www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/752,729
`
`01/27/2020
`
`Xingping Zhang
`
`60170-US-PX-D-NAT-1
`
`7149
`
`SYNGENTA CROP PROTECTION LLC
`PATENT DEPARTMENT
`PO BOX 12257
`9 DAVIS DRIVE
`
`RESEARCH TRIANGLE PARK, NC 27709-2257
`
`1662
`
`KUBELIK, ANNE R
`
`04/08/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`global.patents @syngenta.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-3 and 7 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-3and7 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210210
`
`Application No.
`Applicant(s)
`16/752,729
`Zhang etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ANNE R KUBELIK
`1662
`No
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 2/2/21 and 3/8/21.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/752,729
`Art Unit: 1662
`
`Page 2
`
`DETAILED ACTION
`
`1.
`
`A request for continued examination under 37 CFR 1.114, including the fee set forth in
`
`37 CFR 1.17(e), wasfiled in this application after final rejection. Since this application is
`
`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e)
`
`has been timely paid, the finality of the previous Office action has been withdrawn pursuantto
`
`37 CFR 1.114. Applicant's submission filed on 2 February 2021 has been entered.
`
`2.
`
`3.
`
`Claims 1-3 and 7 are pending.
`
`The present application is being examined underthe pre-AJAfirst to invent provisions.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of 35 U.S.C. 112(b):
`
`(B) CONCLUSION.—Thespecification shall conclude with one or more claimsparticularly pointing out and
`distinctly claiming the subject matter which the inventoror a joint inventor regards as the invention.
`
`The following is a quotation of the second paragraph of 35 U.S.C. 112:
`
`The specification shall conclude with one or more claimsparticularly pointing out and distinctly claiming the
`subject matter which the applicant regardsas his invention.
`
`4,
`
`Claims 1-3 and 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 that the inventor or a joint inventor, or for pre-AIA the applicant, regards as the invention.
`
`Dependentclaimsare includedin all rejections.
`
`The rejection is modified from the rejection set forth in the Office action mailed 2
`
`October 2020, as applied to claims 1-3. Applicant’s arguments filed 2 February 2021 have been
`
`fully considered but they are not persuasive.
`
`Claim 1 is indefinite in its recitation of
`
`ceth
`
`leaf from the smallest new leaf on a vine
`
`having a surface area, on average, 3 to 14 times smaller than the surface area of the 5" leaf from
`
`

`

`Application/Control Number: 16/752,729
`Art Unit: 1662
`
`Page 3
`
`watermelon variety Sangria and not more than 50 cm”, claim3is indefinite in its recitation of
`
`“wherein the surface area of said 5" leafis in the range of 15 cm? to 50 cm”, and claim 7 is
`
`indefinite in its recitation of “5 leaf from the smallest new leaf on a vine having a surfacearea 3
`
`to 14 times smaller than the surface area of the 5“ leaf from watermelon variety Sangria and not
`
`more than 50 cm”.
`
`Leaf area is affected by environmental conditions. The specification admits that on pg
`
`11, lines 30-31, where it says “Clearly, due to various environmental and physiological
`
`conditions, the size of the leaves of a watermelon plant may vary.” Further, the specification
`
`teaches that leaf surface area varies from plant to plant of the same variety grown side-by-side
`
`(tables 1A and D).
`
`Theart also teaches this;
`
`leaf area is affected by temperature, fruiting, daylength, and
`
`possibly light intensity (Buttrose et al, 1978, Ann. Bot. 42:599-608; see pg 602, paragraph 7; pg
`
`603, paragraphs 1-2; pg 604, paragraphs 1-5). Although Buttrose did not show theeffects of
`
`light intensity, daylength and temperature on the 5th leaf from the smallest new leaf on a vine,
`
`they did show that these affect the surface area of other leaves. For example, Buttrose shows
`
`that the width of the 4th leaf from the base of the main shootis affected by light intensity,
`
`daylength, and temperature (Figure 3). Leaf area is also affected by irrigation and stress (Hegde,
`
`1988, J. Agronomy and Crop Sci. 160:296-302; see paragraph spanning the columnson pg 299).
`
`Thus, at best, a 5" leaf having a specified surface area is a term thatis relative to a variety
`
`of conditions, and at worse is completely indefinite.
`
`Additionally, a 5th leaf with an average of 3 to 14 times smaller than the 5" leaf of
`
`Sangria meansthat at times the 5" leafof the diploid pollinizer will be larger than the 5" leaf of
`
`

`

`Application/Control Number: 16/752,729
`Art Unit: 1662
`
`Page 4
`
`Sangria. Sometimesa given plant will fall within the scope of the claims and sometimesit will
`
`not.
`
`Thus, one of ordinary skill in the art would not be reasonably apprised of the metes and
`
`bounds ofthe invention.
`
`Response to Arguments
`
`Applicant urges that Buttrose fails to disclose the alleged relationship between individual
`
`leaf surface area and environmental conditions for any leaf, let alone the 5th leaf from the
`
`smallest new leaf on a vine (response pg 9).
`
`This is not found persuasive because Buttrose teaches that after the 5“ leaf on the plant,
`
`leaves were larger with reduced light intensity (pg 602, paragraph 7).
`
`Applicant urges that Buttrose’s Figure 3 teachesthat there was no effect of light intensity
`
`or daylength on leaf width;
`
`thus Buttrose teachesthat there is no effect of environmental
`
`conditions on leaf width (response pg 9-10).
`
`This is not found persuasive. Buttrose indicates that leaf size and area are affected by
`
`environmental conditions. Buttrose states: “There was no clear effect on the first 4 or 5 leaves,
`
`but then a pattern wasestablished of larger leaves with reducedlight intensity” (pg 602,
`
`paragraph 7), “with continuouslight leaves were larger” (pg 603, paragraph 1), and “Leaf size at
`
`40 °C improved at higher nodal positions” (pg 603, paragraph 2), “Fruiting plants hadless leaf
`
`area” (pg 604, paragraph 2), “Fruiting had relatively large effects [on total leaf area] at 25 °C and
`
`35 °C” (g 604, paragraph 5), “Early Yates plants at the lower intensity had a greatertotal leaf
`
`area” (pg 607, paragraph 1), and “Compared with plants grown at 25 °C, those at 30 °C or 35 °C
`
`had ... larger leaves (pg 608, paragraph 2). Hegdealso teachesthat leaf area is affected by
`
`irrigation and stress (paragraph spanning the columnson pg 299). The specification on pg 11,
`
`

`

`Application/Control Number: 16/752,729
`Art Unit: 1662
`
`Page 5
`
`lines 30-31 also indicates that leaf size is affected by environmental conditions: “Clearly, due to
`
`various environmental and physiological conditions, the size of the leaves of a watermelon plant
`
`may vary.”
`
`Applicant urges that Buttrose does not disclose measuring leaf length, and Applicants can
`
`find no support for the Office’s assertion that it would be “reasonable to conclude”that leaf
`
`length would be affected by environmental conditions as well; based on the results of Buttrose,
`
`it would be reasonable to concludethat, like leaf width, there would be no effect of
`
`environmental conditions on leaf length (response pg 10).
`
`This is not found persuasive because Buttrose shows that both leaf width andleaf length
`
`are affected by environmental conditions, as detailed above. It is reasonable to concludethatleaf
`
`length would also be so affected.
`
`Applicant urges that not only doesthe cited art fail to disclose environmental conditions
`
`that would affect leaf length or leaf width, it also fails to explicitly disclose an environmental
`
`condition that would affect the surface area of a 5th leaf from the smallest new leaf on a vine
`
`(response pg 10).
`
`This is not found persuasive because the cited art does disclose environmental conditions
`
`that affect leaf length or leaf width, as discussed above. One of ordinary skill in the art would
`
`not expect the 5th leaf from the smallest new leaf on a vine to be an exceptionto that.
`
`Applicant urges that claim 1 does not merely recite that a 5th leaf from the smallest new
`
`leaf on a vine is measured;
`
`the claims go on to specify the surface area in absolute terms as well
`
`as relative to the size of a similar leaf harvested from the control watermelon variety (Sangria)
`
`grown underthe same conditions (response pg 10).
`
`

`

`Application/Control Number: 16/752,729
`Art Unit: 1662
`
`Page 6
`
`This is not found persuasive because the surface area in absolute termsis affected by
`
`environmental conditions. Thus, a given plant would be encompassedbythe claims when grown
`
`under some environmental conditions and not under others. A plant only showing the claimed
`
`characteristic some of the time makes the claim indefinite. Can such a plant only be used in the
`
`method whenit is showing the claimed phenotype evenif it has whatever the NO1F3203B
`
`genotypeis that confers the trait?
`
`Applicant urges that the specification includes data that not only supports the absolute
`
`and relative values recited in the claims (see Tables 1A and ID for example), but also provides
`
`details regarding the equipment, methodology and software used for the leaf surface area
`
`measurement (response pg 10).
`
`This is not found persuasive. Tables 1A and 1D do not support the absolute and relative
`
`values recited in the claims. For example, comparison of individual leaves in Table 1A provides
`
`differences ranging from 5.31 (Sangria leaf E / NO1F3203B leaf C) to 17.04 (Sangria leaf B /
`
`NO1F3203B leaf B).
`
`.
`
`Applicant urges that the recited traits can be reliably used by oneofskill in the art
`
`(typically a plant breeder) to identify and distinguish the watermelon plant used in the method of
`
`claim 1 from other watermelon plants, even under different environmental conditions, supported
`
`by the Kinkade Declaration filed on July 28, 2020 (response pg 11).
`
`This is not found persuasive because Applicant has presented no evidence ofthat; for
`
`example, there has been no data presented that the claimed phenotype is maintained under a wide
`
`range of environmental conditions.
`
`Applicant urges that MPEP 716.01(c) indicates that opinion testimonyis entitled to
`
`consideration (response pg 11).
`
`

`

`Application/Control Number: 16/752,729
`Art Unit: 1662
`
`Page 7
`
`This is not found persuasive. Given the opinion contradicts published evidence ofthe
`
`effects of a number of environmental conditions on leaf size and area as well as contradicting the
`
`statementin the specification that “due to various environmental and physiological conditions,
`
`the size of the leaves of a watermelon plant may vary”, more than opinion mustbe presented.
`
`The following is a quotation of 35 U.S.C. 112(a):
`
`(a) INGENERAL.—Thespecification shall contain a written description of the invention, and of the manner and
`process of making and usingit, in such full, clear, concise, and exact terms as to enable any personskilled 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 35 U.S.C. 112 (pre-AJA), first paragraph:
`
`The specification shall contain a written description of the invention, and of the manner and process of making
`and usingit, 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 shallset forth the best mode
`contemplated by the inventor of carrying out his invention.
`
`5.
`
`Claims 1-3 and 7 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 relevantart that the inventor or a joint inventor, or for pre-AIA the
`
`inventor(s), at the time the application wasfiled, had possession of the claimed invention.
`
`Neither the instant specification northe originally filed claims appear to provide support
`
`for the phrases “a 5th leaf from the smallest new leaf on a vine having a surface area, on average,
`
`3 to 14 times smaller than the surface area of the 5th leaf from watermelon variety Sangria” in
`
`claim 1 and “a 5th leaf from the smallest new leaf on a vine having a surface area 3 to 14 times
`
`smaller than the surface area of the 5th leaf from watermelon variety Sangria” in claim 7. These
`
`phrases were introduced in the amendmentfiled 28 July 2020.
`
`The following statements regarding leaf size are madein the specification:
`
`

`

`Application/Control Number: 16/752,729
`Art Unit: 1662
`
`Page 8
`
`“The leaves of the enhanced pollenizer are significantly smaller and are more numerous
`
`than that of the commonly used pollenizers such as the variety SANGRIA”(pg 10, lines 22-23).
`
`“Tn one embodiment, the surface area of the 5th leaf from the smallest new leaf on a vine
`
`of an enhanced pollenizer of the present invention is not more than about 50 cm”. In one
`
`embodiment, the surface area of the 5th leaf from the smallest new leaf on a vine of an enhanced
`
`pollenizer of the instant invention is approximately in the range of about 15 cm?to about 50
`
`cm?.” (pg 11, lines 7-12)
`
`“In one embodiment, the average leaf surface area of leaves of an enhanced pollenizer of
`
`the present invention is about 3 to about 14 times smaller than that of watermelon variety
`
`SANGRIA”(pg 6, lines 6-8).
`
`While there is support for leaf surface area being about 3 to about 14 times smaller than
`
`that of Sangria, nowhere doesthe specification link the 5th leaf from the smallest new leaf on a
`
`vine to its having a surface area 3 to 14 times smaller than Sangria. On pg6, lines 6-8 the
`
`surface area being 3 to 14 times smaller than Sangria refers to the average leaf surface area of all
`
`leaves. Further the discussion in the specification of the 5th leaf from the smallest new leaf on a
`
`vine relates only to its surface area in cm?, as seen in pg 10, lines 22-23, and pg 11, lines 7-12.
`
`Further, the data in Tables 1A and 1D, which comparedthe surface area of the 5th leaf
`
`from the smallest new leaf on a vine from NO1F3203B to that Sangria, do not provide support
`
`for these limitations.
`
`In Table 1A,the ratio of the average surface area of the 6 NO1F3203B leavesto that of
`
`the 5 Sangria leaves is 8.29, which does not provide support for the claimed 3-14 timesrange.
`
`Comparison of individual leaves provides differences ranging from 5.31 (Sangria leaf E /
`
`

`

`Application/Control Number: 16/752,729
`Art Unit: 1662
`
`Page 9
`
`NO1F3203B leaf C) to 17.04 (Sangria leaf B / NO1F3203B leaf B), which also does not provide
`
`support for the claimed 3-14 times range.
`
`In Table 1D, the ratio of the average surface area of the 5 NO1F3203B leavesto that of
`
`the 5 Sangria leaves is 4.62, which does not provide support for the claimed 3-14 timesrange.
`
`Comparison of individual leaves provides ratios ranging from 2.92 (Sangria leaf sg6-2 /
`
`NO1F3203B sp6-5) to 8.13 (Sangria leaf sg6-4 / NO1F3203B sp6-1), which also does not
`
`provide support for the claimed 3-14 times range.
`
`Thus, there is no support the recited phrases, and such phrases constitute NEW
`
`MATTER.In responseto this rejection, Applicant is required to point to support for the phrases
`
`or to cancel the new matter.
`
`6.
`
`Claims 1-3 and 7 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 relevantart that the inventor or a joint inventor, or for pre-AIA the
`
`inventor(s), at the time the application wasfiled, had possession of the claimed invention.
`
`The rejection is modified from the rejection set forth in the Office action mailed 2
`
`October 2020, as applied to claims 1-3. Applicant’s arguments filed 2 February 2021 have been
`
`fully considered but they are not persuasive.
`
`A. Thestructural features that confer small leaf are not described.
`
`Claim 1 requires a watermelon plant with a 5" leaf from the smallest new leaf on a vine
`
`having a surface area, on average, 3 to 14 times smaller than the surface area of the 5" leaf from
`
`watermelon variety Sangria and not more than 50 cm”, claim 7 requires a watermelonplant with
`
`

`

`Application/Control Number: 16/752,729
`Art Unit: 1662
`
`Page 10
`
`a 5" Jeaf from the smallest new leaf on a vine having a surface area, on average, 3 to 14 times
`
`smaller than the surface area of the 5" leaf from watermelon variety Sangria and not more than
`
`50 cm”, and claim 3 requiresthat the 5th leaf has a surface area in the range of 15 cm? to 50 cm”.
`
`The specification does not describe the structural features that confer these particular leaf
`
`phenotypes.
`
`Leaf area is affected by environmental conditions. The specification admits this on pg
`
`11, lines 30-31, where it says “Clearly, due to various environmental and physiological
`
`conditions, the size of the leaves of a watermelon plant may vary.” Further, the specification
`
`shows that surface area of the 5th leaf from the smallest new leaf even varies from plant to plant
`
`of the same variety grown side-by-side (Tables 1A and D).
`
`In Table 1A,the ratio of the average surface area of the 6 NO1F3203B leavesto that of
`
`the 5 Sangria leaves is 8.29, and comparison ofindividual leaves provides differences ranging
`
`from 5.31 (Sangria leaf E / NO1F3203B leaf C) to 17.04 (Sangria leaf B / NO1F3203B leaf B).
`
`In Table 1D, the ratio of the average surface area of the 5 NO1F3203B leavesto that of the 5
`
`Sangria leaves is 4.62, and comparison of individual leaves providesratios ranging from 2.92
`
`(Sangria leaf sg6-2 / NO1F3203B sp6-5) to 8.13 (Sangria leaf sg6-4 / NO1F3203B sp6-1).
`
`These data in Tables 1A and 1D also show thatratios outside the claimed 3-14 times range
`
`occur, even within the sameplant.
`
`Theart also teaches this. Leaf area is affected by temperature,fruiting, day length, and
`
`possibly light intensity (Buttrose et al, 1978, Ann. Bot. 42:599-608; see pg 604, paragraphs 2-5).
`
`Leafarea is also affected by irrigation and stress (Hegde, 1988, J. Agronomy and Crop Sci.
`
`160:296-302; see paragraph spanning the columns on pg 299)
`
`

`

`Application/Control Number: 16/752,729
`Art Unit: 1662
`
`Page 11
`
`The specification only describes one species, NO1F3203B, appearing to fall within the
`
`scope of the claims.
`
`Becausethe phenotypic manifestations of the gene(s) that confer this phenotype are
`
`affected by environment, the gene(s) (i.e., structures) that confer this phenotype must be
`
`described. They are not. The structural features that distinguish watermelon plants with the
`
`gene(s) that confer this small 5"leaftrait from other watermelonplantsare not described in the
`
`specification.
`
`Therefore, given the lack of written description in the specification with regard to the
`
`structural and functional characteristics of the compositions used in the claimed methods,
`
`Applicant does not appear to have been in possession of the claimed genus at the time this
`
`application wasfiled.
`
`Response to Arguments
`
`Applicant urges that the MPEPindicates that a deposit of inventive seeds may
`
`supplementthe disclosure in the specification to provide an adequate written description of the
`
`invention and to enable those skilled in the art to make and use the claimed invention (response
`
`pg 12).
`
`This is not found persuasive because the methodis not limited to use of the deposited
`
`seed or plant. Further, this is not an enablementrejection.
`
`Applicant urges that in a pre-brief Appeal conference in 15/489,704 the panel reversed
`
`and withdrew the Examiner’s written description rejection of the claims directed to a New
`
`Guinea Impatiens plant obtained by breeding a plant grown fromarecited seed deposit number
`
`and selecting for a desired phenotype and methods of producing such plants (response pg 12).
`
`

`

`Application/Control Number: 16/752,729
`Art Unit: 1662
`
`Page 12
`
`This is not found persuasive because the fact pattern in each caseis different. For
`
`example, the fact pattern in the instant caseis that in its parent 12/360,991 the Board affirmed
`
`the written description rejection for the issue detailed in the rejection above.
`
`Whether or not environmental influence is present, the Kinkade declaration indicates that
`
`the phenotypic traits are sufficient to enable a plant breederto reliably perform the claimed
`
`method (response pg 12-13).
`
`This is not found persuasivethis is not an enablementrejection; this is a written
`
`description rejection made becausethestarting material is not sufficiently described.
`
`Applicant urges that in view of the teaching of Buttrose, the Office fails to provide
`
`support for the alleged environmental influence on leaf surface area (response pg 13).
`
`This is not found persuasive. Buttrose shows that leaf area is affected by temperature,
`
`fruiting, daylength, and possibly light intensity (pg 602, paragraph 7; pg 603, paragraphs 1-2;
`
`pg 604, paragraphs 1-5) and Hegde shows thatleaf area is affected by irrigation and stress
`
`(paragraph spanning the columnson pg 299). Thus, support is provided for environmental
`
`influence on leaf surface area.
`
`Applicant urges that the recited seed deposit may supplementthe disclosure in the
`
`specification to provide an adequate written description of the invention (response pg 13).
`
`This is not found persuasive because NO1F3203B is not necessarily the plant being used
`
`in the method. A broad genus of plant is encompassed, and NO1F3203B doesnotrepresent the
`
`full scope of that genus.
`
`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
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`

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`Application/Control Number: 16/752,729
`Art Unit: 1662
`
`Page 13
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`improper timewise extension ofthe “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 claimsare not identical, but at least one examined application claim is not
`patentably distinct from the reference claim(s) because the examinedapplication 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
`examinedapplication, or claims an invention madeasa result of activities undertaken within the
`scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination
`underthe first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §
`2146 et seq. for applications not subject to examination underthe first inventorto file provisions
`of the AJA.A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
`The USPTOInternet website contains terminal disclaimer forms which maybeused.
`Please visit www.uspto.gov/patent/patents-forms. Thefiling 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 befilled 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/process/file/efs/guidance/eTD-info-Ljsp.
`
`7.
`
`Claims 1-3 and 7 are rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claims 1-5 of U.S. Patent No. 7,528,298. Although the claimsat issue are not
`
`identical, they are not patentably distinct from each other.
`
`The claims of ‘873 are drawn to watermelonplant that has the 5leaf from the smallest
`
`new leaf on a vine with a surface area of 15 cm” to 50 cm’ andthe e gene, where the plantis a
`
`produced by crossing NO1F3203B with another plant. The instant claims specify that
`
`NO1F3203Binherently has a 5“ leaf from the smallest new leaf on a vine whoseareais 3-14
`
`times less than that of Sangria and a surface area less than 50 cm’. Thus, the claims of ‘873
`
`teach a species of a watermelonplant with gene e and a 5"leaf from the smallest new leaf on a
`
`vine that is 3-14 times small than that of Sangria and with a surface area less than 50 cm”.
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`

`

`Application/Control Number: 16/752,729
`Art Unit: 1662
`
`Page 14
`
`It would be obvious to one of ordinary skill in the art to generate more seeds of the
`
`claimed plant by growingthe plant, allowingit to self-pollinate, harvest the seeds, then dry them.
`
`Oneofordinary skill in the art would do so to have seedsto sale or to have sufficient seed for
`
`planting in fields so the claimed plant can be used as a male pollinator in triploid watermelon
`
`production.
`
`Thus, the claims of ‘873 make obviousthe instantly claimed method comprising growing
`
`watermelon plant with gene e and a 5"leaf from the smallest new leaf on a vinethat is 3-14
`
`times small than that of Sangria and with a surface area less than 50 cm’, allowingit to self-
`
`pollinate, harvest the seeds, then dry them.
`
`8.
`
`Claims 1-3 and 7 are rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claims 1-2 and 17-18 of U.S. Patent No. 6,759,576. Although the claimsat
`
`issue are not identical, they are not patentably distinct from each other.
`
`The claims of ‘576 are drawn to watermelon variety NO1F3203B and a method
`
`comprising growing it in a field, conducting pollination of the plant, harvesting seed from it, and
`
`drying the seed. The instant claims specify that NO1F3203B inherently has a 5" leaf from the
`
`smallest new leaf on a vine whoseareais 3-14 times less than that of Sangria and a surface area
`
`less than 50 cm”. NO1F3203B inherently has the e gene (‘576, column5, lines 33-42).
`
`It would be obvious to one of ordinary skill in the art to generate more seeds of
`
`NO1F3203B by growing the plant, allowingit to self-pollinate, harvest the seeds, then dry them.
`
`Oneofordinary skill in the art would do so to have seedsto sale or to have sufficient seed for
`
`planting in fields so NO1F3203B can be used as a male pollinator in triploid watermelon
`
`production.
`
`

`

`Application/Control Number: 16/752,729
`Art Unit: 1662
`
`Page 15
`
`Thus, the claims of ‘576 make obviousthe instantly claimed method comprising growing
`
`watermelon plant with gene e and a 5"leaf from the smallest new leaf on a vinethat is 3-14
`
`times small than that of Sangria and with a surface area less than 50 cm’, allowingit to self-
`
`pollinate, harvest the seeds, then dry them.
`
`9.
`
`No claim is allowed.
`
`Conclusion
`
`Anyinquiry concerning this communication or earlier communications from the
`10.
`examiner should be directed to Anne R. Kubelik, Ph.D., whose telephone numberis (571) 272-
`0801. The examiner can normally be reached Mondaythrough Friday, 9:30 am - 6:00 pm
`Eastern.
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`supervisor, Shubo (Joe) Zhou, can be reached at (571) 272-0724. The fax phone numberfor the
`organization wherethis application or proceeding is assigned is 571-273-8300.
`Examinerinterviews are available via telephone, in-person, and video conferencing using
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicantis
`encouraged to use the USPTO Automated Interview Request (AIR) at
`http://www.uspto.gov/interviewpractice.
`Information regarding the status of an application may be obtained from the Patent
`Application Information Retrieval (PAIR) system. Status information for published applications
`maybe obtained from either Private PAIR or Public PAIR. Status information for unpublished
`applications is available through Private PAIR only. For more information about the PAIR
`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would
`like assistance from a USPTO Customer Service Representative or access to the automated
`information system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/Anne Kubelik/
`Primary Examiner, Art Unit 1662
`
`