DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application is being examined under the pre-AIA first to invent provisions.
Status of the Application
2. Claims 31-49, 51-53, 59-65, and 68-70 are pending.
3. Claims 31-49, 51-53, 59-65, and 68-70 are examined herein.
Continued Examination Under 37 CFR 1.114
4. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 16, 2026 has been entered.
Claim Rejections - 35 USC § 112 - New Matter
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 31-49, 51-53, 59-65, and 68-70 remain 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
This rejection has been modified in view of Applicant’s amendments to the claims. Applicant’s arguments submitted on March 16, 2026 were fully considered but they are not persuasive.
In previous claim amendments, Applicant added the recitation to claims 31, 35, 42, and 46 requiring that the recited rice plant and seed comprise an ACCase with a substitution at relative position 1,781, wherein said substitution is with “valine or threonine” and wherein the plant and seed is resistant to herbicides, including cycloxydim, as recited in claim 31, or other herbicides recited in claims 38, 39, 44, 45, 48-50, and 51-53. The claim amendments included a method of using said plant or seed. In the instant amendments. Applicant removed the term “threonine” from the above recitation and canceled claims 55-58 that recited only the threonine substitution. The amended claims continue to contain New Matter.
Applicant previously cited paragraphs 0004, 0005, 0007, 0009.0011, 0015-0016, 0096, 0106, and 0117, Figure 7, and originally filed claims for support (see page 10 of the Remarks filed on June 25, 2018, for example).
The cited paragraphs recite, in a large list of alternative embodiments, ACCases comprising a valine, alanine or threonine at position 1,781, and a rice plant comprising said ACCase. The specification also recites an extensive list of ACCase inhibitor herbicides, to which the various plants of the invention may be tolerant to. However, this is not sufficient to provide written support for the specific embodiments encompassed by the claims.
For example, there is no express or implied description of the specific herbicides to which the valine substitution at position 1,781 of the ACCase would confer tolerance. Solely from the extensive lists of ACCase mutants and various ACCase herbicides, it would be impossible for one of ordinary skill in the art to envision which substitution confers tolerance to which herbicide. Said description is also missing from the claims as originally filed. See, e.g., Fujikawa v. Wattanasin, 93 F.3d 1559, 1571, 39 USPQ2d 1895, 1905 (Fed. Cir. 1996) (a “laundry list” disclosure of every possible moiety does not necessarily constitute a written description of every species in a genus because it would not “reasonably lead” those skilled in the art to any particular species). MPEP 2163.
In addition, there is no literal or implied written support, either in the Applicant-cited portions of the specification or elsewhere in the disclosure or the originally filed claims, for a method of using a plant or a seed of said plant, comprising one of said substitutions at position 1,781 in a method of weed control. Given that there is no description of the ACCase inhibitor herbicides to which the valine substitution confers tolerance in a rice plant, one of ordinary skill in the art would not be able to envision said methods of using said plant or seed (see instant claims 42-49).
Moreover, the specification fails to provide written support for a rice plant comprising a valine at position 1,781 of the ACCase, wherein the plant is “non-genetically engineered” and said ACCase is “non-genetically engineered, mutagenized” and has “a sequence obtained by an induced, random mutagenesis.” Although the specification recites numerous alternative embodiments for the mutant ACCases and the rice plants, it fails to adequately lead one of skill in the art to the rice plant comprising the specific characteristics recited in the amended claims 31, 35, 42, and 46. For these reasons, the claims contain New Matter and fail to meet the written description requirement. The claims dependent from claims 31, 35, 42, and 46 also contain New Matter and are thus included in the rejection as well.
It is noted that the specification does adequately describe several mutant ACCase genes and rice plants comprising said genes, as well as herbicide tolerance profile of said plants. However, the described ACCases are limited to those comprising a leucine substitution at position 1,781 (see Examples 1-7).
Response to Arguments
Applicant argues that the specification describes the leucine substitution at position 1,781, it therefore also describes the valine, because the two are “highly homologous … with respect to properties/profile” and that “the skilled person would reasonably conclude that the data for the I1781L substitution in the specification’s Examples are largely predictive for I1781V” (page 7 of the Remarks). Applicant also reiterates the argument that the amendments are supported by the specification and originally filed claims (page 7).
Applicant’s argument is not found to be persuasive. The fact that valine and leucine are structurally and chemically similar amino acids - both are hydrophobic and nonpolar - is not sufficient to provide description for the valine mutant as these are still distinct amino acids. As evidenced by the well-known isoleucine to leucine ACCase substitution at position 1,781, even a change between two related amino acids could have a significant biochemical and physiological effect.
The Examiner also maintains that neither the original claims nor the specification, including the portions cited in the instant and previous Remarks, provide written support for a non-genetically engineered rice plant comprising a valine substitution at the relative position 1,781 and a specific phenotype of tolerance. Nor do they provide written support for using said plant in a method of weed control. For example, the original claims, filed on December 22, 2015 are entirely silent with regard to a valine substitution in a rice ACCase.
Claim Rejections - 35 USC § 112 - Fourth Paragraph
7. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
8. Claims 32, 36, 43-45, 47-49, and 51-53 remain rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claims upon which they depend, or for failing to include all the limitations of the claims upon which they depend.
Applicant’s argument submitted on March 16, 2026 was fully considered but it is not persuasive.
The claims are drawn to the rice plant of claim 31, rice seed of claim 35, or the methods of claims 42 or 46, but merely specify the phenotype of the rice plant comprising the mutagenized ACCase, which phenotype is present in the plant or seed of the base claims. For example, the phenotype of tolerance to cycloxydim, recited in claim 31, will also encompass tolerance to at least one additional ACCase inhibitor as recited in claim 32 (see the rejection under 35 U.S.C. 103, below). In addition, as to claims 36, 43-45, and 47-53, the tolerance to “one or more ACCase-inhibiting herbicide” is expressly recited in the base claim. Claims 32, 36, 43-45, and 47-53, thus, do not introduce any further structural limitations to said plant or seed, or to the active steps of the methods, and for this reason fail to further limit the claims from which they depend.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Arguments
Applicant argues that the phenotype of herbicide tolerance structurally limits the claimed plant and cites PTAB Decision 2025-003055 for support (page 8 of the Remarks).
Applicant’s argument is not persuasive. The cited decision reflects the facts of a specific application drawn to a different invention. Applicant has provided no explanation as to how the facts of said unrelated application could be applied to the instant scenario. Nor has Applicant supplied any evidence that the cited decision is precedential legal authority.
Claim Interpretation
9. The following is noted with regard to claim interpretation. The recitation “non-genetically engineered, mutagenized rice acetyl-Coenzyme A carboxylase (ACCase nucleic acid,” in claims 31, 35, 42, and 46, is read as a product-by-process limitation that does not limit the structure of said nucleic acid, wherein said structure is determined by the presence of the recited mutation that results in the substitution at the relative position 1,781 of the enzyme. See MPEP 2113.
With regard to the recitation “comprising … upon expressing said ACCase, a phenotype of increased ACCase-inhibiting herbicide tolerance as compared to a corresponding wild-type plant,” it is given its broadest reasonable interpretation as encompassing any ACCase inhibiting herbicide and any level of tolerance to said herbicide, so long as said level is higher than that of the wild-type plant. Similarly, the limitation “tolerance to cycloxydim” encompasses any level of tolerance under any conditions.
Claim Rejections - 35 USC § 103
10. The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
11. Claims 31-36, 40-45, 51-53, 59, 60, 65, 68, and 69 remain rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Raymer et al (US Patent Publication 2010/0048405, published on February 25, 2010, filed on June 19, 2009), Delye et al (Weed Res. (2005) 45:323-330), Suzuki et al (Mol. Genet. Genomics (2008) 279:213-223), Hawkes et al (PCT Publication WO 98/54330, published December 3, 1998), Okuzaki et al (Plant Cell Rep. (2004) 22:509-512), and Collavo (PhD Thesis, University of Padova, January 2008).
The rejection has been modified in view of Applicant’s amendments to the claims. Applicant's arguments submitted on March 16, 2026 have been fully considered but they are not persuasive.
The claims are directed to a non-genetically engineered rice plant comprising a mutagenized rice ACCase nucleic acid encoding a mutagenized rice plastidic ACCase having a substitution at position 1,781 (in the Alopecurus myosuroides numbering) with a valine, and comprising a phenotype of increased tolerance to ACCase inhibiting herbicides, wherein said plant has tolerance to 100 g ai/ha cycloxydim. The claims are drawn to a method for controlling weeds and to a rice plant, further comprising residue from an herbicide composition.
Raymer et al teach plants comprising nucleic acid and amino acid sequences of plastidic ACCases that comprise a valine or an alanine substitution at position 1,781, said substitutions conferring resistance to ACCase inhibitors, including wherein said plants are non-transgenic (paragraphs 0078-0080 on pg. 8; Table C on pg. 8; see also paragraph 0005 on pg. 1; claims 1-8 and 11). Raymer et al teach that an isoleucine to leucine substitution at position 1,781 confers resistance to herbicides (paragraph 0008, 0015, 0079, and 0091, for example).
Raymer et al teach a method of controlling weeds in the vicinity of a herbicide resistant plant comprising said mutant ACCase, said method comprising contacting the herbicide resistant plant with an ACCase inhibitor herbicide (paragraphs 0016-0018 on pg. 2; see also claims 16-31). Raymer et al teach said method wherein the herbicide is selected from alloxydim, butroxydim, cloproxydim, sethoxydim, chlorazifop, clodinafop, dichlofop, and pinoxaden, among various others identified by trade and chemical names (paragraph 0019 on pg. 2; Table E on pg. 9; paragraphs 0087-0088 on pg. 10; claims 21 and 24). Raymer et al teach using a surfactant in herbicidal compositions (Example 9; paragraph 0131).
Raymer et al teach that mutations at I1,781 “can include, but not limited to leucine, alanine, valine, cysteine, aspartic acid, glycine, arginine, and glutamic acid” (paragraph 0079; Table C).
Raymer et al do not expressly teach a rice plant comprising a mutagenized ACCase with a substitution at position 1,781, other than isoleucine to leucine, wherein said plants are tolerant to haloxyfop, cycloxydim and tepraloxydim.
Delye et al teach that in chloroplastic ACCases from grasses, the domain encompassing position 1,781 (including the I1,781 in sensitive ACCases) is highly conserved, and teach that the leucine substitution confers herbicide resistance. Delye et al teach universal PCR primers for sequencing of grass chloroplastic ACCases (Abstract; Fig. 2 on pg. 327).
Collavo teaches that in Phalaris paradoxa, the presence of a valine at position 1,781 of the plastidic ACCase conferred resistance to haloxyfop and cycloxydim; and that in Alopecurus myosuroides, the presence of leucine conferred resistance to tepraloxydim, among other CHDs and APPs (Table II on page 22; paragraph spanning pages 41 and 42). Collavo teaches using surfactants in herbicidal mixtures (pages 40 and 57).
Suzuki et al teach using high-performance modified Targeting Induced Local Lesions in Genomes (“TILLING”) on rice mutant pools as an efficient method of identifying any gene mutation in rice (Suzuki et al, pg. 1, Abstract; pg. 214, left and top of right col.).
Hawkes et al teach a chimeric oligonucleotide-based method of producing herbicide resistant plants by modifying in a plant cell, in situ, an endogenous gene responsible for herbicide resistance, including the ACCase gene (Hawkes et al, claims 1, 6, 8). Hawkes et al teach applying said method to rice (Hawkes et al, claim 16). Hawkes et al teach using the resultant plants in a method of controlling weeds, which comprises applying to the field where said plants are growing a herbicide to which said plants have been rendered resistant (Hawkes et al, claims 18 and 19).
Okuzaki et al teach successfully using the method of chimeric oligonucleotide-based site-specific mutagenesis method to introduce herbicide resistance-conferring point mutations into rice genome (Okuzaki et al, Abstract; pg. 512, left col.). Okuzaki et al teach that the “[chimeric oligonucleotide]-directed gene targeting is feasible in rice and creates opportunities for ... the manipulation of agricultural traits in rice” (pg. 512, left col.).
At the time the invention was made, it would have been prima facie obvious to one having ordinary skill in the art to use the mutagenesis methods of Suzuki et al or Hawkes et al to modify a rice plant (or its seeds) by introducing a valine substitution taught by Raymer et al and Collavo, in position 1,781 of a plastidic ACCase gene of said rice plant. It would have been obvious to apply said method to any rice ACCase including any ACCase isolated using the method and the sequence information of Delye et al. The resultant plants obtained using the mutagenesis methods of Hawkes et al or Suzuki et al would be considered non-transgenic.
It would have been prima facie obvious to use the resultant plants or seeds in a method of weed control using the steps and herbicides taught by Hawkes et al and Raymer et al, including wherein the weed is a grass weed. It would have been also obvious to use any of the standard cyclohexanedione or aryloxyphenoxypropanoate herbicides, such as, for example, fenoxaprop taught by Raymer et al. The resultant plant used in said method would comprise at least some herbicide composition on its surface. Similarly, using an “auxiliary” such as a surfactant, in an herbicidal composition is routine in the art, and would have also been obvious in view of express teachings of Raymer et al and Collavo (claims 68 and 69).
The property of herbicide tolerance, including resistance to haloxyfop, cycloxydim, and tepraloxydim, would have been a property naturally flowing from the structure of the resultant plants. “The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Moreover, in view of the teachings of Raymer et al and Collavo, that property would not have been unexpected.
One would have been motivated to combine the above teachings, given the agronomic desirability of rice plants resistant to ACCase inhibitors, and particularly in view of the teachings of Delye et al and Collavo. Because Suzuki et al successfully applied their MNU-based TILLING method to rice, one would have had reasonable expectation of success in applying that method to rice. Similarly, given that Hawkes et al teach applying chimeric oligonucleotide-based mutagenesis to make herbicide-resistant rice comprising a mutant ACCase, and given that Okuzaki et al successfully confirmed the feasibility of such a method, one would have had a reasonable expectation of success.
12. Claims 37-39 and 46-49 remain rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Raymer et al (US Patent Publication 2010/0048405, published on February 25, 2010, filed on June 19, 2009), Delye et al (Weed Res. (2005) 45:323-330), Suzuki et al (Mol. Genet. Genomics (2008) 279:213-223), Hawkes et al (PCT Publication WO 98/54330, published December 3, 1998), Okuzaki et al (Plant Cell Rep. (2004) 22:509-512), and Collavo (PhD Thesis, University of Padova, January 2008), as applied to claims 31-36 and 42 above, and further in view of Shaner et al (US Patent 6,281,168, issued on August 28, 2001) and McCutchen et al (US Patent Publication 2007/0074303). Applicant's arguments filed on March 16, 2026 have been fully considered but they are not persuasive.
The claims are drawn to the rice seed of claim 35, further comprising a seed treatment which comprises a herbicidal composition, including wherein said composition comprising an aryloxyphenoxypropanoate or a cyclohexanedione herbicide. The claims are drawn to a method of controlling weeds using a rice seed treated with a herbicidal composition.
The teachings of Raymer et al, Delye et al, Okuzaki et al, Suzuki et al, Hawkes et al, and Collavo are set forth above. These references do not expressly teach a rice seed comprising a rice seed treatment, wherein the treatment comprises an herbicidal composition.
Shaner et al teach applying a mixture that comprises herbicidally effective amounts of an ACCase inhibitor to rice seeds (Shaner et al, claims 1, 2, 6, and 13).
McCutchen et al teach a method of pre-emergent weed control, comprising coating a seed with an effective amount of a herbicide or a combination of herbicides (paragraphs 0276-0277).
At the time the invention was made, it would have been prima facie obvious to modify the ACCase inhibitor resistant seeds and the method of controlling weeds made obvious by the teachings of Raymer et al, Delye et al, Okuzaki et al, Suzuki et al, Hawkes et al, and Collavo, and apply an ACCase inhibitor, such as those taught by Raymer et al or Collavo, to a said seeds as a treatment, as taught by Shaner et al, and to use said treated seeds in a method of weed control, as taught by McCutchen et al, with reasonable expectation of success. One would have been motivated to do so given the express teachings of McCutchen et al and Shaner et al.
13. Claims 61 and 62 remain rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Raymer et al (US Patent Publication 2010/0048405, published on February 25, 2010, filed on June 19, 2009), Delye et al (Weed Res. (2005) 45:323-330), Suzuki et al (Mol. Genet. Genomics (2008) 279:213-223), Hawkes et al (PCT Publication WO 98/54330, published December 3, 1998), Okuzaki et al (Plant Cell Rep. (2004) 22:509-512), and Collavo (PhD Thesis, University of Padova, January 2008), as applied to claims 31 and 42 above, and further in view of Pallett et al (US Patent 7,250,561, issued July 31, 2007). Applicant's arguments filed on March 16, 2026 have been fully considered but they are not persuasive.
The claims are drawn to the rice plant of claim 31 and the method of claim 42, wherein the rice plant comprises a trait of resistance to a bacterial, fungal or viral disease.
The teachings of Raymer et al, Delye et al, Suzuki et al, Okuzaki et al, and Collavo et al, are set forth above. In addition, Raymer et al teaches a method of plant breeding to combine ACCase inhibitor resistance with a disease, insect or pest resistance (paragraph 0105; claim 35).
The references do not expressly teach the trait of bacterial, fungal, or viral disease tolerance.
Pallett et al teach combining, in the same plant, a transgene conferring tolerance to an herbicide with a transgene conferring resistance to fungal or microbial diseases (col. 2, lines 49-60).
At the time the invention was made, it would have been prima facie obvious to one of ordinary skill in the art to modify the rice plant of claim 31 or the rice plant used in the method of claim 42, using the teachings of Pallett et al and introduce a trait of tolerance to a pathogen, including a bacterial or a fungal pathogen into said plant. One would have been motivated to do so to make the plant more agronomically advantageous, and in view of the express suggestion of Raymer et al and Pallett et al.
14. Claim 70 remains rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Raymer et al (US Patent Publication 2010/0048405, published on February 25, 2010, filed on June 19, 2009), Delye et al (Weed Res. (2005) 45:323-330), Suzuki et al (Mol. Genet. Genomics (2008) 279:213-223), Hawkes et al (PCT Publication WO 98/54330, published December 3, 1998), Okuzaki et al (Plant Cell Rep. (2004) 22:509-512), and Collavo (PhD Thesis, University of Padova, January 2008), as applied to claim 42, and further in view of Chen et al (US Patent Publication 2006/0276340). Applicant's arguments filed on March 16, 2026 have been fully considered but they are not persuasive.
The claim is drawn to the method of claim 42, wherein the herbicidal composition further comprises a thickener.
The teachings of Raymer et al, Delye et al, Suzuki et al, Okuzaki et al, and Collavo et al are set forth above. The references do not expressly teach using a thickener in an herbicidal composition.
Chen et al teach using thickeners, synthetic or natural, in a composition comprising an herbicide, including an ACCase inhibitor (paragraphs 0024, 0012-0017, claims 1-15).
At the time the invention was made, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of claim 42 using the teachings of Chen et al and apply an ACCase inhibitor to the herbicide tolerant plant in a composition comprising a thickener. One would have been motivated to do so given the teachings of Chen et al and as a standard industry practice, to modify the viscosity of the herbicidal composition when required by application conditions
Given the teachings of Chen et al and the routine nature of the methods involved, one would have had reasonable expectation of success.
Response to Arguments
Applicant reiterates the previously submitted arguments, including those directed to motivation, reasonable expectation of success, impermissible hindsight, and unexpected results (pages 8-9 of the Remarks). Applicant argues that the phenotype of herbicide tolerance structurally limits the claimed plant and cites PTAB Decision 2025-003055 for support (page 9 of the Remarks).
Applicant’s argument is not persuasive. The cited PTAB decision reflects the facts of a specific application drawn to a different, unrelated invention. Applicant has provided no explanation as to how the facts of said unrelated application could be applied to the instant scenario. Nor has Applicant supplied any evidence that the cited decision is precedential legal authority.
To the extent that the instant Remarks reiterate previously submitted arguments, those were considered in detail in the previous Office Action and remain not persuasive for the reasons of record. This includes all the evidence submitted in rebuttal, including the statements and data presented in the Declaration of Dr. Mankin, which was fully considered but found not sufficient to overcome the instant rejection.
Regarding the cited art being analogous, MPEP 2141.01(a) explains as follows: “A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art.” See In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
The Examiner has determined and maintains that the cited art, including Hawkes et al, Suzuki et al, and Okuzaki et al, is analogous under the above standard. Applicant has supplied no explanation that addresses the substance of the test set forth in the MPEP, such as an explanation why the cited references do not meet either of the above two separate tests for analogous art, as required; particularly given that the teachings of Okuzaki et al, Suzuki et al, Hawkes et al provide predictable methods of arriving at a “non-genetically engineered” rice plant whose structure would read on that of the claimed plant.
Further, the recited phenotype of herbicide tolerance and the product-by-process limitations “non-genetically engineered, mutagenized” were expressly addressed above. Specifically, the Examiner maintains that the structure of the rice ACCase nucleic acid is determined by its nucleotide sequence, which in the instant case would encompass a mutation that would result in the valine substitution at the relative position 1,781. A method of making a nucleic acid would not have affected its structure. See MPEP 2113. Using the method of Hawkes or Okuzaki one would have predictably arrived at said structure, and thus, the product used in the claimed method. For this reason, Hawkes and Okuzaki do not teach away from the instant invention. Applicant did not address this reasoning or reconcile it with Applicant’s argument in the instant or previous Remarks. At the same time, one would readily recognize that neither Hawkes nor Okuzaki in an way criticizes, discourages, or otherwise discredits the claimed invention.
The Examiner maintains that position I1,781 in an ACCase, as well as its role in herbicide tolerance were well-characterized in multiple grass species at the time of invention. Mutating it into valine is expressly suggested by Raymer et al. The fact that Raymer et al teach additional positions in the ACCase that could be mutated to confer herbicide tolerance, does not make mutating position 1,781 any less obvious. The Examiner notes that “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). The rejection is maintained.
Conclusion
15. No claims are allowed.
16. All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MYKOLA V KOVALENKO whose telephone number is (571)272-6921. The examiner can normally be reached Mon.-Fri. 9:00-5:30 PST.
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/MYKOLA V. KOVALENKO/Primary Examiner, Art Unit 1662