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 .
DETAILED ACTION
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Claims 1-10 have an effective filing date of 03 FEB 2021.
Election/Restriction
In the response filed on 09 JUN 2025, Applicant’s elected, without traverse:
Group II – Claims 8-9
Status of Claims
Claims 1-10 are currently pending and presented for examination on the merits.
Claims 1-7 are withdrawn from further consideration by Examiner under 37 CFR 1.142(b) as being drawn to non-elected inventions.
Claim 10 is new.
Response to Arguments
In Applicant Arguments, dated 11/30/2025, Applicant asserts that “[i]n view of the dramatic difference between the oomycete and the yeast, although Sirr teaches that the natMX gene can be used as a drug marker for the transformation of yeast, there is still a lack of sufficient motivation for those skilled in the art to apply the natMX gene as a selection marker for the transformation of oomycete, and it also fails to extrapolate that the natMX gene is suitable as a selection marker for the transformation of oomycete.” Applicant further asserts that the same resistance gene can display different levels of effectiveness in different Phytophthora species. Applicant also asserts that “[t]he selection marker PsORP1ΔN777 provided by Miao is derived from the genetic mutation (the deletion of the position-777 aspartic acid), and has homologous counterparts in various oomycetes. However, the natMX gene taught by Sirr is an exogenous gene for the oomycetes, and has no homologous counterparts in the oomycetes… In view of the huge difference between the PsORP1ΔN777 and natMX genes, it is highly unpredictable whether the exogenous natMX gene is suitable as a drug marker for the transformation of oomycetes, and thus it is respectfully submitted that it is not obvious for those skilled in the art to introduce the natMX gene to the Miao's method in view of the teaching from Sirr.”
These arguments have been fully considered but are not deemed persuasive. It is noted that Sirr et al. teaches the use of the natMX gene as a drug marker for the transformation of yeast and that Miao et al. is concerned with the transformation of oomycetes. It is further noted that there are various differences between the PsORP1ΔN777 and natMX selection genes; however it is also known in the art that drug selection markers, such as natMX, allow for the selection of transformants of interest, because cells that are not transformed will be susceptible to the drug that the drug selection marker provides resistance to. Therefore one of ordinary skill in the art would reason that the natMX drug marker may be used in the production of plasmids that are introduced into a particular cell type, such as oomycetes, in order to allow for the screening and selection of desired transformants, i.e., transformants that are resistant to the drug. As such one of ordinary skill in the art would have been motivated to modify the teachings of Miao et al., which involve the transformation of Phytophthora (oomycete), to include the natMX drug marker of Sirr et al., because the resultant invention would provide a means of screening of potential Phytophthora (oomycete) transformants to select for those that have incorporated a desired transgene. The invention of Maio et al. and Sirr et al. meets at least meets the limitations of a recombinant vector containing the Nat1 gene, thus meeting the limitations of claim 8.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 DENNIS JOHN SULLIVAN whose telephone number is (571)272-0509. The examiner can normally be reached Mon - Fri: 7:30AM - 4:30PM.
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/DENNIS J SULLIVAN/ Examiner, Art Unit 1642
/NELSON B MOSELEY II/Primary Examiner, Art Unit 1642
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