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 .
Claims 1-20 are pending and examined herein on the merits.
Claim Rejections - 35 USC § 101
Claims 11-13 are rejected under 35 USC 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 the claimed invention is directed to a process of detecting which is a mental step without significantly more. Claim 11 recites selecting a watermelon by detecting a marker sequence. This judicial exception is not integrated into a practical application because the method does not require any physical steps that would result in practical application such as crossing.
Claims 14-19 are rejected under 35 U.S.C. 101 because they are drawn to a product indistinguishable from a product of nature. The polynucleotides of the claimed invention would be in their natural state in their source organism, and therefore be considered a product of nature. A naturally-occurring nucleic acid or fragment thereof, whether isolated or not, is not patent-eligible pursuant to the Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics, Inc., --U.S.--(June 13, 2013).
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.
Claims 2 and 12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 2 recites the term “preferably at least” and “more preferably at least”. It is unclear whether the subject matter following these terms are considered to be claim limitations by Applicant or merely preferences, and accordingly the claim is indefinite. Additionally, 3 different lower limits are recited such that the metes and bounds of the claim are unclear.
Claim Rejections - 35 USC § 112
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 10 and 14-19 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim 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, at the time the application was filed, had possession of the claimed invention.
Claim 10 is drawn to any propagation material that is capable of developing into and/or being derived from a plant as claimed in claim 1. This reads on any number of generations before and any number of generations after the plan of claim 1, and the plant of claim 1 already encompasses a large amount of variation in that it may comprise one or more of the recited QTLS in any combination. The claim also does not require any of the phenotypes of claim 1 or even the species of claim 1. Accordingly, this claim is very broad encompassing a multitude of plant material as long as it comprises one of the recited QTLs.
In contrast, the specification only describes specific, deposited watermelon plants with red flesh that comprise the recited QTLs. The specification does not describe any potential derived species, outcrossing, or progenitor, ancestor, that has the recited QTLS such that one of skill in the art would be able to determine whether or not they were in possession of the claimed subject matter.
Claims 14-19 are drawn to “derived” markers with no specified sequences whatsoever. Although the claims encompass markers with specified SEQ ID Nos they are also drawn to any markers derived therefrom which would encompass any number of lengths and sequences such that the genus is substantially large.
In contrast the specification describes specific markers with specified SEQ ID Nos for use with the instant invention wherein the markers are shown to be linked to the claimed QTLS. The specification does not describe any “derived” markers nor does the specification indicate what types of structural sequences they would need to have to be considered a marker of the instant invention such that one of skill in the art would be able to determine whether or not they were in possession of the claimed invention.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11064666. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim the recited QTLS comprised in watermelon in various combinations from the same deposited watermelon lines. The markers are inherently encompassed by the claimed plants.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12082545. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim the recited QTLS comprised in watermelon in various combinations from the same deposited watermelon lines.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENT T PAGE whose telephone number is (571)272-5914. The examiner can normally be reached M-F 7-4 EST.
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/BRENT T PAGE/Primary Examiner, Art Unit 1663