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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/09/2025 has been entered.
Priority
Acknowledgment is made of Applicant's claim for domestic benefit under 35 U.S.C. 119(e). As
such, the effective filing date of 1-9, 12-13, 15-17, and 23-28 is 12 November 2019.
Status of the Claims
Amendments dated 09/09/2025 have been entered.
Claims 10-11, 14, and 18-22 are cancelled
Claims 1-9, 12-13, 15-17, and 23-28 are pending.
Claims 23-28 are withdrawn from consideration as being directed to a nonelected invention.
Claims 1-9, 12-13, and 15-17 are examined herein.
The objection to the drawings is withdrawn in view of Applicant’s amendment to the drawings.
The objections to Claims 1 and 17 are withdrawn in view of Applicant’s amendments to the claims.
The rejection to Claim 3 under 35 U.S.C. 101 because the claimed invention is directed to a natural product without significantly more are withdrawn in view of Applicant’s amendments to the claims.
The rejections of Claims 1-9, 12-13, and 15-17 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112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement are withdrawn in view of Applicant’s amendments to the claims.
Claim Interpretation
When claims utilize an indefinite article (“a” or “an”) when referencing a sequence, this renders the claim inclusive of fragments of the sequence as small as di-peptides. For example, Claim 1, part (c) and Claim 17, part (c) recite, in part, “…a polypeptide having an amino acid sequence…”, which is inclusive of fragments of the full length polypeptide.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
---These rejections are modified from those set forth in the Office Action dated 07/10/2025 in view of the Applicant’s amendments to the claims in the reply filed on 09/09/2025.---
Claims 1-2 remain rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural product without significantly more.
The limitations of Claim 1, regarding a nucleotide sequence for increasing the resistance to a nematode of the genus Heterodera in a sugar beet plant under the broadest reasonably interpretation, in light of the specification, encompasses any nucleotide sequence which comprises SEQ ID NO: 1 and 4 [Claim 1 part (a)], a nucleotide sequence which comprises the coding sequence selected from the group consisting of: SEQ ID NO: 2 and 5 [Claim 1, part (b)], a nucleotide sequence encoding a polypeptide having an amino acid sequence selected from the group consisting of: SEQ ID: NO 3 and 6 [Claim 1, part (c)], or a nucleotide sequence which is a variant of the nucleotide sequences of any of (a) to (d) due to the degeneracy of the genetic code [Claim 1, part (d)]]. The instant specification discloses that SEQ ID NOs: 1, 2, 3, 4, 5, 6, 7, 8, and 9 originate from Beta vulgaris subsp. maritima plant (pg. 5, lines 20-21 and pg. 53, lines 5-24). Without any evidence to the contrary, the broadest reasonable interpretation of Claim 1 encompasses sequences (SEQ ID NOs: 1-6) that were derived from a naturally occurring wild sea beet Beta vulgaris subsp. maritima plant (pg. 5, lines 20-21 and pg. 53, lines 5-24) which inherently comprises Heterodera nematode resistance as evidenced by Hijner (Meded. Inst. rat. Suikerprod. 21 (1951), 1- 13) (Specification, pg. 3, lines 8-10). Even though Claim 1 is currently amended to recite “…for increasing resistance to a nematode of the genus Heterodera in a sugar beet plant…”, Applicant’s amendment is not a new limitation that changes the scope of the claim. Claim 1 is still drawn to the recited nucleotides and polypeptides, wherein the use in a specific plant (i.e., sugar beet) is merely an intended use.
Claim 1 also recites “wherein the nucleotide sequence is optionally operably linked to a promoter”; therefore, the nucleic acid sequence for increasing the resistance to a nematode of the genus Heterodera in a plant doesn’t necessarily require a promoter. Even if the addition of a promoter was not optional, the recitation in claim 1 broadly encompasses naturally occurring promoters within the plant, as the claim limitation is not specifically drawn to heterologous promoters. Therefore, Claim 1 is not directed to significantly more than a product of nature.
Claim 2 recites the additional element of a vector or expression cassette. However, “vector” or “cassette” do not confer any structure, as they encompass the chromosome where the Heterodera resistance conferring nucleic acid is located in Beta vulgaris subsp. maritima. “Expression” does not confer any structure as is encompasses the naturally occurring regulatory elements associated with the gene in Beta vulgaris subsp. maritima. Thus, Claim 2 is not directed to significantly more than a product of nature.
Response to Arguments
Applicant’s Remarks on pgs. 9-10 of the reply filed on 09/09/2025 have been acknowledged but do not overcome the modified rejection above. In particular, Applicant’s arguments rely on the premise that the amendments to the claim to include “in a sugar beet plant” alters the claims in such a way to not read on naturally occurring sequences in Beta vulgaris subsp. maritima (sea beet) (Remarks, pg. 9).
This is not found persuasive. Even though Claim 1 is currently amended to recite “…for increasing resistance to a nematode of the genus Heterodera in a sugar beet plant…”, Applicant’s amendment is not a new limitation that changes the scope of the claim. Claim 1 is still drawn to the recited nucleotides and polypeptides, wherein the use in a specific plant (i.e., sugar beet) is merely an intended use. Based on the Applicant’s arguments and paragraph 0088 of the instant specification (Remarks, pg. 10), it is understood that SEQ ID NOS: 1-6 do not naturally occur in sugar beet; however, the claim does not require that the nucleotide sequences and polypeptide sequences be derived from sugar beet, merely that they have an intended use in sugar beet. Therefore, the broadest reasonable interpretation of Claim 1 encompasses sequences (SEQ ID NOs: 1-6) that were derived from a naturally occurring wild sea beet Beta vulgaris subsp. maritima plant (pg. 5, lines 20-21 and pg. 53, lines 5-24) which inherently comprises Heterodera nematode resistance as evidenced by Hijner (Meded. Inst. rat. Suikerprod. 21 (1951), 1- 13) (Specification, pg. 3, lines 8-10). As such, the claims remain ineligible for patentability.
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.
---This rejection is modified from those set forth in the Office Action dated 07/10/2025 in view of the Applicant’s amendments to the claims in the reply filed on 09/09/2025.---
Claim 1 remains rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hijner (Mededelingen van het Instituut voor rationele Suikerproductie, 1951, Vol. 21, 1-13; 11; IDS Document) taken with evidence from the instant specification.
Claim 1 is currently amended to recite “…for increasing resistance to a nematode of the genus Heterodera in a sugar beet plant…”; however, Applicant’s amendment is not a new limitation that changes the scope of the claim. As such, Claim 1 is still drawn to the recited nucleotides and polypeptides, wherein the use in a specific plant (i.e., sugar beet) is merely an intended use.
In light of the claim interpretation above, the broadest reasonable interpretation of Claim 1 encompasses sequences (SEQ ID NOs: 1-6) that were derived from a naturally occurring wild sea beet Beta vulgaris subsp. maritima plant (pg. 5, lines 20-21 and pg. 53, lines 5-24) which inherently comprises Heterodera nematode resistance as evidenced by Hijner (Meded. Inst. rat. Suikerprod. 21 (1951), 1- 13) (Specification, pg. 3, lines 8-10). Claim 1 also recites “wherein the nucleotide sequence is optionally operably linked to a promoter”; therefore, the nucleic acid sequence for increasing the resistance to a nematode of the genus Heterodera in a plant doesn’t necessarily require a promoter.
As such, the nucleotide sequences for increasing the resistance to a nematode of the genus Heterodera in a plant recited in claim 1 could be obtained from the naturally occurring Beta vulgaris subsp. maritima plant which comprises Heterodera nematode resistance disclosed by Hijner, and therefore nematode resistant nucleotide sequences, wherein the nucleotides within the Beta vulgaris subsp. maritima plant disclosed by Hijner (Abstract) would inherently comprise instant SEQ ID NOs: 1-6 which were isolated from Beta vulgaris subsp. maritima as evidenced by the instant specification.
Response to Arguments
Applicant’s Remarks on pgs. 10-11 of the reply filed on 09/09/2025 have been acknowledged but do not overcome the modified rejection above. In particular Applicant’s arguments rely on the premise that the amended claims are directed to a sugar beet plant and that Hijner does not disclose specific nucleotide sequences of nematode resistance genes (Remarks, pg. 10-11).
This is not found persuasive. Even though Claim 1 is currently amended to recite “…for increasing resistance to a nematode of the genus Heterodera in a sugar beet plant…”, Applicant’s amendment is not a new limitation that changes the scope of the claim. Claim 1 is still drawn to the recited nucleotides and polypeptides, wherein the use in a specific plant (i.e., sugar beet) is merely an intended use.
Additionally, Hijner discloses Beta vulgaris subsp. maritima plants (pg. 5, lines 20-21 and pg. 53, lines 5-24) which inherently comprise Heterodera nematode resistance as evidenced by Hijner (Meded. Inst. rat. Suikerprod. 21 (1951), 1- 13) (Specification, pg. 3, lines 8-10). The plant disclosed by Hijner contains a genome which is comprised of nucleotides that encode polypeptides which inherently comprise Heterodera nematode resistance, from which SEQ ID NOs: 1-6 were derived. Therefore, the disclosure of the plant by Hijner anticipates nucleotide sequences of nematode resistance genes comprised within said plant.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
---In view of the currently amended claims dated 09/09/2025 and a further review of the prior art, prosecution has been reopened to include the following rejections. Applicant should note that Claims 2, 9, and 15-17 are no longer considered free of the prior art as stated in the Office Action dated 07/10/2025. Applicant’s Remarks dated 09/09/2025 and 04/07/2025 have been considered and deemed inapposite to the following rejections---
Claims 1-3, 8, 9, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. (WO 2014/127835 A1, published 08/28/2014; IDS Document).
The broadest reasonable interpretation of Claim 1, part (c) encompasses a genus of amino acid sequences inclusive of fragments of SEQ ID NOs: 3 and 6 as small as di-peptides (See Claim Interpretation).
Regarding Claim 1, Jung et al. teaches (herein referred to as Jung) nucleic acid molecules encoding polypeptides which are capable of conferring resistance against, and being triggered by plant pathogens such as nematodes (e.g. Heterodera schachtii and related isolates). In particular, Jung teaches nucleic acid molecules relating to the beet cyst nematode (BCN) Resistance Gene Hs1-2 (Claim 1; SEQ ID NOs: 1, 2, and 4) —which would inherently have a di-peptide in common with instant SEQ ID NO: 3 or 6, per the recited limitations of instant Claim 1 part (c).
Regarding Claim 2, Jung teaches a vector comprising a nucleic acid molecule of any one of claims 1 to 10 (Claim 11).
Regarding Claim 3, Jung teaches a transgenic plant cell comprising a nucleic acid molecule of any one of claims 1 to 10 which is operably linked to regulatory elements allowing transcription and/or expression of the DNA sequence in plant cells (Claim 16). Additionally, Jung teaches that plant cells which can be modified according to the invention and which show overexpression of a protein according to the invention can be derived from sugar beet (pg. 23, lines 30-31 and pg. 24, line 3).
However, Jung does not specifically teach the features of Claim 8, comprising method for increasing the resistance to a nematode of the genus Heterodera in a sugar beet plant, including the following steps:(i) integrating the nucleotide sequence according to claim 1 by means of homology- directed repair or homologous recombination into the genome of at least one cell of a sugar beet plant, and optional regeneration of a sugar beet plant from the at least one cell; or (ii) increasing the expression of the polypeptide encoded by the nucleotide sequence according to claim 1 in the plant; or (iii) transforming a sugar beet plant cell with the nucleotide sequence according to claim 1, or a vector or an expression cassette comprising the nucleotide sequence according to claim 1, and optional regeneration of a transgenic sugar beet plant from the transformed sugar beet plant cell, the feature of Claim 9, comprising a method for producing a sugar beet plant having resistance to a nematode of the genus Heterodera, including the following steps: (a) transforming a sugar beet plant cell with the nucleotide sequence according to claim 1, or a vector or an expression cassette comprising the nucleotide sequence according to claim 1; and (b) regenerating a transgenic sugar beet plant from the transformed sugar beet plant cell; or the feature of Claim 12, comprising method for identifying, and providing or selecting, a sugar beet plant that is resistant to a nematode of the genus Heterodera, wherein the method includes at least step (i) or (ii): (i) detecting the presence and/or expression of the nucleotide sequence according to claim 1 in the plant or a portion of the sugar beet plant; and/or (ii) detecting at least one region co-segregating within the nucleotide sequence according to claim 1; and (iii) selecting the sugar beet plant having resistance to a nematode of the genus Heterodera, as a single embodiment of the invention and is therefore not rejected as anticipated in view of the disclosure of the prior art. However, the combined teachings of Jung render the claimed invention obvious in view of the following.
Regarding Claims 8 and 9, Jung teaches a transgenic plant cell comprising a nucleic acid molecule of any one of claims 1 to 10 which is operably linked to regulatory elements allowing transcription and/or expression of the DNA sequence in plant cells (Claim 16), as well as a transgenic plant, plant tissue, plant cell, seed or plant part comprising plant cells of claim 16 (Claim 17). Additionally, Jung teaches that plant cells which can be modified according to the invention and which show overexpression of a protein according to the invention can be derived from sugar beet (pg. 23, lines 30-31 and pg. 24, line 3). In regards to the nucleic acid molecule taught by Jung encoding a polypeptide which is capable of conferring resistance against sedentary nematodes in a plant in which said polypeptide is expressed, Jung also teaches embodiments of the invention wherein the nucleic acid molecule confers resistance against sedentary nematodes selected from the group of genera consisting of Meloidogyne, Heterodera, and Globodera (Claim 7), or further wherein the nucleic acid molecule confers resistance against Heterodera schachtii (Claim 8). In the working examples, Jung teaches an example of transforming sugar beet hairy roots with the with a binary vector comprising ORF803 (pg. 58-59, bridging paragraph; pg. 72, Example 8) of the Hsl-2 gene (beet cyst nematode resistance gene) isolated from Beta vulgaris subsp. vulgaris nematode resistant lines (TR520 and TR363) carrying translocations of the wild beet Patellifolia procumbens (pg. 3, lines 5-12), wherein the sugar beet hairy roots were inoculated after 10-14 days of growth with 200 sterilized H. schachtii J2 larvae (pg. 59, lines 26-29). Nematodes on the inoculated plants and clones were evaluated by counting the cysts under the stereomicroscope 28 days after inoculation to determine resistance or susceptibility (pg. 59, lines 28-29).
Regarding Claim 12, Jung teaches that after transforming the sugar beet hairy root plants with a binary vector comprising ORF803 (pg. 58-59, bridging paragraph; pg. 72, Example 8), the confirmation of successful transformation and subsequent expression of ORF 803 in the transgenic plants was evaluated by qualitative reverse transcriptase-PCR (RT-PCR) on resistant and suspectable plants (pg. 60, lines 13-20; Table 3) where a certain amount of plants selected were nematode resistant. Additionally, Jung teaches a histochemical GUS test performed with transformed sugar beet hairy roots. An approximately 8 kB BamHI fragment of the 5'-flanking region of the ORF803 gene was cloned in frame to the GUS open reading frame. Thus, the Hsl-2 gene (SEQ ID NO: 1) was isolated from appropriate genomic library, such as BAC, YAC, and λ-library using a PCR fragment from the 5'-region of the Hsl-2 gene as a probe or by PCR amplification with PCR primers containing appropriate restriction sites. The promoter fragment was fused with the GUS gene and introduced into the root of sugar-beets by means of the vector pBIN19 and Agrobacterium tumefaciens/Agrobacterium rhizogenes co-transformation. In the sugar-beet, it was observed that in a "hairy root culture" the GUS activity was only detectable in the syncytium. In non-infected roots or in regions in which no nematodes were present, a corresponding GUS activity was not discernible. This shows that the promoter used had a "pathogen-responsive" element or elements, which is or are activated more strongly after nematode attack. Thus, the Hsl-2 promoter enabled the tissue- specific expression of any gene in host plants, such as, for example the sugar-beet. From these experiments it was concluded that the promoter according to the present invention binds transcription factors which derive from nematodes or which are formed as a result of the infection. Thus, the experiments demonstrate the root-specificity and nematode inducibility of the Hsl-2 promoter (pg. 73, Example 10).
Based on the above teachings, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to combine the teachings of Jung to produce a method for increasing the resistance to a nematode of the genus Heterodera in a sugar beet plant, including the following steps:(i) integrating the nucleotide sequence according to claim 1 by means of homology- directed repair or homologous recombination into the genome of at least one cell of a sugar beet plant, and optional regeneration of a sugar beet plant from the at least one cell; or (ii) increasing the expression of the polypeptide encoded by the nucleotide sequence according to claim 1 in the plant; or (iii) transforming a sugar beet plant cell with the nucleotide sequence according to claim 1, or a vector or an expression cassette comprising the nucleotide sequence according to claim 1, and optional regeneration of a transgenic sugar beet plant from the transformed sugar beet plant cell; to produce a method for producing a sugar beet plant having resistance to a nematode of the genus Heterodera, including the following steps: (a) transforming a sugar beet plant cell with the nucleotide sequence according to claim 1, or a vector or an expression cassette comprising the nucleotide sequence according to claim 1; and (b) regenerating a transgenic sugar beet plant from the transformed sugar beet plant cell; and produce a method for identifying, and providing or selecting, a sugar beet plant that is resistant to a nematode of the genus Heterodera, wherein the method includes at least step (i) or (ii): (i) detecting the presence and/or expression of the nucleotide sequence according to claim 1 in the plant or a portion of the sugar beet plant; and/or (ii) detecting at least one region co-segregating within the nucleotide sequence according to claim 1; and (iii) selecting the sugar beet plant having resistance to a nematode of the genus Heterodera, as a single embodiment of the invention because Jung explicitly teaches these methods as alternative, functional, embodiments of the invention. A person of ordinary skill in the art would have been motivated to include these methods taught by Jung, because Jung explicitly teaches these limitations as functional alternative embodiments of the invention. One of ordinary skill in the art would reasonably expect these modifications to be successful because Jung describes these steps as functional alternative embodiments of the invention. Therefore, the invention is prima facie obvious in view of the prior art.
Claims 4-7 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. (WO 2014/127835 A1, published 08/28/2014; IDS Document) as applied to Claim 3 above, and further in view of Heijbroek et al. (Crop protection 14.5 (1995): 363-366; IDS Document).
Regarding Claims 4 and 5, Jung teaches a transgenic plant, plant tissue, plant cell, seed or plant part comprising plant cells comprising a nucleic acid molecule of any one of claims 1 to 10 which is operably linked to regulatory elements allowing transcription and/or expression of the DNA sequence in plant cells. (Claim 17), wherein plant cells which can be modified according to the invention and which show overexpression of a protein according to the invention can be derived from sugar beet (pg. 23, lines 30-31 and pg. 24, line 3).
Regarding Claim 6, Jung teaches a transgenic plant, plant tissue, plant cell, seed or plant part comprising the regulatory sequence of claim 18 or the recombinant DNA molecule of claim 19 or 21 (Claim 22), wherein the plant is selected from the group of genera consisting of Beta and Brassica (Claim 23), wherein the plant [which include a plant cell according to the invention are also provided, along with any part or propagate thereof, seed, selfed or hybrid progeny and descendants (pg. 25, lines 16-17 )] is Beta vulgaris (Claim 24), further wherein plant cells which can be modified according to the invention and which show overexpression of a protein according to the invention can be derived from sugar beet (pg. 23, lines 30-31 and pg. 24, line 3).
However, Jung does not teach the features of Claims 4-7 and 13, wherein the seeds are pelleted and/or primed seeds or the additional feature of Claim 7, wherein the pelleted or primed seed has been subjected to a treatment selected from the group consisting of: (a)polishing; (b) incrustation; and (c) coloring.
Heijbroek et al. (herein referred to as Heijbroek) teaches pelleted sugar beet seeds, wherein the pelleting contains fungicides and insecticides. Heijbroek teaches that the seeds were pelleted by pelleting firms according to their own processes (pg. 363, paragraph bridging left and right column), involving mixing a pelleted mass with sugar beet seeds and embedding the seeds in the pelleting mass. Heijbroek teaches that the insecticides were incorporated into different layers of the pellet and that special formulations and application techniques were developed to ensure good release and efficacy (pg. 363, paragraph bridging left and right column), which is a form of incrustation. Additionally, Heijbroek teaches plants that were grown from the pelleted seeds in field trials (pg. 364, left column, Field Trials).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to produce Heterodera resistant plant varieties as taught by Jung, wherein the seeds of the Heterodera resistant plant varieties are pelleted as taught by Heijbroek. One of ordinary skill in the art would have been motivated to pellet the Heterodera resistant seeds taught by Jung, because pelleting increases the germination rate of the seeds upon planting. The rationale to support a conclusion that the claims would have been obvious is that all the claimed elements were known in the prior art, and one of ordinary skill could have combined these elements as claimed with no change to their respective functions. Therefore, the invention is prima facie obvious in view of the prior art.
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. (WO 2014/127835 A1, published 08/28/2014; IDS Document) as applied to Claim 1 above, and further in view of Schuelke (Nat Biotechnol 18, 233–234 (2000)) and Matthieu et al. (EP 2514304A1, published 10/24/2012).
The teachings of Jung as they are applied to Claim 1 are set forth previously herein and are incorporated by reference.
The broadest reasonable interpretation of Claim 17, part (c) encompasses a genus of amino acid sequences inclusive of fragments of SEQ ID NOs: 3 and 6 as small as di-peptides (See Claim Interpretation).
Regarding Claims 15 and 17, Jung teaches hybridization of one or more {e.g. two) probes or primers based on the Hsl-2 sequence either to screen for Hsl-2 homologues or to produce Hsl-2 derivatives. Such oligonucleotides, probes, or primers form a further part of the present invention. An oligonucleotide for use in probing or PCR may be about 30 or fewer nucleotides in length {e.g. 18, 23, 24 or 25). Generally specific primers are upwards of 14 or 15 nucleotides in length. For optimum specificity and cost effectiveness, primers of 16-24 nucleotides in length may be preferred. Those skilled in the art are well versed in the design of primers for use processes such as PCR. If required, probing can be done with entire restriction fragments of the gene disclosed herein which may be 100 or even 1000 of nucleotides in length. Thus, the present invention also relates to an isolated nucleic acid molecule of at least 15, preferably 16 or 17 and more preferably 18, 19, 20, 21 or 22 nucleotides in length that specifically hybridizes under stringent conditions to the nucleotide sequence set forth in Figure 10 and 11 (SEQ ID NO: 1 or 3) or with a complementary sequence thereof. Specifically regarding Claim 17, Jung teaches that the Hsl-2 gene (beet cyst nematode resistance gene) was isolated from Beta vulgaris subsp. vulgaris nematode resistant lines (TR520 and TR363) carrying translocations of the wild beet Patellifolia procumbens (pg. 3, lines 5-12), therefore the oligonucleotides taught by Jung would necessarily hybridize to as a forward primer and reverse primer to a region in the Beta vulgaris genome that would inherently encode proteins that have at least a dipeptide in common with SEQ ID NOs: 3 and 6.
However, Jung does not teach the feature of Claim 15, wherein the oligonucleotide is directly or indirectly linked to a fluorochrome; the feature of Claim 16, wherein the fluorochrome is FAM or HEX; the feature of Claim 17, wherein co-segregation occurs in Beta vulgaris with the resistance to a nematode of the genus Heterodera.
Regarding Claims 15-17, Schuelke teaches a method for DNA sequence analysis, wherein fluorescence detection of the DNA fragments is accomplished by means of a fluorophore covalently attached to the oligonucleotide primer used in enzymatic DNA sequence analysis in order to analyze the length of the PCR products by electrophoresis and a laser detection system, wherein fluorophores useful in the methods of the invention include 6-carboxy-fluorescine (FAM), hexachloro-6-carboxy-fluorescine (HEX), 6-carboxy-X-rhodamine (ROX), or tetrachloro-6-carboxy-fluorescine (TET) (Introduction).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify the oligonucleotides taught by Jung to include one of the fluorescent labels taught by Schuelke. One of ordinary skill in the art would have been motivated to fluorescently label the oligonucleotides taught by Jung to detect, quantify, or localized the oligonucleotide that hybridizes with the nucleotides sequence taught by Jung, which is a routine practice in the art. The rationale to support a conclusion that the claims would have been obvious is that all the claimed elements were known in the prior art, and one of ordinary skill could have combined these elements as claimed with no change to their respective functions. Therefore, the invention is prima facie obvious in view of the prior art.
However, Jung and Schuelke do not teach the additional feature of Claim 17, wherein co-segregation occurs in Beta vulgaris with the resistance to a nematode of the genus Heterodera.
Regarding Claim 17, Matthieu et al. (herein referred to as Matthieu) teaches PCR oligonucleotide primer set for identifying marker loci co-segregating with potyvirus resistance (paragraph 0012) in a cultivated Cucurbita plant comprising at least one genetic determinant which is capable of directing or controlling resistance to potyvirus (paragraph 0006). Matthieu teaches that the primers are designed to amplify a specific region of DNA within a gene or a linked marker that is known to be associated with potyvirus resistance in cultivated Cucurbita plants (paragraph 0012), wherein the amplified region is tested for co-segregation with the resistance phenotype across a population of plants using PCR analysis, confirming that the marker is closely linked to the resistance gene (pg. 19, Example 1), allowing for the identification of plant individuals with the resistance trait (paragraph 0127-128).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to include the step of identifying marker loci co-segregating with a resistance trait taught by Matthieu in the method of hybridization of one or more {e.g. two) probes or primers based on the Hsl-2 sequence either to screen for Hsl-2 homologues or to produce Hsl-2 derivatives which would have resistance to Heterodera taught by Jung. Based on the method taught by Matthieu, one of ordinary skill in the art would have been motivated to test the amplified region taught by Jung for co-segregation with the resistance phenotype across a population of plants, to confirm with PCR analysis that the Hsl-2 amplified region is closely linked to the Heterodera resistance gene. The rationale to support a conclusion that the claims would have been obvious is that all the claimed elements were known in the prior art, and one of ordinary skill could have combined these elements as claimed with no change to their respective functions. Therefore, the invention is prima facie obvious in view of the prior art.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELSEY L. MCWILLIAMS whose telephone number is (703)756-4704. The examiner can normally be reached M-F 08:00-17:30.
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/KELSEY L MCWILLIAMS/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663