Status of the Claims
The examiner acknowledges the newly filed claims and specification filed on 07/18/2026.
Claims 1 and 3-7 are pending.
Claims 1 and 3-7 are examined herein.
Withdrawn Objection and Rejections
The Applicant’s remarks (filed on 07/18/2026) to the First Office Action Non-Final rejection from 05/19/2026 are below. The examiner also appreciates the amendments to the claims as it makes them easier to comprehend/interpret.
Objections to the specification and drawings are withdrawn because of amendments to the specification.
Claim Objections as well as 35 USC § 112 (b) and 35 USC § 103 rejections on Claim 2 are moot due to cancelation of the claim.
35 USC § 112 (b) rejections on Claims 1 and 3-7 are maintained.
35 USC § 103 rejections on Claims 1 and 3-7 are withdrawn.
The text of these sections of Title 35 U.S. Code, not included in this action, can be found in a prior Office action.
Informalities
Information Disclosure Statements
Newly Signed IDS forms have been uploaded with this office action to include further annotations.
Priority Document
A corrected bib data sheet has been uploaded with this document as the priority document is not an English translation.
Claim Interpretation
The distant germplasm of intergenic hybridization is interpreted by the examiner to encompass a plant generated from a cross between a potato and Lycium (i.e. a species from different genera).
The term “grafting-mentor” is interpreted by the examiner to mean “a very young seedling that is continually defoliated is grafted to a mature rootstock, so that the scion is a sink for stock-derived nutrients” as was described on page 46 paragraph 2 of Mudge, Ken, et al. "A history of grafting." Horticultural reviews 35 (2009): 437-493.
Lycium is interpreted to be a genus that contains approximately 80 species as was described by Cao, You-Long, et al. "Wolfberry genomes and the evolution of Lycium (Solanaceae)." Communications biology 4.1 (2021): 671 (see abstract).
Claim 1 Step 5-3 uses the phrase “self-pollinated seeds from a potato scion plant that is capable of self-pollination after pollination with lyceum pollen” which is interpreted by the examiner to mean the seeds collected were generated from a potato flower crossed with potato pollen and NOT Lycium pollen, however, some emasculated flowers on the scion were pollinated with Lycium pollen.
Claim 5: The phrase “planting a series of true-seed-derived potato mini-tubers obtained from self-pollinated seeds of the same potato variety to produce the sibling-line potato seedlings” is interpreted to mean the true-seed-derived potato mini-tubers generated from the self-pollinated seeds of Step 5-4 were used to produce the sibling-line potato seedlings.
Claim 6: The phrase “vertically by using a double-edged blade to a depth of 1.0-1.5 cm” is interpreted to mean the cut is 1.0-1.5 cm below the top fully developed leaf and cut into a wedge.
Claim Objections
Claims 1 and 3, 5-6 are objected to for using “Lycium” instead of italicized “Lycium”.
Claim 1 is objected to for:
reciting “as” between “Lycium” and “rootstock” in step 1.
Recites “cleft grafting” in Step 3 but “grafting-mentor” in the preamble.
Claim 4 is objected to for reciting “to perform” in line 10 which should recite “and performing”. It also recites “true seed mini-tubers” while independent claim recites “true-seed-derived potato mini-tubers” in Step 5-4.
Appropriate correction is required.
Claim Rejections - 35 USC § 112 (b)
Claims 1 and 3-7 are still 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 § 112 (b) rejections are summarized below. All dependent claims (i.e., Claims 3-7) inherit these rejections.
Claim 1 is rejected because Step 1 still recites “selecting rootstock using young branches”. Step 2 also recites “using seedlings”. The phrasing makes it unclear how the branches and seedlings are being used. Are they directly selecting the rootstock or scion or being assessed to determine if a rootstock or scion is appropriate for grafting.
Claim 1 is rejected for lack of antecedent basis because Step 3 introduces a “cut of the root stock” which was not described previously.
Claim 1 is rejected because amended Step 5-1 recites “plump”, which is a relative term, and the undefined term “anthesis”. This makes it difficult for one of ordinary skill in the art to determine the proper time of when to emasculate potato flower buds.
Claim 1 is rejected because it is unclear to the examiner if the “self-pollinated seeds from a potato scion plant that is capable of self-pollination after pollination with lyceum pollen” in Step 5-3 is referencing seeds from a potato flower pollinated with potato pollen (i.e. self-pollenated) or from Lycium pollen (see claim interpretation). The flowers pollinated with Lycium pollen were emasculated so they are unable to self-pollinate.
Claim 1 is rejected for being indefinite because amended Step 5-5 requires the limitation of “planting the true-seed-derived potato mini-tubers” which is indefinite because they are already planted as described in Claim 4. Are they transplanted or planted outside?
Claim 4 is rejected to for reciting “spreading the seeds mixed with sand in seed trays evenly to cover the seeds with a layer of soil”. This makes it unclear if soil is added or not. It is also rejected for lack of antecedent basis as it does not clarify what seedlings (referenced in line 10) are transferred into pots. Are the seedlings any potato seedlings or from the seeds soaked in gibberellin solution?
Response to Applicant’s Arguments
The Applicant’s arguments have been considered but the claim amendments have not addressed all the original § 112 (b) rejections and have necessitated new rejections as described above.
Claim Rejections - 35 USC § 112 (a)
Examiner’s Note: In the interest of compact prosecution, if the self-pollinated seeds of Claim 1 Step 5-3, used for pregermination and making true-seed-derived potato mini-tubers, is directed to seeds produced by a potato flower pollinated with Lycium pollen, the following rejection will be placed on it.
The following is a quotation of the first paragraph 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 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.
Enablement
Claims 1 and 3-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims. All dependent claims are included in these rejections unless they contain a limitation that overcomes the deficiencies of the parent claim from which they depend. This is a new rejection necessitated by the claim amendments.
Applicant claims a method for obtaining a new distant germplasm of intergenic hybridized potato based on a grafting-mentor. The result is a hybrid plant resulting in a cross between a potato and Lycium. The method comprises a steps of grafting a potato scions onto Lycium rootstocks (Steps 1 to 4), then pollinating an emasculated flower with Lycium pollen (Steps 5-1 to 5-2) and collecting seeds (see Step 5-3) for the production of true-seed-derived potato mini-tubers.
However, YUE LI, "Anatomical Observation of the Healing Process in Grafting Between Potato and Goji Berry and Preliminary Exploration of Intergeneric Sexual Hybridization", Master's Degree Thesis, Agriculture Science and Technology, China, issue 6, pp. D047-116 (all pages), June 15, 2021 (See IDS filed on 09/09/2025) teaches grafting potato scions onto Lycium rootstocks and pollinating the potato flowers with Lycium pollen does not yield seeds (see page 6 paragraph 1). This means one with ordinary skill in the art would require trial and error testing to generate seeds from such a cross as necessitated by Steps 5-2 to 5-3. Claims 3-7 inherit this rejection.
Written Description
Amended Claim 4 is rejected for incorporating new matter. The claim now recites the use of a commercially available 3% gibberellin stock which is not present in the specification. While the specification contemplates the use of soaking seeds in gibberellin solution in paragraphs 14 and 36, it does not recite the use of a 3% commercially available stock. Thus, there is inadequate support in the disclosure for this claim limitation.
Response to Applicant’s Arguments
The examiner agrees with the Applicant’s amendments to the specification which address the objections to the specifications and drawings. The examiner also agrees with applicant’s arguments to the 35 U.S.C. §103 rejection in the Applicant’s remarks. The claims clearly require two-stage potato/ Lycium grafting and would not have been obvious based on the prior art, especially because the teachings of Li et al 2021 recite pollinating potato flowers on a scion grafted to Lycium root stock does not yield seeds (i.e. distant germplasm of intergenic hybridization) after pollinating with Lycium pollen. The examiner also agrees with the Applicant that amendments to the claims addresses many of the 35 USC § 112 (b) rejections as discussed in points A and B of section III of the Applicant’s remarks. However, the examiner disagrees with the Applicant’s point A and C in section III of the Applicant’s remarks on pages 12 and 14. Firstly, the rejection on “using young branches” is maintained as it is still present in Claim 1. More importantly, there is still ambiguity as to how the self-pollinated seeds were generated as was described in the 112 (b) and 112 (a) rejections above. The examiner cannot determine if the self-pollenated seeds in Step 5-3 were the result of a potato flower pollinating itself or from a potato/ Lycium cross which is why the 112 (b) rejection is maintained. If the self-pollinated seeds used to generate the true-seed-derived potato mini-tubers were generated from potato flowers on the scion that were not pollinated with Lycium pollen, this should be clarified. If the self-pollinated seeds used to generate the true-seed-derived potato mini-tubers were the result of a cross between potato and Lycium, the 112(a) is necessitated as this cross (i.e. potato/ Lycium i.e. a intergenic hybrid) is reported to not yield seeds and require two steps of grafting as claimed by the Applicant.
Conclusion
No claims are allowed.
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office
action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE W MEYER whose telephone number is (571)272-3733. The examiner can normally be reached Monday - Friday 8:00 am- 5:00 pm.
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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.
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/GEORGE W MEYER/Examiner, Art Unit 1662
/BRATISLAV STANKOVIC/Supervisory Patent Examiner, Art Units 1661 & 1662
