DETAILED ACTION
Claims 1-22 are pending.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The objection to claims 9 and 19 is withdrawn in light of Applicant’s amendment to the claims.
The rejection of claims 5, 8, 19 and 21-22 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the subject matter that the inventor or a joint inventor, or for pre-AIA the applicant, regards as the invention is withdrawn in light of Applicant’s amendment to the claims.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Claim 22 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter that 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
This rejection is different from the rejection set forth in the Office action mailed 24 April 2026. Applicant’s arguments filed 24 July 2026 have been fully considered but they do not apply to this new rejection. Part A of the previous rejection was overcome by Applicant’s amendment of the claims. Part B of the previous rejection was overcome by Applicant’s amendment of the specification/
The claim is drawn to a watermelon plant produced by the method of claim 21, which is a method of gene editing a target gene of a plant of watermelon variety NUN 32206 WMW. While the method of claim 21 recites specific traits the gene edit modifies, claim 22 places no limit on the number of gene edits in the claimed plant and does not exclude modifications to more than one traits or to genes that confer traits other than those listed.
The claim thus encompasses plant with an unlimited number of gene edits and that differ from NUN 32206 WMW in any number of traits.
The structural features that distinguish watermelon plants encompassed by claim 22 from other watermelon plants are not described in the specification.
The only species described in the specification is NUN 32206 WMW itself.
One of skill in the art would not recognize that Applicant was in possession of the necessary common attributes or features of the genus in view of the disclosed species.
Hence, Applicant has not, in fact, described watermelon plants produced by gene editing NUN 32206 WMW, and the specification fails to provide an adequate written description of the claimed invention.
Therefore, given the lack of written description in the specification with regard to the structural and functional characteristics of the claimed compositions, Applicant does not appear to have been in possession of the claimed genus at the time this application was filed.
Claim Rejections - 35 USC §§ 102, 103
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.
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, 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 1-22 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over de Groot (2017, US 9,572,312) taken with the evidence of Juarez (2015, US 9,066,477), Juarez (2015, US 9,066,478), Juarez (2015, US 9,066,482), Bernier (2017, US 9,848,548), Chang (2018/0139920) and Chang (2019/0343063).
The rejection is repeated for the reasons of record as set forth in the Office action mailed 24 April 202. Applicant’s arguments filed 24 July 2026 have been fully considered but they are not persuasive.
This analysis is based on the non-environmentally affected traits in watermelon. These were determined from the descriptions of characteristics of watermelon variety TML-11-1434 as reported in US 9066477, US 9066478, US 9066482, and US 9848548 and watermelon variety Pixie as reported in PGPub 2018/0139920 and PGPub 2019/0343063 (Appendix A). Only the characteristics listed in bold in Appendix A are not affected by environmental conditions. Traits that are both not affected by environmental conditions and are reported for the instant plant in Table 1 are ploidy, sex form, intensity of cotyledon green color, time of female flowering, mature fruit shape, waxy layer of fruit, rind texture, flesh texture, and main color of fruit flesh. Two plants can only be compared based on the traits affected by environmental conditions if they are grown side-by-side.
de Groot teaches watermelon variety NUN 7201 WMW, which, like the instant plant, is triploid, monoecious, round mature fruit, a tough rind texture, and a red main color of fruit flesh. NUN 7201 WMW has a crisp flesh texture; ‘312 only provides two alternatives for flesh texture and “very crisp” is not one of them. It is not clear if the “crisp” in ‘312 is the same as the “very crisp” in the instant application; it is noted that in the instant application, “crisp” and “soft” are listed as the only alternatives for flesh texture, and “very crisp” is not. de Groot is silent regarding the intensity of cotyledon green color, time of female flowering, and waxy layer of fruit of NUN 7201 WMW.
Claims 1, 3-4, 6-7, and 9-13 of ‘312 are identical to or species of, the instant claims 1, 2, 4, 3, 5-6, 16, 10, and 14, respectively, except for the name of variety.
A plant of NUN 7201 WMW further comprising a single locus conversion, as claimed in ‘312’s claim 12, makes obvious instant claim 9’s method of making it by backcrossing, as that is a routine way of doing so. The first step in the backcrossing is identical to instant claim 7, and would involve crossing plants and harvesting seed, as claimed in instant claim 8. This method is a species of the genus of methods of introducing a desired trait into the watermelon plant, , thus making instant claim 17 obvious.
A plant of NUN 7201 WMW further comprising a single locus conversion also makes obvious alternative and routine methods of making the plant. These include transformation, as many of the recited traits, like herbicide, insect and disease resistance are commonly transgenic, thus making instant claim 11 obvious. They also include gene editing, thus making instant claim 21 obvious. The plant of ‘312’s claim 12 would be a species of the genus of plants resulting from the method, thus making instant claim 22 obvious.
It would be obvious to one of ordinary skill in the art to make doubled haploid cells from NUN 7201 WMW as this is a common way of developing new watermelon varieties, thus making instant claim 12 obvious. It would be obvious to one of ordinary skill in the art to use the plant in a method of making routine crosses and plant breeding techniques with itself or another watermelon plant in order to produce a new plant, thus making instant claims 19 and 20 obvious.
‘312 claim of a plant comprising a rootstock of NUN 7201 WMW makes obvious a method of making it by the routine method of grafting, thus making instant claim 13 obvious.
Response to Arguments
Applicant urges that the prior art plants have different parents than the instant plant (response pg 7).
This is not found persuasive because de Groot is silent regarding the parentage of their plant and Applicant has not provided evidence that its parentage is different. Attorney arguments cannot substitute for evidence.
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 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-13 of U.S. Patent No. 9,572,312 taken with the evidence of Juarez (2015, US 9,066,477), Juarez (2015, US 9,066,478), Juarez (2015, US 9,066,482), Bernier (2017, US 9,848,548), Chang (2018/0139920) and Chang (2019/0343063).
The rejection is repeated for the reasons of record as set forth in the Office action mailed 24 April 2026. Applicant’s arguments filed 24 July 2026 have been fully considered but they are not persuasive.
This analysis is based on the non-environmentally affected traits in watermelon. These were determined from the descriptions of characteristics of watermelon variety TML-11-1434 as reported in US 9066477, US 9066478, US 9066482, and US 9848548 and watermelon variety Pixie as reported in PGPub 2018/0139920 and PGPub 2019/0343063 (Appendix A). Only the characteristics listed in bold in Appendix A are not affected by environmental conditions. Traits that are both not affected by environmental conditions and are reported for the instant plant in Table 1 are ploidy, sex form, intensity of cotyledon green color, time of female flowering, mature fruit shape, waxy layer of fruit, rind texture, flesh texture, and main color of fruit flesh. Two plants can only be compared based on the traits affected by environmental conditions if they are grown side-by-side.
‘312 claims hybrid watermelon variety NUN 7201 WMW, which, like the instant plant, is triploid, monoecious, round mature fruit, a tough rind texture, and a red main color of fruit flesh (Table 1). NUN 7201 WMW has a crisp flesh texture; ‘312 only provides two alternatives for flesh texture and “very crisp” is not one of them. It is not clear if the “crisp” in ‘312 is the same as the “very crisp” in the instant application; it is noted that in the instant application, “crisp” and “soft” are listed as the only alternatives for flesh texture, and “very crisp” is not. de Groot is silent regarding the intensity of cotyledon green color, time of female flowering, and waxy layer of fruit of NUN 7201 WMW.
Claims 1, 3-4, 6-7, and 9-13 of ‘312 are identical to or species of, the instant claims 1, 2, 4, 3, 5-6, 16, 10, and 14, respectively, except for the name of variety.
A plant of NUN 7201 WMW further comprising a single locus conversion, as claimed in ‘312’s claim 12, makes obvious instant claim 9’s method of making it by backcrossing, as that is a routine way of doing so. The first step in the backcrossing is identical to instant claim 7, and would involve crossing plants and harvesting seed, as claimed in instant claim 8. This method is a species of the genus of methods of introducing a desired trait into the watermelon plant, , thus making instant claim 17 obvious.
A plant of NUN 7201 WMW further comprising a single locus conversion also makes obvious alternative and routine methods of making the plant. These include transformation, as many of the recited traits, like herbicide, insect and disease resistance are commonly transgenic, thus making instant claim 11 obvious. They also include gene editing, thus making instant claim 21 obvious. The plant of ‘312’s claim 12 would be a species of the genus of plants resulting from the method, thus making instant claim 22 obvious.
It would be obvious to one of ordinary skill in the art to make doubled haploid cells from NUN 7201 WMW as this is a common way of developing new watermelon varieties, thus making instant claim 12 obvious. It would be obvious to one of ordinary skill in the art to use the plant in a method of making routine crosses and plant breeding techniques with itself or another watermelon plant in order to produce a new plant, thus making instant claims 19 and 20 obvious.
‘312’s claim of a plant comprising a rootstock of NUN 7201 WMW makes obvious a method of making it by the routine method of grafting, thus making instant claim 13 obvious.
Response to Arguments
Applicant urges that the prior art plants have different parents than the instant plant (response pg 7).
This is not found persuasive because ‘312 is silent regarding the parentage of the claimed plant and Applicant has not provided evidence that its parentage is different. Attorney arguments cannot substitute for evidence.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anne R. Kubelik, Ph.D., whose telephone number is (571) 272-0801. The examiner can normally be reached Monday through Friday, 9:00 am - 5:00 pm Eastern.
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/Anne Kubelik/Primary Examiner, Art Unit 1663
