DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
The rejection of claims 27-39 under 35 USC § 103 over Koprowski is withdrawn by the examiner in view of the amendment filed on 5/11/2026.
Since a new Non-Final Office Action is follows, applicant’s argument will not be addressed.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 27-35 and 38-40 are rejected under 35 U.S.C. §103 as being unpatentable over Koprowski et al. (US 2010/0184130 A1) in view of Haertel et al. (WO 2006/007432 A2), Weselake et al. (WO 2009/109054 A1), and Vanhercke et al., “Metabolic engineering of biomass for high energydensity: oilseed-like triacylglycerol yields from plant leaves” Plant Biotechnology Journal, vol. 12, pages 231-239, 2014.
Koprowski teaches production of plant-derived oil from transgenic vegetative biomass, including extraction and recovery of lipid from transgenic plant tissues for industrial and biofuel applications (¶¶ [0010], [0018], [0060]-[0062]). Koprowski further teaches transgenic vegetative tissues expressing DGAT and teaches that the transcription factor may be selected from LEC1, LEC2, FUS3, or WR1 (WRI1) (¶¶ [0014]-[0017], [0040], [0045], [0046], [0058]-[0059]). Koprowski additionally teaches extraction of oil from vegetative biomass by mechanical processing and solvent extraction (¶¶ [0060]-[0061]) and conversion of recovered oil into biodiesel by transesterification (¶ [0062]).
Koprowski does not expressly teach transgenic vegetative plant parts co-expressing WRI1 and DGAT and having a total non-polar lipid content of between 5% and 25% (w/w dry weight).
Haertel teaches that WRI1 functions as a positive regulator of fatty acid biosynthesis and oil accumulation in plants. Weselake teaches that DGAT catalyzes the terminal step of triacylglycerol biosynthesis and that increased DGAT expression increases TAG accumulation in transgenic plants.
Vanhercke teaches transgenic tobacco leaves co-expressing WRI1 and DGAT1 and reports accumulation of more than 15% TAG and 17.7% total lipids on a dry-weight basis. Specifically, Vanhercke teaches “more than 15% TAG (17.7% total lipids) by dry weight in Nicotiana tabacum leaves” (p. 1, lines 24-30) and teaches that maximum TAG and total lipid levels averaged 15.8% and 17.7%, respectively, on a dry-weight basis (p. 5, lines 120-123).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ WRI1 together with DGAT in the vegetative biomass oil-production system of Koprowski because Haertel teaches that WRI1 increases fatty acid production, Weselake teaches that DGAT increases TAG synthesis, and Vanhercke demonstrates successful co-expression of WRI1 and DGAT in vegetative leaf tissue producing lipid levels within the claimed range. One would have been motivated to combine these teachings to increase recoverable plant oil yields and improve production of plant-derived industrial oils and biofuels.
Claim 28: Koprowski teaches extraction of oil from biomass using physical extraction methods, including pressing and mechanical processing, and teaches drying and grinding biomass prior to extraction (¶¶ [0060]-[0061]).
Claim 29: Koprowski expressly teaches solvent extraction using hexane (¶ [0061]). Vanhercke further teaches chloroform/methanol extraction systems for lipid recovery (p. 21, lines 603-610).
Claim 30: Koprowski teaches converting extracted plant oil into industrial products including biodiesel fuel (¶ [0062]).
Claim 31: Koprowski expressly teaches reacting vegetable oil with methanol to produce methyl esters by transesterification (¶ [0062]).
Claim 32: Koprowski teaches transesterification in the presence of sodium hydroxide catalyst and production of biodiesel fuel suitable for transportation fuel applications (¶ [0062]).
Claim 33: Koprowski teaches alkali refining of extracted oils (¶ [0062]). Vanhercke teaches analysis of fatty acid composition of extracted lipids (p. 6, lines 145-150; p. 7, lines 161-170). Degumming, deodorizing, decolorizing, drying, fractionating, and wax-removal operations were conventional vegetable-oil refining procedures.
Claim 34: Vanhercke teaches WRI1/DGAT leaf lipids enriched in oleic acid and linoleic acid and reduced in α-linolenic acid relative to wild type (p. 6, lines 145-150).
Claim 35: Vanhercke teaches increased oleic acid levels relative to wild type in WRI1/DGAT-expressing vegetative tissues (p. 6, lines 145-150).
Claim 38: Vanhercke expressly teaches that the co-expression of WRI1 and DGAT1 produces a synergistic effect on TAG accumulation, stating that the authors had “previously uncovered a synergistic effect on TAG levels” resulting from WRI1 and DGAT1 co-expression (p. 3, lines 57-61). Vanhercke further teaches that expression of both WRI1 and DGAT1 is crucial for achieving the elevated TAG levels obtained (p. 11, lines 314-319).
Claim 39: Koprowski teaches increasing oil accumulation in green biomass, particularly leaves (¶¶ [0006], [0029], [0044]), and Vanhercke expressly teaches transgenic tobacco leaves expressing WRI1 and DGAT1 (p. 1, lines 24-30).
Claim 40: Vanhercke teaches vegetative tobacco leaves containing 17.7% total lipids on a dry-weight basis (p. 1, lines 24-30; p. 5, lines 120-123), which falls within the claimed range of 10% to 25% (w/w dry weight).
Claim 36 is rejected under 35 U.S.C. §103 as being unpatentable over Koprowski in view of Haertel, Weselake, and Vanhercke, and further in view of Bouvier-Navé et al., “Involvement of the Phospholipid Sterol Acyltransferase1 in Plant Sterol Homeostasis and Leaf Senescence” Plant Physiology vol. 152, 2010, pages 107-119.
Bouvier-Navé teaches that transgenic modification of plant lipid metabolism alters levels of total sterols, free sterols, sterol esters, and sterol glycosides relative to wild type and teaches measurement of such sterol classes in plant leaves. Bouvier-Navé further teaches altered sterol ester accumulation and altered sterol homeostasis in transgenic plant tissues. See pages 1758 and 1760.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to obtain or analyze modified levels of sterols, non-esterified sterols, sterol esters, or sterol glycosides in the high-oil vegetative tissues produced by the combined teachings of Koprowski, Haertel, Weselake, and Vanhercke because sterols and sterol-derived lipids were recognized components of plant non-polar lipid fractions.
Claim 37 is rejected under 35 U.S.C. §103 as being unpatentable over Koprowski in view of Haertel, Weselake, and Vanhercke, and further in view of Petrie et al. (US 9,127,288).
Petrie teaches that non-polar lipids include triacylglycerols (TAG), diacylglycerols (DAG), monoacylglycerols (MAG), sterols, sterol esters and wax esters, and further teaches that "at least 50%, more preferably at least 70%, more preferably at least 80%, more preferably at least 90% ... of the fatty acids in non-polar lipid of the invention can be found as TAG." Col. 24, ll. 10-18. Therefore, Petrie teaches embodiments in which TAG constitutes at least 90% of the non-polar lipid fraction, as recited in claim 37.
It would have been obvious to employ the high-oil WRI1/DGAT vegetative tissues taught by the applied references while obtaining a non-polar lipid fraction in which triacylglycerols comprise at least 90% (w/w) of the non-polar lipid as expressly taught by Petrie.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAM M NGUYEN whose telephone number is (571)272-1452. The examiner can normally be reached Mon - Frid.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem C Singh can be reached at 571-273-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAM M NGUYEN/Primary Examiner, Art Unit 1771
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