DETAILED ACTION
Attempts were made to reach Attorney Joshua Pritchett by telephone on 8/25/2026 and 9/1/2026 to propose Examiner's amendments to resolve the outstanding issues. Previous attempts prior to the filing of the RCE were made on 7/22/2026 and 7/23/2026. No response was received to the calls and the messages left.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/12/2026 has been entered.
Status of Claims
Claims 14, 16-18, 21, 23-30 & 32-34 are under examination on the merits.
The objections to claims 14, 16, 21, 23-25 & 29 are withdrawn in light of Applicant’s amendments.
The rejection of claim 21 under 35 U.S.C. 101 is withdrawn in light of Applicant’s amendments.
The rejection of claim 29 under 35 U.S.C. 112(a) for New Matter is withdrawn in light of Applicant’s amendments.
The rejection of claims 21 & 23-29 under 35 U.S.C. 103 as being unpatentable over La Rosa et al US 2011/0093981 is withdrawn in light of Applicant’s amendments.
The rejection of claims 21 & 23-29 under 35 U.S.C. 103 as being unpatentable over Chen et al (2014) Journal of Huazhong Agricultural University. 33(4) in view of NCBI reference NC_029259.1 bases 23023957 to 23026670, is withdrawn in light of Applicant’s amendments.
Claim Objections
Claims 14, 16, 17, 18, 21, 29 & 30 are objected to because of the following informalities:
Claim 14 (line 5): “with” should read --that has--.
Claim 14 (line 11): “frame shift” should read --frameshift--.
Claim 14 (line 11): “a coding sequence” should read --the coding sequence--.
Claim 14 (line 13) & claim 21 (line 7): “wild type” should read --wild-type--.
Claim 14 (line 14): “RMS1protein” should read --RMS1 protein--.
Claim 17 (line 3): “in the sequence listing” should be deleted.
Claim 18 (line 1): “a coding sequence” should read --the coding sequence--.
Claim 18 (line 3): “a DNA molecule” should read --the DNA sequence--.
Claim 21 (line 4): --an-- should be inserted before “sgRNA” and --a-- should be inserted before “Cas 9”.
Claim 21 (line 4) & claim 29 (line 3): “Cas 9” should read --Cas9--.
Claim 21 (line 12): --the-- should be inserted before “sgRNA”.
Claim 30 (line 1): “frame shift” should read --frameshift--.
Claim 14 (lines 1, 4, 5, 7 & 12), claim 16 (line 3) & claim 21 (line 3, 5 & 9): --plant-- should be inserted after each instance of “rice”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Improper Dependency
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 18 is 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.
Due to Applicant' s amendment of the claims, the rejection is modified from the rejection as set forth in the Office action mailed 5/12/2026, as applied to claims 18 & 31. Applicant' s arguments filed 8/12/2026 have been fully considered but they are not persuasive.
Claim 18 recites a coding sequence of the RMS1 protein is a DNA molecule as shown in SEQ ID NO: 2 or SEQ ID NO: 3. SEQ ID NO: 3 is a genomic DNA sequence containing 3 exons and 4 introns and 2623bp long (specification, paragraph [0076]). If SEQ ID NO: 3 were a coding sequence, the translated amino acid sequence would comprise 874 amino acids, not the 345 amino acid-long SEQ ID NO: 1 which is required of the RMS1 protein in claim 14 (lines 8-9). Additionally, claim 14 requires that the protein RMS1 have the amino acid sequence shown in SEQ ID NO: 1 and a mutation after position 126 of CDS of the gene encoding the RMS1 protein. The sequences of SEQ ID NOs: 2 and 3 do not comprise a mutation after position 126 of the coding sequence. Thus, claim 18 fails to include all the limitations of the claim on 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.
Applicant urges that the amendments to claim 18 are sufficient to establish proper dependency from claim 14 (Remarks, page 9, paragraph 4).
This argument is unpersuasive, because amended claim 18 still recites SEQ ID NO: 3 as a coding sequence and neither SEQ ID NO: 2 nor SEQ ID NO: 3 comprise a frame shift mutation after position 126.
Indefiniteness
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21 & 23-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. All dependent claims are included in the rejections below.
Due to Applicant' s amendment of the claims, the rejection is modified from the rejection as set forth in the Office action mailed 5/12/2026, as applied to claims 14, 16-18, 21, 23-29 & 30-34. Applicant' s arguments filed 8/12/2026 have been fully considered but they are not persuasive.
Claim 21 recites the limitation "the mutant rice comprising a gene encoding an RMS1 protein exhibiting a reduced protein activity relative to a wild type RMS1 protein" in lines 6-8. There is insufficient antecedent basis for this limitation in the claim. Claim 21 (line 5) recites a mutant rice into which a gene encoding an sgRNA and a Cas9 protein have been introduced, but there is no step requiring protein activity of an RMS1 protein to be reduced in the mutant rice plant of line 5 or that a gene encoding an RMS1 protein is targeted by the sgRNA. Inserting --comprising a gene encoding an RMS1 protein exhibiting a reduced protein activity relative to a wild-type RMS1 protein-- after “mutant rice” in line 5 would overcome this rejection.
Claim 29 recites the limitation “the CRISPR/Cas9 system” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. No CRISPR/Cas9 system is recited in claim 21.
Applicant urges that cancelation of claims 12 & 22 and amendments to claims 14, 30, 18, 14, 21, 23-25 & 29 are sufficient to satisfy the definiteness requirement (Remarks, page 8, paragraphs 2-11).
This argument is unpersuasive, because there are remaining issues of indefiniteness, including a new issue introduced by the amendment to claim 29.
Conclusion
Claims 21 & 23-29 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 32-34 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: Claims 14,16-18,21,23-30 and 32-34 are drawn to methods that require a step of identifying photosensitive male sterile characteristics in a mutant rice or identifying a mutant rice as photosensitive male sterile. Although methods to produce rice mutants with decreased activity of a protein with the amino acid sequence of SEQ ID NO: 1 are known in the art, including methods wherein the rice has reduced fertility, methods comprising the identification of such rice as photosensitive male sterile are not known or suggested in the art.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Chen et al (2014) Journal of Huazhong Agricultural University. 33(4) (published July 2014, hereafter Chen):
Chen teaches rice plants transformed with an interference vector comprising the cDNA sequence of OsMYB106 to generate rice plants where the expression level was successfully inhibited (page 8, right column, lines 11-18 of translation). Plants transformed with the MYB106 RNAi construct had sterile pollen (figure 4D; page 11, left column, lines 35-39) and reduced fertility (table 1). Chen teaches observing T0 and T1 transgenic rice plants to record their phenotype (page 10, left column, lines 6-10; table 1). Chen teaches that the OsMYB106 gene is (LOC_Os08g33660) (page 8, lines 7-9). Chen teaches that MYB transcription factors play an important role in plant growth, development and basal metabolism and regulate plant responses to biological and non-biological factors (page 7, left column, paragraph 2).
Chen does not teach introducing an sgRNA gene or a Cas 9 gene into a target rice to obtain a mutant rice, screening and identifying the mutant rice exhibiting a reduced protein activity, or identifying photosensitive male sterile characteristics of the mutant rice.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Victoria L DeLeo whose telephone number is (703)756-5998. The examiner can normally be reached M-F 8:00am-4pm EDT.
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/VICTORIA L DELEO/Examiner, Art Unit 1662
/Anne Kubelik/Primary Examiner, Art Unit 1663
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