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 .
Restriction/Election
In response to the communication received on March 3rd, 2026, from Karen A. Magri, the election of Group I, claims 1-6 and 8-9, with traverse, is acknowledged.
Applicants contend that the technical feature common to all of claims 1-6, 8-17, 19-21 and 23 is ToBRFV resistance on chromosome 1, and that this technical feature is not disclosed or suggested by Kopelvitch (WO 2022/018734).
Applicant’s arguments have been carefully considered but were not found persuasive.
Applicant’s abstract of the invention reads:
“The present invention relates to novel tomato plants displaying an increased resistance to ToBRFV infection. The present invention also relates to seeds and parts of said plants, for example fruits. The present invention further relates to methods of making and using such seeds and plants. The present invention also relates to novel genetic sequences associated with said increased resistance and to molecular markers associated with said novel genetic sequences.”
Thus, Examiner respectfully maintains that novel tomato plants displaying enhanced resistance to ToBRFV infection appears to be the common technical feature. Regarding Kopeliovitch, the reference discloses a tomato plant harboring a dominant resistant gene or genes to ToBRFV infection and identifying SNP markers [Abstract; pg. 13, ¶3]. Groups I-III of the instant invention include additional features not required by other Groups [see Requirement for Restriction, pg. 4, ¶3].
The requirement is still deemed proper and is therefore made FINAL.
Priority
Applicant’s claim for the benefit of a prior-filed application no. EP22157283.7 filed February 17th, 2022 and 371 of PCT/EP2023/053979 filed February 16th, 2023 under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Thus, the earliest possible priority for the instant application is February 17th, 2022.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 08/12/2024, 11/18/2024, 02/11/2025, and 11/12/2025, were considered, initialed, and attached hereto. A signed copy of the list of references cited is included with this Office Action.
The listing of references on page 33 of the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Status of Claims
Claims 1-6, 8-17, 19-21 and 23 filed August 12th, 2024 are pending.
Claims 10-17, 19-21 and 23 are withdrawn.
Claims 1-6 and 8-9 are examined herein.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Objections
In claims 1 and 6, “ToBRFV” is used as abbreviation. It is suggested to insert a definition for ToBRFV without bringing in new matter, immediately before the first appearance of “ToBRFV” in claim 1; and to enclose the appearance of “ToBRFV” in parentheses (in claim 1 only).
Claim Interpretation
As recited in claim 1, a "cultivated tomato" or an "elite tomato" plant is understood as in the instant specification to refer to a plant that is no longer in the natural state but has been developed and domesticated by human care and for agricultural use and/or human consumption, and excludes wild tomato accessions, such as Solanum galapagense accessions (see, pg. 6, lns. 30-21 & pg. 7, lns. 2). As such, claim 1 will not be rejected under 35 USC § 101.
Claim 1 recites SNP markers 2-4 at a position corresponding to a specific position in SEQ ID NO. 6, 11, and 16, respectively. There is no mention of sequence identity to SEQ ID NOs. 6, 11, and 16. Thus, the claim is interpreted to read on the full-length identity of the SEQ ID NOs. (100%) for one of ordinary skill in the art to comprehend the SNP marker positioning within the introgressed sequence.
Claim Rejections - 35 USC § 112(b)
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.
Claim 1-6 and 8-9 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 is directed to exemplary embodiments (recited as “preferably”) that fall within recited broad ranges. However, description of examples and preferences is properly set forth in the specification rather than in a single claim. A narrower range or preferred embodiment may also be set forth in another independent claim or in a dependent claim. If stated in a single claim, examples and preferences lead to confusion over the intended scope of the claim, because it is not clear whether the claimed narrower range is a limitation. See MPEP § 2173.05(c). A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), where broad language is followed by "such as" and then narrow language. This can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Id. In the present instance, claim 1 recites relatively broader embodiments followed by exemplary, narrower embodiments (limitations) with respect to the plant species and resistance to ToBRFV infection.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 recites the broader recitation of the plant according to claim 1, wherein said introgressed sequence is a sequence that is at least 80% identical to one or more of SEQ ID NOs. 6, 11, and 16. Thus, claim 3 fails to further limit the subject matter of preceding claim 1. Claim 3 fails the infringement test because claim 3 would conceivably be infringed by sequences other than the full length SEQ ID NOs. 6, 11, and 16, which would not infringe claim 1. See MPEP § 608.01(n).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Subject Matter Free of Art
A cultivated Solanum lycopersicum plant resistant to ToBRFV infection comprising an introgressed sequence located on chromosome 1 and comprising SNP marker 2 at a position corresponding to position 79 in SEQ ID NO. 6, SNP marker 3 at a position corresponding to position 51 in SEQ ID NO. 11 and/or SNP marker 4 at a position corresponding to position 147 in SEQ ID NO. 16 appears to be free of prior art as specifically claimed in claim 1. As do the primer pairs thereof in claim 2, deposited representative seed of claim 4 and 5, and progeny and parts thereof in claims 6, and 8-9. This subject matter appears to be free of prior art pending above rejections.
Conclusion
No claims allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY K. JOHNSON whose telephone number is (571)272-5761. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bratislav Stankovic can be reached at 571-270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EMILY K JOHNSON/Examiner, Art Unit 1662
/BRATISLAV STANKOVIC/Supervisory Patent Examiner, Art Units 1661 & 1662
Prosecution Insights