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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in the People’s Republic of China on 06/15/2020. It is noted, however, that Applicant has not filed a certified copy, in English, of the CN202010543164 application as required by 37 CFR 1.55.
Applicant has stated in Remarks dated 12/01/2025 that “Applicant will provide a certified English translation of the priority application in due course”.
Status of Claims
The amendments received on 12/01/2025 have been entered. Claims 1-2, 4-12, and 14-18 are pending.
Claims 1-2, 4-6, and 14-18 remain withdrawn for being directed to a non-elected invention(s).
Claims 7 and 10-12 have been amended.
Claims 7-12 are examined in this Office action.
Objections and Rejections that are Withdrawn
The objections to the Specification have been withdrawn in light of Applicant’s amendments to the Specification.
The objections to claims 7 and 12 have been withdrawn in light of Applicant’s amendments to the claims.
The 35 USC 102/103 rejection to claims 7 and 12 has been withdrawn in light of Applicant’s amendment to the claims. However, Applicant’s amendments have raised new 35 USC 103 rejections.
The text of those sections of Title 35, U.S. Code, not included in this action, can be found in a prior Office action.
Claim Interpretation
The instant Specification states that the Medicago truncatula genome encodes two SHR homologues-Medtr5g015490 and Medtr4g097080, here named MtSHR1 and MtSHR2, respectively (page 22, lines 15-17).
Additionally, Shaar-Moshe (Shaar-Moshe et al., 2023, New Phytologist, Vol. 237, pp. 1542-1549) reveals that most eudicots and monocots possess SHR gene duplicates, and according to Table 1 (see below), several plant species also possess SCR gene duplicates (Shaar-Moshe, page 1543, left column, second full paragraph and Table 1).
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In light of the fact that it is possible for Leguminosae or Gramineous plants to comprise more than one SCARECROW and/or SHORT ROOT gene, the terms “SCARECROW” and “SHORT ROOT” as recited in the claims will be interpreted as follows: the term “SCR polypeptide” refers to a protein with the sequence of SEQ ID NO: 3 and biological activities of SCR polypeptide; the term “SHR polypeptide” refers to a protein with the sequence of SEQ ID NO: 4 and biological activities of SHR polypeptide; the polynucleotide of the nucleotide sequence shown in SEQ ID NO: 1, which can encode the SCR polypeptide of SEQ ID NO: 3; the polynucleotide of the nucleotide sequence shown in SEQ ID NO:2, which can encode the SHR polypeptide of SEQ ID NO:4 (page 10, lines 6-29).
Claim Rejections - 35 USC § 103
Claims 7-8 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over CUI (Cui et al., Pub. No.: US 2016/0115499 A1, Pub. Date: Apr. 28, 2016) in view of BENFEY (Benfey et al., Patent No: US 6,927,320 B1, Date of Patent: Aug. 9, 2005). This is a new rejection necessitated by claim amendment.
Claim 7 recites “[a] method for improving traits of Leguminosae or Gramineous plants, wherein the method comprises increasing the expression or activity of SCARECROW and SHORTROOT in the plants, or promoting the interaction of SCARECROW and SHORT ROOT; wherein the improved trait is promoting cortical cell division.”
CUI teaches and claims a method for increasing photosynthetic efficiency in a plant, comprising ectopically expressing or increasing expression of one or more of SHORT-ROOT (SHR), SCARECROW (SCR), or SCARECROW-LIKE 23 (SCL23) in the plant (i.e., a method for improving traits of plants, wherein the method comprises increasing the expression or activity of SCARECROW and SHORTROOT in the plants) (Cui, claim 1); wherein the plant is rice, barley, thale cress, wheat, rye, oat, fescue, sunflower, tomato, cucumber, potato, peanut, cotton, sugar beet, tobacco, soybean, spinach, or a tree (i.e., Leguminosae or Gramineous plants) (Cui, claim 3).
CUI teaches SCARECROW and SHORT-ROOT are key regulators of radial patterning in the Arabidopsis root (Cui, paragraph 0009). The cortex/endodermal initial first divides anticlinally (in a transverse orientation). This asymmetric division produces another initial and a daughter cell. The daughter cell then divides periclinally (in a longitudinal orientation). This second asymmetric division produces the progenitors of the endodermis and the cortex cell lineages (see Figure 1 below)1 (Cui, paragraph 0009).
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CUI does not explicitly teach wherein, the improved traits are selected from the following group consisting of promoting the formation of infection threads, improving the ability of cortical cells to respond to cytokinins, improving the ability of cortical cells to respond to rhizobial infection, promoting NIN-mediated plant spontaneous nodulation, promoting cortical cell division, and promoting nodule organogenesis.
However, BENFEY teaches that mutations that disrupt the asymmetric divisions of the cortex/endodermal initial have been identified and characterized. short-root (shr) and scarecrow (scr) mutants are missing a cell layer between the epidermis and the pericycle (referencing Figure 1 above, the cortex is the layer between the epidermis and the pericycle). In both types of mutants, the cortex/endodermal initial divides anticlinally, but the subsequent periclinal division that increases the number of cell layers does not take place (Benfey, column 2, Section 2.2, first paragraph). Hence, these two mutations identify genes required for the asymmetric division that produces cortex and endodermis from ground tissue in the embryo and from the cortex/endodermal initials in primary and lateral roots (Benfey, column 2, Section 2.2, second paragraph).
BENFEY further teaches that both SHR and SCR regulate the asymmetric cell division of the endodermis/cortex initial daughter cell and of the embryonic ground tissue. SHR regulates both cell division and endodermis specification, whereas SCR appears to regulate primarily the cell division process (i.e., promoting cortical cell division) (Benfey, column 51, Section 6.2.4, first paragraph).
Applicants are reminded that prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present but not recognized in the prior art. See MPEP § 2145. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. Id.; In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). Indeed, courts have held that “[t]he fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
At the time the instant application was filed, it would have been obvious and within the scope of one of ordinary skill in the art to combine the teachings of CUI and BENFEY to increase the expression of SCARECROW and SHORT ROOT as taught by CUI, in order to promote cortical cell division as taught by BENFEY. One would have been motivated to combine the teachings of CUI and BENFEY knowing that SCARECROW and SHORT ROOT are required for the asymmetric division that produces cortex and endodermis from ground tissue in the embryo. One of ordinary skill in the art would have a high expectation of success by combining the teachings of CUI and BENFEY.
In regard to claim 8, BENFEY teaches that to determine if SHR is sufficient for cell division and cell specification when ectopically expressed, the SHR coding region was placed under the control of the Cauliflower Mosaic virus (CaMV) 35S promoter, which is constitutively active in most plant tissues
(Benfey, column 53, Section 6.2.6, first paragraph). In situ hybridizations were performed on root tissue from 35S::SHR seedlings. SHR RNA appeared to be in all tissues (except possibly in the external root cap cells) (i.e., wherein SCARECROW and/or SHORT ROOT are ectopically expressed in the cortex). In the meristematic zone of wildtype roots, SCR is expressed very specifically in the endodermis. In the meristematic zone of 35S::SHR roots, SCR expression appeared to be in all tissues except for the stele and the root cap (i.e., wherein SCARECROW and/or SHORT ROOT are ectopically expressed in the cortex) (Benfey, column 53, Section 6.2.6, third paragraph).
In regard to claim 11, BENFEY teaches attaching the promoter region from the SCARECROW gene to the coding region of SHORT-ROOT; transgenic plants containing the SCR promoter-SHR transgene demonstrate additional cell divisions only in the ground tissue (the tissue between the external epidermis and the vascular cylinder), which is where the SCR promoter is active (i.e., the combination of SHORT ROOT with the promoter of gene SCARECROW) (Benfey, column 54, lines 19-25).
In regard to claim 12, Cui teaches and claims incorporating a polynucleotide encoding one or more of SHR, SCR, or SCL23 into a plant, plant tissue, or plant cell (Cui, claim 4); wherein the polynucleotide is provided in an expression construct that can be expressed in the plant (Cui, claim 5) (i.e., wherein the elevation of expression or activity of SCARECROW and SHORT ROOT in plants, or the promotion of the interaction of SCARECROW and SHORT ROOT comprises: transforming genes SCARECROW and SHORT ROOT or expression constructs or vectors containing said gene into plants).
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over CUI (Cui et al., Pub. No.: US 2016/0115499 A1, Pub. Date: Apr. 28, 2016) and BENFEY (Benfey et al., Patent No: US 6,927,320 B1, Date of Patent: Aug. 9, 2005) as applied to claims 7-8 and 11-12 above, in view of Vernié (Vernié et al., 2015, The Plant Cell, Vol. 27(12), pp. 3410-3424).
Claim 9 recites “[t]he method according to claim 8, wherein the expression is performed using a cortical cell-specific promoter or a ubiquitous promoter”.
CUI and BENFEY teach and claim the method of claim 8.
Neither CUI nor BENFEY explicitly teach wherein the expression is performed using a cortical cell-specific promoter or a ubiquitous promoter.
However, Vernié teaches that Nodule Inception (NIN) is initially expressed in the root epidermis of Medicago truncatula (Vernié, page 3411, right column, first full paragraph), and appears to have distinct functions in the root epidermis and the root cortex (Vernié, Abstract).
Vernié teaches constitutive expression of NIN from the L. japonicus Ubiquitin and cortical-specific expression of NIN from the NRT1.3 promoters (i.e., wherein the expression is performed using a cortical cell-specific promoter or a ubiquitous promoter (instant claim 9); wherein the cortical cell-specific promoter comprises: NRT1.3 promoter; or the ubiquitous promoter comprises: LjUBQ promoter (instant claim 10)) led to spontaneous nodule-like structures in cre-1 and nin-1 mutants, indicating that when NIN is expressed in the root cortex, it can promote nodulation independent of cytokinin signaling (Vernié, page 3412, right column, first full paragraph).
At the time the instant application was filed, it would have been obvious and within the scope of one of ordinary skill in the art to combine the teachings of Cui, Benfey, and Vernié to ectopically express SCR and/or SHR in the cortex using the cortical cell-specific promoter NRT1.3 or the ubiquitous promoter LjUBQ as taught by Vernié. One would have been motivated to use the cortical cell-specific promoter NRT1.3 or the ubiquitous promoter LjUBQ knowing that it would lead to ectopic expression in the cortex as taught by Vernié. One of ordinary skill in the art would have a high expectation of success by combining the teachings of Cui, Benfey, and Vernié.
Response to Applicant’s Arguments
Applicant argues that Cui, Benfey, and Vernié, alone or in combination, do not teach the improved traits of the amended claims; thus, the amended claims are nonobvious over Cui, Benfey, and Vernié.
Applicant's arguments filed 12/01/2025 have been fully considered but they are not persuasive.
Initially, it is noted that this is a new rejection modified by the claim amendments. Also, Applicants are again reminded that prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present but not recognized in the prior art. In the Non-Final Rejection dated 09/03/2025, the 35 USC 102/103 rejection rejected claims 7 and 12 based on the teaching of CUI that increasing the expression of SHORT-ROOT and/or SCARECROW led to the improved trait of changing identity of cortical cells. Applicant has amended the group of improved traits to delete “changing identity of cortical cells”. As the method of the instant application that was reduced to practice by the Applicant mirrors that taught by CUI, and CUI evidences one (former) element (changing identity of cortical cells) of the group of improved traits, why would it not be inherent to the plants of CUI to exhibit the same (allegedly unexpected and superior) technical effects as described in the instant application?
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Cui teaches increasing the expression of both SCARECROW and SHORT ROOT; Benfey teaches both SCARECROW and SHORT ROOT regulate cell division and are the genes required for the asymmetric division that produces cortex and endodermis from ground tissue; and Vernié teaches that gene expression in the cortex can be achieved by using the L. japonicus Ubiquitin (ubiquitous promoter) or the NRT1.3 (cortical-specific promoter).
In response to applicant's arguments against the references individually, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Thus, the combination of Cui, Benfey, and Vernié would teach one of ordinary skill in the art that overexpression of both SCARECROW and SHORT ROOT would lead to promotion of cortical cell division when using a cortical-specific or ubiquitous promoter.
Additionally, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Applicant has not described any structural differences between the instant SCARECROW and SHORT ROOT genes and the SCARECROW and SHORT ROOT genes as taught by both Cui and Benfey.
Summary
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA MEADOWS whose telephone number is (703)756-1430. The examiner can normally be reached Monday - Friday 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham can be reached at 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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CHRISTINA MEADOWS
Examiner
Art Unit 1663
/CHRISTINA L MEADOWS/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
1 See evidence by Di Laurenzio et al., 1996, Cell, Vol. 86(3), pp.423-433; see page 423, right column, first paragraph and Figure 1, page 424).