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
The Office acknowledges the receipt of Applicant’s restriction election filed July 21, 2026. Applicant elects Group II, claim(s) 2, 4-6. Because no traverse is presented without traverse.
Claim Status
Claims 2, and 4-6 are pending. Claim 1 is withdrawn as a result of Restriction Requirement. Claims 2, and 4-6 are currently amended. Claims 3, 7, and 8 are currently canceled. Claims 2, and 4-6 are examined on the merits.
Claim Rejections - 35 USC § 101
35 U.S.C. § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may obtain a
patent therefor, subject to the conditions and requirements of this title.
Claim 2 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without reciting additional elements sufficient to integrated the judicial exception into a practical application or amount to significantly more than the judicial exception.
Step1: Statutory category
Claim 2 is directed to a method and therefore falls within the statutory category of a process.
Step 2A, Prong One: Judicial exception
Claim 2 recites an abstract idea in the form of a mental process, namely, evaluating molecular-marker information and selecting a grape seedling based on a correlation between particular marker banding patterns and the phenotypic traits of red flesh and seedlessness.
Specifically, claim 2 recites determining the amplification banding patterns of molecular marker R1 and S1 and selecting a grape variety based on whether the determined banding patterns includes: a) a double band of 638bp and 638+408n bp for molecular marker R1; and b) a 214-bp band for molecular marker S1.
These limitations require observation and evaluation of the obtained banding information, followed by the judgment that a grape seedling having the recited marker pattern is associated with red flesh and seedlessness. Such observation, evaluation, and judgement constitute concepts that can be performed in the human mind after the assay results are obtained and therefore fall within the mental-process grouping of abstract ideas.
The claim also relies on the correlation between the recited R1 and S1 marker patterns and the naturally occurring phenotypic traits of red flesh and seedlessness. The claim does not require that the marker sequences cause the traits, but instead uses the detected marker patterns as information predictive of those traits.
Accordingly, claim 2 recites a judicial exception under Step 2A, Prong One.
Step 2A, prong Two
The additional elements include: a) extracting DNA from young tissues of grape hybrid seedlings; b) amplifying molecular marker S1 using the primer pair of SEQ ID NO: 5 and 6; c) amplifying molecular marker R1 using the primer pair of SEQ ID NO: 7 and 8; and d) determining the resulting amplification banding patterns.
Considered individually and in combination, these additional limitations do not integrate the abstract idea into a practical application.
The extracting and amplifying steps merely obtain the genetic information that is subsequently evaluated according to the recited marker-phenotype correlations. The claim does not require using the selected seedling in a breeding cross, growing the selected seedling to produce a grape plant or fruit, propagating the selected seedling, or otherwise applying the marker determination to produce or alter a physical breeding results.
Although the preamble characterizes the claim as a “method for breeding a grape variety”, the positively recited steps end with selecting a grape variety based on marker information. The body of the claim does not require an actual breeding, crossing, cultivation, or production step. Thus, the preamble does not convert the claimed screening and evaluation method into a practical breeding application.
The recitation of particular grape seedlings, primer sequences, molecular markers, and band sizes merely limits the abstract evaluation to a particular field of use and particular data. Such limitations do not, by themselves, impose a meaningful limit on the judicial exception. Nor does the clam recite an improvement to PCR, molecular-marker technology, gel electrophoresis, or another technical field. The claim uses these laboratory techniques as tools for obtaining the information upon which the abstract evaluation and selection and based.
Therefore, claim 2 as a whole does not integrate the judicial exception into a practical application and is directed to the judicial exception under Step 2A.
Step 2B: No significantly more
The claim is next evaluated to determine whether the additional elements, individually or as an ordered combination, amount to significantly more than the judicial exception.
The additional elements of extracting DNA, amplifying molecular markers using primers, and determining amplification bands amount to conventional laboratory activities used to obtain and display genetic-marker information. The claim does not recite a nonconventional DNA extraction technique, improved amplification method, unconventional promoter operation, improved deletion apparatus, or other technological feature that transforms the nature of the claim.
The recitation of specific printers, marker sequence, and expected ban size defined the information being obtained and evaluated but does not add an inventive concept separate from the marker-phenotype correlation itself. When considered as an ordered combination, the claim merely instructs one to obtain molecular-marker data using PCR, review the resulting bands, and select a seedling based on the recited correlation.
Accordingly, the additional element does not amount to significantly more than the judicial exception.
Claim 2 is therefore directed to the abstract idea of evaluating molecular-marker information and selecting a grape seedling based on marker-phenotype correlations, without additional elements that integrate the exception into a practical application or provide significantly more than the exception.
Conclusion
No claims are allowed.
Claim 2 is rejected.
Claims 4-6 are objected to as being dependent upon rejected base claims.
Röckel (Franco Röckel et. al., Genes (2020)11, 891, pp1-20) is considered the closest prior art identified. Röckel teaches that the red-fleshed berry phenotype of Vitis vinifera teinturier grapes is associated with repeated copies of a 408-bp element in the promoter of the VvmybA1 gene. Röckel further teaches PCR amplification and sequence analysis of VvmybA1 promoter alleles containing two, three, or five copies of the 408-bp repeat and reports that the repeat number correlates with VvmybA1 expression and anthocyanin accumulation in grapes berry flesh.
However, Röckel does not teach or suggest amplifying the claimed R1 marker using the pair of SEQ ID NO: 7 and 8, obtaining the claimed double-band pattern of 638 bp and 638+408n bp, or selecting a grape seedling based on that specific banding pattern. Röckel also does not teach the claimed S1 seedlessness marker, the primer pair of SEQ ID NO: 5 and 6, the 214-bp amplification band, or the recited 70-bp deletion. Further, Röckel does not teach combining the R1 red-flesh marker and the S1 seedlessness marker in a method for selecting a grape variety having both red flesh and seedlessness.
Therefore, although Röckel teaches the general association between repeated 408-bp promoter elements and the red-fleshed grape phenotype, the search did not identify prior art disclosing or suggesting the particular combination of marker sequences, primer pairs, amplification products, and dual-trait selection rejected in the claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANXIN SHEN whose telephone number is (571)272-7538. The examiner can normally be reached Monday-Friday.
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/YANXIN SHEN/Examiner, Art Unit 1663
/WEIHUA FAN/ Primary Examiner, Art Unit 1663
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