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 .
Priority
This application claims priority to Chinese Patent Application No.202311773374.2, filed on December 21, 2023, entitled "A Method for Obtaining New Distant Germplasm of Intergeneric Hybridized Potato Based on Grafting-Mentor".
Status of the Claims
Claims 1-7 are pending.
Claims 1-7 are examined herein.
Claim Interpretation
Claim 1 Step (5) is interpreted by the examiner to use the following steps as described by Claim 2 and summarized in the following sentences. The flowers on the potato scion grafted to Lycium root stock were pollinated by Lycium pollen. The flowers pollinated by Lycium pollen were allowed to ripen and produce hybrid seeds which were planted and used to generate true seed mini-tuber hybrids after pre-germination treatment, as was stated in Claim 4. Step 5-3, is interpreted to mean these true seed mini-tubers were analyzed for these traits and seeds were collected from hybrids that were able to self-fertilize, had good compatibility with distant hybrid, and showed vigorous growth in scion. Seeds from plants with afore mentioned traits were also pre-germinated and planted to generate sibling lines which were grafted onto Lycium root stocks. These grafted scions were then pollinated with Lycium pollen and fruit was allowed to ripen. Seeds from resulting crosses were cultured in media and used to generate asexual clones which were used for seed collection.
Self-fertility in Claim 1 Step 5, Claim 2 Step 5-3, and Claim 5 is interpreted to mean self-fertilization.
Selfing seeds in Claim 1 Step 5 and Claim 2 Step 5-3 and 5-4 are interpreted to mean seeds that were made from a flower that fertilized itself.
“Pushing petals” of Claim 2 Step 5-1 is undefined and interpreted to mean flowering.
“Ovary enlargement” in Claim 2 Step 5-3 and 5-7 is interpreted to mean letting fruit develop.
“pre-germination” is interpreted to mean soaking seeds in gibberellin solution for 48 hours.
Claim 1 references “cleft grafting” which is interpreted to mean “wedge grafting”1.
The phrase “true seed mini-tuber” is interpreted to mean a plant or progeny from a plant that was produced from a potato scion flower pollinated with Lycium pollen and has a tuber growing.
Foundation seeds in Claim 2 Step 5-8 is interpreted to mean seeds from the asexually propagated F1 clone line.
Specification
The specification is objected to for stating progeny is obtained from Lycium ovary in paragraph 23 when the specification seemed to be drawn to pollinating flowers from potato scions.
Drawings
Figure 3 is objected to by the examiner for the reason stated in the previous section.
Appropriate clarification is required.
Claim Objections
Claim 2 is objected to for using the phrase “find sand” in Step 5-4 which should likely be “fine sand”.
Claim Rejections - 35 USC § 112 (b)
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.
Claims 1-7 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. The following specific errors are representative of the numerous grammatical errors in the claims.
In addition, Claim 1 Step 1 recites “selecting rootstock using branches”. It is unclear to the examiner what this means.
Also, Claim 2 Step 5-3 recites a “delaying abscission time” which is undefined in the specification and unclear to the examiner as to its meaning. What exactly is meant by “abscission time” and what relative “delay” is? It is also unclear in Claim 2 Step 5-3 as to what exactly is meant by “control groups”.
As well, Claim 2 is rejected for using the term “compatible” in Step 5-3. A seed that is compatible could mean that it can be crossed with, grafted to, or grown in close proximity with a distant hybrid; or some combination thereof. Additionally, the term “vigorous growth” is not clearly defined and could be interpreted to mean a range of (relative) growth characteristics. More specific recitations of how the plant, from selfing seeds, with the three traits listed in Claim 2 Step 5-3 were evaluated is required to ensure definiteness and make the record clear.
Claim 4 is further indefinite because “1000 times” (gibberellin solution) is not a recognized unit of concentration to describe concentration without reference to another known concentration or unit of measure.
Claim Rejections - 35 USC § 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 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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over 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 09/09/2025) in view of QI LI-PAN et al., "Interspecific Hybridization for the Creation of New Potato Germplasm with High Starch Content", Journal of Plant Genetic Resources, China, vol. 23, no. 4, pp. 1026-1036, February 17, 2022 (see IDS filed 09/09/2025), QI LI-PAN et al., "Exploration of Factors Affecting the Survival Rate and Growth Rate of Potato and Goji Berry Grafting", Journal of Hebei North University (Natural Science Edition), China, vol. 32, no. 11, pp. 56-58, November 28, 2016 (see IDS filed 09/09/2025), and Takeuchi, Ami, et al. "Procedure for the efficient acquisition of progeny seeds from crossed potato plants grafted onto tomato." Plant Biotechnology 39.2 (2022): 195-197.
Li et al 2021 teaches “one-year-old Goji berry branches were prepared as rootstocks, selecting disease-free and tender Goji berry branches2” (i.e. Claim 1 Step 1). Page 3 teaches the depth of the rootstock cut was approximately 1 cm and used in wedge grafting which entails removing the top bud of the rootstock (i.e. Claim 6). Page 2 paragraph 1 teaches wild (i.e. primitive) BD5 seed tubers were planted and used as scions3 (i.e. Claim 1 Step 2). Page 3 paragraph 3 teaches “before grafting, hands and grafting tools were disinfected with 75% alcohol” (i.e. Claim 7). It also teaches the scion was shaped into a wedge for quick grafting, which was performed when diameters of the rootstock and scion were similar, then wrapped with plastic wrap (i.e. plastic film) which was directed to in Claim 1 Step 3. Li et al 2021 also discloses post-grafting management by treating with fungicide and maintaining environmental conditions on page 3 paragraph 3 and reads upon Claim 1 Step 4.
Regarding Claim 2 which further limits Claim 1 Step 5, Li et al 2021 page 5 paragraph 4 teaches “grafted plants were pollinated with Goji berry (i.e. Lycium) pollen and potato pollen” and “after pollination, tags and bags were immediately applied to prevent pollen loss and ensure identification”. Which reads upon Claim 2 Steps 5-2 and 5-6 and Claim 3 which recites “labels marking hybridization date and names of parent varieties”. Step 5-3 of Claim 2 is directed to ovary enlargement and collecting seeds. This was disclosed on page 5 paragraph 4 in the passage “Each treatment involved pollinating 200 flowers, and the ovary enlargement rate, hybrid fruit set rate, and number of true seeds were recorded. Fixed hybrid fruits were processed”. It is noted that Li et al 2021 stated the number of seeds per fruit remained 0 but compatibility between potato and Lycium pollen was improved after grafting on page 8 paragraph 4. This means there was no production of true seed mini-tubers as interpreted by the examiner (See claim interpretation section above).
Li et al 2021 does not teach a potato scion with 2-3 unfolded leaves (i.e. Claim 1 step 2) or cutting at internode between first and second fully developed leaves from top of the rootstock vertically by using a double-edged blade (i.e. Claim 6) or waiting for alcohol to evaporate (Claim 7). Li et al 2021 does not disclose cutting the seedlings of potato scion at base with a blade, removing leaves thereof, a shape with two slopes which are symmetrical to each other, or the wedge being clean and smooth in Claim 1 step 3. Li also does not teach removing the stamens of the potato flowers to generate emasculated flowers Step 5-1, 5-2, and Claim 3 . Because Li et al 2021 was unable to generate hybrid seeds, Li et al 2021 does not teach collecting seeds from hybrid plants for identifying seeds that generate plants with the ability to self-pollinate, showed distant hybrid-compatibility, and showed vigorous growth in scion (i.e. Claim 2 step 5-3). Li et al 2021 also does not disclose pre-germination of the resulting hybrid seeds and generation of true seed mini-tubers (Step 5-4 and Claim 4) or a second round of grafting sibling potato scions onto Lycium root stock (Step 5-5 to 5-7) or collecting F1 asexual clone line foundation seeds in (Step 5-8).
Step 5-8 is directed to performing aseptic culture of distant hybridized seeds comprising planting the distant hybridized seeds on 1/2 MS medium, performing tissue propagation on planted distant hybridized seeds, and planting stem segments obtained by asexually propagation in greenhouse vermiculite to obtain F1 asexual clone line foundation seeds. Qi et al 2022 discloses a method of grafting and pollination potatoes to generate hybridized seeds and a method for collecting seeds and sowing on ½ MS medium for tissue propagation. Additional F1 plant material appears to be generated from propagated asexual tissue which was transplanted into a vermiculite substrate mixture for micro seed potato production (i.e. clone line foundation seeds) as described on page 4 paragraph 2 and Figure 1 C-E.
Li et al 2021 and Qi et al 2022 do not teach a potato scion with 2-3 unfolded leaves (i.e. claim 1 step 2) or removing top bud of Lycium and cutting at internode between first and second fully developed leaves from top of the rootstock vertically by using a double-edged blade (i.e. Claim 6) or waiting for alcohol to evaporate (claim 7). Li et al 2021 and Qi et al 2022 also fail to teach the limitations of cutting the seedlings of potato scion at base with a blade, removing leaves thereof, shape with two slopes which are symmetrical to each other wedge being clean and smooth in Claim 1 Step 3. Other limitations not disclosed include removing the stamens of the potato flowers to generate emasculated flowers , pre-germination of the resulting hybrid seeds, generation of true seed mini-tubers, or a second round of grafting sibling potato scions onto Lycium rootstock.
Qi et al. 2016 is directed to grafting potato scions to wolfberry (i.e. Lycium) rootstocks. Page 2 paragraph 3 teaches “grafting adopts the splitting method, using a double-sided knife blade to cut the stern vertically downwards from the top side of the rootstock, and the depth of the knife edge is about 1.0-1.5 cm” (Claim 1 Step 1 and Claim 6). Page 2 Paragraph 2 teaches 2-3 fully unfolded leaf seedlings of potato were used as grafted scions (i.e. Claim 1 Step 2). Page 2 paragraph 3 also teaches using a knife to cut the potato seedlings from the base, removing the entire open leaf, and then use a blade to cut the scion into a beveled wedge (i.e. wedge with two slopes which are symmetrical to each other). It also teaches the size of the wedge surface should be the same size of the rootstock incision and keeping the wedge surface clean and tidy which was directed to in Claim 1 Step 3.
The aforementioned references do not teach methods for emasculating flowers or pre-germinating seeds with gibberellins.
Takeuchi et al 2022 teaches a method for removing stamens 2-3 days after flowering (i.e. pushing petals) before pollination as directed to in Claim 2 Steps 5-1, 5-2, 5-6, and Claim 3 and is described on page 1 paragraph 5. A method where seeds from pollinated flowers are treated with a gibberellin solution is also described on page 2 paragraph 3 which was directed to in Claim 2 Step 5-4 and Claim 4.
It would have been prima facie obvious to combine the teachings of Li et al 2021 in view of Qi et al 2022, Qi et al 2016, and Takeuchi et al 2022 to generate distant germplasm of intergenic hybridized potato with Lycium. The motivation for this is clearly stated in Qi et al 2022 in the phrase “The genetic basis of domestic potato cultivated varieties is narrow, the inbreeding phenomenon is serious, and potato resistance breeding is limited by resources. Wolfberry is also a plant of the nightshade family, which does not cause late blight, and wolfberry is drought-tolerant and saline-alkali tolerant…. Therefore, if the distant hybridization of potatoes and wolfberry is successful, many excellent resistance functions may appear in the offspring”. It would have been obvious to one having ordinary skill in the art to use the steps outlined in the applicant’s claims as they have been previously described in the prior art directed to grafting potato to Lycium plants (or closely related species) for generating hybrid potato plants. The examiner notes that while teachings in the listed art do not explicitly teach the steps of collecting selfing seeds that were able to self-fertilize, had good compatibility with distant hybrid, and showed vigorous growth in scion or the subsequent steps of grafting the hybrid seeds to Lycium root stocks (i.e. Claim 2 Step 5-5 to 5-7), they would have been obvious based on the teachings of Li et al 2021 and Takeuchi et al 2022. These references teach a method for grafting potato scions to Lycium root stocks and why this method would promote fruit production (i.e. hybrid potato seeds with Lycium traits) as the root stocks would not produce tubers4.
Other recited limitations such as pollenating every morning (i.e. Step 5-2 and 5-6), planting seeds in sand to obtain true seed mini-tubers in autumn (i.e. Step 5-4), ovary enlargement in 7-10 days after pollination (i.e. Step 5-7) are not explicitly mentioned in the aforementioned references. Other limitations not explicitly taught by the cited art are soaking hybridized seeds for 48 hours in gibberellin solution (i.e. Claim 4), mixing the seeds with fine sand, spreading the seeds mixed with sand in seed trays evenly to cover the seeds with a layer of soil; transplanting seedlings into 10 cm x 10 cm pots in 40 days after planting to perform standard management of water and fertilizer to obtain true seed mini-tubers in autumn (i.e. Claim 4), cutting the Lycium at the internode between first and second fully developed leaves from top of the rootstock (i.e. Claim 6), or waiting for alcohol to evaporate completely (i.e. Claim 7). These limitations appear to be mere design choices resulting from optimization of methods or are inherent to the method(s) and would have been obvious to try by a person of ordinary skill in the art at the time the application was filed. Additionally, the criticality or unexpected results of any of these limitations to the success of generating new distant germplasm of intergenic hybridized potato have not been clearly described in the disclosure.
Conclusion
Claims 1-7 are rejected.
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, Zhou (Joe) Shubo can be reached at (571) 272-0724. 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
1 See page 3 of Maurya, Deepak, et al. "Grafting techniques in vegetable crops: A review." International Journal of Chemical Studies 7.2 (2019): 1664-1672 “Cleft grafting” section
2 Page 2 paragraph 4 teaches “Tender Goji berry branches should be used for grafting before lignification
occurs.”
3 Le teaches the BD5 potatoes are wild. Bethke, Paul C., Dennis A. Halterman, and Shelley Jansky. "Are we getting better at using wild potato species in light of new tools?." Crop Science 57.3 (2017): 1241-1258 teaches “that nearly three-fourths of wild species relatives are diploid” meaning the BD5 tubers are likely diploids absent evidence to the contrary.
4 See Takeeuchi et al 2022 teaches “We presumed that a large amount of assimilation products would be transported to the underground tubers, and therefore insufficient amounts of substances would be supplied for the development of the fruits. Many potato cultivars hardly produce any fruits after crossing and fail to produce any seeds. In this paper, we report an improved procedure for obtaining progeny seeds by grafting potatoes onto tomatoes.”
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