Detailed action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 5-10, 12-13 and 15-18 are examined.
Claims 5 and 16 are currently amended.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/9/2026 has been entered.
Written Description
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.
Claims 5-13 and 15 remain rejected and claim 16 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Due to Applicant’s amendments of the claims, this rejection is modified from the rejection set forth in the Office action mailed 10/7/2025.
Applicant claims a method of producing a cell wall by introducing a nucleotide sequence encoding a S-adenosylmethionine hydrolase (SAMH), also referred to as AdoMetase comprising SEQ ID NO: 1, operably linked to a tissue-specific secondary wall promoter resulting in increased expression of SAMH in a secondary cell wall synthesizing tissue resulting in a yield of 140 to 160 µg sugar per mg dry biomass, a 27-31% reduction of the lignin content and a decreased S-unit to G-unit ratio. Applicant claims the plant is Arabidopsis, Camelina, flax, poplar, eucalyptus, alfalfa, soy, hemp, rape or willow. Claim 16 is drawn to the method of claim 5 wherein the plant is Arabidopsis, Camelina, flax, poplar, pine, rape and willow
Applicant describes transformation of Arabidopsis thaliana (paragraph 41) and poplar (paragraph 70), using a single SAMH gene expressed under the control of the IRX5 promoter (paragraph 41). Applicant describes the Arabidopsis plants comprised a yield of 140 to 160 µg sugar per mg dry biomass (Figure 5), a 27-31% decrease of lignin content (paragraph 57) and a decreased S-unit to G-unit ratio (Table 4).
Applicant does not describe transformation of a plant with any other SAMH gene than the single coliphage T3 embodiment of a SAMH described (paragraph 39) wherein the SAMH gene encodes SEQ ID NO: 1 (paragraph 12) in any plant other than Arabidopsis and poplar. Applicant has not described the claimed functions in a plant other than Arabidopsis.
Proteins identified as SAMH in the art comprise structural diversity including less than 60% identity with SEQ ID NO: 1 (GenBank accession QKM75930; see alignment below). While Applicant has limited the claimed invention to the method expressing a nucleic acid encoding SEQ ID NO: 1 specifically, the knowledge in the art does not indicate that SAMH would comprise the claimed functions when expressed under any plant as claims 5-15 are drawn to with the claimed genus of tissue-specific promoters as encompassed by claim 15 nor the Markush group of plants encompassed by claim 16.
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The described embodiments are not representative of the breadth of the claimed genus such that one of ordinary skill in the art would be able to envision which members of the claimed genus possess the claimed functions. Given the breadth of the genera encompassed by the claims, the described species are not sufficiently representative.
Applicant has not provided a structure-function relationship beyond a SAMH comprising the full length of SEQ ID NO: 1 expressed in poplar and Arabidopsis. Applicant has not described any other structures that would allow one to envision the SAMH protein being expressed in any plant nor in each of the members of the Markush group of plants in claim 16 sufficiently to comprise the claimed functions.
Therefore, Applicant has not satisfied the written description requirement.
Applicant’s arguments regarding rejection under 35 USC 112(a) for written description
The arguments provided by Applicant in the Remarks filed 1/7/2026 have been fully considered but are not persuasive.
Applicant argues on pages 6-7 of the Remarks that the specification, in paragraph 17, provides support for newly amended claim 1, a description of the plant being Arabidopsis, Camelina, flax, poplar, eucalyptus, alfalfa, soy, hemp, rape or willow. Applicant argues that the claimed embodiments are of related orders: Arabidopsis, rape and Camelina are Brassicales; poplar, flax and willow are Malpighales; alfalfa and soy are Fabales; and eucalyptus is of Rosales.
This argument has been fully considered but it is not persuasive. The contemplation in the Specification referred to by Applicant is merely prophetic, and would not sufficiently demonstrate to one of ordinary skill in the art that Applicant had possession of the claimed invention considering the lack of working examples for all but Arabidopsis and poplar.
Applicant notes on page 5 that claim 16 is amended to replace the Markush group of plants with “Arabidopsis or poplar”., including Arabidopsis, Camelina, flax, poplar, pine, rape and willow.
This argument has been fully considered but is not persuasive. While the embodiments of Arabidopsis or poplar would be allowable, instant claim 16 of the claims filed 1/7/2026 encompasses the Markush group Arabidopsis, Camelina, flax, poplar, pine, rape and willow.
Conclusion
Claims 5-10, 12-13 and 15-16 remain rejected.
Claims 17-18 remain allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R BYRNES whose telephone number is (571)270-3935. The examiner can normally be reached 9:00 - 5:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bratislav Stankovic can be reached at (571) 270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID R BYRNES/Examiner, Art Unit 1662
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