DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12 January 2026 has been entered.
Claims 1-5, 10, 17-26, 31-38, and 40-42 are pending. Claims 31-32 and 34-37 are withdrawn from consideration as being drawn to nonelected species.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The rejection of claims 1-5, 10, 17-26, 33, 38, and 40-42 under 35 U.S.C. 103(a) as being unpatentable over Barten et al (US 2019/0246619, published 15 August 2019) in view of Chen et al (8 October 2019, Transgenic Res. 28:589-599), and Inze et al (US 2014/0344996) is withdrawn.
Claim Rejections - 35 USC § 112
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 the second paragraph of 35 U.S.C. 112:
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.
Claims 1-5, 10, 17-26, 33, 38, and 40-42 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 that the inventor or a joint inventor, or for pre-AIA the applicant, regards as the invention. Dependent claims are included in all rejections.
Due to Applicant’s amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 24 October 2025. Applicant’s arguments filed 12 January 2026 have been fully considered but they are not persuasive.
The phrases “reduced by at least 30 % relative to control plants that do not comprise the recombinant DNA construct when grown in the same environmental conditions” in claim 1 and the phrase “reduced by at least 30 % relative to control plants that do not comprise the recombinant DNA construct when grown in the same environmental condition” in claim 22-26 are relative terms that render the claims indefinite. The phrase is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Although the height is compared to control plants that do not comprise the recombinant DNA construct, the height of plants comprising a dominant or semi-dominant transgene encoding a GA2 oxidase expressed from a plant promoter is affected by the environmental conditions under which a plant is grown. Depending on the year the plants are grown, the average height difference between the transgenic and control plant can vary by as much as about 20 cm (Chen et al, 2019, Transgenic Res. 28:589-599; see Table 1, transgenic line #4+ and control line #4-). This shows the height of the plants is dependent upon the environmental conditions under which the plants are growing. Thus, the phrase is a relative term that renders the claims indefinite.
Further, claim 22-26 only require that one environmental condition be the same. Differences in other environmental conditions would result in even greater variations in the height of the transgenic plants compared to control plants.
Additionally, the claims do not require that control plants be grown in the field to which the agricultural composition is applied. Without that, one would not know in any given year by what percent the height of the plants is reduced relative to a control plant.
Response to Arguments
Applicant urges that one of skill in the art understands that a "control" implies that only one variable should be modified, citing a reference not provided, and environmental conditions to which the control plants are subjected to would be identical to the corn plants that have a stature or height that is reduced by at least 30 % relative to control plants that do not comprise the recombinant DNA construct (response pg 11-12).
This is not found persuasive.
Chen et al show that the average height difference between corn plant transformed with a construct encoding a GA2 oxidase and control plants not so transformed varies due to year grown, i.e., environmental conditions (Table 1). For example, the average height of mature transgenic line #4+ is only 4.4% less than the average height of mature control line #4- in season 1, but it is 16.5% shorter than the control in season 2. Someone applying an agricultural composition as recited in the claimed method but to plants that have a stature or height that is reduced by less than 30 % relative to control plant would appear to outside the scope of the claims and would not be infringing. However, since the average height difference between transformed and control corn plants is affected by environmental conditions, that person may infringe solely as a result of the environmental conditions of a given growing year; thus, that person would have no way of knowing if they would be infringing at the time of planting.
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 1-5, 10, 17-26, 33, 38, and 40-42 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 claims contain 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.
The rejection is modified from the rejection set forth in the Office action mailed 24 October 2025. Applicant’s arguments filed 12 January 2026 have been fully considered but they are not persuasive.
The claimed methods require corn plants at the V12, V13, V14, V15, V16 or R1 stage and that comprise a dominant or semi-dominant transgene encoding a maize GA2 oxidase expressed from a plant promoter, where the corn plants have a height that is reduced by at least 30% relative to control plants that do not comprise the transgene.
The specification describes no plants that comprise a dominant or semi-dominant transgene encoding a maize GA2 oxidase expressed from a plant promoter, where the corn plants have a height that is reduced by at least 30% relative to control plants that do not comprise the transgene. The specification describes no plants over the full scope of claimed maize GA2 oxidases.
Newly added Example 4 describes transformation vectors for expression of the instant SEQ ID NOs:327, 329 and 341 from the RTBV promoter.
WO 2022/133460, which claims priority to two of the same provisional applications to which the instant application claims priority (63/125,752 and 63/180,344), demonstrates that plants comprising these transformation vectors have a height that is reduced by at least 30% relative to control plants that do not comprise the transgene at the V5 and V9 stages (Tables 18 and 19). However, none of these plants have an average height that represents the full range required by the claims, 0.3 to 1.6 meters at the V12, V13, V14, V15, V16 and R1 stage. AS plant height doubled between V5 and B9 stages for all these plants, none would have a height at the lower end of that range at the V12, V13, V14, V15, V16 or R1 stage.
Further, only one of those had an average height that is reduced by at least 30% relative to control plants that do not comprise the transgene at the V5 and V9 stage when the plants were hemizygous (Table 19).
Only claim 21 limits the promoter to the RTBV promoter. The specification describes no plants expressing claimed maize GA2 oxidases from other promoters, where the plants have a height that is reduced by at least 30% relative to control plants that do not comprise the transgene.
Further, the height of plants that comprise a dominant or semi-dominant transgene encoding a GA2 oxidase expressed from a plant promoter is dependent upon the environmental conditions under which the plants are growing. Depending on the year the plants are grown, the average height difference between the transgenic and control plant can vary by as much as about 20 cm (Chen et al, 2019, Transgenic Res. 28:589-599; see Table 1, transgenic line #4+ and control line #4-).
Because height reduced maize plants transformed with nucleic acids encoding the claimed maize GA2 oxidases are not described over the full scope of the claims, the claimed methods of providing an agricultural composition to the plants are likewise not described, and the specification fails to provide an adequate written description of the claimed invention.
Therefore, given the lack of written description in the specification with regard to the structural and functional characteristics of the compositions used in the claimed methods, Applicant does not appear to have been in possession of the claimed genus at the time this application was filed.
Response to Arguments
Applicant urges that the specification describes plants expressing Zm.GA2ox genes as being 30% smaller relative to controls; thus, the inventors had possession of the claimed subject matter as of the filing date (response pg 12-13).
This is not found persuasive for the reasons detailed in the rejection above.
Claim Rejections - 35 USC § 103
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.
Claims 1-5, 10, 17-26, 33, 38, and 40-42 are rejected under 35 U.S.C. 103(a) as being unpatentable over Barten et al (US 2019/0246619, published 15 August 2019) in view of Chen et al (8 October 2019, Transgenic Res. 28:589-599), Inze et al (US 2014/0344996) and Gou et al (2011, New Phytologist doi: 10.1111/j.1469-8137.2011.03837).
The claims are drawn to a method of providing an agricultural composition to a corn field comprising applying said agricultural composition on said corn field from above using a ground-based agricultural vehicle comprising an applicator for applying said agricultural composition, wherein the corn plants of said corn field comprise an average height of 0.3 to 1.6 meters, wherein at least 90% of said corn plants are at V12, V13, V14, V15, V16, or R1 stage, wherein the corn plants have a height that is reduced by at least 30% relative to control plants that do not comprise the transgene, and wherein said corn plants comprise a dominant or semi-dominant transgene that encodes a GA2 oxidase encoded by SEQ ID NO:325 or 345 and causes a short stature phenotype in the one corn plants.
Barten et al teach a method comprising applying an agriculture composition like water, a fertilizer, a pesticide, an insecticide, an herbicide, a fungicide, and/or cover crop seed to a corn field from above using a ground-based agricultural vehicle comprising an applicator for applying the agricultural composition, where at least 90% of said corn plants within said corn field are not damaged by the applicator, where the applicator of the ground-based agricultural vehicle is at a height above ground of 1.8 meters or less, and where at least 90% of the corn plants are at V12, V13, V14, V15, V16, or R1 stage (¶54-64). The ground-based agricultural vehicle comprises a main body, and where the applicator is attached to the main body, where the lower exterior surface of the main body is at a height above soil level of 1.8 meters or less and is equal to or less than 15 centimeters shorter than average height of said corn plant (¶7, 54-65). The corn plants are not damaged by said ground-based agricultural vehicle when their height is equal to or less than 1.8 meters (¶8). The corn plants are not damaged by the applicator when they are at the V12, V13, V14, V15, V16, or R1 stage and are 1.8 meters tall or even much shorter (¶68).
Barten et al also teach the method where at least 90% of the corn plants at the V12, V13, V14, V15, V16, or R1 stage and at least 95% of the corn plants are less than full height (¶39; 53-60; 63-64); these plants would have a height that is 30% of that of control plants
Barten et al also teach the method where the plants are dwarf because they have the Br2 allele; these plants include those that have a height that is reduced by least 30% compared to control plants (¶212).
Barten et al teach that an applicator comprises an applicator arm or boom (¶218) and use of the method in a corn field with a planting density of at least 10,000 corn plants per acre (¶30). Barten et al also teach positioning the lower surface of the applicator is at least one centimeter higher than the average height of said corn plants (¶222).
Barten et al teach hybrid semi-dwarf corn plants comprising a GA20 oxidase suppression construct (SUP_GA20 oxidase) expressed from the RTBV promoter (¶423), which is a vascular promoter (¶165). Barten et al teach that the sequence of the RTBV promoter is their SEQ ID NO:39, which has 100% identity to the instant SEQ ID NO:656:
US-16-276-617-39
Filing date in PALM: 2019-02-15
Sequence 39, US/16276617
Publication No. US20190246619A1
GENERAL INFORMATION
APPLICANT: MONSANTO TECHNOLOGY LLC
TITLE OF INVENTION: IMPROVED MANAGEMENT OF CORN THROUGH SEMI-DWARF SYSTEMS
FILE REFERENCE: P34578US00/0016518.00361
CURRENT APPLICATION NUMBER: US/16/276,617
CURRENT FILING DATE: 2019-02-15
PRIOR APPLICATION NUMBER: US 62/631,181
PRIOR FILING DATE: 2018-02-15
PRIOR APPLICATION NUMBER: US 62/775,346
PRIOR FILING DATE: 2018-12-0nfcdrt54y774
NUMBER OF SEQ ID NOS: 131
SEQ ID NO 39
LENGTH: 726
TYPE: DNA
ORGANISM: Rice tungro bacilliform virus
ALIGNMENT:
Query Match 100.0%; Score 726; Length 726;
Best Local Similarity 100.0%;
Matches 726; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 TCCTACAAAAGGGAGTAGTAATATTTAATGAGCTTGAAGGAGGATATCAACTCTCTCCAA 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 TCCTACAAAAGGGAGTAGTAATATTTAATGAGCTTGAAGGAGGATATCAACTCTCTCCAA 60
Qy 61 GGTTTATTGGAGACCTTTATGCTCATGGTTTTATTAAACAAATAAACTTCACAACCAAGG 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 GGTTTATTGGAGACCTTTATGCTCATGGTTTTATTAAACAAATAAACTTCACAACCAAGG 120
Qy 121 TTCCTGAAGGGCTACCGCCAATCATAGCGGAAAAACTTCAAGACTATAAGTTCCCTGGAT 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 TTCCTGAAGGGCTACCGCCAATCATAGCGGAAAAACTTCAAGACTATAAGTTCCCTGGAT 180
Qy 181 CAAATACCGTCTTAATAGAACGAGAGATTCCTCGCTGGAACTTCAATGAAATGAAAAGAG 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 CAAATACCGTCTTAATAGAACGAGAGATTCCTCGCTGGAACTTCAATGAAATGAAAAGAG 240
Qy 241 AAACACAGATGAGGACCAACTTATATATCTTCAAGAATTATCGCTGTTTCTATGGCTATT 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 AAACACAGATGAGGACCAACTTATATATCTTCAAGAATTATCGCTGTTTCTATGGCTATT 300
Qy 301 CACCATTAAGGCCATACGAACCTATAACTCCTGAAGAATTTGGGTTTGATTACTACAGTT 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 301 CACCATTAAGGCCATACGAACCTATAACTCCTGAAGAATTTGGGTTTGATTACTACAGTT 360
Qy 361 GGGAAAATATGGTTGATGAAGACGAAGGAGAAGTTGTATACATCTCCAAGTATACTAAGA 420
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 361 GGGAAAATATGGTTGATGAAGACGAAGGAGAAGTTGTATACATCTCCAAGTATACTAAGA 420
Qy 421 TTATCAAAGTCACTAAAGAGCATGCATGGGCTTGGCCAGAACATGATGGAGACACAATGT 480
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 421 TTATCAAAGTCACTAAAGAGCATGCATGGGCTTGGCCAGAACATGATGGAGACACAATGT 480
Qy 481 CCTGCACCACATCAATAGAAGATGAATGGATCCATCGTATGGACAATGCTTAAAGAAGCT 540
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 481 CCTGCACCACATCAATAGAAGATGAATGGATCCATCGTATGGACAATGCTTAAAGAAGCT 540
Qy 541 TTATCAAAAGCAACTTTAAGTACGAATCAATAAAGAAGGACCAGAAGATATAAAGCGGGA 600
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 541 TTATCAAAAGCAACTTTAAGTACGAATCAATAAAGAAGGACCAGAAGATATAAAGCGGGA 600
Qy 601 ACATCTTCACATGCTACCACATGGCTAGCATCTTTACTTTAGCATCTCTATTATTGTAAG 660
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 601 ACATCTTCACATGCTACCACATGGCTAGCATCTTTACTTTAGCATCTCTATTATTGTAAG 660
Qy 661 AGTGTATAATGACCAGTGTGCCCCTGGACTCCAGTATATAAGGAGCACCAGAGTAGTGTA 720
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 661 AGTGTATAATGACCAGTGTGCCCCTGGACTCCAGTATATAAGGAGCACCAGAGTAGTGTA 720
Qy 721 ATAGAT 726
||||||
Db 721 ATAGAT 726
At V12 the plants had an average height of 1.53 feet (Table 3); based on statement that these plants at V11 had an average height of 5 feet or 1.52 meters (¶424) and at R1 ranged in height from 4.12 feet (1.26 meters) to 5.37 feet (1.64 meters) (¶428), the units in Table 3 are probably actually meters. At V8 the plants averaged 0.71 feet (again, probably meters, Table 3).
Barten et al do not teach the method where the semi-dwarf corn plants are transformed with a construct encoding a GA2 oxidase.
Chen et al teach inbred HiII maize plants transformed with a construct comprising the ubiquitin promoter operably linked to a DNA encoding the AtGA2ox1 GA2 oxidase (AT1g78440) (pg 591, left column, ¶3, to right column, ¶2). Chen et al isolated a cDNA encoding AtGA2ox1 from Arabidopsis ecotype Columbia using primers that match to the first and last codons of the coding region of the cDNA (pg 590, right column, ¶3, to pg 591, left column, ¶2).
Chen et al’s plants have bioactive GA levels that are lower than those in unmodified plants (pg 593, right column). The plants in Table 1 are at what appears to be maturity, as the table also lists maturity traits like yield; at this stage, which is after R1, they are less than 1.8 meters tall, with many less than 1.6 meters tall (Table 1). The plants used to produce the data in Table 1 were F1 hybrid plants (Table 1 legend); thus, the transgene encoding the GA2 oxidase was dominant. These plants have increased yield (pg 597, left column, ¶1) and yield-effective traits, including increased chlorophyll content and a greater root/shoot ratio (pg 597, left column, ¶2).
Chen et al teach that corn plants transformed with a construct comprising a nucleic acid encoding the AtGA2ox1 GA2 oxidase have an increased relative stem cell density, which is a trait aiding lodging resistance (pg 596, left column).
Gou et al teach that popular plants transformed with a construct encoding a popular GA2 oxidase were shorter than those transformed with a construct encoding a bean GA2 oxidase (paragraph spanning the columns on pg 4).
Inze et al teach two Zea mays GA2 oxidases, their SEQ ID Nos:8 and 10, which are encoded by their SEQ ID NOs:7 and 9, respectively (¶42).
Inze et al’s SEQ ID NO:8 is a protein that is two amino acids shorter than the instant SEQ ID NO:325; it has 99.4% identity to SEQ ID NO:325:
US-14-345-227-8
Filing date in PALM: 2014-07-09
Sequence 8, US/14345227
Publication No. US20140344996A1
GENERAL INFORMATION
APPLICANT: VIB VZW
APPLICANT: UNIVERSITEIT GENT
TITLE OF INVENTION: Methods and means to produce abiotic stress tolerant plants
FILE REFERENCE: DI/GIBB/387
CURRENT APPLICATION NUMBER: US/14/345,227
CURRENT FILING DATE: 2014-03-14
PRIOR APPLICATION NUMBER: US 61/627,033
PRIOR FILING DATE: 2011-09-16
PRIOR APPLICATION NUMBER: GB 1116129.6
PRIOR FILING DATE: 2011-09-19
NUMBER OF SEQ ID NOS: 10
SEQ ID NO 8
LENGTH: 366
TYPE: PRT
ORGANISM: Zea mays
Query Match 99.4%; Score 1448; Length 366;
Best Local Similarity 100.0%;
Matches 276; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MVVPSTTPVVRQETPPPSHDGIGIPTVDLSAPGGRGALSRQVARACAQHGFFRAVNHGVA 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MVVPSTTPVVRQETPPPSHDGIGIPTVDLSAPGGRGALSRQVARACAQHGFFRAVNHGVA 60
Qy 61 PGPAARLDAAARTFFALAPHNKQRAGPPSPLGYGCRSIGFNGDAGELEYLLLHANPAAVA 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 PGPAARLDAAARTFFALAPHNKQRAGPPSPLGYGCRSIGFNGDAGELEYLLLHANPAAVA 120
Qy 121 HRARSIDTDDPSRFSNVVNEYVGAMRQLACEILDLLGEGLGLKDPRSFSRLIADTDSDSL 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 HRARSIDTDDPSRFSNVVNEYVGAMRQLACEILDLLGEGLGLKDPRSFSRLIADTDSDSL 180
Qy 181 LRINHYPPPCAIHKLDHDSQCRMKNSFRIVAGNGANQSAGARIGFGEHSDPQILSLLRSN 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 LRINHYPPPCAIHKLDHDSQCRMKNSFRIVAGNGANQSAGARIGFGEHSDPQILSLLRSN 240
Qy 241 DVDGLQVLLNSDGREVWVQVPADPSAFFVNVGDLLQ 276
||||||||||||||||||||||||||||||||||||
Db 241 DVDGLQVLLNSDGREVWVQVPADPSAFFVNVGDLLQ 276
Inze et al’s SEQ ID NO:10 has 100% identity to SEQ ID NO:345:
US-14-345-227-10
Sequence 10, US/14345227
Publication No. US20140344996A1
GENERAL INFORMATION
APPLICANT: VIB VZW
APPLICANT: UNIVERSITEIT GENT
TITLE OF INVENTION: Methods and means to produce abiotic stress tolerant plants
FILE REFERENCE: DI/GIBB/387
CURRENT APPLICATION NUMBER: US/14/345,227
CURRENT FILING DATE: 2014-03-14
PRIOR APPLICATION NUMBER: US 61/627,033
PRIOR FILING DATE: 2011-09-16
PRIOR APPLICATION NUMBER: GB 1116129.6
PRIOR FILING DATE: 2011-09-19
NUMBER OF SEQ ID NOS: 10
SEQ ID NO 10
LENGTH: 371
TYPE: PRT
ORGANISM: Zea mays
Query Match 100.0%; Score 1928; Length 371;
Best Local Similarity 100.0%;
Matches 371; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MVVPSTTPVVRQQTTPPQSSHAGGIPTVDLSAHGGRGALSRQVVRACAEHGFFRAVNHGV 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MVVPSTTPVVRQQTTPPQSSHAGGIPTVDLSAHGGRGALSRQVVRACAEHGFFRAVNHGV 60
Qy 61 PPGPAARLDAAARTFFALAPRDKQRAGPPSPLGYGCRSIGFNGDAGELEYLLLHANNPAA 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 PPGPAARLDAAARTFFALAPRDKQRAGPPSPLGYGCRSIGFNGDAGELEYLLLHANNPAA 120
Qy 121 VAHRARAIDAEEPSRFSNVVNEYVGAMRQLACEILDLLGEGLGLEDPRSFSKLITDTDSD 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 VAHRARAIDAEEPSRFSNVVNEYVGAMRQLACEILDLLGEGLGLEDPRSFSKLITDTDSD 180
Qy 181 SLLRINHYPTACNAHNLDHDSQCKMKSSVRTKTTSNGVKPSAGGRVGFGEHSDPQILSLL 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 SLLRINHYPTACNAHNLDHDSQCKMKSSVRTKTTSNGVKPSAGGRVGFGEHSDPQILSLL 240
Qy 241 RANDVDGLQVLLNADGKEVWVQVPADQSAFFVNVGDLLQALTNGKLVSVRHRVIASSSRA 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 RANDVDGLQVLLNADGKEVWVQVPADQSAFFVNVGDLLQALTNGKLVSVRHRVIASSSRA 300
Qy 301 RLSTIYFAAPPLHARILALAETITANAPSQYRPFTWAEYKKTMYSLRLSHSRLNLFHIDH 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 301 RLSTIYFAAPPLHARILALAETITANAPSQYRPFTWAEYKKTMYSLRLSHSRLNLFHIDH 360
Qy 361 DGHSNVGEGEE 371
|||||||||||
Db 361 DGHSNVGEGEE 371
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to substitute one of the Z. mays GA2 oxidases taught by Inze et al for the Arabidopsis GA2 oxidase in Chen et al’s the corn plants. One of ordinary skill in the art would have been motivated to do so because Gou et al teach that overexpressing a native GA2 oxidase in plants results in shorter plants than expressing a GA2 oxidase from a different plant species does (Gou et al, paragraph spanning the columns on pg 4). One of ordinary skill in the art would expect that corn plants transformed with nucleic acid encoding a Z. maysGA2 oxidase to be even shorter semi-dwarf corn plants than corn plants transformed with nucleic acid encoding a Arabidopsis GA2 oxidase were.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the methods of applying an agriculture composition taught in Barten et al to use the Z. mays GA2 oxidase-transformed semi-dwarf corn plants as the corn plants. One of ordinary skill in the art would have been motivated to do so because they would expect that these even shorter semi-dwarf corn plants to be even more suitable for use in Barton et al’s method, as their shorter height would make it easier to avoid damage during application of the agricultural composition.
Further, as Chen et al’s plants have increased yield when they mature (pg 597, left column, ¶1), one of ordinary skill in the art would have expected the Z. mays GA2 oxidase-transformed semi-dwarf corn plants to also have increased yield, thus being attractive to farmers interested in selling that yield.
It would have been obvious to one of ordinary skill in the art to use the vascular RTBV promoter, which has 100% identity to the instant SEQ ID NO:656 and which Barten et al used in their constructs (¶423), to express the Z. mays GA2 oxidase in corn plants because Chen et al teach the main effect of ectopic expression of the GA2 oxidase in corn plants was in stem tissues, especially the vascular xylem and phloem tissue (pg 594, left column, ¶2). One of ordinary skill in the art would have expected the same with Z. mays GA2 oxidase-transformed semi-dwarf corn plants and wanted overexpression of the GA2 oxidase to be in the tissues most affected. The RTBV promoter of SEQ ID NO:656 is one such promoter that targets expression to vascular tissues.
It would have been obvious to one of ordinary skill in the art to select for transformants that that have a height that is reduced by least 30% compared to control plants. One of ordinary skill in the art would have been motivated to do so because Barten et al teach that it is desirable to use such plants in the method (¶212).
Chen et al teach that the average height difference between their transgenic and control plant can vary by as much as about 20 cm (Table 1, transgenic line #4+ and control line #4-). Chen et al also teach that the variation in height reduction from one transgenic plant to another is the result of the genomic site into which the transgene was inserted (pg 596, right column, paragraph 2). One of ordinary skill in the art would have expected the same for the Z. mays GA2 oxidase-transformed semi-dwarf corn plants and have wanted to select for transformants that had a maximal reduction in height compared to control plants to be sure that environmental effects did not alter transformant growth such that the plants were too tall to be used in the method. Selecting for plants that have a 30% reduction compared to control plants under some conditions would ensure the plants would be short enough to not be damaged by the applicator when growing under conditions that result in the plants having a less than a 30% reduction compared to control plants. One of ordinary skill in the art would have wanted to plant seeds in which 95% or more of the plants had this growth reduction (and thus the transgene) relative to control plants to ensure that the maximum number of plants are not damaged by the machine applying the agricultural composition, i.e., that 95% or more of the plants are not damaged, as damage would reduce profits.
As corn plants transformed with a construct comprising a nucleic acid encoding the GA2 oxidase of the instant SEQ ID NO:325 or 345 would have bioactive GA levels that are lower than those in unmodified plants, as Chen et al saw for their plants (pg 593, right column), corn plants transformed with a construct comprising the vascular RTBV promoter of the instant SEQ ID NO:656 operably linked to a nucleic acid encoding the GA2 oxidase of SEQ ID NO: 325 or 345 would have lower bioactive GA levels in at least one internode tissue of the stem or stalk of the modified corn plant is lower than the same internode tissue of an unmodified control plant.
Response to Arguments against the previous rejection
These arguments are addressed to the extent these arguments apply to this current 103 rejection.
Applicant urges that tables from WO 2022/133460 show that expression of GA2 oxidase constructs are effective at reducing plant height and that some transformation events had significant plant height reduction (response pg 14-15).
This is not found persuasive because the data merely show that what the prior art makes obvious performs as expected.
Conclusion
No claim is allowed.
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/Anne Kubelik/Primary Examiner, Art Unit 1663