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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/08/2026 has been entered.
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 11 are cancelled.
Claims 1, 3, 8, 10 and 12- 20 are pending.
Claims 12-20 are withdrawn from consideration.
Claims 1, 3, 8, and 10 are examined herein.
The rejection to claim 1 under 35 USC 112(a) has been withdrawn in view of Applicant’s amendments.
Claims 1, 3, and 8 are allowed.
Claim 10 is rejected.
Priority
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 II, encompassing claim 10, is rejoined and examined herein. Because a claimed invention previously withdrawn from consideration has been rejoined, the restriction requirement between groups I and II as set forth in the Office action mailed on 06/10/2024 is hereby withdrawn.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Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable.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 § 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.
Claims 10 is rejected under 35 U.S.C. 103 as being unpatentable over Wang (US Patent Application Publication No. US-2015/0322452-A1).
Claim 10 is drawn to a Zea mays or Triticum aestivum plant, plant part, or plant population obtained or obtainable by the method according to claim 1, or the progeny thereof, having reduced or eliminated expression or activity of the ERF922 protein or gene compared to the expression and/or activity in a Zea mays or Triticum aestivum plant, plant part, or plant population without the reduced or eliminated expression or activity of the ERF922 protein or gene, wherein the Zea mays or Triticum aestivum plant, plant part, or plant population is transgenic, mutagenized or gene-edited.
Regarding claim 10, 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).
However, Wang does not also explicitly teach in a single embodiment reducing or
eliminating expression of the protein and/or gene in a Zea mays (i.e. corn) plant. Wang also doesn’t explicitly teach in a single embodiment mutating the coding sequence or gene-editing the ERF922 gene using a CRISPR/Cas system targeting the nucleotide sequence encoding the ERF922 protein.
In an alternative embodiment, Wang also teaches plant species of interest
include corn (¶0043). Wang also teaches in an alternative embodiment that downregulation of the transcription factors can be achieved using technologies well understood in the art including CRISPR/Cas9 and the appropriate nucleic acid sequences for precise genome-editing of genomes (¶0071).
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. Specifically, the instantly claimed maize plant, plant part, plant population, or progeny thereof as recited in claim 10 only requires the function of reduced or eliminated expression or activity of the ERF922 gene compared to a control. In view of the teachings of Wang, it would be prima facie obvious to arrive at the maize plant of claim 10 for the purpose of downregulating SEQ ID NO: 29 of Wang in maize. Based on the above teachings, the product that is the plant produced by the method of claim 1 is obvious in view of Wang. The MPEP states "[E]ven though
product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not
depend on its method of production. If the product in the product-by-process claim is the
same as or obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process." In re Thorpe, 777 F.2d 695,
698, 227 USPQ 964, 966 (Fed. Cir. 1985)” (MPEP 2113.I). Therefore, even though
Wang does not teach the method step in claim 1 that is wherein the Zea mays or Triticum aestivium plant, plant part, or plant population has increased resistance and/or tolerance to the fungal pathogen (rendering the method claims allowable), the transgenic plant produced by the method of claim 1 only requires the function of reduced or eliminated expression or activity of the ERF922 gene compared to a control and is therefore obvious in view of the prior art and unpatentable. For this reason, the product of the claimed plant in claims 10 is obvious in view of Wang.
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. 7 of remarks dated 03/06/2026 the
following arguments:
Claim 1 is rejected under 35 U.S.C. § 112(a) as allegedly failing to comply with the written description requirement. See Office Action, p. 3-5.
Without conceding the rejection is correct, and solely in the interest of advancing prosecution, Applicant herein amends claim 1 to remove recitation of mutations in the regulatory sequence of ERF922 and their effects on expression of ERF922 in part (i). Part (ii) of claim 1 recites knocking out the ERF922 gene or knocking down the ERF922 protein to reduce or eliminate the ERF922 protein or gene expression or activity, and Applicant submits that these limitations are supported in Examples 6-8 of the Application as filed.
Applicant submits that all claims are patentable under 35 U.S.C. § 112(a) and respectfully requests the rejections be withdrawn.
This argument has been fully considered and is found persuasive for
the following reason(s):
The rejection under 35 USC 112(a) is withdrawn in view of Applicant’s amendments which limit the claims to no longer encompass reducing expression or activity of said ERF922 protein by any mutation of any regulatory sequence of the ERF922 gene.
Conclusion
Claims 1, 3, and 8 are allowed.
Claim 10 is rejected.
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
Prosecution Insights