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 .
DETAILED ACTION
1. Claims 1, 2, 7-10 and 13-22 are pending and are examined in the instant application.
Duty of Disclosure
2. Applicant is reminded of their “Duty of Disclosure, Candor, and Good Faith” (see 37 C.F.R. § 1.56 and MPEP § 2001). Information that would be considered pertinent to patentability includes: 1) any progeny or sibling of the claimed variety in another patent-type document or in a publication; 2) all other names for the claimed variety and its parents; and 3) the homozygosity or heterozygosity of the parents and the claimed variety. This information can be submitted in an Information Disclosure Statement with a notation of the relevancy to the instant application. It should be noted that such disclosure may result in new rejections being made in the next Office action, and being made final, as necessitated by Applicant’s disclosure.
Specification
3. The disclosure is objected to because of the following:
The status of parent Application No. 17/977177 should be updated in paragraph [0001] of the specification.
In paragraph [0086], the Deposit Information does not indicate that all restrictions upon availability to the public will be irrevocably removed upon granting of the patent.
Appropriate correction is required.
Claim Objections
4. Claims 1, 2, 7-10 and 13-22 are objected to because of the following:
In claims 1, 15 and 17, “a sample of seed” should be amended to “a sample of seeds” because more than one seed is deposited.
Dependent claims are included.
Correction is required.
Claim Rejections – 35 USC § 112(a)
5. 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.
6. Claims 1, 2, 7-10 and 13-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Since the seeds of lines SMO8T14-6275 and ZSP-8T19-6737 are essential to the claimed invention, they must be obtainable by a reproducible method set forth in the specification or otherwise be readily available to the public. If the seeds are not so obtainable or available, deposits thereof may satisfy the requirements of 35 U.S.C. 112. The specification does not disclose a reproducible process to obtain the exact same seeds in each occurrence and it is not apparent if the seeds are readily available to the public. If the deposits of the seeds are made under the terms of the Budapest Treaty, then an affidavit or declaration by the Applicant, or a statement by an attorney of record over his or her signature and registration number, stating the seeds have been deposited under the Budapest Treaty and that the seeds will be irrevocably, and without restriction or condition, released to the public upon the issuance of a patent would satisfy the deposit requirement made herein. A minimum deposit of 625 seeds is considered sufficient for each line in the ordinary case to assure availability through the period for which the deposits must be maintained.
If the deposits have not been made under the Budapest Treaty, then in order to certify that the deposits meet the criteria set forth in 37 CFR 1.801-1.809, Applicant may provide assurance of compliance by an affidavit or declaration, or by a statement by an attorney of record over his or her signature and registration number showing that
(a) during the pendency of the application, access to the invention will be afforded to the Commissioner upon request;
(b) all restrictions upon availability to the public will be irrevocably removed upon granting of the patent;
(c) the deposits will be maintained in a public depository for a period of 30 years or 5 years after the last request or for the enforceable life of the patent, whichever is longer;
(d) the viability of the biological materials at the time of deposits will be tested (see 37 CFR 1.807); and
(e) the deposits will be replaced if it should ever become unviable.
The specification does not indicate that all restrictions upon availability to the public will be irrevocably removed upon granting of the patent. Evidence of accepted deposits are requested.
7. Claims 7 and 9 are 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 claim(s) contains subject matter which 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.
Claims 7 and 9 lack adequate written description because the plant part comprising a cell of the hybrid plant of claim 1 encompasses a progeny seed or embryo cell . A hybrid of variety SVPS7935 has a genome that is heterologous at every locus. When said hybrid is crossed with an unknown parent, it is unpredictable what genetic material its progenies would inherit. The specification does not disclose a representative number of progenies of hybrid variety SVPS7935 to allow one skilled in the art to predict the genetic makeup or physiological and morphological characteristics of the claimed progeny cells. No identifying characteristics are set forth for the progenies. There are insufficient relevant identifying characteristics to allow one skilled in the art to predictably determine the genomic structure or morphological and physiological characteristics of the claimed progeny cells, absent further guidance. Accordingly, the claimed plant part and cells lack adequate written description.
Conclusion
8. No claim is allowable. The “cell” is understood by the Office to be a regenerable cell. The claims are free of the prior art. The closest prior art teaches pepper line HHY-FD-1186 which shares at least 34 morphological and physiological characteristics (+/- 10% std. dev.) with hybrid SVPS7935, including basal branches, leaf length, leaf and stem pubescence, calyx lobes, petals, corolla color, corolla throat markings, anther color, fruit attitude, average fruit weight, fruit shape cross section, fruit color at maturity, pedicel shape, number of locules, seed cavity diameter, seed color and leaf anthocyanin (Berke, T., US Pub. No. 20160057957 (A), Table 1). However, at least their maturity days plant height, plant width, branch flexibility, mature leaf shape, flower diameter, style length, self-incompatibility, fruit group, fruit length, fruit diameter at mid-point, average number of fruits per plant, fruit set, fruit pungency, fruit flavor and seed cavity length differ.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHUONG T BUI whose telephone number is (571)272-0793. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham can be reached on 571-270-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHUONG T BUI/Primary Examiner, Art Unit 1663
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