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 .
Applicants Reply, filed on 07/23/2026 is hereby acknowledged. Applicants arguments when taken together with the claim amendments have overcome many of the rejections of record. Any rejection not repeated below is considered to have been overcome by Applicants arguments when taken together with the claim amendments.
Claims 1-3, 5-6, 9-10, 12-14, 17, 20, 22-24, 26-27 and 29 are pending and examined herein on the merits.
Claim Rejections - 35 USC § 101
Claims 17 and 27 remain rejected 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 lettuce plant of the instant invention appears to be a naturally resistant lettuce plant, or at least a naturally resistant lettuce plant falls within the scope of the claims as currently written.
Claim 17 is drawn to a combination of genes that occur in nature. It is noted that the combination is claimed as the product such that Is unclear that “in a Lactuca sativa lettuce plant” is sufficient to distinguish as it is a location, and the product claim is not drawn the lettuce plant, but rather the genes contained therein. As such, there is no structural difference between this combination that occurs in nature versus the instantly claimed product and since they are indistinguishable structurally, it is still considered as being drawn to a product of nature regardless of the claimed environment.
Claim 27 is drawn to a method of identification, which is a mental step without significantly more.
Claim Rejections - 35 USC § 102/103
A rejection under 35 U.S.C. 102 or 103 does not require the same analysis as a rejection under 35 U.S.C. 102 or a rejection under 35 U.S.C. 103. The rejection is made because the Examiner cannot determine whether the prior art plant possesses characteristics that are not recited in the art. The Examiner does not have sufficient facts to determine whether the claimed plants and seeds are inherently the same as the prior art plants and seeds. In addition, the Examiner cannot conclude that the claimed subject matter would have been obvious since it cannot be determined whether the claimed and prior art plants differ. Where the prior art product seems to be identical, except that the prior art is silent to a characteristic or property claimed, then the burden shifts to Applicant to provide evidence that the prior art would neither anticipate nor render obvious the claimed invention. See In re Best 195 USPQ 430, 433 (CCPA 1977).
Claims 17 and 27 remain rejected under 35 U.S.C. 102(a)(1) or 103 as being anticipated or obvious by Christopoulou et al (2015 Genes Genomes Genetics 5:2655-2664, provided by Applicant).
The instant claims are drawn to a combination comprising specified mutations that have been linked to QTLs providing resistance to Fusarium wilt. However, the lettuce plants with said QTLs (which comprise this combination) which would inherently comprise these mutations appear to be taught in the prior art absent evidence to the contrary. Christopoulou et al teach lettuce plants that are resistant to Fusarium wilt that have QTLs on chromosome 8 and chromosome 7 (the LG7 gene) as instantly claimed (see page 2662 1st column and 2663).
Accordingly, the instant claim as currently written are anticipated. As noted above, an obviousness analysis cannot be done without ascertaining that the specified mutations are in fact present as is believed to be inherent. Furthermore, identifying the resistance, anticipated the step of identifying the combination as the combination identifies the resistance.
Claims 1-3, 5-6, 9-10, 12-14, 20, 22-24, 26 and 29 are allowed as they require a lettuce type that is taking the claimed mutations out of their natural environment to establish resistance in a previously susceptible lettuce type.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
