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 objections and rejections
1. Claims 1-3, 6-15, 17-19, and 21-29 and newly added claims 30-32 are pending. Newly added claims 30-32 fall within the scope of the elected invention. Claims 4, 5, 16 and 20 are cancelled. Claims 27-29 are previously withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. Accordingly, claims 1-3, 6-15, 17-19, 21-26 and newly added claims 30-32 are examined on merits in the instant Office action.
2. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
3. Rejection of Claim(s) 1-3 and 6-15 under 35 U.S.C. 102(a)(1) as being anticipated by Schultheiss et al. (US Patent Publication NO. 2015/0074842 A1; Published March 12, 2015) is withdrawn in light of claim amendments filed in the papers of June 4, 2026 and upon further consideration.
4. Rejection of Claim(s) 1, 3, 6, 12, 13, 14, 17, 18, 19 and 24-26 under 35 U.S.C. 102(a)(1) as being anticipated by Chowrira et al. (Transgenic research; 7:265-271, 1998) is withdrawn in light of claim amendments filed in the papers of June 4, 2026 and upon further consideration.
5. Rejection of Claim(s) 1-3 and 6-15 under 35 U.S.C. 102(a)(1) as being anticipated by Schultheib et al. (WIPO, WO 2013/093738 A1, Published June 27, 2013 is withdrawn in light of claim amendments filed in the papers of June 4, 2026 and upon further consideration.
6. Rejection of Claim(s) 1 and 15 under 35 U.S.C. 103 as being unpatentable over Schultheiss et al. (US Patent Publication NO. 2015/0074842 A1; Published March 12, 2015), and further in view of Chen et al. (Horticulture Research, 5(13): 1-12, published 2018) is withdrawn in light of claim amendments filed in the papers of June 4, 2026 and upon further consideration.
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 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.
Newly added Claims 30-32 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. Applicant’s amendment has necessitated this rejection.
7. Claims 30-32, recite, in step c), that “the contacting in step c) is performed with Agrobacterium, viral particles, microparticles, nanoparticles, cell membrane penetrating peptides, aerosol beam, or chemicals.” The claim later recites, in step d), that “the contacting is performed with Agrobacterium or viral particles and the contacting comprises an infection step and an incubation step.” It is unclear whether the limitation in step d) is intended to further narrow the “contacting” of step c) to only two of the seven previously recited alternatives, or whether step d) is directed to a separate and distinct contacting act. As currently drafted, the claim recites two conflicting definitions of the scope of “the contacting” — one broad (seven alternatives) and one narrow (two alternatives) — without any language of qualification (e.g., “wherein the contacting of step c) is performed with Agrobacterium or viral particles, and further comprises…”) to reconcile the two recitations. This renders the metes and bounds of the claim unclear, because a person of ordinary skill in the art cannot determine whether the five remaining alternatives recited in step c) (i.e., microparticles, nanoparticles, cell membrane penetrating peptides, aerosol beam, and chemicals) remain within the scope of the claim, or are effectively excluded by the recitation in step d). See MPEP § 2173.05(e).
Additionally, claims 30-32 recite the phrase “chemicals” in step c) without further limitation or definition. It is unclear what structure(s), composition(s), or class of compounds are encompassed by this term, rendering the metes and bounds of the claim indefinite. Not all chemicals will transfer a polynucleotide in a cell.
Claim Rejections - 35 USC § 103
8A. Claim(s) 1-3 and 6-15 remain, and newly added claims 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Schultheiss et al. (US Patent Publication NO. 2015/0074842 A1; Published March 12, 2015), and further in view of Cline (American Journal of Botany 84: 1064–1069, 1997) for the reasons of record stated in the Office action mailed March 4, 2026.
Schultheiss et al. teach a method of Agrobacterium mediated transformation of a plant (e.g. soybean) with a recombinant vector comprising a recombinant DNA construct which comprises a heterologous promoter operably linked to a heterologous polynucleotide comprising a coding sequence and wherein said coding sequence is encoding a protein of interest (e.g. hydrophobin protein) to produce resistance against fungal pathogens, and wherein the vector further carries a polynucleotide sequence encoding selection marker (such as AHAS, bar or dsdA genes), the method comprising steps of : a) providing a plant comprising an axillary meristem and a shoot apical meristem, b) wounding at least part of the axillary meristem to produce a wounded axillary meristem region, c) contacting the wounded axillary meristem region with recombinant DNA construct comprising said polynucleotide and/or with Agrobacterium solution carrying said recombinant plasmid having said heterologous polynucleotide under conditions where the heterologous polynucleotide enters wounded axillary meristem region, and d) growing the plant to regenerate at least part of the wounded axillary meristem region to produce a regenerated axillary meristem or shoot, and wherein the axillary meristem is two axillary meristems, the wounded axillary meristem area is two wounded axillary meristem areas, and the regenerated axillary meristem is two regenerated axillary meristems, and wherein the method comprises removing or suppressing the shoot apical meristem at the same time as step b). The reference further teaches selecting transformed tissues by exposing them to selection marker which are encoded by plant expressible genes co-transferred with the gene of interest, following which the transformed material is regenerated into a whole plant. The reference also teaches that infected explants are placed on shoot induction medium with selection agents such as glufosinate (a herbicide). The infected epicotyl explants were then placed on a shoot induction medium with selection agents such as imazapyr (for AHAS gene), glufosinate (for bar gene, herbicide resistance), or D-serine (for dsdA gene). The regenerated shoots were subcultured on elongation medium with the selective agent. The reference clearly discloses contacting plant with said selection agent to eliminate or reduce untransformed tissue and wherein the selection agent occurs during or after instant step e) which involves growing the transformed plant to regenerate at least part of the wounded axillary meristem region to produce a regenerated transformed axillary meristem or shoot. The reference further teaches contacting with selection agent comprises adding the selection agent to a medium in which the transformed plant is growing and untransformed plant is unable to grow. Alternatively, the selection agent is applied to wounded axillary meristem regions and/or regenerated axillary meristem. The transformed tissue explants were placed on said selection agent to at least 2-3 weeks. The reference further teaches performing an assay on the transformed tissues, regenerated axillary meristems or a sample of the regenerated axillary meristem to assess for the presence or absence of the transformed cells and the number thereof. The reference further teaches assaying the transformed plants for disease resistance, wherein presence and expression of the transgene was confirmed due to resistance to fungal pathogen(s). The reference also teaches that following DNA transfer and regeneration, putatively transformed plants may also be evaluated, for instance using Southern analysis, for the presence of the gene of interest, and copy number. The reference further teaches that expression levels of the newly introduced DNA may be monitored using Northern and/or Western analysis. The reference further discloses obtaining transgenic seeds and raising transgenic progenies from regenerated transformed plants, and wherein the transgenic seeds and raising transgenic progenies comprise the transgene of the transformation event. The reference also teaches that infection with said Agrobacterium solution comprises an infection step and an incubation step. The reference further teaches that said infection step is performed for at least 30 to 60 minutes, and the incubation step is for at least 3 to 5 days in dark. The reference further teaches that said transformed plant is derived from 4 to 8 day seedling explants. The reference further teaches that said axillary meristem is a cotyledonary axillary bud and wherein the method also comprises removing cotyledon of the plant prior to removing or suppressing the shoot apical meristem. See in particular, abstract, paragraphs [0074], [0457], [0543], [0445], [0447], [0450], [0505], [0542], [0543], [0549], [0535], [0551], [0531], [0545], [0535]; and examples 1-8, paragraphs [0522- 0570].
Schultheiss et al. do not specifically teach removing the shoot apical meristem after2 -7 days or 3-4 days after contacting or after instant step c).
Cline teaches that removal of the shoot apical meristem releases axillary meristems from apical dominance and promotes axillary meristem growth and regeneration (pages 1066–1068), and that the timing of shoot apical meristem removal affects axillary meristem activation (page 1068).
It would have been obvious to one of ordinary skill in the art to select a time for removal of the shoot apical meristem within a known post-transformation recovery period, such as 2-7 days after contacting, as a matter of routine optimization to balance tissue recovery and axillary meristem activation. The claimed time period represents the optimization of a result-effective variable, and no evidence has been provided that the claimed range produces unexpected results relative to the prior art.
8B. Applicant’s arguments & response to Applicant’s arguments:
Applicant argues that the present claims describe an “in planta” transformation system, and that Schultheiss et al. teach only “in vitro” methods involving explants removed to tissue culture, and therefore cannot render obvious the claimed invention.
This argument is not persuasive and is not commensurate in scope with the claims.
Firstly, Applicant’s attention is drawn to Schultheiss et al. at paragraphs [0535] – [0536] of the reference which says:
“[0535] Seedlings at this time had elongated epicotyls from at least 0.5 cm but generally between 0.5 and 2 cm. Elongated epicotyls up to 4 cm in length had been successfully employed. Explants were then prepared with: i) with or without some roots, ii) with a partial, one or both cotyledons, all preformed leaves were removed including apical meristem, and the node located at the first set of leaves was injured with several cuts using a sharp scalpel.
[0536] This cutting at the node not only induced Agrobacterium infection but also distributed the axillary meristem cells and damaged pre-formed shoots. After wounding and preparation, the explants were set aside in a Petri dish and subsequently co-cultivated with the liquid CCM/Agrobacterium mixture for 30 minutes. The explants were then removed from the liquid medium and plated on top of a sterile filter paper on 15.times.100 mm Petri plates with solid co-cultivation medium. The wounded target tissues were placed such that they are in direct contact with the medium.”
It is important to note that Schultheiss et al. used seedling in transformation. A seedling is considered a planta. Seedling is also itself an explant which was wounded at axillary meristem for agrobacterium infection. This is exactly what Applicant has done in examples 3 (for example) at page 21 of the specification. Applicant also used seedling to do in planta transformation.
Secondly, contrary to Applicant’s arguments, it is important to note that the claims as amended do not recite the term “in planta,” nor do they recite any limitation that would exclude tissue culture steps or require that transformation occur on an intact, soil-grown plant. The claim language of independent claim 1 requires only: (a) providing a plant comprising an axillary meristem and a shoot apical meristem; (b) wounding at least part of the axillary meristem; (c) contacting the wounded region with a heterologous polynucleotide; and (d) growing the plant to regenerate the axillary meristem. None of these steps, on their face, exclude the use of excised seedling explants maintained in culture.
Thirdly, Applicant’s characterization of the prior art as “in vitro” conflates the concept of tissue culture with the ordinary meaning of the claim steps. Schultheiss et al. employ seedling explants that retain an intact shoot apical meristem and axillary meristems at the time of inoculation — i.e., the plant explant as used in those references is a structurally whole seedling that satisfies the “providing a plant comprising an axillary meristem and a shoot apical meristem” limitation of step (a). That subsequent culture steps are employed does not transform the nature of the disclosed method into something excluded by the claims. Applicant has not pointed to any specific claim language that would distinguish the prior art methods on the basis of in planta versus in vitro practice, and arguments not commensurate in scope with the claims cannot form the basis for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Applicant further argues that Cline does not teach methods that modify the methods of Schultheiss et al., but provides no substantive technical reasoning. This argument is unpersuasive.
The rejection does not require Cline to independently teach a complete transformation protocol. It is well established that a §103 rejection may be based on a combination of references where each reference teaches a component of the claimed invention, and it would have been obvious to a person of ordinary skill to combine them. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Cline expressly teaches that removal of the shoot apical meristem releases axillary meristems from apical dominance and promotes their outgrowth, and that the timing of such removal is a recognized variable affecting axillary meristem activation. The claim limitation at issue — that the shoot apical meristem is removed 2-7 days, or 3-4 days, after contacting — is directed precisely to this timing variable.
A person of ordinary skill in the art, familiar with both the transformation protocols of Schultheiss et al., and the physiological principles of apical dominance as taught by Cline, would have had clear motivation and a reasonable expectation of success in selecting a post-transformation delay before decapitation to allow the wounded tissue to stabilize while still promoting axillary outgrowth. The selection of 2-7 days represents nothing more than routine optimization of a result-effective variable, which does not confer patentability absent a showing of unexpected results. In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Applicant has provided no declaration, data, or comparative evidence demonstrating that the claimed 2-7 day or 3-4 day range produces results that would have been unexpected to one of ordinary skill in the art.
Accordingly, the rejection is maintained.
9A. Claim(s) 1-3 and 6-15 remain, and newly added claims 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Schultheiss et al. (US Patent Publication NO. 2015/0074842 A1; Published March 12, 2015), and further in view of Jiang et al. (US Patent Publication No. 2007/0033671 A1, Published February 8, 2007). Applicant’s amendment to claim 1 has necessitated this rejection.
Schultheiss et al. teachings are discussed supra.
Schultheiss et al. do not specifically teach removing or suppressing the shoot apical meristem after transformation.
Jiang et al. teach a method of plant transformation using polynucleotides and/or polynucleotides encoding polypeptides to transform plants to produce transgenic plants with desired properties. For example, Jiang et al. teach modifying expression of G47 transcription factor to reduce apical dominance. The overexpression of G47 polypeptide produced substantial delay in flowering time and caused a marked change in shoot architecture. The flowering in transgenic plant overexpressing G47 polypeptide was delayed by more than a week than wild type control. The inflorescence of the transgenic plants appeared thick with reduced apical dominance. Likewise transgenic plants
homozygous for a T-DNA insertion in the G438 sequence were obtained and these plants exhibited failure in the development of all types of apical meristem. The reference clearly teach suppressing or reducing removing the shoot apical meristem after plant transformation which is after instant step c). Jiang et al. further teach removing or suppressing the shoot apical meristem 5 days after co-cultivation of Agrobacterium suspension carrying recombinant vector for transformation which reads on instant limitation “shoot meristem is removed or suppressed 2-7 days, optionally 3-4 days after contacting” (see claim 4). Jiang et al. also teach suppressing shoot apical meristem is beneficial to produce new and interesting plant varieties in horticulture industry. See in particular, abstract, paragraphs [0363], [0526], [0600], [0081] [0552].
It would have been obvious and within the scope of an ordinary skill in the art prior to earliest filing date of the claimed invention to modify the method of Schultheiss et al. to include suppression of shoot apical meristem as taught by Jiang et al. for the purpose of creating new plant varieties of potential interest to the ornamental horticulture industry as asserted by Jiang et al. and further discussed above.
9B. Applicant’s arguments & response to Applicant’s arguments:
Applicant argues that Jiang et al. teach only predicted orthologues of genes with predicted functions, and that the genes of Jiang have no proven function in the soybean method of Schultheiss et al., such that no prima facie case of obviousness can be established.
This argument is unpersuasive. The rejection does not rely on Jiang et al. to provide functional validation of a specific gene in soybeans. Rather, Jiang et al. is cited for its teaching that removal or suppression of the shoot apical meristem after transformation — specifically approximately 5 days post-co-cultivation — is a technique employed in plant transformation workflows to promote axillary meristem development. This teaching is not limited to or dependent upon the specific gene function being introduced, and it is directly applicable to the transformation protocol of Schultheiss et al. regardless of the particular transgene employed. Applicant’s argument attacks Jiang et al’s gene function teachings in isolation, but the rejection as stated relies on Jiang et al’s process teaching, not its gene characterization work. Arguments that do not address the specific basis of the rejection are unpersuasive. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991).
10. Claim(s) 1 and 15 remain, claims 2-3, 6-15 and newly added claims 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Schultheiss et al. (US Patent Publication NO. 2015/0074842 A1; Published March 12, 2015), in view of Cline (American Journal of Botany 84: 1064–1069, 1997) and further in view of Chen et al. (Horticulture Research, 5(13): 1-12, published 2018 for the reasons of record stated in the Office action mailed in the papers of October 10, 2025. Applicant’s amendment to claim 1 has also necessitated to include claims 2-3, 6-15 and 30-32.
Schultheiss et al. teachings are discussed supra.
Cline teachings are discussed supra.
Schultheiss et al. or Cline do not teach that heterologous polynucleotide comprises one or polynucleotides encoding a Cas protein and/or a guide RNA.
Chen et al. teach using RNA-guided genome editing using CRISPR/Cas9 based system in targeting an endogenous plant gene to suppress or eliminate its expression in plant cells using Agrobacterium mediated plant transformation but without use of selective marker selection of transformed plants. The reference clearly suggests the advantages and precision of using CRISPR/Cas9 based system of targeting endogenous plant genes from diverse plant species to eliminate or suppress expression or generate desired mutants of said targeted endogenous gene. Chen et al. further teach that CRISPR-Cas9 system can be used as an efficient and powerful tool for gene editing and precise genome editing in plants by using multiple guided RNAs (gRNAs) with a 20-22 nt region designed to pair with distinct genomic sites which are followed by the protospacer-adjacent motif (PAM). Chen et al. clearly suggest that using multiple guided RNAs (gRNAs) to achieve multiple edits within the targeted endogenous gene of the plant cell. See in particular, abstract; Figures 1-4; Tables 1-4; results and discussion, methods, pages 1-12.
Given Chen et al. teach that CRISPR/Cas based system of targeting endogenous plant genes can be efficiently and precisely used in regulating plant gene expression by modifying sequence of an endogenous plant gene and eliminates the use of selection marker to obtain transgenic plants, it would have been obvious and within the scope of an ordinary skill in the art prior to earliest filing date instantly claimed invention to have modified expression vector and its recombinant expression cassette of Schultheiss et al. by either substituting its heterologous polynucleotide with an another polynucleotide sequence encoding Cas9 and guide RNA based gene products of CRISPR/Cas9 system to specifically target endogenous gene of Schultheiss et al. plant(s) to regulate its expression to obtain a desirable phenotype of the transgenic plant with a reasonable expectation of success and without any surprising results.
11A. Claim(s) 1-3 and 6-15 remain, and newly added claims 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Schultheib et al. (WIPO, WO 2013/093738 A1, Published June 27, 2013), and further in view of Cline (American Journal of Botany 84: 1064–1069, 1997) for the reasons of record stated in the Office action mailed March 4, 2026.
Schultheib et al. teach a method of Agrobacterium mediated transformation of a plant (e.g. soybean, Arabidopsis, dicots) with a recombinant vector comprising a recombinant DNA construct which comprises a heterologous promoter operably linked to a heterologous polynucleotide comprising a coding sequence and wherein said coding sequence is encoding a protein of interest (e.g. CL protein) imparting rust resistance to Arabidopsis and soybean, and wherein the vector further carries a polynucleotide sequence encoding selection marker (such as bar gene), the method comprising steps of : a) providing a plant comprising an axillary meristem and a shoot apical meristem, b) wounding at least part of the axillary meristem to produce a wounded axillary meristem region, c) contacting the wounded axillary meristem region with recombinant DNA construct comprising said polynucleotide and/or with Agrobacterium solution carrying said recombinant plasmid having said heterologous polynucleotide under conditions where the heterologous polynucleotide enters wounded axillary meristem region, d) removing the shoot apical meristem at the same time as step b), growing the plant to regenerate at least part of the wounded axillary meristem region to produce a regenerated axillary meristem or shoot, and wherein the axillary meristem is more than one (reads on 2 etc.) axillary meristems, the wounded axillary meristem area is more than one wounded axillary meristem areas, and the regenerated axillary meristem is two regenerated axillary meristems, and wherein the method comprises removing or suppressing the shoot apical meristem at the same time as step b). The reference further teaches selecting transformed tissues by exposing them to selection marker which are encoded by plant expressible genes co-transferred with the gene of interest, following which the transformed material is regenerated into a whole plant. The reference also teaches that infected explants are placed on shoot induction medium with selection agents such as glufosinate (a herbicide). The infected epicotyl explants were then placed on a shoot induction medium with selection agents such as imazapyr (for AHAS gene), glufosinate (for bar gene, herbicide resistance), or D-serine (for dsdA gene). The regenerated shoots were subcultured on elongation medium with the selective agent. The reference clearly teaches contacting plant with said selection agent to eliminate or reduce untransformed tissue and wherein the selection agent occurs during or after instant step e) which involves growing the transformed plant to regenerate at least part of the wounded axillary meristem region to produce a regenerated transformed axillary meristem or shoot. The reference further teaches contacting with selection agent comprises adding the selection agent to a medium in which the transformed plant is growing and untransformed plant is unable to grow. Alternatively, the selection agent is applied to wounded axillary meristem regions and/or regenerated axillary meristem. The transformed tissue explants were placed on said selection agent to at least 2-3 weeks. The reference further teaches performing an assay on the transformed tissues, regenerated axillary meristems or a sample of the regenerated axillary meristem to assess for the presence or absence of the transformed cells and the number thereof. The reference further teaches assaying the transformed plants for disease resistance, wherein presence and expression of the transgene was confirmed due to resistance to rust disease. The reference also teaches that following DNA transfer and regeneration, putatively transformed plants may also be evaluated, for instance using Southern analysis, for the presence of the gene of interest, and copy number The reference further teaches that expression levels of the newly introduced DNA may be monitored using Northern and/or Western analysis. The reference further teaches obtaining transgenic seeds and raising transgenic progenies from regenerated transformed plants, and wherein the transgenic seeds and raising transgenic progenies comprise the transgene of the transformation event. The reference also teaches that infection with said Agrobacterium solution comprises an infection step and an incubation step. The reference further teaches that said infection step is performed for at least 30 to 60 minutes, and the incubation step is for at least 3 to 5 days in dark. The reference further teaches that said transformed plant is derived from 4 to 8 day seedling explants. The reference further teaches that said axillary meristem is a cotyledonary axillary bud and wherein the method also comprises removing cotyledon of the plant prior to removing the shoot apical meristem. See in particular, abstract, pages 1-22, Figures 1-11; Tables 1-3; examples 1-11, pages 23-37.
Schultheib et al. do not specifically teach removing the shoot apical meristem after2-7 days or 3-4 days after contacting or after instant step c).
Cline teaches that removal of the shoot apical meristem releases axillary meristems from apical dominance and promotes axillary meristem growth and regeneration (pages 1066–1068), and that the timing of shoot apical meristem removal affects axillary meristem activation (page 1068).
It would have been obvious to one of ordinary skill in the art to select a time for removal of the shoot apical meristem within a known post-transformation recovery period, such as 2–7 days after contacting, as a matter of routine optimization to balance tissue recovery and axillary meristem activation. The claimed time period represents the optimization of a result-effective variable, and no evidence has been provided that the claimed range produces unexpected results relative to the prior art.
11B. Applicant’s arguments & response to Applicant’s arguments:
Applicant argues that the present claims describe an “in planta” transformation system, and that Schultheib et al. each teach only “in vitro” methods involving explants removed to tissue culture, and therefore cannot anticipate or render obvious the claimed invention.
This argument is not persuasive and is not commensurate in scope with the claims.
Firstly, Applicant’s attention is drawn to lines 5-18 of at page 30 of the reference which says:
“Seedlings at this time had elongated epicotyls from at least 0.5 cm but generally between 0.5 and 2 cm. Elongated epicotyls up to 4 cm in length had been successfully employed. Explants were then prepared with: i) with or without some roots, ii) with a partial, one or both cotyledons, all preformed leaves were removed including apical meristem, and the node located at the first set of leaves was injured with several cuts using a sharp scalpel.
This cutting at the node not only induced Agrobacterium infection but also distributed the axillary meristem cells and damaged pre-formed shoots. After wounding and preparation, the explants were set aside in a Petri dish and subsequently co-cultivated with the liquid CCM/Agrobacterium mixture for 30 minutes. The explants were then removed from the liquid medium and plated on top of a sterile filter paper on 15.times.100 mm Petri plates with solid co-cultivation medium. The wounded target tissues were placed such that they are in direct contact with the medium.”
It is important to note that Schultheib et al. used seedling in transformation. A seedling is considered a planta. Seedling is itself an explant which was wounded at axillary meristem for agrobacterium infection. This is exactly what Applicant has done in examples 8 (for example) at pages 28-31 of the specification. Applicant also used seedling to do in planta transformation.
Secondly, contrary to Applicant’s arguments, it is important to note that the claims as amended do not recite the term “in planta,” nor do they recite any limitation that would exclude tissue culture steps or require that transformation occur on an intact, soil-grown plant. The claim language of independent claim 1 requires only: (a) providing a plant comprising an axillary meristem and a shoot apical meristem; (b) wounding at least part of the axillary meristem; (c) contacting the wounded region with a heterologous polynucleotide; and (d) growing the plant to regenerate the axillary meristem. None of these steps, on their face, exclude the use of excised seedling explants maintained in culture.
Thirdly, Applicant’s characterization of the prior art as “in vitro” conflates the concept of tissue culture with the ordinary meaning of the claim steps. Schultheib et al. employ seedling explants that retain an intact shoot apical meristem and axillary meristems at the time of inoculation — i.e., the plant explant as used in those references is a structurally whole seedling that satisfies the “providing a plant comprising an axillary meristem and a shoot apical meristem” limitation of step (a). That subsequent culture steps are employed does not transform the nature of the disclosed method into something excluded by the claims. Applicant has not pointed to any specific claim language that would distinguish the prior art methods on the basis of in planta versus in vitro practice, and arguments not commensurate in scope with the claims cannot form the basis for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Applicant further argues that Cline does not teach methods that modify the methods of Schultheib et al., but provides no substantive technical reasoning. This argument is unpersuasive.
The rejection does not require Cline to independently teach a complete transformation protocol. It is well established that a §103 rejection may be based on a combination of references where each reference teaches a component of the claimed invention, and it would have been obvious to a person of ordinary skill to combine them. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Cline expressly teaches that removal of the shoot apical meristem releases axillary meristems from apical dominance and promotes their outgrowth, and that the timing of such removal is a recognized variable affecting axillary meristem activation. The claim limitation at issue — that the shoot apical meristem is removed 2-7 days, or 3-4 days, after contacting — is directed precisely to this timing variable.
A person of ordinary skill in the art, familiar with both the transformation protocols of Schultheib et al., and the physiological principles of apical dominance as taught by Cline, would have had clear motivation and a reasonable expectation of success in selecting a post-transformation delay before decapitation to allow the wounded tissue to stabilize while still promoting axillary outgrowth. The selection of 2-7 days represents nothing more than routine optimization of a result-effective variable, which does not confer patentability absent a showing of unexpected results. In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Applicant has provided no declaration, data, or comparative evidence demonstrating that the claimed 2-7 day or 3-4 day range produces results that would have been unexpected to one of ordinary skill in the art.
Accordingly, the rejection is maintained.12A. Claim(s) 1, 3, 6, 12, 13, 14, 17, 18, 19 and 24-26 remain rejected under 35 U.S.C. 103 as being unpatentable over Chowrira et al. (Transgenic research; 7:265-271, 1998), and further in view of Cline (American Journal of Botany 84: 1064–1069, 1997) for the reasons of record stated in the Office action mailed March 4, 2026.
Chowrira et al. teach a method of electroporation mediated transformation of a plant (e.g. pea, a dicot plant, also a bean plant) with a recombinant vector comprising a recombinant DNA construct which comprises a heterologous promoter operably linked to a heterologous polynucleotide comprising a coding sequence and wherein said coding sequence is encoding a protein of interest (e.g. chimeric pea enation mosaic virus (PEMV) coat protein) to produce resistance against pea enation mosaic virus in transgenic pea plants, the method comprising steps of : a) providing a plant comprising an axillary meristem and a shoot apical meristem, b) wounding at least part of the axillary meristem to produce a wounded axillary meristem region, c) contacting the wounded axillary meristem region with recombinant DNA construct comprising said polynucleotide using electroporation and carrying said recombinant plasmid having said heterologous polynucleotide under conditions where the heterologous polynucleotide enters wounded axillary meristem region, d) removing the shoot apical meristem of the shoot apical meristem at the same time as step b), growing the plant to regenerate at least part of the wounded axillary meristem region to produce a regenerated axillary meristem or shoot, and wherein the method comprises removing the shoot apical meristem at the same time as step b). The regenerated shoots were subcultured on elongation medium. The reference further teaches performing an assay on the transformed tissues, regenerated axillary meristems or a sample of the regenerated axillary meristem to assess for the presence or absence of the transformed cells and the number thereof. The reference further teaches assaying the transformed plants for viral disease resistance, wherein presence and expression of the transgene was confirmed due to resistance to viral pathogen(s). The reference also teaches that following DNA transfer and regeneration, putatively transformed plants may also be evaluated, for instance using Southern analysis, for the presence of the gene of interest, and copy number. The reference further teaches that expression levels of the newly introduced DNA may be monitored using Northern and/or Western analysis. The reference further teaches obtaining transgenic seeds and raising transgenic progenies from regenerated transformed plants, and wherein the transgenic seeds and raising transgenic progenies comprise the transgene of the transformation event. The reference further teaches that said transformed plant is derived from 4 to 8 day seedling/plant explants. The reference further teaches that said axillary meristem is a cotyledonary axillary bud and wherein the method also comprises removing cotyledon of the plant prior to removing the shoot apical meristem. See in particular, abstract, Figures 1-4, table 1; materials and methods and results, discussion.
Chowrira et al. do not specifically teach removing the shoot apical meristem after2-7 days or 3-4 days after contacting or after instant step c).
Cline teaches that removal of the shoot apical meristem releases axillary meristems from apical dominance and promotes axillary meristem growth and regeneration (pages 1066–1068), and that the timing of shoot apical meristem removal affects axillary meristem activation (page 1068).
It would have been obvious to one of ordinary skill in the art to select a time for removal of the shoot apical meristem within a known post-transformation recovery period, such as 2–7 days after contacting, as a matter of routine optimization to balance tissue recovery and axillary meristem activation. The claimed time period represents the optimization of a result-effective variable, and no evidence has been provided that the claimed range produces unexpected results relative to the prior art.
12B. Applicant’s arguments & response to Applicant’s arguments:
Applicant primarily argues that Chowrira et al. teach a method of electroporating pea plants. Applicant further argues that Chowrira et al. method teach decapitating the apical portion of the plant close to the node of a fully expanded leaf prior to electroporation.
Applicant’s arguments are carefully considered but are deemed to be unpersusaive.
Contrary to Applicant’s arguments, Applicant’s attention is drawn to 2nd paragraph at page 266 of Chowrira et al. which says:
“In planta injection/ electroporation
Pea transformation was done essentially as described previously (Chowrira et al., 1995; 1996). Briefly, the apical portions of the pea plants (var. 'Sparkle') were decapitated close to the node of a fully expanded leaf and discarded, prior to electroporation. The stipule and adjacent petiole were removed to expose the most terminal axillary bud. All other axillary buds were excised. The buds thus retained were injected with 2 µl pPCP4-5 DNA/lipofectin/MS salts solution (200 µg DNA/ml solution) and then electroporated at 100 V using 2 square wave pulses. A few plants were injected/electroporated with pKYLX vector alone (not containing the PEMV-CP insert) and maintained as negative controls. After treatment, the plants were placed back in the greenhouse and allowed to grow. R1 progeny were raised from seeds obtained from shoots that developed from the buds subjected to electroporation in planta.”
Contrary to Applicant’s arguments, axillary meristem is removed, infected with DNA construct at the wounding site and Apical portions which naturally includes shoot meristems meristem are also removed. It is important to note that claims under rejection do not necessarily need agrobacterium mediated transformation. In response to applicant's argument that the references fail to show certain features of applicant’s invention, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Accordingly, the rejection is maintained.
Conclusion
13. Claims 1-3, 6-15, 17-19 and 21-26 remain, and newly added claims 30-32 are rejected.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vinod Kumar whose telephone number is (571) 272-4445. The examiner can normally be reached on 8.30 a.m. to 5.00 p.m.
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/VINOD KUMAR/ Primary Examiner, Art Unit 1663
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