DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
1. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/06/2025 has been entered.
Claim Status
2. Claims 1, 3, 5-6, 9, 14, and 16-19 are pending and examined to the extent of the elected species of bifunctional fructose-1,6-bisphosphatases/sedoheptulose-1,7-bisphosphatase (FBP/SBPase; SEQ ID NO:39) and cytochrome c6 protein (SEQ ID NO:95).
Claims 2, 10, and 15 are cancelled.
Claims 4, 7-8, 11-13, and 20 remain withdrawn as being directed to a non-elected invention or non-elected species, there being no allowable generic or linking claim. Election was made with traverse in the reply filed on October 01, 2024. The restriction requirement was deemed proper and made FINAL in the Non-Final Rejection dated December 03, 2024.
Priority
3. This application is a 371 of International Application No. PCT/EP2020/057475 filed March 18, 2020. The Office acknowledges receipt of Applicant’s domestic priority document Provisional Application No. 62/821,786 filed March 21, 2019.
Information Disclosure Statement (IDS)
4. The information disclosure statement (IDS) submitted on October 06, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered to the extent of the English translations provided. A signed copy is attached.
Response to Arguments – Claim Rejections - 35 USC § 112(b)
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.
6. Claims 1, 5-6, 9, and 16-19 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.
The scope of claim 1 is indefinite because it is unclear what proteins or structures are encompassed by the recitation of a “photosynthetic electron transport cytochrome c6”. Though Applicant appears to have amended the claim to include the phrase “photosynthetic electron transport” to distinguish the claimed cytochrome c6 protein from any generic cytochrome c6 protein, it is unclear how, or if, said protein differs from an art-recognized cytochrome c6 protein (Singh et al., Plant Biotechnology Journal. 2014; 12(9):1217-30 (previously cited); p. 1221, left column, first partial paragraph), because Applicant has provided no definition for this recitation and “photosynthetic electron transport cytochrome c6” proteins are not an art-recognized class of proteins. Without any definition from either Applicant’s specification or the prior art, one of ordinary skill in the art could not determine what proteins or structures are encompassed by the recitation of a “photosynthetic electron transport cytochrome c6”; thus, the recitation of a “photosynthetic electron transport cytochrome c6” is indefinite.
Dependent claims are included.
Appropriate correction is required.
Response to Arguments – Claim Rejections - 35 USC § 103
7. Regarding the rejection of claims 1, 5-6, 9, and 16-19 under 35 U.S.C. 103 as unpatentable over Simkin et al. (Journal of Experimental Botany. Feb 2019; 70(4):1119-40 (previously cited), “Simkin 2019”), Applicant’s arguments, amendments, and signed affidavit filed July 07, 2025 have overcome the rejections of record. In particular, the signed declaration from Christine A. Raines pursuant to 37 C.F.R. 1.130 filed July 07, 2025 disqualifies Simkin 2019 as prior art.
8. Regarding the rejection of claims 1, 5-6, 9, and 16-19 under 35 U.S.C. 103 as unpatentable over Singh et al., (Plant Biotechnology Journal. 2014; 12(9):1217-30 (previously cited)) in view of Simkin et al., (Plant Biotechnology Journal. 2017; 15:805–816 (previously cited), “Simkin 2017”), Applicant’s arguments and amendments filed October 06, 2025 have been fully considered but are not persuasive and do not overcome the rejections of record; therefore, these rejections are maintained.
However, Applicant’s amendments to the claims have necessitated modifications of the rejections under 35 U.S.C. 103 as discussed below.
Applicant argues that a prima facie case of obviousness has not been established because the combination of Singh and Simkin 2017 allegedly fail to provide any motivation to one of ordinary skill in the art to produce the claimed invention with a reasonable expectation of success (Applicant’s remarks dated 10/06/25, p. 07-10). Applicant argues that Singh does not teach the combination as recited in claim 1 because Singh teaches that overexpression of FBPase/SBPase or cytochrome c6 alone are sufficient to increase photosynthetic rates in plants (Applicant’s remarks dated 10/06/25, p. 07-08). Applicant argues that Singh teaches approaches involving single-gene manipulation and one of ordinary skill would not be motivated by said teachings to express the genes recited by Singh in combination with each other. Applicant’s argument is not persuasive. While Singh only teaches the overexpression of either FBPase/SBPase or cytochrome c6 alone as being sufficient to improve photosynthesis, the Office disagrees with Applicant’s assertion that this would not provide motivation for a person of ordinary skill to express the elements taught by Singh in combination. One of ordinary skill in the art would assume, with a reasonable expectation of success, that two elements (e.g., FBPase/SBPase or cytochrome c6 ) reported to enhance a phenotype alone (e.g., photosynthesis) would have combinatorial effects when expressed together absent any suggestion, teaching, or evidence to the contrary.
Applicant argues that Simkin 2017 fails to teach or suggest the simultaneous overexpression of an FBP/SBPase and overexpression of a cytochrome c6 protein because the GDC-H protein of Simkin 2017 is not a photosynthetic electron transport protein as required by the claims (Applicant’s remarks dated 10/06/25, p. 09-10). This argument is not persuasive, because even though Simkin 2017 distinguishes between the photosynthetic and photorespiratory pathways, Simkin 2017 notes that simultaneous increase of both photosynthesis and photorespiration enzymes could lead to a cumulative impact on photosynthetic yield (p. 806, left column, second paragraph). Thus, even if a person of ordinary skill in the art would not see the GDC-H protein of Simkin 2017 as interchangeable with the cytochrome c6 protein taught by Singh, one of ordinary skill in the art would be motivated to express combinations of photosynthesis/Calvin cycle proteins because Singh teaches that overexpression of FBPase/SBPase or cytochrome c6 alone as being sufficient to improve photosynthesis and Simkin 2017 teaches that overexpressing photosynthesis/Calvin cycle proteins (e.g., FBPase/SBPase) in combination with other proteins would produce a cumulative positive impact on photosynthesis. As stated above, one of ordinary skill in the art would assume, with a reasonable expectation of success, that two elements (e.g., FBPase/SBPase or cytochrome c6 ) reported to enhance a phenotype alone (e.g., photosynthesis) would have combinatorial effects when expressed together absent any suggestion, teaching, or evidence to the contrary. One would be further motivated to combine these elements when considering Simkin 2017’s teachings regarding the combinatorial effects of overexpressing photosynthesis proteins.
While the Examiner concedes that photosynthesis and photorespiration are distinct pathways, GDC-H functions in an electron transport process that interacts with proteins that function in the Calvin cycle/photosynthesis pathway (e.g., Rubisco; Simkin 2017; Abstract). The Office also notes that regardless of Simkin’s alleged silence regarding electron transport proteins, Singh teaches the role of GDC in electron transport (Singh; p. 1224, Figure 3). One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Accordingly, one of ordinary skill in the art would be motivated to overexpress Calvin cycle proteins known to improve photosynthesis when overexpressed with electron transport proteins known to improve photosynthesis when overexpressed. Therefore, it would have been prima facie obvious for one of ordinary skill before the instant effective filing date to use the proteins taught by Singh in the method taught by Simkin 2017 to produce a genetically altered plant overexpressing FBP/SBPase and cytochrome c6 because Simkin 2017 teaches that co-expression of FBP/SBPase proteins and electron transport proteins results in a cumulative increase in plant growth and seed yield (Simkin 2017; Abstract) and Singh teaches transformation of FBPase, SBPase, and FBP/SBPase proteins (Singh; pp. 1218-1220, “Regeneration of Ribulose-1, 5-bisphosphate”) and cytochrome c6 proteins (Singh; p. 1221, left column, first partial paragraph) into various plants to promote plant growth and photosynthesis and that photosynthetic electron transport is the rate-limiting step in CO2 assimilation (Singh; p. 1220, right column, first full paragraph). Accordingly, this rejection of claims 1, 5-6, 9, and 16-19 are maintained. See rejection under 35 U.S.C. 103, below.
9. Regarding the rejection of claim 3 under 35 U.S.C. 103 as unpatentable over Singh et al., (Plant Biotechnology Journal. 2014;12(9):1217-30 (previously cited)) in view of Simkin et al., (Plant Biotechnology Journal. 2017; 15:805–816 (previously cited)), and further in view of Smith et al., (Molecular Phylogenetics and Evolution, 2012; 65(1):339-344 (previously cited)), Applicant’s amendments filed October 06, 2025 have been fully considered but have not overcome the rejections of record; therefore, these rejections is maintained.
Applicant argues that neither Smith nor Liu remedy the alleged deficiencies of Singh and Simkin (2017) and that the combination of Singh, Simkin 2017, Smith, and Liu fail to provide a teaching, suggestion, or motivation to specifically combine overexpression of FBP/SBPase and cytochrome c6 (Applicant’s remarks dated 10/06/25, p. 10-11). Applicant’s arguments are not persuasive because Singh and Simkin 2017 provide motivation for one of ordinary skill in the art to overexpress the combination of FBP/SBPase and cytochrome c6, as discussed above. Furthermore, it would have been prima facie obvious for one of ordinary skill in the art to substitute the generic cytochrome c6 protein of Singh with the specific cytochrome c6 protein of Smith to produce the genetically altered plant with enhanced photosynthetic electron transport taught by Singh.
Accordingly, the rejection of claim 3 under 35 U.S.C. 103 is maintained.
10. Regarding the rejection of claim 14 under 35 U.S.C. 103 as unpatentable over Singh et al., (Plant Biotechnology Journal. 2014;12(9):1217-30 (previously cited)) in view of Simkin et al., (Plant Biotechnology Journal. 2017; 15:805–816 (previously cited)), and further in view of Liu et al., (US-2010/0218275-A1, published 08/26/2010 (previously cited)), Applicant’s amendments filed October 06, 2025 have been fully considered but do not overcome the rejections of record and this rejection is maintained.
Applicant argues that neither Smith nor Liu remedy the alleged deficiencies of Singh and Simkin (2017) and that the combination of Singh, Simkin 2017, Smith, and Liu fail to provide a teaching, suggestion, or motivation to specifically combine overexpression of FBP/SBPase and cytochrome c6 (Applicant’s remarks dated 10/06/25, p. 10-11). Applicant’s arguments are not persuasive because Singh and Simkin 2017 provide motivation for one of ordinary skill in the art to overexpress the combination of FBP/SBPase and cytochrome c6, as discussed above. Furthermore, it would have been prima facie obvious for one of ordinary skill in the art to substitute the generic FBP/SBPase taught by Singh with the specific cyanobacterial FBP/SBPase taught by Liu to produce a genetically altered plant with enhanced photosynthetic capacity, because both Singh and Liu teach the importance of FBP/SBPase in CO2 assimilation and the cyanobacterial FBP/SBPase taught by Liu is demonstrated to increase resistance to abiotic stress, which would further promote plant growth.
Accordingly, the rejection of claim 14 under 35 U.S.C. 103 as unpatentable over Singh et al., (Plant Biotechnology Journal. 2014;12(9):1217-30 (previously cited)) in view of Simkin et al., (Plant Biotechnology Journal. 2017; 15:805–816 (previously cited)), and further in view of Liu et al., (US-2010/0218275-A1, published 08/26/2010 (previously cited)) is maintained.
Claim Rejections - 35 USC § 103
11. 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
12. Claims 1, 5-6, 9, and 16-19 are under 35 U.S.C. 103 as being unpatentable over Singh et al., (Plant Biotechnology Journal. 2014; 12(9):1217-30 (previously cited)) in view of Simkin et al., (Plant Biotechnology Journal. 2017; 15:805–816 (previously cited)) as evidenced by Chida et al. (Plant and Cell Physiology. 2007; 48(7):948-957 (previously cited)) and Sade et al. (Plant Physiology. 2010; 152(1):245–254 (previously cited)).
The disclosure and teachings of Singh and Simkin 2017 are as previously discussed (Non-Final Rejection dated December 03, 2024).
With regard to claim 1, Singh teaches a genetically altered plant, plant part, or plant cell wherein the plant, plant part, or plant cell comprises overexpression of a bifunctional fructose-1,6,-bisphosphatase/sedoheptulose-1,7-bisphosphatase (FBP/SBPase) protein (pp. 1218-1220, “Regeneration of Ribulose-1, 5-bisphosphate”) and a genetically altered plant, plant part, or plant cell wherein the plant, plant part, or plant cell comprises overexpression of a photosynthetic electron transport cytochrome c6 protein (p. 1221, left column, first partial paragraph).
Singh does not teach a genetically altered plant overexpressing both an FBP/SBPase and a cytochrome c6 protein.
Simkin 2017 teaches a genetically altered plant, plant part, or plant cell wherein the plant, plant part, or plant cell comprises overexpression of an FBPase and an SBPase protein (p. 806, “Production and selection of Arabidopsis transformants”) and overexpression of the electron transport protein GDC-H (p. 806, “Production and selection of Arabidopsis transformants”).
The combination of Singh and Simkin 2017 teaches a genetically altered plant comprising overexpression of an FBP/SBPase protein and overexpression of a photosynthetic electron transport protein (e.g., cytochrome c6).
The level of ordinary skill in the plant transformation art is high and the use of transformed plant cells to express a gene or polynucleotide of interest is well-known in the art, as evidenced by Singh and Simkin 2017. It would have been prima facie obvious for one of ordinary skill before the instant effective filing date to use the proteins taught by Singh in the method taught by Simkin 2017 to produce a genetically altered plant overexpressing FBP/SBPase and cytochrome c6. One would have been motivated to do so as Singh teaches transformation of FBPase, SBPase, and FBP/SBPase proteins (pp. 1218-1220, “Regeneration of Ribulose-1, 5-bisphosphate”) and cytochrome c6 proteins (p. 1221, left column, first partial paragraph) into various plants to promote plant growth and photosynthesis and that photosynthetic electron transport is the rate-limiting step in CO2 assimilation (p. 1220, right column, first full paragraph). One of ordinary skill in the art would have been motivated to produce a plant overexpressing both of the recited proteins, because Simkin 2017 teaches that co-expression of FBP/SBPase proteins and electron transport proteins results in a cumulative increase in plant growth and seed yield (Abstract). Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention with a reasonable expectation of success and without any surprising or unexpected results.
With regard to claim 5, in addition to the teachings above, Singh teaches the localization of the photosynthetic electron transport cytochrome c6 protein to the thylakoid lumen (pp. 1220-1221, “Light reactions and canopy architecture”); the cited Chida et al., 2007 discloses a plasmid containing an algal cytochrome c6 linked to a plastocyanin signal peptide, which targets the protein to the thylakoid lumen (p. 949, “Development of transgenic Arabidopsis having Porphyra Cyt c6”).
With regard to claim 6, in addition to the teachings above, Singh teaches a transit peptide that localizes the photosynthetic electron transport cytochrome c6 protein to the thylakoid lumen, and wherein the transit peptide comprises a plastocyanin signal peptide (pp. 1220-1221, “Light reactions and canopy architecture”); the cited Chida et al., 2007 discloses a plasmid containing an algal cytochrome c6 linked to a plastocyanin signal peptide (p. 949, “Development of transgenic Arabidopsis having Porphyra Cyt c6”).
With regard to claim 9, in addition to the teachings above, Singh teaches a plant promoter operably linked to the nucleic acid sequence encoding the photosynthetic electron transport cytochrome c6 protein, wherein said promoter comprises a constitutive promoter (p. 1219, Table 1; pp. 1220-1221, “Light reactions and canopy architecture”).
With regard to claim 16, in addition to the teachings above, Singh teaches an FBP/SBPase that is localized to the chloroplast stroma of at least one chloroplast within a cell of the genetically altered plant, and wherein the FBP/SBPase comprises a transit peptide that localizes the FBP/SBPase to the chloroplast stroma (pp. 1218-1220, “Regeneration of Ribulose-1, 5-bisphosphate”; p. 1219, Table 1).
With regard to claim 17, in addition to the teachings above, Singh teaches a plant promoter operably linked to the nucleic acid sequence encoding the FBP/SBPase, wherein said promoter comprises a tissue or cell-type specific promoter (pp. 1218-1220, “Regeneration of Ribulose-1,5-bisphosphate”; p. 1219, Table 1).
With regard to claim 18, in addition to the teachings above, Singh teaches a genetically altered plant wherein the plant has increased biomass (p. 1218, “Improving photosynthesis by overcoming potential bottlenecks in the Calvin Cycle”).
With regard to claim 19, in addition to the teachings above, Singh teaches a genetically altered plant wherein the plant has improved water use efficiency as compared to an unaltered WT plant when grown in conditions with light intensities above 1000 µmol m-2s-1 (p. 1219, Table 1); the cited Sade et al., 2010 discloses induction of photosynthesis under saturating light at 1200 µmol m-2s-1 (Abstract; p. 247, Table 1).
Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention with a reasonable expectation of success and without any surprising or unexpected results. Therefore, these rejections are maintained.
13. Claim 3 remains rejected under 35 U.S.C. 103 as being unpatentable over Singh et al., (Plant Biotechnology Journal. 2014;12(9):1217-30 (previously cited)) in view of Simkin et al., (Plant Biotechnology Journal. 2017; 15:805–816 (previously cited)), as applied to claims 1, 5-6, 9, and 16-19 above, and further in view of Smith et al., (Molecular Phylogenetics and Evolution, 2012; 65(1):339-344 (previously cited)).
The teachings of Singh, Simkin, and Smith are as discussed above and in the Non-Final Rejection dated December 03, 2024.
The combination of Singh and Simkin does not teach that the photosynthetic electron transport cytochrome c6 protein has at least 90% sequence identity to SEQ ID NO:95.
Smith teaches an algal cytochrome c6 protein wherein the protein comprises an amino acid sequence with 100% sequence identity to SEQ ID NO: 95 (see Result 1, previously cited).
The level of ordinary skill in the plant transformation art is high and the use of transformed plant cells to express a gene or polynucleotide of interest is well-known in the art, as evidenced by Singh. It would have been prima facie obvious for one of ordinary skill in the art, at the time of filing, to substitute the generic cytochrome c6 protein of Singh with the specific cytochrome c6 protein of Smith to produce the genetically altered plant with enhanced photosynthetic electron transport taught by Singh. One would have been motivated to do so as Smith teaches the annotated sequence of cytochrome c6, which reveals its function in photosynthetic electron transport (Smith et al., Molecular Phylogenetics and Evolution, 2012; 65(1):339-344; see Result 1, previously cited) and Singh teaches transformation of FBPase, SBPase, and FBP/SBPase proteins (pp. 1218-1220, “Regeneration of Ribulose-1, 5-bisphosphate”) and cytochrome c6 proteins (p. 1221, left column, first partial paragraph) into various plants to promote plant growth and photosynthesis. Singh also teaches that photosynthetic electron transport is the rate-limiting step in CO2 assimilation (p. 1220, right column, first full paragraph). Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention with a reasonable expectation of success and without any surprising or unexpected results. Therefore, this rejection is maintained.
14. Claim 14 remains rejected under 35 U.S.C. 103 as being unpatentable over Singh et al., (Plant Biotechnology Journal. 2014;12(9):1217-30 (previously cited)) in view of Simkin et al., (Plant Biotechnology Journal. 2017; 15:805–816 (previously cited)), as applied to claims 1-2, 5-6, 9-10, and 16-19 above, and further in view of Liu et al., (US-2010/0218275-A1, published 08/26/2010 (previously cited)).
The teachings of Singh and Simkin are as discussed above and in the Non-Final Rejection dated December 03, 2024.
The combination of Singh and Simkin does not teach expressing a sequence having at least 90% sequence identity to SEQ ID NO:39.
Liu teaches the improvement of salt tolerance in plants via the expression of a cyanobacterial FBP/SBPase[0037], wherein the FBP/SBPase protein comprises an amino acid sequence with 99.2% sequence identity to SEQ ID NO: 39 (see SEQ ID NO: 2), that loss of either FBPase and/or SBPase activity results in a reduced rate of photosynthesis and inhibited growth[0005-0006], that transgenic tobacco expressing a cyanobacterial FBP/SBPase demonstrate enhanced photosynthetic efficiency and growth[0006], and that FBPase and SBPase activity can serve as good targets for the preparation of genetically modified plants with increased biomass and crop productivity[0007].
The level of ordinary skill in the plant transformation art is high and the use of transformed plant cells to express a gene or polynucleotide of interest is well-known in the art, as evidenced by both Singh and Liu. It would have been prima facie obvious for one of ordinary skill in the art, at the time of filing, to substitute the generic FBP/SBPase taught by Singh with the specific cyanobacterial FBP/SBPase taught by Liu to produce a genetically altered plant with enhanced photosynthetic capacity. One would have been motivated to do so as both Singh and Liu teach the importance of FBP/SBPase in CO2 assimilation. Furthermore, the cyanobacterial FBP/SBPase taught by Liu is also demonstrated to increase resistance to abiotic stress, which would further promote plant growth.
Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention with a reasonable expectation of success and without any surprising or unexpected results. Therefore, this rejection is maintained.
Conclusion
15. No claim is allowed.
Examiner’s Contact Information
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEQUANTARIUS JAVON SPEED whose telephone number is (703)756-4779. The examiner can normally be reached M-F; 9AM-5PM ET.
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/DEQUANTARIUS JAVON SPEED/Junior Examiner, Art Unit 1663 /Amjad Abraham/SPE, Art Unit 1663