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 .
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 .
Claims 3-4, 6-8, 10-11,13, 15-16, and 18-19 are pending.
Claims 13, 15 and 19 remain withdrawn from further consideration as being drawn to non-elected groups (see Office actions mailed 10 September 2024 and 7 March 2025).
Claims 3-4, 6-8, 10-11, 16 and 18 are examined herein.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 13 April 2026 has been entered.
Status of the claims
All objections to claims 3 and 11 are withdrawn in light of Applicant’s amendment of the claims.
The “Use” claim rejection of claim 4 under 35 U.S.C. 112(b)/35 U.S.C. 101 is withdrawn in light of Applicant’s amendment of the claim.
The rejection of Claims 3-4, 6-8, 10-11, 16 and 18 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in light of Applicant’s amendment of the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 remains rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. This rejection has been modified from the rejection set forth in the previous Office action in light of Applicant’s amendment of claim 11. Applicants Arguments (filed 13 April 2026) have been full considered but are not persuasive.
Claim 11 depends from claim 3. Claim 3 requires that the EmBP1 is selected from a closed group of sequences that have at least 95% identity to SEQ ID NO: 1 or 3, or comprise the amino acid sequences of SEQ ID NOs: 1 or 3. Claim 11 recites limitations drawn to the method of claim 3, wherein the EmBP1 is selected from a group of polypeptides including polypeptides which are functional fragments of SEQ ID NO: 1. There is no limit on the length of said fragment. Thus, claim 11 has a broader scope than claim 3 and fails to includes all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Applicant’s arguments filed 13 April 2026:
On pages 8-9 of the Remarks, Applicant argues that the amendment of claim 11 overcomes the rejection of claim 11 under 35 U.S.C. 112(d). This is found not persuasive.
Claim 11 still recites the limitations “(iii) an active fragment of the polypeptide of the amino acid sequence shown in SEQ ID NO: 1”. This fragment encompasses a wider scope of polypeptides than the polypeptides of claim 3, the claim from which it depends. Therefore, the rejection is maintained.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Written Description
Claims 11 is rejected 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. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In light of Applicant’s amendment of the claims, this rejection has been modified from the one set forth in the previous Office action. Applicant’s arguments have been full considered but they are not persuasive.
Applicant claims a method of improving agronomic traits in a plant or preparing plants with improved agronomic traits, comprising increasing the expression of EmBP1, wherein the amino acid sequence of EmBP1 is selected from the group consisting of a (i) polypeptide with the amino acid sequence of SEQ ID NO: 1, (ii) a polypeptide with as little as 95% sequence identity to SEQ ID NO: 1, or (iii) an active fragment of SEQ ID NO: 1.
Applicant has described SEQ ID NO: 1 as an EmBP1 protein (a bZIP transcription factor) derived from maize and SEQ ID NO: 2 as the coding region of an EmBP1 gene derived from maize (instant specification, Example 1).
Applicant has described SEQ ID NO: 3 as an EmBP1 protein derived from rice and SEQ ID NO: 4 as the coding region of an EmBP1 gene derived from rice (instant specification, Example 10).
SEQ ID NO: 3 has 80.9% identity to SEQ ID NO: 1.
Query Match 80.9%; Score 1613.5; Length 388;
Best Local Similarity 80.9%;
Matches 317; Conservative 24; Mismatches 38; Indels 13; Gaps 3;
Qy 1 MASSSDEQSKPPEPPAAA-----AVVTAAAPPQTHAEWVASLQAYYAAAGHPYAWPAQHL 55
|||||||| ||||||||| || |||| ||||| |||||||||||||||||||||
Db 1 MASSSDEQPKPPEPPAAAAVAGTAVATAAAAVPTHAEWAASLQAYYAAAGHPYAWPAQHL 60
Qy 56 MAAAAAGAHFGTPVPFPVYHPGAAAAYYAHASMAAGVPYPTCEAVPAVALP---TVPEGK 112
|||||||| :| |||||:||||||||||||||||||||||| ||: | | |||||
Db 61 MAAAAAGAPYGAPVPFPMYHPGAAAAYYAHASMAAGVPYPTAEAMAAAAAAAAGAVPEGK 120
Qy 113 GKGKGGGASPEKGSSGAPSGEDASRSDDSGSDESSETRDDDTDHKDSSAPKKRKSGNTSA 172
||||| |||||||| ||||:||||| ||||:|||:||||||||||||||||||||||||
Db 121 GKGKGAAASPEKGSSAAPSGDDASRSGDSGSEESSDTRDDDTDHKDSSAPKKRKSGNTSA 180
Qy 173 EGEPSQATVVRYAAVESPYPAKGRSASKLPVSAPGRAALPSATPNLNIGMDIWNASPALA 232
||||||||:| ||||||||| |||||||||||||||||||:||||||||:|:|: ||||
Db 181 EGEPSQATLVPYAAVESPYPLKGRSASKLPVSAPGRAALPNATPNLNIGIDLWSTPPALA 240
Qy 233 VPAVQGEVSPGLALARRDGVTQLDEREIKRERRKQSNRESARRSRLRKQQECEELARKVA 292
||| ||| |||||||||||| |||||:||||||||||||||||||||||||||||||||
Db 241 VPAGQGEASPGLALARRDGVAHLDERELKRERRKQSNRESARRSRLRKQQECEELARKVA 300
Qy 293 DLTTENSALRAELDNLKKACQDMEAENSRLLGGVADAQVPSVTTTLGMSIEPPKLQLQLQ 352
:|||||||||:||| |||||:||||||:||:| | : |:|||||||||: |
Db 301 ELTTENSALRSELDQLKKACEDMEAENTRLMGDKAQYKGPTVTTTLGMSIDSSK-----T 355
Qy 353 QHHDEEGQLHKKSSNNSNGNCAGGSHKPEANT 384
||||:|||||| ::|||||| |||||||||:
Db 356 QHHDDEGQLHKNTNNNSNGNYVGGSHKPEANS 387
Applicant describes transgenic rice and Arabidopsis plants comprising maize derived EmBP1 (i.e. SEQ ID NO: 2, which encodes SEQ ID NO: 1) transgenes and transgenic rice plants overexpressing EmBP1 which comprise rice derived EmBP1 (i.e. SEQ ID NO: 4, which encodes SEQ ID NO: 3) transgenes.
Applicant describes homologs of EmBP1 which appear to have been accessed from publicly available data sources, but does not disclose if they have the function of improving agronomic traits when their activity or expression is increased.
Applicant has not described any fragments of SEQ ID NO: 1 which have the function of improving agronomic traits when their activity or expression is increased.
Applicant has not described any domains or motifs that are both necessary and sufficient for an EmBP1 polypeptide fragment of SEQ ID NO: 1 to have the function of improving agronomic traits when their activity or expression is increased or which would distinguish an EmBP1 polypeptide fragment of SEQ ID NO: 1 with the function of improving agronomic traits when their activity or expression is increased from polypeptides without said function.
The genus of polypeptides encompassed by fragments of SEQ ID NO: 1 includes fragments of any length that comprise at least two amino acid residues of SEQ ID NO: 1.
Thus, the genus of claimed polynucleotide fragments is exceedingly vast. Applicant’s disclosure of two species (i.e. SEQ ID NOs: 1 and 3) that are full length EmBP1 polypeptides does not constitute a sufficient number of representative species across this broad genus. Applicant has not disclosed any “active fragments” of SEQ ID NO: 1.
Furthermore, Applicant has not described the structures (e.g. domains or motifs) that are sufficient and necessary for an EmBP1 polypeptide fragment of SEQ ID NO: 1 to confer improved agronomic traits when their activity or expression is increased such that one would not be able to envision which members of the claimed genus of fragments have the required function and which do not. Applicant has also failed to describe any molecules that interact with EmBP1 and which, when up-regulated, increase expression or activity of EmBP1.
The prior art does not remedy this deficiency. The basic structure of bZIP transcription factors and EmBP1 (isolated initially from wheat) have been known for some time. Like other bZIP transcription factors, which are implicated in a variety of stress responses, EmBP1 comprises a conserved basic region which binds to sequence specific DNA and a conserved region of leucine repeats (i.e. leucine zipper) that mediates dimerization, along with glutamine-rich, proline-rich, and acidic-rich regions (Nieva et al, in J.H. Cherry et al (eds), Plant Tolerances to Abiotic Stresses in Agriculture: Role of Genetic Engineering, 157-180; page 166, second paragraph; page 170, paragraphs 3-4; page 171, paragraph 2; Guo et al, 2024, Plants 13: 2058, pages 2-3, “Structure of bZIP TFs” ). Guiltinan et al (1994, Plant Molecular Biology 26: 1041-1053) discloses a minimal domain fragment of approximately 60 amino acid residues as the smallest EmBP1 polypeptide that binds DNA (page 1048, column 2, “Minimal Domain”). However, other prior art discloses that transforming tobacco plants with a deletion variation of EmBP1 comprising just the DNA binding and dimerization domains, under the control of the CaMV promoter, led to tobacco plants with reductions in photosynthesis and growth, at least in low-light conditions (Eckardt et al, 1998, Plant Molecular Biology 38: 539-549; page 540, column 1, last paragraph; page 547, second column, second paragraph). Therefore, while it appears that the binding and dimerization domains are necessary for the function of DNA binding, they are not sufficient to confer the function of improved agronomic traits with increased expression or activity of EmBP1.
Thus, one of skill in the art would not recognize that Applicant was in possession of the necessary common attributes or features of the genus in view of the disclosed species. Since the disclosure fails to describe the common attributes that identify members of the genus, and because the genus is highly diverse, SEQ ID NOs: 1 and 3 are insufficient to describe the claimed genus.
Therefore, given the lack of written description in the specification with regard to the structural and functional characteristics of the claimed compositions, Applicant does not appear to have been in possession of the claimed genus of EmBP1 polypeptide fragments of SEQ ID NO: 1 at the time this application was filed.
Response to Applicant’s arguments filed 13 April 2026:
On pages 8-9 of the Remarks, Applicant argues that the amendment of claim 11 overcomes the rejection of claim 11 under 35 U.S.C. 112(a). Applicant provides no further arguments drawn to the substance of the rejection. This is found not persuasive.
Claim 11 still recites the limitations “(iii) an active fragment of the polypeptide of the amino acid sequence shown in SEQ ID NO: 1”. As set forth above, Applicant has not adequately described the claimed fragments of SEQ ID NO: 1 in such a way as to reasonably convey to one of ordinary skill in the art that the inventor had possession of the claimed invention at the time of filing.
Therefore, the rejection is maintained.
Examiner notes that amending claim 11 to remove the limitation drawn to an active fragment of SEQ ID NO: 1 would overcome this rejection.
Scope of enablement
Claims 11 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for methods of improving agronomic traits in plants by overexpressing polynucleotides encoding polypeptides with at least 95 % sequence identity to SEQ ID NOs: 1 or 3, does not reasonably provide enablement for methods of improving agronomic traits in plants by increasing the activity or expression of polynucleotides encoding a fragment of SEQ ID NO: 1 of any length. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims. In light of Applicant’s amendment of the claims, this rejection has been modified from the one set forth in the previous Office action. Applicant’s arguments have been full considered but they are not persuasive.
Applicant claims a method of improving agronomic traits in a plant or preparing plants with improved agronomic traits, comprising increasing the expression of EmBP1, wherein the amino acid sequence of EmBP1 is selected from the group consisting of a (i) polypeptide with the amino acid sequence of SEQ ID NO: 1, (ii) a polypeptide having one or more deletions, insertions or substitutions relative to SEQ ID NO: 1 (iii) a polypeptide with as little as 80% sequence identity to SEQ ID NO: 1, or (iv) an active fragment of SEQ ID NO: 1.
Applicant teaches that SEQ ID NO: 1 is an EmBP1 protein (a bZIP transcription factor) derived from maize and that SEQ ID NO: 2 is the coding region of an EmBP1 gene derived from maize (instant specification, Example 1).
Applicant teaches that SEQ ID NO: 3 is an EmBP1 protein derived from rice and that SEQ ID NO: 4 is the coding region of an EmBP1 gene derived from rice (instant specification, Example 10).
SEQ ID NO: 3 has 80.9% identity to SEQ ID NO: 1.
Query Match 80.9%; Score 1613.5; Length 388;
Best Local Similarity 80.9%;
Matches 317; Conservative 24; Mismatches 38; Indels 13; Gaps 3;
Qy 1 MASSSDEQSKPPEPPAAA-----AVVTAAAPPQTHAEWVASLQAYYAAAGHPYAWPAQHL 55
|||||||| ||||||||| || |||| ||||| |||||||||||||||||||||
Db 1 MASSSDEQPKPPEPPAAAAVAGTAVATAAAAVPTHAEWAASLQAYYAAAGHPYAWPAQHL 60
Qy 56 MAAAAAGAHFGTPVPFPVYHPGAAAAYYAHASMAAGVPYPTCEAVPAVALP---TVPEGK 112
|||||||| :| |||||:||||||||||||||||||||||| ||: | | |||||
Db 61 MAAAAAGAPYGAPVPFPMYHPGAAAAYYAHASMAAGVPYPTAEAMAAAAAAAAGAVPEGK 120
Qy 113 GKGKGGGASPEKGSSGAPSGEDASRSDDSGSDESSETRDDDTDHKDSSAPKKRKSGNTSA 172
||||| |||||||| ||||:||||| ||||:|||:||||||||||||||||||||||||
Db 121 GKGKGAAASPEKGSSAAPSGDDASRSGDSGSEESSDTRDDDTDHKDSSAPKKRKSGNTSA 180
Qy 173 EGEPSQATVVRYAAVESPYPAKGRSASKLPVSAPGRAALPSATPNLNIGMDIWNASPALA 232
||||||||:| ||||||||| |||||||||||||||||||:||||||||:|:|: ||||
Db 181 EGEPSQATLVPYAAVESPYPLKGRSASKLPVSAPGRAALPNATPNLNIGIDLWSTPPALA 240
Qy 233 VPAVQGEVSPGLALARRDGVTQLDEREIKRERRKQSNRESARRSRLRKQQECEELARKVA 292
||| ||| |||||||||||| |||||:||||||||||||||||||||||||||||||||
Db 241 VPAGQGEASPGLALARRDGVAHLDERELKRERRKQSNRESARRSRLRKQQECEELARKVA 300
Qy 293 DLTTENSALRAELDNLKKACQDMEAENSRLLGGVADAQVPSVTTTLGMSIEPPKLQLQLQ 352
:|||||||||:||| |||||:||||||:||:| | : |:|||||||||: |
Db 301 ELTTENSALRSELDQLKKACEDMEAENTRLMGDKAQYKGPTVTTTLGMSIDSSK-----T 355
Qy 353 QHHDEEGQLHKKSSNNSNGNCAGGSHKPEANT 384
||||:|||||| ::|||||| |||||||||:
Db 356 QHHDDEGQLHKNTNNNSNGNYVGGSHKPEANS 387
Applicant teaches transgenic rice and Arabidopsis plants comprising maize derived EmBP1 (i.e. SEQ ID NO: 2, which encodes SEQ ID NO: 1) transgenes and transgenic rice plants overexpressing EmBP1 which comprise rice derived EmBP1 (i.e. SEQ ID NO: 4, which encodes SEQ ID NO: 3) transgenes.
Applicant teaches homologs of EmBP1 which appear to have been accessed from publicly available data sources, but does not disclose if they have the function of improving agronomic traits when their activity or expression is increased.
Applicant does not teach any fragments of SEQ ID NO: 1 which have the function of improving agronomic traits when their activity or expression is increased.
Applicant does not teach any domains or motifs that are both necessary and sufficient for an EmBP1 polypeptide fragment of SEQ ID NO: 1 to have the function of improving agronomic traits when their activity or expression is increased or which would distinguish an EmBP1 polypeptide fragment of SEQ ID NO: 1 with the function of improving agronomic traits when their activity or expression is increased from polypeptides without said function.
Applicant has not provided a definition for homologs of EmBP1 which includes any lower bounds. Applicant defines “ homology” as the “level of two similarity” between two polynucleotides or polypeptides and provides an example of “high homology” as “at least 60% homology”(instant specification, page 8, lines 18-41). Thus homologs of EmBP1 encompass polypeptides with as little as 60% sequence identity to SEQ ID NO: 1.
The genus of polypeptides encompassed by fragments of SEQ ID NO: 1 includes fragments of any length that comprise at least two amino acid residues of SEQ ID NO: 1. Thus, the genus of claimed polynucleotide fragments is exceedingly vast.
The specification fails to provide guidance for how to make polynucleotides encoding a fragment of SEQ ID NO: 1 of any length and which have the function of improving agronomic traits when their activity or expression or increased.
The specification fails to provide what minimal fragment of SEQ ID NO: 1 is needed to maintain the function of improving agronomic traits.
Applicant teaches that SEQ ID NO: 1 is an EmBP1 protein (a bZIP transcription factor) derived from maize and that SEQ ID NO: 2 is the coding region of an EmBP1 gene derived from maize (instant specification, Example 1). However, the specification does not teach any structures, motifs or amino acid resides that are necessary to confer the function of improving agronomic traits with increased activity or expression. The prior art teaches that bZIP transcription factors, which are implicated in a variety of stress responses, comprises a conserved basic region which binds to sequence specific DNA and a conserved region of leucine repeats (i.e. leucine zipper) that mediates dimerization, along with glutamine-rich, proline-rich, and acidic-rich regions (Nieva et al, in J.H. Cherry et al (eds), Plant Tolerances to Abiotic Stresses in Agriculture: Role of Genetic Engineering, 157-180; page 166, second paragraph; page 170, paragraphs 3-4; page 171, paragraph 2; Guo et al, 2024, Plants 13: 2058, pages 2-3, “Structure of bZIP TFs” ). Guiltinan et al (1994, Plant Molecular Biology 26: 1041-1053) teaches that a minimal domain fragment of approximately 60 amino acid residues as the smallest EmBP1 polypeptide that binds DNA (page 1048, column 2, “Minimal Domain”). However, other prior art teaches that transforming tobacco plants with a deletion variation of EmBP1 comprising just the DNA binding and dimerization domains, under the control of the CaMV promoter, led to tobacco plants with reductions in photosynthesis and growth, at least in low-light conditions (Eckardt et al, 1998, Plant Molecular Biology 38: 539-549; page 540, column 1, last paragraph; page 547, second column, second paragraph). Therefore, while it appears that the binding and dimerization domains are necessary for the function of DNA binding, they are not sufficient to confer the function of improved agronomic traits with increased expression or activity of EmBP1.
The specification teaches that fragments, derivatives and analogs of EmBP1 can be made by deletions, substitution or insertions in SEQ ID NO: 1, however they do not teach which residues can be altered and which must remain unchanged for the claimed function to remain unchanged (instant specification, page 7, lines 30, to page 8 lines 17).
Thus, from the guidance in the specification, it would appear that one of skill in the art would need to make the claimed polypeptides and polynucleotides by making random nucleotide and amino acid deletions, which would be unpredictable.
Given the vast number of polynucleotides and polypeptides encompassed by the claims, making and assaying even a representative sample to find any fragments of SEQ ID NO: 1 that confer improved agronomic traits with increased activity or expression would entail undue experimentation.
Thus extensive teachings are required for making polynucleotides encoding a polypeptide fragment of SEQ ID NO: 1 of any length and using said fragments in a method for improving agronomic traits. These teachings are not provided for by specification. The specification also fails to overcome the unpredictability in the art.
Undue experimentation would have been required by one skilled in the art to develop and evaluate for methods of improving agronomic traits in plants by increasing the activity or expression of polynucleotides encoding a fragment of SEQ ID NO: 1 of any length and using said fragments thereof in a method for improving agronomic traits
As the specification does not describe the modification of a polynucleotide conferring improved agronomic traits or a polypeptide encoded by said nucleic acid, undue trial and error experimentation would be required to screen through the myriad of nucleic acids and polypeptides encompassed by the claims, to identify those capable of use with the claimed methods.
Given the claim breath, unpredictability in the art, undue experimentation, and lack of guidance in the specification as discussed above, the instant invention is not enabled throughout the full scope of the claims.
Response to Applicant’s arguments filed 13 April 2026:
On pages 8-9 of the Remarks, Applicant argues that the amendment of claim 11 overcomes the rejection of claim 11 under 35 U.S.C. 112(a). Applicant provides no further arguments drawn to the substance of the rejection. This is found not persuasive.
Claim 11 still recites the limitations “(iii) an active fragment of the polypeptide of the amino acid sequence shown in SEQ ID NO: 1”. As set forth above, the specification does not reasonably provide enablement across the full scope of the claims.
Therefore, the rejection is maintained.
Examiner notes that amending claim 11 to remove the limitation drawn to an active fragment of SEQ ID NO: 1 would overcome this rejection.
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 3-4, 6-8, 10-11, 16 and 18 remain rejected under 35 U.S.C. 103 as being unpatentable over Cai et al (CN104725493A; published 2015-06-24) in view of UniProt Accession B4FC61 (2018, uniprot.org/uniprotkb/B4FC61/entry, version 62; integrated 2008-09-23). The rejection has been modified slightly in light of Applicant’s amendment of the claims. Applicant’s arguments have been fully considered but they are not persuasive.
The claims are broadly drawn to a method of improving agronomic traits consisting of increasing photosynthesis efficiency, regulating the expression of photosynthetic genes, increasing yield, increasing biomass, increasing plant height, and increasing tiller number; comprising increasing the expression of EmBP1 in a Gramineae or Brassicaceae, wherein the EmBP1 polypeptide has at least 95% sequence identity to SEQ ID NO: 1 or 3 (claim 3); the method of claim 3, comprising transforming into a plant an expression cassette or construct that overexpresses EmBP1 (claim 4); the method of claim 3, wherein the Gramineae is selected from rice or maize (among others) (claim 6); the method of claim 3, wherein the plant is a Gramineae and the improved trait is seed weight ( among others claim 7); the method of claim 3, wherein regulating the expression of photosynthetic genes includes upregulating (claim 8) the method of claim 3, wherein, improving photosynthetic efficiency is selected from the group consisting of: increasing C02 absorption rate, increasing electron transfer efficiency, increasing maximum electron transfer rate, increasing Rubisco maximum catalytic efficiency, increasing chlorophyll content, increasing maximum quantum yield, increasing the aperture beam size of the reaction center, or improving the level of the electron transport chain (claim 10); the method of claim 3, wherein EmBP1 is a polypeptide having the amino acid sequence of SEQ ID NO: 1 (claim 11); the method of claim 8, wherein the EmBP1 or homolog thereof regulates the promoter of the photosynthetic genes (claim 16); the method according to claim 3, wherein the photosynthetic genes include PsbR3, RbcS3, FBA1, FBPse, Fdl, PsaN and/orCP29 (claim 18).
Cai et al teaches a method for improving a gramineous plant (i.e. a Gramineae) comprising increasing the expression of an OsbZIP34 protein or a homolog thereof (claim 1). Cai et al teaches said method where in the yield or 1000-grain weight of the seeds of the gramineous plant are increased (claim 2). Cai et al teaches overexpressing OsbZIP34 by transformation of a rice plant with an expression construct (see translated document, page 11, “Agrobacterium-mediated rice transformation” and “Construction of overexpression vector of OsbZIP34”; page 14, Example 4). Cai et al further teaches that EmBP-1 from maize has high homology to OsbZIP34, particularly in the bZIP domain (see translated document, pages 12-13, Example 1).
Cai et al teaches a maize EmBP-1 protein with 99.3% similarity to instant SEQ ID NO: 1:
Query Match 99.3%; Score 1981; Length 386;
Best Local Similarity 99.5%;
Matches 384; Conservative 0; Mismatches 2; Indels 0; Gaps 0;
Qy 1 MASSSDEQSKPPEPPAAAAVVTAAAPPQTHAEWVASLQAYYAAAGHPYAWPAQHLMAAAA 60
||||||||||||| ||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MASSSDEQSKPPESPAAAAVVTAAAPPQTHAEWVASLQAYYAAAGHPYAWPAQHLMAAAA 60
Qy 61 AGAHFGTPVPFPVYHPGAAAAYYAHASMAAGVPYPTCEAVPAVALPTVPEGKGKGKGGGA 120
|||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 AGAHFGIPVPFPVYHPGAAAAYYAHASMAAGVPYPTCEAVPAVALPTVPEGKGKGKGGGA 120
Qy 121 SPEKGSSGAPSGEDASRSDDSGSDESSETRDDDTDHKDSSAPKKRKSGNTSAEGEPSQAT 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 SPEKGSSGAPSGEDASRSDDSGSDESSETRDDDTDHKDSSAPKKRKSGNTSAEGEPSQAT 180
Qy 181 VVRYAAVESPYPAKGRSASKLPVSAPGRAALPSATPNLNIGMDIWNASPALAVPAVQGEV 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 VVRYAAVESPYPAKGRSASKLPVSAPGRAALPSATPNLNIGMDIWNASPALAVPAVQGEV 240
Qy 241 SPGLALARRDGVTQLDEREIKRERRKQSNRESARRSRLRKQQECEELARKVADLTTENSA 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 SPGLALARRDGVTQLDEREIKRERRKQSNRESARRSRLRKQQECEELARKVADLTTENSA 300
Qy 301 LRAELDNLKKACQDMEAENSRLLGGVADAQVPSVTTTLGMSIEPPKLQLQLQQHHDEEGQ 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 301 LRAELDNLKKACQDMEAENSRLLGGVADAQVPSVTTTLGMSIEPPKLQLQLQQHHDEEGQ 360
Qy 361 LHKKSSNNSNGNCAGGSHKPEANTTR 386
||||||||||||||||||||||||||
Db 361 LHKKSSNNSNGNCAGGSHKPEANTTR 386
Cai et al does not teach a maize EmBP-1 protein with 100% sequence identity to instant SEQ ID NO: 1.
UniProt Accession B4FC61 teaches a protein with 100% identity to instant SEQ ID NO: 1 and explicitly identifies said protein as an EMBP-1 protein of maize:
Query Match 100.0%; Score 1995; Length 386;
Best Local Similarity 100.0%;
Matches 386; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MASSSDEQSKPPEPPAAAAVVTAAAPPQTHAEWVASLQAYYAAAGHPYAWPAQHLMAAAA 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MASSSDEQSKPPEPPAAAAVVTAAAPPQTHAEWVASLQAYYAAAGHPYAWPAQHLMAAAA 60
Qy 61 AGAHFGTPVPFPVYHPGAAAAYYAHASMAAGVPYPTCEAVPAVALPTVPEGKGKGKGGGA 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 AGAHFGTPVPFPVYHPGAAAAYYAHASMAAGVPYPTCEAVPAVALPTVPEGKGKGKGGGA 120
Qy 121 SPEKGSSGAPSGEDASRSDDSGSDESSETRDDDTDHKDSSAPKKRKSGNTSAEGEPSQAT 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 SPEKGSSGAPSGEDASRSDDSGSDESSETRDDDTDHKDSSAPKKRKSGNTSAEGEPSQAT 180
Qy 181 VVRYAAVESPYPAKGRSASKLPVSAPGRAALPSATPNLNIGMDIWNASPALAVPAVQGEV 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 VVRYAAVESPYPAKGRSASKLPVSAPGRAALPSATPNLNIGMDIWNASPALAVPAVQGEV 240
Qy 241 SPGLALARRDGVTQLDEREIKRERRKQSNRESARRSRLRKQQECEELARKVADLTTENSA 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 SPGLALARRDGVTQLDEREIKRERRKQSNRESARRSRLRKQQECEELARKVADLTTENSA 300
Qy 301 LRAELDNLKKACQDMEAENSRLLGGVADAQVPSVTTTLGMSIEPPKLQLQLQQHHDEEGQ 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 301 LRAELDNLKKACQDMEAENSRLLGGVADAQVPSVTTTLGMSIEPPKLQLQLQQHHDEEGQ 360
Qy 361 LHKKSSNNSNGNCAGGSHKPEANTTR 386
||||||||||||||||||||||||||
Db 361 LHKKSSNNSNGNCAGGSHKPEANTTR 386
Examiner notes that a polypeptide, such as that of UniProt Accession B4FC61 makes obvious all the polynucleotide sequences which encode said polypeptide.
At the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the method taught by Cai et al to overexpress the EmBP-1 polypeptide taught by UniProt Accession B4FC61. One would have been motivated to do so because claim 1 of Cai et al is drawn to a method of improving a gramineous plant by increasing expression of “a OsbZIP34 protein or a homolog thereof” and Cai et al explicitly teaches that EmBP-1 from maize is a homolog of OsbZIP34. Further, Cai et al teach a maize EmBP-1 with over 99% identity to instant SEQ ID NO: 1, and by extension over 99% identity to the EmBP-1 protein taught by UniProt Accession B4FC61. Thus substituting the EmBP-1 of UniProt Accession B4FC61 for the homolog of OsbZIP34 protein taught by Cai et al (i.e. the maize EmBP-1 of Cai et al) would be a substitution of equivalents. One would have a reasonable expectation of success given the teachings of Cai et al, the routine nature of overexpressing a heterologous protein by transformation, and given the high skill level of one having ordinary skill in the art.
Regarding the limitations of the claims drawn to improved agronomic traits, the affected photosynthetic genes, the binding domains, the modes of action, etc., these constitute intended results and inherent properties of the claimed invention, by applicant’s own admission (see Examples in the specification which detail the results of Applicants’ experiments). Thus, as the combined prior art references make obvious all the active method steps and teach a polypeptide with 100% sequence identity to instant SEQ ID NO: 1, the combined prior art references also make obvious the intended results and inherent properties which flow from practicing said active method steps.
Response to Applicant’s arguments:
In the Remarks filed 14 April 2026, on pages 10-12, Applicant argues that the claimed polypeptide of Cai et al (OsbZIP34) has low sequence homology to the maize bZip polypeptide taught therein (ZmEmbp-1a) and similarity low homology to instant SEQ ID NO: 1. Applicant further argues that Cai does not teach or suggest that ZmEmbp-1a would improve the claimed agronomic traits because there is not teaching in Cai et al or UniProt Accession B4FC61 regarding the function of an EmBP1. Applicant continues that UniProt accession B4FC6 does not describe the function of the polypeptide taught therein and one would not be able to reasonably predict that combining the teachings of Cai et al with the teachings of UniProt accession B4FC6 would result in a plant with improved agronomic traits, as claimed by the instant invention, with a reasonable expectation of success. Applicant urges that absent impermissible hindsight reasoning a person of ordinary skill in the art would have had no reason to modify the cited references to arrive at the claimed method.
This is not found persuasive.
Cai et al teaches a method for improving (e.g. increasing yield) a gramineous plant comprising increasing the expression of an OsbZIP34 protein or a homolog thereof. Cai et al further explicitly teaches that EmBP-1 from maize is such a homolog. The level of homology between these two homologs is irrelevant, because we do not rely on homology between the two proteins to select the maize homolog. Rather, one would select it based on Cai’s teachings that EmBP-1 and OsbZIP34 are homologs. Applicant urges that “One skilled in the art understands that Cai’s teaching clearly indicates that a 56% similarity means that OsbZIP34 and ZmEMbp-1 are quite different”. Examiner respectfully disagrees with this characterization of Cai et al’s teachings. Applicant’s translation of Cai et al differs slightly from the machine translation relied upon by the Examiner. The relevant portions of the translation are cited below.
From Examiner’s machine translation:
PNG
media_image1.png
200
400
media_image1.png
Greyscale
From Applicant’s translation:
PNG
media_image2.png
323
826
media_image2.png
Greyscale
While there are slight differences in wording, there is no indication that Cai et al teachings indicate that the two homologs are quite different. To the contrary, it appears that Cai et al considers them to have substantial homology.
Further, as explained above, Cai et al teach a maize EmBP-1 with over 99% identity to instant SEQ ID NO: 1, and by extension over 99% identity to the EmBP-1 protein taught by UniProt Accession B4FC61. Thus substituting the EmBP-1 of UniProt Accession B4FC61 for the homolog of OsbZIP34 protein taught by Cai et al (i.e. the maize ZmEMbp-1of Cai et al) would be a substitution of equivalents. Moreover, the motivation to combine the prior art references need not be the same as Applicant’s motivation to pursue their methods. In the instant case, Cai teaches methods to improve seed yield or starch content for example (see claims 1-3) by increasing expression of OsbZIP34 or a homolog and teaches said homologs. This would be sufficient motivation. And, as explained above, the other claimed improvements would naturally flow from practicing the invention made obvious by the prior art references, as evidenced by Applicant’s own specification.
Regarding an expectation of success, Examiner reminds Applicant that only a reasonable expectation of success is needed. An explicit teaching from Cai et al that ZmEmbp-1a from maize can improve agronomic traits with increases expression is not required (see Applicant’s Remarks, page 12, second to last paragraph). Cai et al teaches that increasing expression of OsbZIP34 (a rice protein) increases yield in rice plants (a Gramineae). Given that, one of ordinary skill in the art would reasonably expect that increasing the expression a homolog of OsbZIP34 (e.g. EmBP1) from another Gramineae (maize) would likewise have similar results in gramineous plants, like rice or maize. Examiner notes that Applicant has not provided any evidence regarding unpredictability regarding substituting OsbZIP34 with a homolog from maize. To the contrary, Applicant’s own specification provides evidence that substituting OsbZIP34 with an EmBP1 from maize does in fact increase the claimed agronomic traits.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Here, one need not rely on improper hindsight reasoning. Cai et al teaches a method for improving (e.g. increasing yield) a gramineous plant comprising increasing the expression of an OsbZIP34 protein or a homolog thereof. Cai et al further explicitly teaches that ZmEMbp-1 from maize is such a homolog. Cai provide sufficient motivation with a reasonable expectation of success to substitute OsbZIP34 with ZmEMbp-1. Further modifying the teachings of Cai et al to use the EmBP1 of UniProt Accession B4FC61 likewise does not rely on improper hindsight reasoning. As explained above, substituting one polypeptide with another that has over 99% sequence identity and which is taught to be the same protein (i.e. an EmBP1 from maize) would be a substitution of equivalents.
For these reasons, the rejection is maintained.
Conclusion
No claims are allowed.
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/ALEKSANDAR RADOSAVLJEVIC/Examiner, Art Unit 1662
/BRENT T PAGE/Primary Examiner, Art Unit 1663
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