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 .
Election/Restrictions
As an initial matter, with the Response to Restriction filed 06July2026 Applicant has canceled all previously-pending claims (i.e., the claims upon which the Restriction Requirement 05May2026 was based)—the claims which are now pending (and examined on the merits herein) are all new and do not clearly correspond to the Groups of Invention set forth in the Restriction Requirement 05May2026 (which is acknowledged by Applicant in their Remarks at page 8 wherein they say “[t]he claims as amended herein are drawn to methods of selecting plants … [a]ccordingly, no election of invention is believed to be necessary.”). It follows that the now pending claims do not clearly correspond to a Group of Invention set forth in the Restriction Requirement 28April2023 for parent application 17158275 (now US Pat. No. 12247212)).
Further to the above, Applicant does not make an election of a Group of Invention for examination (as acknowledged by Applicant, the Groups as set forth in the Restriction Requirement 05May2026 are all deleted from the claims).
Applicant's election with traverse of (A) wild type protein sequence SEQ ID NO: 2 (and its corresponding nucleic acid sequence SEQ ID NO: 1), (B) between residues 533 and 534 (of SEQ ID NO: 2), (C) mutant sequence SEQ ID NO: 3 (and its corresponding nucleic acid sequence SEQ ID NO: 4), and (D) Cucumis melo in the reply filed on 06July2026 are all acknowledged. The traversal is on the ground(s) that the Election of Species 05May2026 is/was not proper per MPEP § 803, specifically, because the “generic claim includes sufficiently few species” such that “search and examination of all the species at one time would not impose a serious burden on the examiner.” (Remarks 06July2026 at pages 9-10) This is not found persuasive because there is/would be a serious burden on the Examiner for the reasons already stated within the Restriction Requirement itself (Page 3). The species here are each unique structures (sequences, mutations, and/or plant types) which require their own search design and their own consideration under the patent laws and rules. This fact is exemplified by the discussion regarding Cucumis lanatus and SEQ ID NO: 12 of record within parent application 17158275 (now US Pat. No. 12247212).
The requirement is still deemed proper and is therefore made FINAL.
Claims 74-77 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06July2026.
For the sake of a clear record, parts (ii)-(v) of claim 72 are withdrawn as being directed toward a non-elected species; as well as references to C. sativus, M. charantia, C. maxima, and C. lanatus plants; as well as references to SEQ ID NOs: 5-12. Therefore, there are entire paragraphs of claim 72 (see the claims at page 4) which are withdrawn as being directed toward non-elected species (as is shown below).
PNG
media_image1.png
528
540
media_image1.png
Greyscale
PNG
media_image2.png
614
534
media_image2.png
Greyscale
Status of the Claims
The amendments filed 06July2026 are acknowledged and have been fully considered. Claims 1-71 (i.e., all previously-pending claims) are canceled. Claims 72-97 are new and pending. Claims 74-77 are withdrawn. Claims 72-73, 78-97 are examined on the merits herein.
Claim Rejections - 35 USC § 112 - Indefiniteness
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 72 (and, therefore, claims 73, 78-97 which refer thereto without correcting the issue) is/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 72 is unclear, in particular, unclear with respect to the CLAPR1 modifications required by the claimed methods: does the method require “an insertion of at least one glutamine residue”, “merely any “modification of the nucleotide sequence of SEQ ID NO: 1 leading to [any] change of the amino acid sequence SEQ ID NO: 2”, or an “insertion of at least three glutamine residues”? ←All three of these phrases are recited in claim 72 (as shown below) and it is not clear which one is limiting. Therefore, the scope of the claim(s) is/are not clear.
PNG
media_image3.png
466
604
media_image3.png
Greyscale
Because the antecedent basis for “the modified CLAPR1 gene or the modified protein” down in part (b) of claim 72 appears to be the phrase up at the third paragraph of the claim (where it says that “the modified protein encoded by the modified CLAPR1 gene comprises an insertion of at least one glutamine residue”), claim 72 is interpreted, for the purposes of examination, as requiring a modified CLAPR1 gene that encodes, or a modified CLAPR1 protein comprising, an “insertion of at least one glutamine residue”. To be clear, if the claim(s) is/are interpreted more broadly (e.g., as encompassing any modification of the CLAPR1 gene that leads to any “change of the amino acid sequence of SEQ ID NO: 2”, at least a Written Description rejection would be necessary.
Please rewrite claim 72 so that it more clearly states that the (as elected) selected Cucumis melo plant comprises (1) a modified CLAPR1 gene that encodes, or a modified CLAPR1 protein comprising, an insertion of at least one glutamine residue. In so doing, please be sure that the amended claim 72 still clearly states that the (2) modified CLAPR1 gene is homozygously present (currently recited at the fourth paragraph of claim 72), and that the selected C. melo plant (3) is resistant to CYSDV (also currently recited at the fourth paragraph of claim 72 and then again at part (c)).
Claims 84-85 (and, therefore, also claims 86-87 which refer thereto without correcting the issue) 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.
Claims 84 and 85 are product-by-process claims directed toward plants selected by the method of claim 72. Claims 84 and 85 add the limitation that “the modified CLAPR1 gene is introgressed into the plant.” Because these are product claims (and not method claims), it is not clear whether claims 84-85 are attempting to add active method steps to claim 72 and/or how the “is introgressed into” phrase further limits, if at all, the structure already present within claims 78 and 82 (to which claims 84 and 85 refer, respectively). To exemplify the issue, what structure is added to the claimed plant via “is introgressed”? To that end, how can a third party compare two plants and determine which one into which the CLAPR1 gene was introgressed versus introduced by genetic engineering (for example)—is there a structural feature that indicates introgression was used? Please clarify these product claims by changing the “is introgressed” phrase into a structural limitation.
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 78-87, 92-97 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8, 10 of U.S. Patent No. 12,247,212 (from parent Appl. No. 17158275). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 78-87 and 92-97 are product-by-process claims and directed toward (as elected) Cucumis melo plants, plant parts, and propagation materials comprising a modified CLAPR1 gene encoding, or a modified CLAPR1 protein comprising, at least one glutamine residue between the residues corresponding to positions 533 and 534 of SEQ ID NO: 2 (exemplary modified sequences being SEQ ID NOs: 3 and 4).
While the products of these claims are all selected for via the method of claim 72, product-by-process claims “are not limited to the manipulations of the recited steps, only the structure implied by the steps” (MPEP § 2113).
Claims 1-6, 8, and 10 of US Pat. No. 12247212 are product claims directed toward Cucumis melo plants, plant parts, and propagation materials comprising a modified CLAPR1 gene encoding, or a modified CLAPR1 protein comprising, at least one glutamine residue between the residues corresponding to positions 533 and 534 of SEQ ID NO: 2.
PNG
media_image4.png
744
836
media_image4.png
Greyscale
Based on the current record, there is no material difference between product claims 78-87 and 92-97 of this application and claims 1-6, 8, and 10 of US Pat. No. 12247212.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rebecca STEPHENS whose telephone number is (571)272-0070. The examiner can normally be reached Monday through Friday 8:30-4:30.
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, Amjad ABRAHAM can be reached at (571) 270-7058. 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.
/REBECCA STEPHENS/Examiner, Art Unit 1663
/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663
Prosecution Insights