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 .
Status of the Claims
The status of the most recently submitted claims dated 03/06/2026 is as follows:
Claims 2, 4-7, 9, and 10-11 are cancelled.
Claims 1, 3, 8, and 12- 20 are pending.
Claims 13-14 and 16-20 are withdrawn from consideration.
Claims 1, 3, 8, 12, and 15 are examined herein.
The previous rejection to claim 10 under 35 USC 103 has been withdrawn in view of Applicant’s cancellation of the claim.
Claims 1, 3, and 8 are allowed.
Claims 12 and 15 are rejected.
Priority
As previously stated, Application No. 17/768,696 filed on 04/13/2022 is a 371 of PCT Application No. PCT/EP2020/079174 filed on 10/16/2020 which claims priority to provisional Application No. 62/916,578 filed on 10/17/2019.
Restriction/ Election
Invention III, encompassing claims 12 and 15, is rejoined and examined herein. Because a claimed invention previously withdrawn from consideration has been rejoined, the restriction requirement between groups I and III as set forth in the Office action mailed on 06/10/2024 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
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.
Claims 12 and 15 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.
This is a new rejection necessitated by Applicant’s amendments (cancellation of claim 10) that led to rejoinder and examination of claims 12 and 15.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites into two instances a broad recitation of a sequence identity requirement, and the claim also recites “preferably over its entire length” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 15 is rejected as a function of dependency.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 12 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang (US Patent Application Publication No. US-2015/0322452-A1).
This is a new rejection necessitated by Applicant’s amendments (cancellation of claim 10) that led to rejoinder and examination of claim 12.
Claim 12 is drawn to a vector comprising a polynucleic acid comprising
A) a sequence which is at least 90% identical, preferably over its entire length, to a sequence of any of SEQ ID NOs: 19-34, or 52-65; or which encodes a polypeptide which is at least 90% identical, preferably over its entire length, to a sequence of any of SEQ ID NOs: 2-17, 80-87, or 37-50, or
B) a polynucleic acid specifically hybridizing with the polynucleic acid of a), the complement thereof, or the reverse complement thereof.
Regarding claim 12, Wang discloses an expression construct comprising a promoter that drives expression in a plant operably linked to a transcription factor, wherein the nucleotide sequence of the transcription factor has at least 95% sequence identity to SEQ ID NO: 29 of Wang (claim 12 of Wang). The nucleotide sequence of SEQ ID NO: 29 of Wang encodes the polypeptide sequence of SEQ ID NO: 30 of Wang, which has 98.2% sequence identity to instant SEQ ID NO: 37 over its entire length (see alignment below). Thus, Wang discloses the instantly claimed vector comprising a polynucleic acid that encodes a polypeptide which is at least 90% identical, preferably over its entire length, to SEQ ID NO: 37.
RESULT 2
BCH11896
ID BCH11896 standard; protein; 229 AA.
XX
AC BCH11896;
XX
DT 31-DEC-2015 (first entry)
XX
DE Zea mays transcription factor (GRMZM2G474326) protein, SEQ ID 30.
XX
KW EREB134 protein; GRMZM2G474326; Transcription factor; crop improvement;
KW gene expression; gene regulation; growth; plant; seed; transgenic plant.
XX
OS Zea mays.
XX
CC PN US2015322452-A1.
XX
CC PD 12-NOV-2015.
XX
CC PF 11-MAY-2015; 2015US-00708823.
XX
PR 12-MAY-2014; 2014US-0991949P.
PR 11-JUL-2014; 2014US-0023432P.
XX
CC PA (DANF-) DANFORTH PLANT SCI CENT DONALD.
XX
CC PI Brutnell TP, Bryant DW, Mockler TC, Wang L;
XX
DR WPI; 2015-710759/82.
DR N-PSDB; BCH11895.
XX
CC PT Improving plant e.g. monocotyledonous plant or dicotyledonous plant
CC PT growth, involves altering expression of nucleotide sequence encoding
CC PT transcription factor, and retains transcription factor activity.
XX
CC PS Disclosure; SEQ ID NO 30; 21pp; English.
XX
CC The present invention relates to a novel method for improving plant
CC growth. The method comprises: altering the expression of at least one
CC transcription factor (TF) encoding nucleotide sequence selected from SEQ
CC ID NO: 3-473 (see BCH11869-BCH12339) ((only odd numbers), wherein said
CC nucleotide sequence retains transcription factor activity. Also described
CC are: (1) a synthetic promoter operable in a plant cell comprising at
CC least one of cis-regulatory elements operably linked to at least one core
CC promoter element; (2) a method for expressing at least one sequence of
CC interest in a plant; (3) an expression construct comprising a promoter
CC that drives the expression in a plant operably linked to the
CC transcription factor coding gene; (4) a plant transformed with the
CC expression construct; and (5) a transformed seed of the plant. The method
CC of the present invention is useful for improving plant growth and yield,
CC where the plant is a monocotyledonous plant or a dicotyledonous plant.
CC The present sequence represents a Zea mays transcription factor
CC (GRMZM2G474326/ZmEREB134) protein, whose coding DNA's expression is
CC altered for improving plant growth.
XX
SQ Sequence 229 AA;
Query Match 98.2%; Score 1175; Length 229;
Best Local Similarity 99.1%;
Matches 229; Conservative 0; Mismatches 0; Indels 2; Gaps 1;
Qy 1 MSTYISLSLERSSSVVRDAAKSAPPGSGVSAPYPRAGAGAGAGTSLSLSGAAAAHGHGQY 60
||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||
Db 1 MSTYISLSLERSSSVVRDAAKSAPPGSGVSAPYPR--AGAGAGTSLSLSGAAAAHGHGQY 58
Qy 61 LPLNEDDSLDMVLFDVLREASGSAPGATYQPPSSSLPTLKALASGASRKGGGNNGNGSRA 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 59 LPLNEDDSLDMVLFDVLREASGSAPGATYQPPSSSLPTLKALASGASRKGGGNNGNGSRA 118
Qy 121 AHAPKAATGRHYRGVRRRPWGKYAAEIRDPARHGARLWLGTFATAEEAAAAYDRAAFGMR 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 119 AHAPKAATGRHYRGVRRRPWGKYAAEIRDPARHGARLWLGTFATAEEAAAAYDRAAFGMR 178
Qy 181 GAKALLNFPPPAAGCGNAATATAKQAAGSQVNNGECDLLEENGSSHDSECF 231
|||||||||||||||||||||||||||||||||||||||||||||||||||
Db 179 GAKALLNFPPPAAGCGNAATATAKQAAGSQVNNGECDLLEENGSSHDSECF 229
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Wang (US Patent Application Publication No. US-2015/0322452-A1).
Claim 15 is drawn to a Zea mays or Triticum aestivum plant, plant part, or plant population comprising the polynucleic acid as defined in claim 12.
This is a new rejection necessitated by Applicant’s amendments (cancellation of claim 10) that led to rejoinder and examination of claim 15.
Regarding claim 15, Wang teaches the limitations of claim 12 as set forth in the previous anticipation rejection. The teachings of Wang as they are applied to claim 12 are set forth previously herein and are incorporated by reference. Furthermore, Wang teaches a plant transformed with the expression vector, wherein said plant is a monocotyledonous plant (claims 13 and 15 of Wang).
However, Wang does not explicitly teach in a single embodiment the plant comprising the polynucleic acid is Zea mays or Triticum aestivum.
In an alternative embodiment, Wang also teaches plant species of interest
include corn and wheat (¶0043).
Wang teaches all of the limitations of the rejected claims in alternative embodiments, but does not disclose a single embodiment having all the limitations. As such, the claims are not rejected as anticipated under 35 USC §102 but are instead rejected as obvious under 35 USC §103. One of ordinary skill in the art would have been motivated to combine the limitations as taught by Wang into a single embodiment to arrive at Applicant’s claimed inventions because each limitation is explicitly taught as an alternative embodiment of the invention. It would therefore be obvious to combine the teachings of Wang for the purpose of producing monocot plant comprising the expression vector explicitly taught by Wang (claims 12-13 and 15 of Wang), wherein the monocot is specifically maize or wheat which are named species of interest for transformation (¶0043). One having ordinary skill in the art would have a reasonable expectation of success because Wang teaches maize and wheat are species of interest for transformation in the invention of Wang, and transformation of these species is routine in the art presents no special technical obstacles.
Closest Prior Art
Claims 1, 3, and 8 appear free of the prior art.
Regarding claim 1, the closest prior art is Wang (US Patent Publication No. US
2015/0322452 A1). Wang teaches altering expression of a nucleotide sequence
encoding a transcription factor, wherein the maize-derived nucleotide sequence (SEQ
ID NO: 29 of Wang) encodes the amino acid sequence of SEQ ID NO: 30 of Wang.
which has 98.2% identity to instant SEQ ID NO: 37 (see alignment below) (claim 1 of
Wang and sequences) (i.e. a wild type ERF922 protein is encoded by a sequence which
is at least 98% identical over its entire length to SEQ ID NO: 37). Wang teaches the
transcription factor is downregulated such that expression of the TF is decreased
relative to a control plant cell (claim 3 of Wang) (i.e. reducing expression of an ERF922
protein and/or gene, and wherein expression of the ERF922 protein is reduced). Wang
also teaches the plant of interest is a monocotyledonous plant (claim 10 of Wang). In an
alternative embodiment, Wang also teaches plant species of interest include corn
(¶0043). However, Wang does not disclose, teach, or otherwise render obvious
wherein the Zea mays or Triticum aestivum plant, plant part, or plant population has
increased resistance and/ or tolerance to a fungal pathogen. Claims 3 and 8 appear free
of the art as a function of their dependency.
Response to Arguments
Applicant argues beginning on p. 6 of remarks dated 08/13/2026 the
following arguments:
Rejections under 35 U.S.C. § 103
Claim 10 is rejected under 35 U.S.C. § 103 as allegedly being obvious over US Patent Publication No. 2015/0322452 to Wang et al. ("Wang").
Without conceding the rejection is correct, and solely in the interest of advancing prosecution, Applicant herein amends cancels claim 10.
Applicant submits that all claims are patentable under 35 U.S.C. § 103 and respectfully requests the rejection be withdrawn.
Examiner’s Response:
The rejection under 35 USC 103 to claim 10 has been withdrawn in view of Applicant’s cancellation of claim 10. Invention III (claims 12 and 15) has been rejoined, and claims 12 and 15 are rejected under 35 USC 102 and 103, respectively.
Conclusion and Inquiries
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 JESSICA N STOCKDALE whose telephone number is (703)756-5395. The examiner can normally be reached M-F 8:30-5:00 CT.
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JESSICA N. STOCKDALE
Examiner
Art Unit 1663
/JESSICA NICOLE STOCKDALE/Examiner, Art Unit 1663
/CHARLES LOGSDON/Primary Examiner, Art Unit 1662
