DETAILED CORRESPONDENCE
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA (America Invents Act). As a result, Applicant is encouraged to review the AIA in the MPEP. Applicant should also note that the wording, requirements, and statutes may have some subtle changes from actions and requirements prior to AIA .
Election/Restriction
Applicant's election with traverse of in the reply filed on 27 May 2026 is acknowledged. The traversal is on the ground(s) that the claim groups are not patentably distinct because the process requires the use of the product. The traversal is persuasive.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claims Pending
Claims 1-5, 8, 9, 11, and 25-36 are pending and will be examined on the merits.
Drawings
The drawings filed on 6 November 2024 have been approved.
Priority
The present application filed on 17 May 2023 claims the benefit of U.S. Provisional application 63/596,522 filed on 6 November 2023.
Information Disclosure Statements
The Information Disclosure Statements filed on 30 September 2025 has been considered.
Claim Rejections - 35 USC § 112
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.
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 2 is 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.
The clause “Wherein the embryoid has insufficient root development and /or embryo clustering”
is indefinite because there is no clear definition provided in the claims or specification as to what
the terms “insufficient root development” or “embryo clustering” mean. “Insufficient” is a
relative term and it is unclear what level of root development would be considered “insufficient”.
Claim 29 is 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 29 lists iron sources as FeSO4 or Na2EDTA. However, there is no Iron component in Na2EDTA as such the claim contradicts itself and is rejected. Na2EDTA can bind iron, but the compound itself does not contain iron.
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 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 1-5, 9, 11, and 25-36 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Harmon D. et al., (“Tissue Culture and Regeneration of Three Rose Cultivars”, HortiScience 57(11): 1430-1435, 17 October 2022) referred hereafter as Harmon.
Applicant’s claims are broadly drawn to a method of propagating rose embryos derived from rose plantlets in a callus culture and producing regenerated rose plants from those embryos.
Wherein a rose plantlet leaf is isolated.
The leaf is grown in a callus induction medium (CIM) wherein the leaf abaxial surface is in contact with the CIM (claim 4).
At least one callus is isolated from the CIM, after about 4 weeks (claim 5), and placed in a rose cell suspension culture media (RSM) wherein the media is refreshed about every 7 days after culture initiation (claim 8).
At least one embryoid is isolated from the RSM wherein that embryoid has been in RSM culture for about 4 months or that embryoid is about 2mm in diameter (claim 9). That embryoid is transferred into a somatic embryo regeneration medium (ERM-1), wherein the at least one embryoid is cultured for at least about 4 weeks or the embryoid becomes a shoot that is at least 2cm in height (claim11).
At least one shoot is isolated and transferred to root induction media (RIM) wherein the the shoot develops into a regenerated rose plant.
Applicant also claims transferring embryoids produced from callus that have insufficient root development and/or embryo clustering to somatic embryo regeneration medium II (ERM-II) (claim 2). However there is no clear definition for either insufficient root development or embryo clustering, see 112(b) rejection above.
Claims 25-36 further define the formulation of rose cell suspension media (RSM):
The rose suspension media (RSM) comprises at least one of each;
Macro salts; NH4NO3, KNO3, CaC12, KH2PO4, and MgSO4 (claim 27),
at a concentration about 150 mg/L to about 2500 mg/L (claim 26).
Iron sources; FeSO4 and Na2EDTA (claim 29),
at a concentration about 25 mg/L to about 40 mg/L (claim 18)
Micro salts; H3B03, KI, MnSO4, and ZnSO4 (claim 31),
at a concentration about 0.5 mg/L to about 5.0 mg/L (claim 30)
Vitamins; Nicotinic acid, Thiamine HCI, Glycine, L-Proline, Asparagine, and Glutamine (claim 33), at a concentration about 0.1 mg/L to about 250 mg/L (claim 32).
Growth regulators; Kinetin (KT) and 2,4- Dichlorophenoxyacetic acid (2,4-D) (claim 35),
at a concentration about 0.1 mg/L to about 1.5 mg/L (claim 34).
The RSM further comprises either sucrose and/or maltose, or, a PH ranging from about 5.0 to about 6.5 (claim 36).
Harmon discloses a method of in vitro regeneration of rose plants by somatic embryogenesis in callus culture (whole document).
Wherein in vitro cultures of roses were initiated from apical and axillary bud explants (reads on “at least one rose plantlet leaf” claim 1) (materials and methods paragraph1).
Harmon discloses, “Callus induction—auxin response. The
effects of 2,4-D and 2,4,5-T at 5, 10, 20, or 40 mM concentrations on callus induction
were investigated. Vigorously growing leaflets were excised from proliferating shoot cultures of the three cultivars and used for callus induction. Leaflets were scored across the midrib and placed abaxial side down in petri dishes (90 mm in diameter) containing 25 mL of callus induction media. Basal medium for all experiments consisted of full-strength MS salts and vitamins, 3% sucrose…” (materials and methods paragraph 2). This reads on Culture induction media (claim 1), the plantlet leaf is from an in vitro plantlet (claim3), and the abaxial side of the leaf in contact with CIM (claim4).
Harmon discloses, “Explants were cultured in 180ml glass jars containing 25ml of shoot proliferation/maintenance media consisting of full-strength MS (Murashige and Skoog 1962) salts and vitamins…30 g·L1 sucrose… Medium pH was adjusted to 5.75…Proliferating microshoots were used as stock cultures for all experiments and maintained by transferring onto fresh media… every 4-5 weeks” (Materials and Methods paragraph 1) (reads on Culture induction media, rose cell suspension culture media claim (claim 1).
Harmon discloses in materials and methods that “roses were initiated from apical and axillary bud explants” (paragraph1), that explants were cultured in glass jars of “proliferation/ maintenance media” (paragraph2), that vigorously growing leaflets were excised from proliferating shoot cultures and placed in petri dishes of callus induction media and incubated in the dark for 4 weeks before being transferred to a regeneration media (paragraph2), and that “After 4 weeks, callus was transferred to a regeneration media … for an additional 4 weeks to determine regeneration potential. Data were collected for the percentage of explants producing callus and regenerative callus.” (paragraph 4), Harmon’s results disclose that regenerative callus was produced “(i.e., callus that can produce either somatic embryos or shoots via somatic embryogenesis or organogenesis)”. This reads on isolating at least one embryoid from the callus and transferring the embryoid to ERM-1 (claim1). This also reads on the at least one embryoid is cultured in ERM-1 for at least about 4 weeks (claim 11)..
Harmon discloses, “Rooting—auxin response. Regenerated shoots were transferred to shoot multiplication/maintenance media as described earlier. After 4 weeks, shoots 25 mm in length were transferred to 180-mL glass jars containing 25 mL of rooting media consisting of full-strength MS salts and vitamins, 30 g·L1 sucrose... Medium pH was adjusted to 5.8. After 4 weeks, shoots were transferred ex vitro and acclimatized in growing media …in 50-cell trays…” (Materials and Methods last paragraph). This reads on isolating at least one shoot from the at least one embryoid and transferring the at least one shoot to RIM (claim 1).
Regarding claim 5, Harmon discloses, “Explants were incubated in the dark for 4 weeks before being transferred to a regeneration media” (Materials and Methods paragraph 2). This reads on callus being collected about 4 weeks after being cultured in the CIM (claim 5).
Regarding claim 9, the above disclosures by Harmon make evident that with periodic refreshment of the RSM provides a constant and stable reservoir of rose explants/callus. Furthermore, the multiple 4 and 5 week intervals between steps in Harmon’s method show that rose callus can be kept cycling in RSM for at least 4 months (Materials and Methods and Results). Furthermore, Harmon discloses “cultures were grown under light conditions as described above. In one experiment, all leaf explants with and without callus of all three cultivars were incubated for a period of 4 months” (Induction of somatic embryogenesis and shoot organogenesis) ,this reads on the callus being cultured in RSM for about 4 months of claim 9.
Regarding Claims 25-36 Harmon discloses the use of basal media “Explants were cultured in …full strength MS (Murashige and Skoog, 1962) MS 1962” Murashige and Skoog media is a plant cell maintenance media that is ubiquitous in the art of plant cell culture. Murashige and Skoog, (“A Revised Medium for Rapid Growth and Bio Assays with Tobacco Tissue Cultures”, Physiologia Plantarum, vol. 15, 1962.) referred to hereafter as MS 1962.
Regarding the limitations of claims 25-36 the MS 1962 formulation discloses at least the following as components of the media:
(claims 26 and 27) Macro salts; NH4NO3 400 mg/l (materials and methods, inorganic salts, Page 475)
(claims 28 and 29) Iron sources; FeSO4 and Na2 EDTA page 476 (first full paragraph), NaFe-EDTA 25 mg/l (materials and methods, inorganic salts, Page 475).
(Claims 30 and 31) Micro salts; H3B03 1.6 mg/l (Materials and Methods, Inorganic salts, Page 475).
(Claims 32 and 33) Vitamins; Nicotinic acid 0.5 mg/l, (Materials and Methods, Organic substances, Page 475).
(Claims 34 and 35) Growth regulators; Kinetin (KT) 0.2 mg/l (Materials and Methods, Organic substances, Page 475).
(Claim 36) MS 1962 discloses the use of Sucrose as a carbohydrate source in the media (page 488 carbohydrates).
(Claim 36) MS 1962 Discloses “the pH of all media was adjusted to 4.7-5.8 with… before the agar was added” (Materials and Methods, pH adjustment, page 476)
As such, the claimed invention is anticipated by the disclosures of Harmon.
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 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 1-5, 9, 11, and 25-36 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Xiangqian et al., referred to hereafter as Xiangqian, (“Somatic embryogenesis, secondary somatic embryogenesis, and shoot organogenesis in Rosa”, Journal of Plant Physiology. 159. 313-319 (2002)) referred to hereafter as Xiangqian.
Applicant’s claims are broadly drawn to a method of propagating rose embryos derived from rose plantlets in a callus culture and producing regenerated rose plants from those embryos.
Wherein a rose plantlet leaf is isolated.
The leaf is grown in a callus induction medium (CIM) wherein the leaf abaxial surface is in contact with the CIM (claim 4).
At least one callus is isolated from the CIM, after about 4 weeks (claim 5), and placed in a rose cell suspension culture media (RSM) wherein the media is refreshed about every 7 days after culture initiation (claim 8).
At least one embryoid is isolated from the RSM wherein that embryoid has been in RSM culture for about 4 months or that embryoid is about 2mm in diameter (claim 9). That embryoid is transferred into a somatic embryo regeneration medium (ERM-1), wherein the at least one embryoid is cultured for at least about 4 weeks or the embryoid becomes a shoot that is at least 2cm in height (claim11).
At least one shoot is isolated and transferred to root induction media (RIM) wherein the the shoot develops into a regenerated rose plant.
Applicant also claims transferring embryoids produced from callus that have insufficient root development and/or embryo clustering, to somatic embryo regeneration medium II (ERM-II) (claim 2). However there is no clear definition for either “insufficient root development” or “embryo clustering”, see 112(b) rejection above.
Claims 25-36 further define the formulation of rose cell suspension media (RSM):
The rose suspension media (RSM) comprises at least one of each;
Macro salts; NH4NO3, KNO3, CaC12, KH2PO4, and MgSO4 (claim 27),
at a concentration about 150 mg/L to about 2500 mg/L (claim 26).
Iron sources; FeSO4 and Na2EDTA (claim 29),
at a concentration about 25 mg/L to about 40 mg/L (claim 18)
Micro salts; H3B03, KI, MnSO4, and ZnSO4 (claim 31),
at a concentration about 0.5 mg/L to about 5.0 mg/L (claim 30)
Vitamins; Nicotinic acid, Thiamine HCI, Glycine, L-Proline, Asparagine, and Glutamine (claim 33), at a concentration about 0.1 mg/L to about 250 mg/L (claim 32).
Growth regulators; Kinetin (KT) and 2,4- Dichlorophenoxyacetic acid (2,4-D) (claim 35),
at a concentration about 0.1 mg/L to about 1.5 mg/L (claim 34).
The RSM further comprises either sucrose and/or maltose, or, a PH ranging from about 5.0 to about 6.5 (claim 36).
Xiangqian discloses a method of in vitro regeneration of rose plants by somatic embryogenesis in callus culture (whole document).
Xiangqian discloses the use of a callus induction medium (CIM) and “Murashige and Skoog 1962” media which reads on rose cell suspension callus media (Materials and Methods paragraph 2). (claim 1 (CIM) and RSM).
Xiangqian discloses “proliferating shoot cultures… were previously established from nodal stem segments of greenhouse grown plants…” (materials and methods paragraph1) (claim 3) and “all leaf explants were placed with the abaxial surface in contact with the medium” (Materials and Methods paragraph 2) (claim 4).
Xiangqian discloses “cultures were incubated in the dark for 4 weeks” (Materials and Methods paragraph 2), post ceding experiments imply the collection of the callus from the media. (claim 5).
Xiangqian discloses “In one experiment, all leaf explants with and without callus of all three cultivars were incubated for a period of 4 months” (Materials and Methods paragraph 4) (claim 9).
Xiangqian discloses “Primary embryogenic callus of ‘Carefree Beauty’ induced on a medium… was used for proliferation and maturation of secondary somatic embryos. In one experiment… calli were transferred… and incubated on medium… for a period of one month” (Materials and Methods paragraph 5) (claim 1 (ERM-1) and 11).
Xiangqian discloses “plantlets (derived via somatic embryogenesis) were subcultured onto a shoot elongation medium… for a period of one month. Vigorously growing shoots were transferred to a PGR free medium for 3 weeks to induce rooting. Rooted plants were transferred to soil mix” (Materials and Methods paragraph 7) (Claim1 (RIM)).
Regarding Claims 25-36, Xiangqian further discloses the use of MS 1962 media “All basal media containing half or full MS salt (Murashige and Skoog 1962) full-MS vitamins, and 87.6 mmol/L sucrose, were adjusted to pH 5.7” (Materials and Methods paragraph 1). Murashige and Skoog media is a plant cell maintenance media that is ubiquitous in the art of plant cell culture and would have been obvious to use as a basal medium for callus cultures from any plant.
Regarding the limitations of claims 25-36, the MS 1962 formulation discloses at least the following as components of the media:
(claims 26 and 27) Macro salts; NH4NO3 400 mg/l (materials and methods, inorganic salts, Page 475)
(claims 28 and 29) Iron sources; FeSO4 and Na2 EDTA page 476 (first full paragraph), NaFe-EDTA 25 mg/l (materials and methods, inorganic salts, Page 475).
(Claims 30 and 31) Micro salts; H3B03 1.6 mg/l (Materials and Methods, Inorganic salts, Page 475).
(Claims 32 and 33) Vitamins; Nicotinic acid 0.5 mg/l, (Materials and Methods, Organic substances, Page 475).
(Claims 34 and 35) Growth regulators; Kinetin (KT) 0.2 mg/l (Materials and Methods, Organic substances, Page 475).
(Claim 36) MS 1962 discloses the use of Sucrose as a carbohydrate source in the media (page 488 carbohydrates).
(Claim 36) MS 1962 discloses “the pH of all media was adjusted to 4.7-5.8 with… before the agar was added” (Materials and Methods, pH adjustment, page 476)
As such, the claimed invention is anticipated by the disclosures of Xiangqian.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 and 8, are rejected under 35 U.S.C. 103 as being unpatentable over Xiangqian et al., (“Somatic embryogenesis, secondary somatic embryogenesis, and shoot organogenesis in Rosa”, Journal of Plant Physiology. 159. 313-319 (2002)) referred to hereafter as Xiangqian, or Harmon D. et al., (“Tissue Culture and Regeneration of Three Rose Cultivars”, HortiScience 57(11): 1430-1435, 17 October 2022) referred hereafter as Harmon, taken with evidence from Murashige and Skoog, (“A Revised Medium for Rapid Growth and Bio Assays with Tobacco Tissue Cultures”, Physiologia Plantarum, vol. 15, 1962.), referred to hereafter as MS1962.
Applicant’s claims are broadly drawn to a method of propagating rose embryos derived from rose plantlets in a callus culture and producing regenerated rose plants from those embryos.
Wherein a rose plantlet leaf is isolated.
The leaf is grown in a callus induction medium (CIM).
At least one callus is isolated from the CIM and placed in a rose cell suspension culture media (RSM) wherein the media is refreshed about every 7 days after culture initiation (claim 8).
At least one embryoid is isolated from the RSM. That embryoid is transferred into a somatic embryo regeneration medium (ERM-1).
At least one shoot is isolated from ERM-1 and transferred to root induction media (RIM) wherein the shoot develops into a regenerated rose plant.
Xiangqian teaches a method of in vitro regeneration of rose plants by somatic embryogenesis in callus culture (whole document).
Xiangqian teaches the use of rose plantelet leaves a callus induction medium (CIM) and “Murashige and Skoog 1962” media which reads on rose cell suspension callus media (RSM) (Materials and Methods paragraph 2). (claim 1 (CIM) and RSM).
Xiangqian teaches “Primary embryogenic callus of ‘Carefree Beauty’ induced on a medium… was used for proliferation and maturation of secondary somatic embryos. In one experiment… calli were transferred… and incubated on medium… for a period of one month” (Materials and Methods paragraph 5) (claim 1 (ERM-1)).
Xiangqian teaches “plantlets (derived via somatic embryogenesis) were subcultured onto a shoot elongation medium… for a period of one month. Vigorously growing shoots were transferred to a PGR free medium for 3 weeks to induce rooting. Rooted plants were transferred to soil mix” (Materials and Methods paragraph 7) the shoot elongation media reads on root induction media and the plantlets that have shoots and roots read on the regenerated plant (Claim1 (RIM)).
Regarding claim 8, Xiangqian does not specifically teach refreshing the culture media at least about every 7 days. However, It would be obvious to a person of ordinary skill in the art that the media would need to be refreshed to add nutrients and remove byproduct build up that may kill the culture, given the length of time that the calli are sustained in culture.
Moreover, by the teachings of the cited references, it is apparent that one of ordinary skill in the art would have a reasonable expectation of success in combining the components as taught in the cited references as methods are commonly known in the art produce rose plants by somatic embryogenesis and are media well suited for doing such are well known known in the art.
Thus, the invention, as a whole, would be prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Summary
No claim is allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from
the examiner should be directed to Zachariah Kay whose telephone number is (703)756-4771,
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/ZACHARIAH ALLAN KAY/Examiner, Art Unit 1661
/BRATISLAV STANKOVIC/Supervisory Patent Examiner, Art Units 1661 & 1662
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