DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Claims
The claims filed 05September2025 are acknowledged. Claims 1-142 were previously cancelled. Claim 18 is now cancelled. Claims 143-147 and 149-157 are pending. Claims 143-147 are currently amended. Claims 149-157 were previously presented.
Claims 143-147 and 149-157 are examined on the merits herein.
Withdrawn Objections and/or Rejections
The one outstanding rejection within the nonfinal action dated 05March2025 (obviousness) is withdrawn in view of the claim amendments filed 05September2025. Please see the Written Description rejection herein below for more context.
Claim Objections
Claim 143 is objected to because of the following informalities: the “fragment” recited in claim 143 appears to be a nucleic acid sequence (at least because the claim says that the “fragment thereof encod[es] said mutant polypeptide”). With that understanding, there appears to be a typographical error in the claim where it says that the “fragment comprises said G1009D mutation” (= please amend this to “… fragment encodes[[comprises]] said G1009D mutation ….” Appropriate correction is required.
Claim Rejections - 35 USC § 112 - Indefiniteness
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.
Claim 143 (and, therefore, also claims 144-147 and 149-157 which refer thereto without correcting the issue) is/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.
As amended, the reference to the polypeptide being a CESA1 polypeptide has been removed and claim 143 now says that the encoded double mutant polypeptide has either at least 80% sequence identity to mutant CESA1 polypeptide sequence SEQ ID NO: 19 or has at least 80% sequence identity to mutant CESA3 polypeptide sequence SEQ ID NO: 23. For clarity of the record, CESA1 and CESA3 are different polypeptides and SEQ ID NOs: 19 and 23 of this application appear to have about 70% sequence identity to each other. As amended, it is not clear if the encoded double mutant polypeptide in these claims is a CESA1 polypeptide or a CESA3 polypeptide? These claims historically specified a CESA1 polypeptide and, to that end, Applicant is reminded that (following an election or office action on the merits) they “are not permitted to shift to claim another invention”. MPEP § 819.
Claim Rejections - 35 USC § 112
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.
Claim 143 (and, therefore, also claims 144-147 and 149-157 which refer thereto without correcting the issue) is/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 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.
Claim 143 (and, therefore, all pending claims) is amended 05September2025 to recite one mutant nucleic acid encoding one mutant polypeptide that has both a G1009D mutation and a S1037F mutation. The mutations are defined with respect to CESA1 mutant sequence SEQ ID NO: 19 (which comprises G1009D) and CESA3 mutant sequence SEQ ID NO: 23 (which comprises S1037F). Further to the indefiniteness rejection above, it is not clear whether these claims are now directed toward mutant CESA1 structures or to mutant CESA3 structures.
While the specification describes introducing a G1009D mutation into a CESA1 polypeptide (which may confer flupoxam resistance) and, separately, the specification also describes introducing a S1037F mutation into a CESA3 polypeptide (which may confer flupoxam resistance)1; the specification does not describe one CESA polypeptide that comprises both a G1009D mutation and a S1037F mutation (i.e., either a CESA1 polypeptide comprising both a G1009D and S1037F mutation or a CESA3 polypeptide comprising both a G1009D and S1037 mutation).
The prior art does not appear to supplement the deficiencies of this specification.
For completeness, because neither the specification nor the prior art describe the structures being claimed, it is also unclear whether the claimed structures would still confer flupoxam resistance.
Absent evidence to the contrary, a skilled person would not reasonably recognize Applicant as being in possession of the mutant nucleic acids or polypeptides being claimed.
To be clear, this is provided as a Written Description rejection (and not New Matter) per MPEP §§ 2163.01, 2163.06. As noted above, these claims historically specified a CESA1 polypeptide and Applicant is reminded that (following an election or office action on the merits) they “are not permitted to shift to claim another invention”. MPEP § 819.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rebecca STEPHENS whose telephone number is (571)272-0070. The examiner can normally be reached Monday through Friday 8:30-4:30.
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/REBECCA STEPHENS/Examiner, Art Unit 1663
/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663
1 See the specification at “fpx 2-3” and “fpx 1-2”, respectively, in Table 4 on pages 34-35.