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 .
Claims 1-15 are pending and examined herein.
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 1-15 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 1, as well as claim 9, is rejected as being indefinite for the recitation “high-throughput”. The term “high-throughput” inis a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear how “high” a throughput is to be qualified as “high”. It is not clear how the throughput is to be measured. Therefore, the metes and bounds of the claims are not clear. Dependent claims are included in this rejection for their failure to correct the deficiency of the base claims.
Claim 1, is rejected as being indefinite for the recitation “automated”. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claims recites a broad recitation “mechanical, and/or robotic means” in various parts of the claims, and the claim also recites “automated” which is the narrower statement of the range/limitation. This is because while “robotic means” could reasonably be construed as part of an automated process, the term “mechanical means” are broadly interpreted to encompass any means involving machines or tools. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Moreover, both claims 1 and 9 are rejected as being indefinite for the recitation “automated” in the preamble. It is unclear whether the claimed process are supposed to be fully automated, i.e., carried out by machines or computers without needing human control; or partially automated; and if the latter, which parts are supposed to be “automated” and which are not. The metes and bounds are not clear.
Dependent claims are included in this rejection for their failure to correct the deficiency of the base claims.
Claim 7 is further rejected as being indefinite for the recitation of “food processor”. It is not clear whether the limitation is referring to a commercial product commonly sold as a kitchen appliance, or any machine or tools that could be used to process food. Furthermore, since clearly the claimed method—and the intended product—are not intended for direct human consumption as food, it is not clear what part of the machinery is defined as “food processor”. The metes and bounds are not clear.
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 1-6, 8-9 and 13-14, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by [ Park, Sunjung. Agrobacterium tumefaciens-mediated transformation of tobacco (Nicotiana tabacum L.) leaf disks: Evaluation of the co-cultivation conditions to increase Β-glucuronidase gene activity. Louisiana State University and Agricultural & Mechanical College, 2006. ].
Claim 1 is drawn to a high-throughput, automated method of producing a population of leaf explants comprising:
sterilizing a population of seed to provide a sterilized seed population;
transferring the sterilized seed population by mechanical and/or robotic means to a germination container, wherein the germination container comprises a germination medium;
providing a distribution of the sterilized seed population by mechanical and/or robotic means in the germination container;
germinating the sterilized seed population to provide a population of germinated seedlings;
growing the germinated seedlings to a sufficient height for harvesting seedling leaves by mechanical and/or robotic means;
harvesting the seedling leaves by mechanical and/or robotic means to provide harvested seedling leaves;
transferring the harvested seedling leaves to a holding container by mechanical and/or robotic means, wherein the holding container comprises a chopping means, a cutting means, and/or a blending means and chopping, cutting, and/or blending the harvested seedling leaves to provide leaf segments of an appropriate size for a bacterial infection; providing to the holding container a bacterial infection solution; infecting the leaf segments in the holding container for a sufficient amount of time to provide bacterially infected leaf segments;
removing by mechanical and/or robotic means the bacterial solution from the bacterially infected leaf segments; and
providing further sub-culturing, resting, selection, heat-treatment, regeneration, maturation, or rooting processes by automated, mechanical, and/or robotic means.
Claim interpretation:
It should be noted that while the preamble of the claim recites a “high-throughput, automated method”, there is no definition of the terms “high-throughput” and/or “automated” from the Specification. On one hand, the preamble does not add structural means to the claims based on the (lack of definition from) the Specification. On the other hand, based on the description of claim 1, it is interpreted that the claimed method includes any mechanical means.
Regarding claim 1, Park discloses a method of plant transformation using leaf explants, comprising the steps of:
Sterilizing “100 tobacco seeds” tobacco seeds (p. 23, 3.2.2.1, e.g.,) which reads on the instant “sterilizing a population of seed to provide a sterilized seed population”;
Transferring the sterilized seeds (e.g., “using sterile forceps”—which reads on “mechanical means”) into a petri dish (“germination container”) contain the T-media (“germination medium”); and the seeds were distributed (presumably using “sterile forceps”) in the petri dish (“ten seeds were planted per petri dish”)—which reads on the instantly claimed “providing a distribution of the sterilized seed population by mechanical and/or robotic means in the germination container”;
Germinating the seeds (“Seeds were germinated…..”);
“Leaf disks were obtained from four week-old tobacco plantlets grown in vitro. Sterile tobacco leaves were cut from plantlets” (p. 24, section b), which reads on the instantly claimed “growing the germinated seedlings to a sufficient height for harvesting seedling leaves by mechanical means”. The word “cut” implies “mechanical means”, e.g., a blade; Park further teaches that “one hundred leaf disks were cut-out using a cork borer……in a Petri dish”—which reads on the instantly claimed harvesting the seedling leaves by mechanical means and “chopping, cutting,” the harvested seedling leaves to provide “leaf segments of an appropriate size” for a bacterial infection;
Park discloses: “leaf disks were soaked in 10 mL of Agrobacterium tumefaciens …… at specific concentrations in the Petri dish…...for specified durations”—which reads on the instantly claimed “infecting the leaf segments in the holding container for a sufficient amount of time”;
“Inoculated leaf disks were transferred to the Whatman filter papers …...then blotted thoroughly.”—which reads on the instantly claimed “removing by mechanical …… means the bacterial solution from the bacterially infected leaf segments”;
Park discloses further discloses, e.g., transferring and placing the infected leaf discks on petri dishes, which reads on the instantly claimed further sub-culturing, resting, selection, …… mechanical” means.
Therefore, all elements of claim 1 is disclosed by the prior art.
Regarding claim 9, it is interpreted the claim is broader to encompass any means, including the “mechanical” means as discussed above.
Therefore, claims 1 and 9 are anticipated by the prior art.
Regarding claim 2, Park discloses the sterilization comprising treatment with ethanol and Clorox (diluted bleach); p. 23, section 3.2.2.1.
Regarding claim 3, Park discloses the germination “T-media” being a solid media.
Regarding claims 4, and 13-14, Park discloses cutting (which implies a blade, e.g., which is the “first”; and a cork borer which qualifies as a round-shaped blade, which is the “second”).
Regarding claims 5-6, Park discloses the co-culturing with Agrobacterial solution.
Regarding claim 8, Park discloses the leaf disk explant with “1-cm inner diameter”.
Therefore, the invention in claims 1-6, 8-9 and 13-14 are anticipated by the prior art.
Conclusion
No claims are allowed.
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WEIHUA . FAN
Primary Examiner
Art Unit 1663
/WEIHUA FAN/Primary Examiner, Art Unit 1663