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 1-18 are pending.
Claims 1-18 are examined on the merits.
Copending Applications
Applicants must bring to the attention of the Examiner, or other Office official involved with the examination of a particular application, information within their knowledge as to other copending United States applications, which are "material to patentability" of the application in question. MPEP 2001.06(b). See Dayco Products Inc. v. Total Containment Inc., 66 USPQ2d 1801 (CA FC 2003).
Claim Objections
Claims 1, 8 and 14 are objected to because of the following informalities: the claims recite “seed of said line” and “seed of the line” but none of the claims recite the term “line” earlier in the claim. Rather the claims refer to romaine lettuce cv. NNS-1888 and romaine lettuce cv. NNS-1888-derived plants Given that it is clear that the term line is being used to refer to plants and seeds of romaine lettuce cv. NNS-1888 no indefiniteness rejection has been made, however the claim should be amended to use consistent language, whether that be cultivar (cv.) or line. Appropriate correction is required.
Claim Rejections - 35 USC § 112 (Indefiniteness)
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 6-8 and 18 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 6 recites a tissue culture of the plant of claim 2, which renders the claim indefinite. This language is unclear and as such the meaning of a tissue culture of the plant of claim 2 is unclear. Is this tissue culture drawn to a plant of claim 2 which is grown using tissue culture techniques, is it drawn to a plant part from the plant of claim 2 which is grown in tissue culture, is the claim drawn to a tissue culture of cells collected from the plant of claim 2 or is the claim drawn to some other scope? Given that the claim scope is unclear claim 6 is rejected as indefinite. Claim 8 which depends on claim 6 is rejected for depending on an indefinite claim and failing to limit the scope to definite subject matter.
Claim 7 also depends on claim 6 and while claim 7 limits the scope to tissue cultures comprising cells or protoplasts from a plant part the claim scope remains unclear because while the claim recites specific cells or protoplasts from specific plant parts given the broad language used in claims 6 and 7 plant cells from those plant parts that are still attached to the plant of claim 2 are included within the scope of the claim and therefore claim 7 is indefinite for the same reasons as claim 6.
Claim 8 recites “expresses all of the physiological and morphological characteristics” which renders the claim indefinite. This is because while inbred plant cultivars have sets of physiological and morphological characteristics, not all of these characteristics are exhibited at all times. For example a physiological characteristic of a variety may be germination time, or immature hypocotyl color or a unique shape of the cotyledons as compared to mature leaves. While these are physiological and morphological characteristics of the cultivar, a mature plant of that cultivar would not be expected to express these traits as they are specific to immature plants. As such “expresses all of the physiological and morphological characteristics” is indefinite and claim 8 is rejected. In order to ensure compact prosecution the office notes that substituting “comprises” for “expresses” may overcome this grounds of rejection.
Claim 8 is drawn to a lettuce plant regenerated from a tissue culture of the claims romaine lettuce cv. NNS-1888 “wherein the regenerated plant expresses all of the physiological and morphological characteristics of red leaf lettuce cv. Crimson tide, a sample of seed of the line having been deposited under NCMA Accession No. 202312099”.
This renders the claim indefinite because it recites a different type of lettuce plant and a different cultivar name but recites the same NCMA accession number as the claimed romaine lettuce cv. NNS-1888 and is drawn to a plant regenerated from the tissue culture of the claimed romaine lettuce plant, as such the scope of the claim is not clear.
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.
Claims 1-18 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.
The claims all require seed of romaine lettuce cv. NNS-1888.
Since the seed claimed 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.
The specification does not disclose a repeatable process to obtain the exact same seed in each occurrence and it is not apparent if such a seed is readily available to the public.
If a seed is not so obtainable or available, a deposit thereof may satisfy the requirements of 35 U.S.C. 112. So long as the number of seeds deposited complies with the requirements of the IDA where the deposit is made, the USPTO considers such a compliant submission as satisfying the rules under 37 CFR 1.801 through 1.809.
It is noted that Applicant states that seeds for romaine lettuce cv. NNS-1888 are deposited at the NCMA (¶0094). However, while applicant has stated that the deposit is intended to meet all of the requirements of 37 C.F.R. 1.801-1.809, applicant has not stated that all restrictions upon the deposit will be irrevocably removed, nor has applicant provided a viability statement demonstrating the viability of the deposit. .
If the deposit of these seeds is made and accepted under the terms of the Budapest Treaty, then that and a statement of that by an attorney of record over his or her signature and registration number would satisfy the deposit requirement made herein.
If the deposit is not made and accepted under the Budapest Treaty, then in order to certify that the deposit, meets the requirements set forth in 37 CFR 1.801-1.809, Applicant may provide assurance of compliance by an affidavit or declaration, or by a statement by an attorney of record over his or her signature and registration number showing that
(a) during the pendency of the application, access to the invention will be afforded to the Commissioner upon request;
(b) all restrictions upon availability to the public will be irrevocably removed upon granting of the patent;
(c) 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 enforceable life of the patent, whichever is longer; and
(d) the viability of the biological material at the time of deposit will be tested (see 37 CFR 1.807).
In addition, the identifying information set forth in 37 CFR 1.809(d) should be added to the specification. See 37 CFR 1.801 - 1.809 [MPEP 2401-2411.05] for additional explanation of these requirements.
Prior Art
The claims all require romaine lettuce cv. NNS-1888.
The instantly claimed plant appears to be free of the art. The closest prior art is found in US Patent Application Publication No: US 2022/0272923 A1, published September 1, 2022 by Waycott. Waycott teaches plants of Romaine Lettuce Cultivar Ranger which shares characteristics with the instantly claimed cultivar including at least plant type, seed color, light dormancy, heat dormancy, seedling anthocyanin, cotyledon size, cotyledon shape (Waycott, Page 3, Column 1). However, the instant and reference cultivar differ in at least parentage, breeding history, mature leaf incisions, mature leaf incisions depth, leaf incisions type and mature leaf undulation. Thus the varieties appear to be distinct and as such the claims appear to be free of the art.
Conclusion
No claims are allowed.
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