DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
2. Claims 1-5, 7, 9, 11, 14, 16, 21, 22, and 24-35 are pending and examined.
Continued Examination Under 37 CFR 1.114
3. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 24, 2025 has been entered.
Election/Restrictions
4. Applicant’s election of Group I, claims 1-16 in the reply filed on December 4, 2018 is acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Given that the previously added claim 35 would have been included with the elected Group, it was rejoined and examined.
Claim Rejections - 35 USC § 112 - Indefiniteness
5. 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.
6. Claims 1-5, 7, 9, 11, 14, 22, and 24-35 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. This rejection was necessitated by Applicant’s amendments to the claims.
The limitation “that grows without significant injury in the presence of said herbicide,” newly added to claim 1, renders the claim indefinite. The term “significant” is a relative term of degree that is neither defined in the specificaiton nor its meets and bounds are otherwise clarified. One of ordinary skill in the art would thus not be appraised as to whish injury is “significant” and which is not.
Given that claims 2-5, 7, 9, 11, 14, 22, and 24-35 depend from claim 1 and fail to recite additional limitations overcoming its indefiniteness, their metes and bounds are unclear as well.
Claim 3 is indefinite for the following additional reason. In claim 3, as instantly amended, the recitation “endogenous non-transfected mutant ACCase nucleic acid, free of site-directed mutations, whose sequence encodes non-transfected mutant ACCase nucleic acid whose sequence encodes a multi-functional, plastidic ACCase” renders the claim indefinite. It is unclear how the first instance of “non-transfected ACCase nucleic acid” differs from the second instance of “non-transfected ACCase nucleic acid” or how the first “encodes” the second, as claimed. It is also unclear how the limitation “free of site-directed mutations” limits the structure of the “non-transfected mutant ACCase” - one would recognize that the structure of the “endogenous” ACCase nucleic acid is limited by its nucleotide sequence and it being endogenous to the plant. It is unclear how one would one would be able to distinguish an ACCase nucleic acid that is free of site-directed mutations from the one that is not. The metes and bounds are unclear.
Claim Interpretation
7. The following is noted with regard to the claim interpretation. Claim 1 recites the “phenotype of tolerance to an effective amount of the cyclohexanedione herbicide.” The specification states: “As used herein, “tolerant” or “herbicide-tolerant” indicates a plant or portion thereof capable of growing in the presence of an amount of herbicide that normally causes growth inhibition in a non-tolerant (e.g., a wild-type) plant or portion thereof” (page 7, paragraph 0055). Said definition solely requires that the plant or a portion thereof “be capable of growing” in the presence of the herbicide. It does not require that the tolerant plant either be healthy or uninjured by said herbicide. The claim is thus given its broadest reasonable interpretation as encompassing any level of tolerance to the recited doses of the four herbicides. The term “significant injury,” which is not defined in the specification is read to encompass any level of injury short of the destruction of a plant. Thus, “without significant injury” would encompass any viable plant that grows after the application of any of the recited herbicides.
The term “free of site-directed mutation” is read as a product-by-process limitation that does not affect the nucleotide sequence of the recited “endogenous … ACCase nucleic acid,” which nucleic acid is limited by being endogenous to the plant and comprising “a mutation” that renders the encoded ACCase enzyme tolerant to one of the herbicides recited in claim 1. It is noted that “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
Claim Rejections - 35 USC § 103
8. 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.
9. Claims 1-5, 7, 9, 11, 14, 22, 27-30, 33, and 34 remain rejected under 35 U.S.C. 103 as being unpatentable over Yu et al (Plant Physiol. (2007) 145:547-558) in view of Delye et al-1 (Pest Manag. Sci. (2008) 64:1179-1186, Published online on June 6, 2008), Delye et al-2 (Plant Physiol. (2003) 132:1716-1723), Suzuki et al (Mol. Genet. Genomics (2008) 279:213-223), Hawkes et al (PCT Publication WO 98/54330, published December 3, 1998), and Okuzaki et al (Plant Cell Rep. (2004) 22:509-512). Applicant’s arguments submitted December 24, 2025 have been fully considered but they are not persuasive.
Yu et al teach that ACCase substitutions I1781L and W2027C confer resistance to Lolium rigidum plants. Yu et al teach that the I1781L substitution confers resistance to 186 g ai/ha of sethoxydim and 800 g ai/ha of tralkoxydim (Table VII). Yu et al teach that the I1781L mutants could survive 60 g ai/ha of clethodim (Abstract; Table III; Table V; see also pg. 552, paragraph spanning left and right col.). Yu et al teach additional two substitutions that confer resistance to cyclohexanediones (Abstract). Yu et al teach that the G2096A substitution conferred tolerance to APP herbicides only (page 548, left col). Yu et al teach that position G2096 is conserved in grass species (Fig. 4). Yu et al teach applying clethodim at the commercial rate in a water solution by spraying it onto plants (page 556, left col.)
Yu et al do not teach a rice plant comprising an ACCase with said substitutions. Delye et al-1 teach that in Alopecurus myosuroides, the I1781L substitution confers resistance to cycloxydim at a field rate (Abstract; Table 3 on pg. 1183; pg. 1184, right col.), wherein the field rate is 200 g ai/ha (pg. 1181, left col).
Delye et al-2 teach that the I1781L substitution confers a high level of resistance to sethoxydim and cycloxydim, and that the ACCase region that encompasses the isoleucine residue at position corresponding to position 1781 in A. myosuroides is highly conserved in all known cytosolic and chloroplastic ACCases from plants, including in rice (pg. 1720, left col. Fig. 2).
Suzuki et al teach using high-performance modified Targeting Induced Local Lesions in Genomes (“TILLING”) on rice (Oryza sativa japonica) mutant pools as an efficient method of identifying any gene mutation in rice (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, as well as obtaining seed of said plants (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 (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.). Okuzaki et al teach using O. sativa japonica in their methods (pg. 509, right col.).
At the time of filing, it would have been prima facie obvious to one having ordinary skill in the art to use the mutagenesis method of Suzuki et al or the method of Hawkes et al, to modify a wild-type cultivated (domestic) rice plant, including O. sativa japonica, and obtain a rice plant that comprises a mutation in a plastidic ACCase gene that encodes an ACCase with the I1781L substitution or the W2027C substitution, as taught by Yu et al, Delye et al-1 and Delye et al-2.
It would have been obvious to use the resultant plant in a method of controlling weeds by applying a cyclohexanedione herbicide, including cycloxydim, sethoxydim, tralkoxydim, or clethodim, at the rates taught by Yu et al and Delye et al-1, which rates encompass the claimed rates for said herbicides; including wherein the herbicide is applied to both the plant and the weeds in the vicinity of said plant. Applying said herbicides by spraying them in an aqueous solution would have been obvious in view of the teachings of Yu et al and as a matter of standard industry practice. Given that the I1781L substitution confers resistance to the field rates of said herbicides in Lolium rigidum and Alopecurus myosuroides, and given the fact that the CT domain of the plastidic ACCase that encompasses position 1781 is highly conserved in all grasses, including in rice, one would reasonably expect that a rice plant comprising said substitution would exhibit similar herbicide tolerance. In addition, in view of the teachings of Yu et al and Delye et al-1 and in view of the above claim interpretation, the resultant rice plant would show tolerance to effective amounts of herbicides sufficient to kill a weed from the genus Echinochloa or Leptochloa. Growing said plants after herbicide treatment and obtaining their seeds would have been obvious as a matter of standard industry practice and in view of the teachings of Hawkes et al.
One having ordinary skill in the art would have been motivated to combine said teachings in view of the agronomic desirability of herbicide resistant rice and the fact that the I1781L as well as the W2027C substitutions confers resistance to multiple ACCase inhibitors. Given the conserved nature of the ACCase and the I1781 and the CT domains of the ACCase in grasses, including rice, given that Hawkes et al reduced their invention to practice, and given the teachings of Suzuki et al and Okuzaki et al, one would have had reasonable expectation of success.
10. Claim 21 remains rejected under 35 U.S.C. 103(a) as being unpatentable over Yu et al (Plant Physiol. (2007) 145:547-558) in view of Delye et al-1 (Pest Manag. Sci. (2008) 64:1179-1186, Published online on June 6, 2008), Delye et al-2 (Plant Physiol. (2003) 132:1716-1723), Suzuki et al (Mol. Genet. Genomics (2008) 279:213-223), Hawkes et al (PCT Publication WO 98/54330, published December 3, 1998), and Okuzaki et al (Plant Cell Rep. (2004) 22:509-512), as applied to claim 1, and further in view of Kim et al (Pest Manag. Sci. (2004) 60:909-913). Applicant’s arguments submitted on December 24, 2025 have been fully considered but they are not persuasive.
The claims are directed to the method of claim 1, wherein the effective amount of the herbicide is sufficient to kill the weed of the genus Echinochloa, including wherein it is E. crus-galli, and wherein the application rates include the rates as recited in claim 21.
The teachings of Yu et al, Delye et al-1, Delye et al-2, Suzuki et al, Hawkes et al, and Okuzaki et al have been set forth above. The references do not teach using cyclohexanedione herbicides, at recited application rates, to control E. crus-galli.
Kim et al teach that the application rates of 31.3-250 g ai/ha of tralkoxydim caused 100% injury to E. crus-galli plants (Table 1). Kim et al teach that 500 g ai/ha of tralkoxydim caused injury at a 25% rate to the wild-type plants, and that E. crus-galli was “completely controlled” at 250 g ai/ha (pg. 911, right col. - pg. 912, left col.).
At the time of filing, it would have been prima facie obvious to further modify the method of weed control made obvious by the teachings of Yu et al, Delye et al-1, Delye et al-2, Suzuki et al, Hawkes et al, and Okuzaki et al, and apply tralkoxydim to the resistant rice crop plant, and at the rate of 250 g ai/ha (as taught by Kim et al) and up to 800 g ai/ha (as taught by Yu et al).
One would have been motivated to do so, in order to control E. crus-galli, a known weed. One would have reasonably expected to control said weed at 250 g ai/ha, given its susceptibility to even lower doses. Given the teachings of Kim et al, an application dose of 250 g ai/ha (or higher) would be at least 0.5x of the amount that would cause “at least about” 90% injury rate in barnyardgrass and at least 10% phytotoxicity in wild-type rice (see Kim, pg. 911, both col.).
11. Claim 16 remains rejected under 35 U.S.C. 103(a) as being unpatentable over Yu et al (Plant Physiol. (2007) 145:547-558) in view of Delye et al-1 (Pest Manag. Sci. (2008) 64:1179-1186, Published online on June 6, 2008), Delye et al-2 (Plant Physiol. (2003) 132:1716-1723), Suzuki et al (Mol. Genet. Genomics (2008) 279:213-223), Hawkes et al (PCT Publication WO 98/54330, published December 3, 1998), and Okuzaki et al (Plant Cell Rep. (2004) 22:509-512), as applied to claim 1, and further in view of Chuah et al (Weed Biol. and Manag. (2006) 6:245-249). Applicant’s arguments submitted on December 24, 2025 have been fully considered but they are not persuasive.
The claim is directed to the method of claim 1, wherein the weed of the genus Leptochloa, including wherein it is L. chinensis.
The teachings of Yu et al, Delye et al-1, Delye et al-2, Suzuki et al, Hawkes et al, and Okuzaki et al have been set forth above. The references do not teach using cyclohexanedione herbicides to control L. chinensis.
Chuah et al teach using sethoxydim, in a tank mix, to control L. chinensis, and teach that the weed is increasingly important in rice fields (Abstract; pf. 245, left col.). Chuah et al teach that L. chinensis can be normally controlled with selective herbicides without a tank mixture (pg. 246, left col.). Chuah et al teach that the recommended rate for sethoxydim is 250 g ai/ha (pg. 246, right col.).
At the time of filing, it would have been prima facie obvious to further modify the method of weed control made obvious by the teachings of Yu et al, Delye et al-1, Delye et al-2, Suzuki et al, Hawkes et al, and Okuzaki et al, and apply sethoxydim to the resistant rice crop plant at the rate taught by Chuah et al, including 250 g ai/ha, which would be sufficient to control L. chinensis. One would have been motivated to do so in order to control L. chinensis, a known rice weed.
12. Claims 24-26 remain rejected under 35 U.S.C. 103(a) as being unpatentable over Yu et al (Plant Physiol. (2007) 145:547-558) in view of Delye et al-1 (Pest Manag. Sci. (2008) 64:1179-1186, Published online on June 6, 2008), Delye et al-2 (Plant Physiol. (2003) 132:1716-1723), Suzuki et al (Mol. Genet. Genomics (2008) 279:213-223), Hawkes et al (PCT Publication WO 98/54330, published December 3, 1998), and Okuzaki et al (Plant Cell Rep. (2004) 22:509-512), as applied to claim 1, and further in view of Williams (Proc. Calif. Weed Sci. Soc. (2000) 52:123-128). Applicant’s arguments submitted December 24, 2025 have been fully considered but they are not persuasive.
The teachings of Yu et al, Delye et al-1, Delye et al-2, Suzuki et al, Hawkes et al, and Okuzaki et al have been set forth above. The references do not expressly teach applying a herbicide at the growth stages recited in claims 24-26.
Williams teaches applying fenoxaprop, for post-emergent weed control, to rice at one tiller through panicle initiation growth stages (page 125). Williams teaches applying herbicides, including the ones that control, specifically, Echinochloa and Leptochloa weeds, to rice, at a 1.5 leaf stage; and teaches applying other herbicides at various stages of rice growth, including beginning at the 3 leaf and to the tillering stage (pages 124 and 126).
At the time of filing, it would have been prima facie obvious to further modify the method of weed control made obvious by the teachings of Yu et al, Delye et al-1, Delye et al-2, Suzuki et al, Hawkes et al, and Okuzaki et al, and apply an ACCase inhibiting herbicide at any of the stages taught by Williams, including the 2-3 leaf stage, first tiller stage, or at a later stage, including panicle initiation. It would have been obvious to do so in view of the teachings of Williams.
13. Claims 31, 32 and 35 remain rejected under 35 U.S.C. 103(a) as being unpatentable over Yu et al (Plant Physiol. (2007) 145:547-558) in view of Delye et al-1 (Pest Manag. Sci. (2008) 64:1179-1186, Published online on June 6, 2008), Delye et al-2 (Plant Physiol. (2003) 132:1716-1723), Suzuki et al (Mol. Genet. Genomics (2008) 279:213-223), Hawkes et al (PCT Publication WO 98/54330, published December 3, 1998), and Okuzaki et al (Plant Cell Rep. (2004) 22:509-512), as applied to claim 1, and further in view of Wright et al (US Patent Publication 2009/0093366, priority to May 2, 2005). Applicant’s arguments submitted on December 24, 2025 have been fully considered but they are not persuasive.
The claims are directed to the method of claim 1, wherein the rice crop plant is further tolerant to an effective amount of an auxinic herbicide, including wherein the auxinic herbicide is 2,4-D or dicamba; and further comprising applying said herbicide to said plant.
The teachings of Yu et al, Delye et al-1, Delye et al-2, Suzuki et al, Hawkes et al, and Okuzaki et al have been set forth above. The references do not teach a rice plant comprising tolerance to both, ACCase inhibitors and auxin-based herbicides.
Wright et al teach a rice plant comprising tolerance to 2,4-D and a second herbicide, and using the plant in a method of weed control, comprising applying 2,4-D to said plant (claims 1-19). 2,4-D is an auxinic herbicide. Wright et al teach a bacterial gene that confers 2,4-D tolerance (claim 1). Wright et al teach that 2,4-D is a broad-spectrum herbicide that has been used in monocot crops, including rice for broad leaf weed control (paragraphs 0007-0008).
At the time of filing, it would have been prima facie obvious to further modify the rice plant made obvious by the teachings of Yu et al, Delye et al-1, Delye et al-2, Suzuki et al, Hawkes et al, and Okuzaki et al, using the teachings of Wright et al, by expressing in said plant an additional herbicide tolerance gene, wherein the gene is AAD-1 taught by Wright et al, and the herbicide is 2,4-D. It would have been further obvious to use the resultant plant in a method of weed control by applying 2,4-D to said plant.
One would have been motivated to do so given the suggestion of Wright et al regarding stacking the 2,4-D tolerance trait with resistance to additional herbicides. One would have been further motivated to be able to more effectively protect rice plants from broadleaf weeds. Given the teachings of Wright et al, one would have had reasonable expectation of success.
Response to Arguments.
Applicant argues that the phenotype of herbicide tolerance structurally limits the claimed plant and cited PTAB Decision 2025-003055 for support. Applicant argues that the claims have been amended to recite an ACCase nucleic acid that is “free of site-directed mutations,” and that the one would not have considered Hawkes and Okuzaki “relevant to the instant claims” in view of said amendment. Applicant argues that “claim 35 is not listed in any statement of rejection under 35 U.S.C. 103” (page 7 of the Remarks).
Applicant’s argument is not found to be persuasive. Regarding claim 35, Applicant is directed to page 10 of the Final Office Action mailed on September 24, 2025, where claim 35 was expressly included in the obviousness rejection and its limitation were addressed.
Next, the limitation “free of site-directed mutations” was addressed in the indefiniteness rejection and the Claim Interpretation section above. With regard to the teachings of Hawkes and Okuzaki, the Examiner maintains that the references would have provided a predictable way to arrive at a rice plant whose structure would read on the plant used in the instant method with reasonable expectation of success. This is also the reason why these references and the other cited art are directly related to the “field of endeavor” of the instant invention, contrary to Applicant’s position. It is noted that “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113. Applicant’s argument does not address or obviate this analysis.
Applicant’s argument based on the cited PTAB decision is not persuasive either. The decision, including the portion cited by Applicant, reflects the facts of a specific application that dealt with an unrelated enzyme. 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.
The Examiner maintains that Applicant has pointed to no structural difference between the rice plant used in the claimed method and the rice plant that would have been made prima facie obvious by the combined teachings of the cited prior art. It is noted that the instant claim 1 recites no structural limitation for the “domestic rice crop” of any kind, and would encompass any and all rice crop that possesses tolerance to any one of the recited ACCase inhibitor application rates.
One species that would make the claimed genus of plants obvious is a rice plant comprising either the I1781L or the W2027C substitution in the ACCase enzyme. Both substitutions as well as their herbicide tolerance properties were well known in the prior art. Introducing either of them would have been prima facie obvious for the reasons set forth in the rejection. Methods of predictably doing so, specifically in rice, were also known. Thus, the prior art provides both, a clear motivation and a predictable way to obtain a rice plant comprising the I1781L or the W2027C substitution. The phenotype of tolerance to the specific herbicides recited in claim 1 would not have been unexpected in rice plants comprising the I1781L or the W2027C mutant ACCase given the express teachings of Yu et al and Delye et al-1 cited in the rejection above. The rejection is maintained.
Conclusion
14. No claims are allowed.
15. 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