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
Status of objections and rejections
1. Claims 15 and 17 are pending. Claims 1-14, 16 and 18-20 are cancelled by the Applicant. Accordingly, claims 15 and 17 are examined on merits in the present Office action. Applicant’s response filed May 20, 2026 is entered.
2. Objection to Drawings is withdrawn in light of the replacement of the Figure 25 filed in the papers of May 20, 2026.
3. Objection to claims 15 and 17 is withdrawn in light of claim amendments filed in the papers of May 20, 2026, and upon further consideration.
4. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
5. Rejection of claim 17 on the basis that it contains an improper Markush grouping of alternatives is withdrawn in light of claim amendments filed in the papers of May 20, 2026, and upon further consideration.
6. Rejection of Claims 15 and 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112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is withdrawn in light of claim amendments filed in the papers of May 20, 2026, and upon further consideration.
7. Rejection of claims 15 and 17 under 35 U.S.C. 102(a)(1) as being anticipated by Scott (US 7,759,546, Issued July 20, 2010) is withdrawn in light of claim amendments filed in the papers of May 20, 2026, and upon further consideration.
8. Rejection of claim 15 under 35 U.S.C. 102(a)(1) as being anticipated by Grimanelli et al. (US Patent Publication No. US 2012/0291155 A1, Published November 15, 2012) is withdrawn in light of claim amendments filed in the papers of May 20, 2026, and upon further consideration.
9. Rejection of claim 15 under 35 U.S.C. 102(a)(1) as being anticipated by Agorio et al. (The Plant Cell, 19:3778-3790, Published 2007) is withdrawn in light of claim amendments filed in the papers of May 20, 2026, and upon further consideration.
Claim Rejections - 35 USC § 103
10A. Claim(s) 15 and 17 remain rejected under 35 U.S.C. 103 as being unpatentable over Scott (US 7,759,546, Issued July 20, 2010) in view of Grimanelli et al. (US Patent Publication No. US 2012/0291155 A1, Published November 15, 2012), Bilodeau et al. (US Patent Publication NO. 2003/0126647 A1, Published July 3, 2003) and Vielle-Calzada et al. (US Patent Publication NO. 2013/0180001, Published July 11, 2013) for the reasons of record stated in the Office Action mailed December 22, 2025.
Scott teaches the advantages of increasing endosperm development for increasing seed yield. Scott teaches that increased number of endosperm cells is correlated with increased seed weight and viability in Arabidopsis. Scott also discloses that apomictic plants (those produced by fertilization-independent seed development), wherein the female gametes are unreduced (i.e. 2n gametes), can advantageously propagate the identical genotype of their parents, including F1 hybrids. Scott teaches the use of transgenesis to confer apomixis.
Scott also teaches that mutation of endosperm development genes, including the FIS (FIS2) genes in Arabidopsis, will result in autonomous or fertilization-independent endosperm development. Scott also discloses that down-regulation of DNA methylation caused by the DNA methyltransferase (MET1) gene, via plant transformation with an antisense construct, in combination with down-regulation of the FIS2 gene involved in endosperm development (via fis2mutants or transgenically induced gene silencing), results in the production of fertilization-independent seed comprising well-developed endosperm and embryos which are true to the maternal genotype, due to the production of unreduced gametes. Scott teaches that plants (including maize) are transformed using known methods. Scott further teaches that female gametophyte-specific promoters can be utilized in the transgene construct.
See in particular, Figures 1-12; column 1, lines 21-32 and 47-67; column 2, lines 1- 20 and 62-67; column 3, lines 1-6; column 5, lines 19-44 and 65-67; column 6, lines 1-8; column 7, lines 12-16; column 9, lines 35-38; column 13, lines 16-22; column 14, lines 13-14, 35-41 and 50-67; column 15, lines 1-12; column 18, lines 48-67; column 19, lines 1-18; column 19, line 38 through column 20, line 46; column 22, lines 18-67; column 23, line 51 through column 24, line 67; column 25, lines 1-14; and claims 1, 5-7, 10, 12-15; Example 7, columns 22-23; Column 9.
Scott does not teach the down-regulation of AGO4 activity to produced unreduced female gametes, or a sequence at least 95% identical to instant SEQ ID NO:616.
Grimanelli et al. teach a method for the enriching for asexual embryos and endosperm in the seed population of a plant comprising providing a plant comprising an asexual female gametophyte defective for RdDM activity, wherein the plant is disrupted for an activity that regulates endosperm development and wherein the seeds formed comprise parthenogenically- derived clonal embryo, wherein the plant is defective for RdDM activity is defective for a nucleic acid encoding a protein as set forth in SEQ ID NO: 1 having 100% identity to instant SEQ ID NO: 616, and wherein the plant defective for RdDM activity is maize. See in particular, Figures 1-5, paragraphs [0007]-0047]; examples 1-3; SEQ ID NO: 1.
The sequence homology results are shown as below:
ORGANISM: Zea mays
Query Match 100.0%; Score 4774; Length 910;
Best Local Similarity 100.0%;
Matches 910; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MGSHDGEDEELPPPPPVPPDVIPIKAEDAVGESPANHILKPKRLLMDRPGIGRKGQPTQL 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MGSHDGEDEELPPPPPVPPDVIPIKAEDAVGESPANHILKPKRLLMDRPGIGRKGQPTQL 60
Qy 61 YSNHFKVAVKSTEDVFFHYYVNLKYEDDRPVDGKGIGRKVIDKLQQTYRAELSNKDFAYD 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 YSNHFKVAVKSTEDVFFHYYVNLKYEDDRPVDGKGIGRKVIDKLQQTYRAELSNKDFAYD 120
Qy 121 GEKSLFTVGGLPQKKNEFTVVLEDVSTGKTAANGSPGGNDSPGGGDRKRVRRPYQTKTFK 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 GEKSLFTVGGLPQKKNEFTVVLEDVSTGKTAANGSPGGNDSPGGGDRKRVRRPYQTKTFK 180
Qy 181 VEINFAAEVPMSAIGQVIRGEESENSLEALRVLDIILRQHSAEQGCLLVKQSFFYNNPSC 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 VEINFAAEVPMSAIGQVIRGEESENSLEALRVLDIILRQHSAEQGCLLVKQSFFYNNPSC 240
Qy 241 FVDLGGGVMGCRGFHSSFRGTQSGLSLNVDVSTTMIVKPGPVIDFLLSNQNVNDPSRIDW 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 FVDLGGGVMGCRGFHSSFRGTQSGLSLNVDVSTTMIVKPGPVIDFLLSNQNVNDPSRIDW 300
Qy 301 QKAKRALKGLRIRTTPANSEFKIFGLSERICKEQTFPLRQRNGSNGDCDTIEITVYDYYA 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 301 QKAKRALKGLRIRTTPANSEFKIFGLSERICKEQTFPLRQRNGSNGDCDTIEITVYDYYA 360
Qy 361 KKGIDLKYSGDFPCINTGKAKRPTYFPIELCSLVPLQRYTKALSTLQRSSLVEKSRQKPE 420
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 361 KKGIDLKYSGDFPCINTGKAKRPTYFPIELCSLVPLQRYTKALSTLQRSSLVEKSRQKPE 420
Qy 421 ERMTVLNDALQRSNYDSDPMLRACGVSVAPKFTQVEGRILQAPKLKAGNGDDIFSRNGRW 480
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 421 ERMTVLNDALQRSNYDSDPMLRACGVSVAPKFTQVEGRILQAPKLKAGNGDDIFSRNGRW 480
Qy 481 NFTNRKFYETCSVNKWAVVNFSARCDVRNLIRDLMRNASAKGIQMEEPFDVFEESPSMRR 540
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 481 NFTNRKFYETCSVNKWAVVNFSARCDVRNLIRDLMRNASAKGIQMEEPFDVFEESPSMRR 540
Qy 541 APVSRRVDDMFGQIKSKLPGAPRFLLCLLPERKNCEIYGPWKRKCLAEFGIVTQCLAPLR 600
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 541 APVSRRVDDMFGQIKSKLPGAPRFLLCLLPERKNCEIYGPWKRKCLAEFGIVTQCLAPLR 600
Qy 601 VNDPYLLNLLMKINAKLGGLNSLLQVEASSSIPHVSQVPTIILGMDVSHGHPGQDRPSVA 660
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 601 VNDPYLLNLLMKINAKLGGLNSLLQVEASSSIPHVSQVPTIILGMDVSHGHPGQDRPSVA 660
Qy 661 AVVSSRQWPLISRYRASVHTQSARLEMMSSLFKPRGTDDDGLIRESLIDFYTSSGKRKPE 720
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 661 AVVSSRQWPLISRYRASVHTQSARLEMMSSLFKPRGTDDDGLIRESLIDFYTSSGKRKPE 720
Qy 721 HIIIFRDGVSESQFTQVINIELDQIIEACKFLDEKWSPKFTVIVAQKNHHTKFFQTASPD 780
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 721 HIIIFRDGVSESQFTQVINIELDQIIEACKFLDEKWSPKFTVIVAQKNHHTKFFQTASPD 780
Qy 781 NVLPGTVVDSKVCHPKNFDFYMCAHAGMIGTTRPTHYHVLHDEIGFSADEMQEFVHSLSY 840
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 781 NVLPGTVVDSKVCHPKNFDFYMCAHAGMIGTTRPTHYHVLHDEIGFSADEMQEFVHSLSY 840
Qy 841 VYQRSTTAISVVAPVCYAHLAAAQVSTFLRLEEMSDASSSQGGGHTSAGSAPVPELPRLH 900
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 841 VYQRSTTAISVVAPVCYAHLAAAQVSTFLRLEEMSDASSSQGGGHTSAGSAPVPELPRLH 900
Qy 901 DKVRSSMFFC 910
||||||||||
Db 901 DKVRSSMFFC 910
Bilodeau et al. teach a method for inducing seed development asexually by down-regulating expression of FIS2 gene by transforming plants with a DNA construct comprising an expression cassette which encodes inhibitory RNA to suppress endogenous FIS2 gene. The reference also provides enough guidance on transforming variety of dicot and monocot (e.g. maize) plant species with said construct. See in particular, abstract, Figures 3, 5, 7, 11-17, 24, 28, , paragraphs [0002]-0044], [0093], [0099], [0162], [0163], [0166, [0170], [0175], [0188], [0202], [0215], [[0216], [0218], [0231], [0235], [0242], [0287], [0288], [0308] examples 1-20, claims.
Vielle-Calzada et al. teach a method for inducing seed development asexually by down-regulating expression of AGO4 gene by transforming plants with a DNA construct comprising an expression cassette which encodes inhibitory RNA to suppress endogenous AGO4 gene. The reference also provides enough guidance on transforming variety of dicot and monocot (e.g. maize) plant species with said construct. See in particular, Figures 1-3; paragraphs [0002] – [00006]; [0015] – [0128]; examples 1-3.
It would have been obvious to one of ordinary skill in the art to utilize the method of producing fertilization-independent seeds and embryos via the production of unreduced female gametes, wherein unreduced gametes are produced by reducing the levels of nucleic acid methylation, coupled with downregulation of the FIS2 gene, as taught by Scott in light of Grimanelli et al. teachings as discussed above, and to modify that method by incorporating other methods of downregulating the FIS2 gene and AGO4 gene as taught by Bilodeau et al., and Grimanelli et. al., respectively.
It would have been further obvious to substitute the MET1 gene involved in nucleic acid methylation, taught by Scott, with the AGO4 gene involved in nucleic acid methylation, taught by Grimanelli et al. The incorporation of AGO4 would have been the obvious substitution of functional equivalent species, in the absence of evidence to the contrary, and thus arrive at the Applicant’s invention with a reasonable expectation of success and without any surprising results. It may also be noted that KSR forecloses the argument that a specific teaching, suggestion or motivation is required to support a finding of obviousness. See the recent Board decision Ex parte Smith, -- USPQ2d --, slip op. at 20, (Bd. Pat. App. & Interf. June 25, 2007) (citing KSR, 82 USPQ2d at 1396).
10B. Applicant’s Arguments & Response to Applicant’s Arguments:
Applicant traverses the rejection in the papers filed May 20, 2026.
Applicant’s arguments are carefully considered but are deemed to be unpersusaive.
At the outset, Applicant argues generally that the cited references fail to teach or suggest all limitations of amended claim 15 and that the Office Action allegedly relies upon impermissible hindsight reconstruction. These arguments are not persuasive for the reasons set forth below.
It is important to note that the determination of obviousness under 35 U.S.C. §103 does not require that a single reference teach every limitation of the claimed invention. Rather, “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). However, where “a person of ordinary skill can implement a predictable variation,” §103 likely bars patentability. Id. at 417. Furthermore, a proper obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim” because a court or examiner “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418.
Applicant argues that Scott fails to teach or suggest “wherein the maize plant is rendered defective for RdDM activity by an alteration or defect in (a) an endogenous nucleic acid comprising a coding nucleotide sequence having at least 95% identity to the full length of a nucleic acid of the nucleotide sequence set forth in SEQ ID NO: 616 or (b) a polypeptide having at least 95% identity to the full length of a polypeptide of the amino acid sequence set forth in SEQ ID NO: 709.”
This argument is not persuasive because the rejection does not rely upon Scott alone for teaching the claimed RdDM-defective maize component. As set forth in the rejection, Scott teaches the broader concept of reducing methylation activity in combination with disruption of endosperm regulatory activity, including FIS2-related pathways, to obtain fertilization-independent seed development and preservation of maternal genotype associated with apomictic reproduction. Grimanelli et al. specifically teach maize AGO104, an ARGONAUTE protein involved in RNA-dependent DNA methylation (RdDM), corresponding to the presently claimed maize RdDM-defective component. Grimanelli et al. further disclose the nucleic acid sequence corresponding to maize AGO4, which the Office Action previously identified as corresponding to Applicant’s SEQ ID NO: 616. Therefore, the cited art collectively teaches the presently claimed RdDM-defective maize component.
Applicant additionally argues that Scott does not teach “parthenogenically derived clonal embryos” and further argues that Scott allegedly does not provide a teaching or suggestion that deregulation of DNA methylation caused by MET1 results in fertilization-independent embryos.
This argument is likewise not persuasive. Scott expressly teaches apomixis and fertilization-independent seed development as desirable goals, including preservation of maternal genotype through unreduced female gametes and autonomous seed development pathways. Scott further teaches that reducing methylation activity in combination with disruption of FIS2/endosperm regulatory activity promotes fertilization-independent seed formation. The rejection does not rely solely upon Scott for the precise mechanism of embryo formation. Rather, the rejection relies upon the combined teachings of Scott and Grimanelli et al., wherein Scott provides the motivation and biological framework for fertilization-independent/apomictic seed development and Grimanelli et al. provide the specific maize AGO4/RdDM-defective reproductive system.
The Supreme Court has explained that where “there are a finite number of identified, predictable solutions” and a person of ordinary skill has good reason to pursue known options within his or her technical grasp, the resulting combination may be obvious. KSR, 550 U.S. at 421. Here, Scott teaches that reduction of methylation activity combined with autonomous endosperm pathways may be used to achieve fertilization-independent/apomictic reproduction, while Grimanelli et al. teach a specific maize RdDM-defective reproductive pathway involving AGO4. One of ordinary skill in the art would therefore have been motivated to utilize the known maize AGO4/RdDM pathway of Grimanelli et al. within Scott’s fertilization-independent seed development framework with a reasonable expectation of success.
Applicant further argues that Grimanelli et al. fail to teach “wherein the seeds formed comprise parthenogenically derived clonal embryos” and further contends that Grimanelli et al. disclose embryos resulting from fusion of diploid gametes rather than parthenogenesis.
This argument is not persuasive because the rejection does not rely solely upon Grimanelli et al. for teaching all aspects of fertilization-independent seed development. Non-obviousness cannot be established by attacking references individually where the rejection is based upon a combination of references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). The rejection relies upon Scott for teaching fertilization-independent/apomictic seed development and maternal genotype preservation, Grimanelli et al. for teaching maize AGO4/RdDM-defective unreduced female gametophytes relevant to clonal reproductive development, and Bilodeau et al. for teaching disruption of FIS2-mediated endosperm regulation to induce autonomous endosperm development.
Accordingly, although Grimanelli et al. may disclose unreduced gamete fusion in certain embodiments, the reference nevertheless teaches the relevant maize AGO4/RdDM-defective reproductive system relied upon in the rejection. The rejection relies upon the combined teachings of the cited references and not upon any single reference standing alone.
Applicant additionally argues that Grimanelli et al. fail to teach “wherein the maize plant is disrupted for an activity that regulates endosperm development.”
This argument is not persuasive because Bilodeau et al. expressly teach disruption of FIS2-mediated endosperm regulation to induce autonomous or fertilization-independent endosperm development, including in monocot plants such as maize. Scott likewise teaches disruption of FIS2/endosperm regulatory pathways in the context of fertilization-independent seed development. Therefore, the combined teachings of Scott and Bilodeau et al. teach the presently claimed endosperm regulatory disruption.
Applicant further argues that Bilodeau et al. and Vielle-Calzada et al. allegedly fail to cure the deficiencies of Scott and Grimanelli et al.
This argument is not persuasive because the references are not relied upon for identical teachings. Rather, each reference is relied upon for the specific teachings identified in the rejection. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d at 425. Instead, the proper inquiry is what the combined teachings of the references would have suggested to one of ordinary skill in the art. Id.
Scott teaches fertilization-independent/apomictic seed development through reduction of methylation activity and disruption of endosperm regulation. Grimanelli et al. teach maize AGO4/RdDM-defective reproductive systems. Bilodeau et al. teach suppression of FIS2-mediated endosperm regulation in plants including maize. Vielle-Calzada et al. teach suppression of AGO4/RdDM-related activity in plants and provide additional guidance regarding RdDM suppression methodologies. The references therefore collectively teach or suggest all limitations of claim 15.
Applicant additionally argues that the Office Action allegedly relies upon impermissible hindsight and uses Applicant’s disclosure as a blueprint for combining the references.
This argument is not persuasive. The motivation to combine arises directly from the cited references themselves and not from Applicant’s disclosure. Scott expressly identifies apomixis, fertilization-independent seed development, and preservation of maternal genotype as desirable goals. Scott further teaches that reducing methylation activity in combination with disruption of endosperm regulation may be used to achieve those goals. Grimanelli et al. teach a maize AGO4/RdDM-defective reproductive pathway producing unreduced female gametophytes relevant to clonal reproductive development. Bilodeau et al. teach disruption of FIS2-mediated endosperm regulation to induce autonomous endosperm development. Vielle-Calzada et al. further teach suppression of AGO4/RdDM activity in plants.
A conclusion of obviousness may properly be based upon the interrelated teachings of multiple references and the knowledge possessed by one of ordinary skill in the art. KSR, 550 U.S. at 418-419. The fact that Applicant’s disclosure may also describe aspects of the claimed invention does not render the rejection improper hindsight where the motivation to combine and reasonable expectation of success arise from the prior art itself. See also In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Additionally,, 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). In the instant case, one of ordinary skill in the art would have arrived at the instantly claimed invention with a reasonable expectation of success by combining the teachings of cited art as discussed above in the rejection.
Applicant also cites pre-KSR cases relating to teaching, suggestion, or motivation requirements. However, the Supreme Court in KSR rejected a rigid application of the teaching-suggestion-motivation test and explained that obviousness analysis should be expansive and flexible. KSR, 550 U.S. at 415. The Office Action provides articulated reasoning with rational underpinning for combining the cited references, namely, achieving fertilization-independent/apomictic clonal seed development in maize through known methylation-defective reproductive systems and known autonomous endosperm regulatory systems.
Finally, Applicant has not provided persuasive evidence of unexpected results or criticality associated with the presently claimed sequence identity limitations or with the specific combination recited in the claims. Attorney argument cannot take the place of evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Applicant is invited to provide a declaration from the Applicant addressing the issue of unexpected results. It is also suggested to move limitations of claim 17 into claim 15.
Accordingly, for the reasons set forth above, claims 15 and 17 remain unpatentable under 35 U.S.C. §103 over Scott in view of Grimanelli et al., Bilodeau et al., and Vielle-Calzada et al.
Conclusion
11. Claims 15 and 17 remain rejected.
THIS ACTION IS MADE FINAL. 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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad A. Abraham can be reached on (571) 270-7058 The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VINOD KUMAR/Primary Examiner, Art Unit 1663
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