product of nature.
Applicant admits that the claimed sequences are those naturally occurring in wild tomato germplasm [p.10, sources of germplasm, par.2-4;p.12, par.1 ‘Acquisition of the BFNE gene’; p.12, procedure (5); p.15, Example 3, use of BFNE in identifying wild tomatoes]. This indicates the claimed alleles and associated sequences are simply a technical description (i.e. sequence characterization) of naturally occurring genes and proteins. While informative, such technical characterizations on their own are not inventive.
Because they attempt to claim such naturally occurring alleles, absent significantly more, claims 1-3 are rejected.
Claims 4-20 are rejected under 35 U.S.C. 101 because the claimed invention is merely directed to detecting or diagnosing the genetic state of an organism (i.e. a natural phenomenon).
The claims are drawn to methods of determining the wild or cultivated species of a tomato based on detection of molecular markers SEQ ID NO.1-3 identifying BFNE. This is a product of nature because the claimed gene and protein product are naturally occurring in wild tomato germplasm and Applicant is merely diagnosing their genetic presence or absence, as well as reciting natural phenotypic effects of BFNE.
Claim 4 recites the additional element of a method of distinguishing wild and cultivated tomatoes. However, Applicant is merely pointing out two groups of tomatoes which naturally occur and can be diagnosed or distinguished as ‘wild’ or ‘cultivated’ based on a variety of naturally occurring features, including their genotype. Thus, this claim is not directed to significantly more than a natural phenomenon.
Claim 5 recites the additional element of distinguishing wild and cultivated tomatoes using a protein or biological material. However, Applicant is merely pointing out two groups of tomatoes which naturally occur and can be distinguished as ‘wild’ or ‘cultivated’ based on presence/absence of various, naturally occurring molecular features (i.e. genes or genotype). Thus, this claim is not directed to significantly more than a natural phenomenon (i.e. recognizing naturally occurring groups of germplasm).
Claim 6 recites the additional element of distinguishing groups of tomatoes using a protein of SEQ ID NO.1 that influences yield or plant architecture. However, Applicant is merely pointing out two groups of tomatoes which naturally occur and can be diagnosed or distinguished as ‘wild’ or ‘cultivated’ based on presence/absence of naturally occurring proteins such as BFNE. Thus, this claim is not directed to significantly more than characterizing a natural phenomenon (i.e. a naturally occurring tomato protein).
Claim 7 recites the additional element of a nucleic acid which encodes the BFNE protein. However, Applicant is merely pointing out the two naturally occurring groups with or without the BFNE protein, identified using the gene which encodes it. Thus, this claim is not directed to significantly more than characterizing a natural phenomenon (i.e. a naturally occurring tomato gene).
Claim 8 recites the additional element of variation in plant architecture being due to variation in branching. However, tomato plants naturally display phenotypic variation for branching, which is caused by numerous naturally occurring genes, such as that encoding BFNE. Thus, this claim is not directed to significantly more than characterizing a natural phenomenon (i.e. natural phenotypic variation in branching).
Claim 9 recites the additional element of increase in plant yield being due to variation in fruit number and/or weight. However, tomato plants naturally display phenotypic variation for fruit number and/or weight, which is caused by numerous naturally occurring genes, such as that encoding BFNE. Thus, this claim is not directed to significantly more than characterizing a natural phenomenon (i.e. natural phenotypic variation in yield).
Claim 10 recites the additional element of the tomato being used in the method as a wild tomato. However, wild tomatoes, and their inherent genes and proteins, naturally occur and BFNE is distinct between wild & cultivated tomatoes. Thus, the claim is not directed to significantly more than characterizing a natural phenomenon (i.e. the natural presence of BFNE from wild tomatoes).
Claim 11 recites the additional element of a transgenic method increasing a protein to obtain a plant with more branches or increased yield. However, a ‘transgenic’ method does not describe any active steps, and merely recites how the plant was made. Thus, this claim is not directed to more than a product of nature being a method of increasing branches or yield of tomatoes. This occurs naturally through BFNE’s effect on tomato phenotype.
Claim 12 recites the additional element of yield being higher due to number and/or weight of fruits being greater. However, yield is naturally a product of the number and size of fruit a tomato plant produces. Thus, the claim is not directed to more than a product of nature (i.e. natural yield effects of BFNE).
Claim 13 recites the additional element of increasing the content and/or activity of a protein by overexpressing it. However, ‘overexpression’ does not describe any active steps, and merely recites how the protein content was increased. Thus, the claim is not directed to more than a product of nature, being an unspecified method of increasing protein content.
Claim 14 recites the additional element of overexpressing a protein by introducing the gene encoding the protein. However, introducing a gene into a plant would naturally increase the expression of the encoded gene, absent evidence to the contrary. The statement ‘introducing the gene’ does not describe any active steps, and merely recites how protein content was increased. Thus, the claim is not directed to more than a product of nature, being a claim to increasing protein content by introducing a gene encoding said protein.
Claim 15 recites the additional element of the gene which is being introduced as being SEQ ID NO.2 (i.e. BFNE). However, Applicant admits that the claimed sequences of BFNE are those naturally occurring in wild tomato germplasm [p.10, sources of germplasm, par.2-4;p.12, par.1 ‘Acquisition of the BFNE gene’; p.12, procedure (5); p.15, Example 3, use of BFNE in identifying wild tomatoes]. Thus, the claim is not directed to more than a product of nature (i.e. transfer of naturally occurring genes / proteins).
Claim 16 recites the additional element of the tomato being used in the method as a wild tomato. However, wild tomatoes, and their inherent genes and proteins, naturally occur and would be used in methods directed to distinguishing wild from cultivated tomatoes. This includes BFNE. Thus, the claim is not directed to significantly more than characterizing a natural phenomenon (i.e. wild tomatoes as the source of Applicant’s BFNE allele).
Claim 17 recites the additional element of a transgenic tomato plant. However, a ‘transgenic’ method does not describe any active steps, and merely recites how the plant was made. Thus, without further descriptive steps, this claim is not directed to more than a product of nature, being a tomato plant without clarification of the specific steps by which it was arrived at.
Claim 18 recites the additional element of identifying wild or cultivated tomatoes based on presence/absence of proteins or genes associated with the different groups. However, Applicant is merely pointing out two groups of tomatoes which naturally occur and can be diagnosed or distinguished as ‘wild’ or ‘cultivated’ based on presence/absence of various, naturally occurring proteins such as BFNE. Thus, this claim is not directed to significantly more than characterizing a natural phenomenon (i.e. a naturally occurring ‘wild’ tomato proteins).
Claim 19 recites the additional element of a gene used to differentiate wild and cultivated tables being SEQ ID NO.2 or 3. However, SEQ ID NO.2 corresponds to the naturally occurring BFNE gene that differs between wild and cultivated tomatoes. Thus, this claim is not directed to significantly more than characterizing a natural phenomenon (i.e. a naturally occurring tomato gene).
Claim 20 recites the additional element of detecting presence/absence of BFNE alleles using PCR and primers SEQ ID NO.6 and 7. However, this simply recites a method of molecular diagnosis or genetic screening for naturally occurring tomato allele(s). Thus, this claim is not directed to significantly more than characterizing a natural phenomenon (i.e. genetic screening or diagnosis).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because Applicant does not modify or otherwise include any further inventive steps or modifications beyond detecting or utilizing the naturally occurring BFNE. Where methods of using are recited, Applicant does not include any active steps, and merely recites how a plant was made while pointing to naturally occurring alleles. They are simply performing a genetic diagnosis of BFNE, or stating they will use this gene or protein, generically, without describing modification or alteration of it beyond its naturally occurring state.
Such diagnosis or unspecified ‘controlling’ of the phenotype of an organism using natural genetic variants, absent further applied steps, lacks integration into a practical application or inventive method. It is merely describing the natural world.
Because of this, claims 4-20 are rejected.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu [PGPub US20130333061A1; Published 12 Dec 2013].
Claims 1 & 2 recite a protein ‘having an amino acid sequence shown in SEQ ID No.1’. Use of ‘a’ or ‘an’ in describing a peptide or nucleotide sequence means the claim will read on any dipeptide or dimer, respectively. Such a claim is anticipated by any dipeptide comprising portions of the recited sequence.
Wu teaches a polypeptide of 55% identity to the claimed SEQ ID NO.1 [See Wu, SEQ ID NO.224054], thus anticipating claims 1 & 2, as well as dependent claim 3.
Claims 4-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nie [Nie et al. Front. Plant Sci. 8:1386; Published 10 Aug 2017].
Nie teaches methods of increasing tomato yields (i.e. breeding) via overexpression of transgenes [p.1, Abstract], thus anticipating claim 4. Their research report describes the overexpression of transcription factors related to brassinosteroid (BR) signaling [p.2, col.2, par.1]. They report that transgenic overexpression of such genes modifies the architecture of a plant and increases tomato yield [p.11, col.1, par.2].
Nie teaches using a polypeptide, comprising at least a dipeptide, or the associated nucleic acids encoding it, for increasing yield or altering tomato plant architecture [p.2, col.2, par.3; p.6, Figure 3], thus anticipating claims 5-9. This is because claims 5-9 use ‘a’ or ‘an’ in first describing the claimed peptide or nucleotide sequence, meaning the claims will read on any dipeptide or dimer, respectively. Because of this, claims 5-9 are anticipated by any dipeptide comprising portions of the recited sequence, including that described by Nie.
Nie teaches their invention in a tomato plant ‘Micro Tom’ [p.2, col.2, par.2; p.3, col.1, par.2], which Applicant is designating as a ‘wild tomato’ [Specification, p.7, par.5], thus anticipating claims reciting ‘a wild tomato’. Nie also teaches the overexpression or increased activity of proteins in their model using ‘Micro Tom’ [p.6, col.1, par.1 & col.2, par.2], thus anticipating claims 10-14 & 16-17.
Because the alternate method options recited by dependent claims 15 & 18-20 are not excluded from claim 4, which is anticipated in breeding of transgenic tomatoes by Nie, they too are rejected.
As such, claims 4-20 are rejected as being anticipated by prior art.
Claims 4-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gonzalez-Grandio [US20150197767; Published 16 Jul 2015].
Gonzalez-Grandio teaches a method of producing tomato plants (i.e. breeding) using BRC1 genes, which are involved in differences of architecture between cultivated and wild tomatoes [par.0009; par.0010, 0028-0030, Table 1; par.0107-0109], thus anticipating the method of breeding tomatoes recited in claim 4(5).
They teach manipulation of chromosome segments harboring the ‘wild’ SpBRC1a allele (i.e. biological material relevant to a protein) of Solanum pennellii for altering germplasm [par.0107-0109], thus anticipating claims 5-7 & 10. They teach the breeding of tomato plants which integrate or use proteins, comprised of at least one or more dipeptides, as in claim 6(a3), or their encoding genes, as in claim 7(a1), contributed from various parental breeding lines [id.]. It teaches that such genes or proteins can be contributed from wild tomatoes, as in claim 10 [id.].
They teach that manipulation of such genes from wild tomatoes can lead to changes in tomato branching and fruiting characteristics [par.0007], thus anticipating claim 8.
They teach that manipulation of such genes from wild tomatoes can lead to changes in tomato fruit formation (i.e. yield) due to the relationship among branching pattern, formation of flowers on lateral branches, and the resulting resource allocation to developing fruit [par.0011], thus anticipating claim 9.
Because the alternate method options recited by dependent claims 9, 11-17 & 19-20 are not excluded from claim 4, which is anticipated in the breeding of tomato for improved branching and/or yield via proteins or genes contributed via wild species by Gonzalez-Grandio, these alternate method options are also rejected.
As such, claims 4-20 are rejected as being anticipated by prior art.
Conclusion
No claims are allowed.
Contact Information
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/KEITH R. WILLIAMS/Examiner, Art Unit 1663
/Anne Kubelik/Primary Examiner, Art Unit 1663