DETAILED ACTION
Claims 1-11 are pending.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 1, 3-8 and 10 are objected to because of the following informalities:
In claim 1, part (b), claim 5, line 2 and part (c), and claim 8, line 1 and part (d), “tolerance of, or resistance to,” should be replaced with --tolerance of or resistance to--.
In claims 1, 4-5, and 7 all recitations of “a genus Cucurbita” should be replaced with --the genus Cucurbita”--.
In the last line of claims 3, 6, and 10 --plant-- should be inserted before the period.
Claim 5 is missing a conjunction at the end of step b and claim 8 is missing one at the end of step c.
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 1-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claim 1 is drawn to a method of breeding a Cucurbita plant selected for a TolCNDV tolerance or resistance QTL by assaying for markers SEQ ID NO:8, SEQ ID NO:9 and/or SEQ ID NO:10, claim 5 is drawn to a method of selecting a Cucurbita plant with a TolCNDV tolerance or resistance QTL by assaying for the markers, and claim 8 is drawn to a method of selecting a plant of any species with a TolCNDV tolerance or resistance QTL by assaying for the markers.
The markers are naturally present in at some C. moschata plants (example 4).
Detecting or identifying such plants with the markers is merely detecting or identifying a natural phenomenon.
Claim 1 recites the additional element of selecting plants with the markers. Such a step can entirely be done in the human mind.
Claim 1 recites the additional element of breeding with selected plants. However, C. moschata plants cross (breed) in nature. Thus, this claim is not directed to significantly more than a process of nature.
Dependent claim 3 recites the additional element of that the crossing involves selfing. However, C. moschata plants self in nature. Thus, this claim is not directed to significantly more than a process of nature.
Dependent claims 2, 6 and 9-10 recite the additional element of the plant species or genus. However, C. moschata plants are among those recited. Thus, these claims are not directed to significantly more than processes of nature.
Dependent claims 4, 7 and 11 recite the additional element of that the markers were introgressed into the plant from a C. moschata plant. However, C. moschata plants when crossing with one another, introgress genes to each other. Thus, these claims are not directed to significantly more than processes of nature.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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, 3-5, 7-9 and 11 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 that 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.
Claims 1, 3-5, 7, 9 and 11 require a Cucurbita plant with a TolCNDV tolerance or resistance QTL associated with markers SEQ ID NO:8, SEQ ID NO:9 and/or SEQ ID NO:10 and claim 8 requires a plant of any species with a TolCNDV tolerance or resistance QTL associated with markers SEQ ID NO:8, SEQ ID NO:9 and/or SEQ ID NO:10.
The specification describes no plants other than C. pepo, C. moschata, C. pepo X C. moschata, or C. moschata X C. pepo plants with the QTL. The specification describes no Cucurbita plants of other species with the QTL and describes no plants of non- Cucurbita species with the QTL.
Thus the specification does not describe species over the full scope of the claims. One of skill in the art would not recognize that Applicant was in possession of the necessary common attributes or features of the genus in view of the disclosed species.
Because Cucurbita plants or plants of other genera with the QTL over the full scope of the claims, the methods of detecting the QTLs are likewise not described, 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 compositions used in the claimed methods, Applicant does not appear to have been in possession of the claimed genus at the time this application was filed.
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 the second paragraph of 35 U.S.C. 112:
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 1-4 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 that the inventor or a joint inventor, or for pre-AIA the applicant, regards as the invention. Dependent claims are included in all rejections.
Claim 1 lacks antecedent basis for the limitation “the plant comprising said one or more of markers” in part (c).
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,039,588. Although the claims at issue are not identical, they are not patentably distinct from each other.
ToLCNDV resistant Cucurbita pepo plants, cells, plant parts, and seeds comprising a QTL associated with tolerance of or resistance to ToLCNDV on linkage group 11 (LG11), where the OTL comprises markers SQ-0006678 (SEQ ID NO:8), SQ-0010844 (SEQ ID NO:9) and/or SQ-0000209 (SEQ ID NO:10), as claimed in the issued patent, makes obvious a method of identifying plants with that QTL by detecting the presence of one or more of SQ-0006678 (SEQ ID NO:8), SQ-0010844 (SEQ ID NO:9) and/or SQ-0000209 (SEQ ID NO:10).
It would be obvious to one of ordinary skill in the art to do so as part of testing for ToLCNDV resistance in the plant. As the markers came from a C. moschata plant, C. pepo plants comprising a QTL necessarily acquired it through introgression from a C. moschata plant somewhere in their ancestry. It would be obvious to one of ordinary skill in the art to cross plants identified as having the marker to introduce ToLCNDV resistance into other genetic backgrounds or to self such plants to obtain plants that are homozygous for the QTL.
Further, ‘588 claims crossing Cucurbita plants, slecting for progeny with ToLCNDV resistance with markers SQ-0006678 (SEQ ID NO:8), SQ-0010844 (SEQ ID NO:9) and/or SQ-0000209 (SEQ ID NO:10) and repeatedly backcrossing and selecting the resulting progeny plants. This methods is a species of the instantly claimed methods.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,016,282. Although the claims at issue are not identical, they are not patentably distinct from each other.
ToLCNDV resistant Cucurbita pepo plants, cells, plant parts, seeds and progeny comprising a QTL associated with tolerance of or resistance to ToLCNDV on linkage group 11 (LG11), where the OTL comprises markers SQ-0006678 (SEQ ID NO:8), SQ-0010844 (SEQ ID NO:9) and/or SQ-0000209 (SEQ ID NO:10), as claimed in the issued patent, makes obvious a method of identifying plants with that QTL by detecting the presence of one or more of SQ-0006678 (SEQ ID NO:8), SQ-0010844 (SEQ ID NO:9) and/or SQ-0000209 (SEQ ID NO:10).
It would be obvious to one of ordinary skill in the art to do so as part of testing for ToLCNDV resistance in the plant. As the markers came from a C. moschata plant, C. pepo plants comprising a QTL necessarily acquired it through introgression from a C. moschata plant somewhere in their ancestry. It would be obvious to one of ordinary skill in the art to cross plants identified as having the marker to introduce ToLCNDV resistance into other genetic backgrounds or to self such plants to obtain plants that are homozygous for the QTL.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anne R. Kubelik, Ph.D., whose telephone number is (571) 272-0801. The examiner can normally be reached Monday through Friday, 9:00 am - 5:00 pm Eastern.
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/Anne Kubelik/Primary Examiner, Art Unit 1663