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 .
Status of claims
Claims 1-12 and 17-19 are under examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 26, 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. However, it is noted that the listing of references on pages 15-17 in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892 or are listed on the IDS filed April 26, 2023, they have not been considered.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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 the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-12 and 17-19 remain rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al (Plant Biotechnology 28:263-266, 2011), in view of Sahijram et al (J. Horti. Sci. 8(1):1-20, 2013).
The claims read on a method to increase the survival rate of hybrid plant embryos in an in vitro embryo rescue method, comprising culturing a hybrid plant embryo in a culture medium comprising trehalose, and/or a derivative thereof (claim 1).
Limitations include further comprising isolating the hybrid plant embryo from a seed of a plant, wherein culturing the hybrid plant embryo comprises culturing the isolated hybrid plant embryo in the culture medium comprising trehalose, and/or the derivative thereof (claim 2); wherein isolating the hybrid plant embryo comprises dissecting the hybrid plant embryo from the seed in a culture medium comprising trehalose, and/or the derivative thereof (claim 3); wherein culturing the hybrid plant embryo comprises culturing a hybrid plant embryo at a heart embryogenesis stage or a torpedo embryogenesis stage (claim 4); wherein culturing the hybrid plant embryo comprises culturing a hybrid plant zygotic embryo formed by fusion of male and female gametes in the culture medium comprising trehalose, and/or the derivative thereof (claim 5); wherein culturing the hybrid plant embryo comprises culturing an interploidy or interspecies hybrid plant embryo in the culture medium comprising trehalose, and/or the derivative thereof (claim 6); wherein culturing the hybrid plant embryo comprises culturing the hybrid plant embryo in the culture medium comprising trehalose, and/or the derivative thereof, at a concentration of from 0.5% (w/v) up to 10% (w/v) (claim 7); wherein culturing the hybrid plant embryo comprises culturing the hybrid plant embryo in the culture medium comprising trehalose, and/or the derivative thereof, until the hybrid plant embryo develops a root (claim 8); wherein culturing the hybrid plant embryo comprises: culturing the hybrid plant embryo in a first culture medium comprising trehalose, and/or the derivative thereof; transferring the hybrid plant embryo to a second culture medium comprising trehalose, and/or the derivative thereof; and culturing the hybrid plant embryo in the second culture medium comprising trehalose, and/or the derivative thereof (claim 9); wherein the second culture medium comprises a lower concentration of trehalose, and/or the derivative thereof, than the first culture medium (claim 10); wherein the second culture medium comprises half the concentration of trehalose, and/or the derivative thereof, of the first culture medium (claim 11); wherein culturing the hybrid plant in the second culture medium comprises culturing the hybrid plant embryo in the second culture medium comprising trehalose, and/or the derivative thereof, until the hybrid plant embryo develops a root (claim 12); wherein culturing the hybrid plant embryo comprises culturing a hybrid plant embryo at a torpedo embryogenesis stage (claim 17); wherein culturing the hybrid plant embryo comprises culturing the hybrid plant embryo in the culture medium comprising trehalose, and/or the derivative thereof, at a concentration of from 1% (w/v) up to 8% (w/v) (claim 18); wherein culturing the hybrid plant embryo comprises culturing the hybrid plant embryo in the culture medium comprising trehalose, and/or the derivative thereof, at a concentration of from 1.5% (w/v) up to 6% (w/v) (claim 19).
With regard to claims 1-3, Yamaguchi teaches culturing plant pieces and axillary buds of a plant in a culture medium comprising trehalose. See, for example, page 263, second column, last paragraph to page 264, first column, first paragraph. Yamaguchi does not teach the limitation of “a hybrid plant embryo”; however, this limitation is remedied by Sahijram which teaches using hybrid plant embryos in a method of in vitro embryo rescue. See, for example, page 4, second column, first full paragraph where it teaches that embryo rescue techniques play an important role in fruit crops and see, for example, page 8, Figure 1 where it teaches the hybrid embryo rescue in a plant cross.
With regard to claims 7, 18 and 19, Yamaguchi teaches 3.0% trehalose. See, for example, page 264, first column, first paragraph.
With regard to claim 8, Yamaguchi teaches culturing plant parts in culture medium comprising trehalose until the plant embryo develops a root. See, for example, page 264, Figure 2 where it teaches the effect of trehalose application on root density.
With regard to claim 9, Yamaguchi teaches culturing plant pieces and axillary buds of a plant in a culture medium comprising trehalose. See, for example, page 263, second column, last paragraph to page 264, first column, first paragraph. Yamaguchi does not teach the limitation of “a hybrid plant embryo”; however, this limitation is remedied by Sahijram which teaches using hybrid plant embryos in a method of in vitro embryo rescue. See, for example, page 4, second column, first full paragraph where it teaches that embryo rescue techniques play an important role in fruit crops and see, for example, page 8, Figure 1 where it teaches the hybrid embryo rescue in a plant cross. In addition, Yamaguchi does not teach transferring the hybrid plant embryo to a second culture medium comprising trehalose; however, as both the first and second media comprise trehalose, the limitation of the second culture medium does not make the claimed invention non-obvious over the cited references.
With regard to claims 10 and 11, Yamaguchi teaches culturing plant pieces and axillary buds of a plant in a culture medium comprising trehalose. See, for example, page 263, second column, last paragraph to page 264, first column, first paragraph. Yamaguchi does not teach a second culture medium comprising a lower concentration or half the concentration of trehalose; however, since the second medium also comprises trehalose, the limitation of the second culture medium does not make the claimed invention non-obvious over the cited references.
With regard to claim 12, Yamaguchi teaches culturing plant parts in culture medium comprising trehalose until the plant embryo develops a root. See, for example, page 264, Figure 2 where it teaches the effect of trehalose application on root density. Yamaguchi does not teach a second culture medium comprising trehalose; however, since the second medium also comprises trehalose, the limitation of the second culture medium does not make the claimed invention non-obvious over the cited references.
With regard to claims 4 and 17, Yamaguchi does not teach the limitation of culturing a hybrid plant embryo at a heart embryogenesis stage or a torpedo embryogenesis stage and Sahijram is silent to the stage of the embryo taught in the reference; however, Sahijram does teach a plant embryo used in in vitro embryo rescue and thus, would inherently teach heart embryogenesis or torpedo stages.
With regard to claim 5, Yamaguchi does not teach the limitation of culturing a hybrid plant zygotic embryo formed by fusion of male and female gametes in the culture medium comprising trehalose; however, Sahijram does teach a plant embryo used in in vitro embryo rescue and it would be obvious that the plant embryo was formed by the fusion of male and female gametes.
With regard to claim 6, Sahijram teaches culturing an interploidy or interspecies hybrid plant embryo. See, for example, page 16, section titled ‘Conclusion’ where it teaches that embryo rescue is a valuable tool for producing hybrid embryos from interspecific and intergeneric crosses.
It would have been obvious to one of ordinary skill in the art to combine or modify the teachings of the cited references because each of the claimed elements are found within the scope and content of the prior art and one of ordinary skill in the art could have combined and modified the elements as claimed by methods known at the time the invention was made. Thus, one of ordinary skill in the art would have recognized at the time the invention was made that that capabilities or functions of the combination were predictable.
Response to arguments
Applicant argues that the Yamaguchi reference focuses on the in vitro vegetative culture of plant material derived from stem pieces and one of ordinary skill in the art is aware that growth and development of an embryo significantly differs from growth of plantlets as described by the Yamaguchi (see page 5, fifth and sixth paragraphs of ‘Remarks’ filed August 18, 2025).
This is not persuasive. When a work is available in one field of endeavor design incentives can prompt variations of it, either in the same field or a different one. Though the Yamaguchi reference teaches in vitro vegetative culture of plant material derived from stem pieces, the reference does teach that adding trehalose to a culture medium extends the culture period as much as twice as long when compared to sucrose-based medium (see, for example, the ‘Abstract’). It would have been obvious to one of ordinary skill in the art to use trehalose in a culture medium in an embryo rescue method instead of the sucrose taught by the Sahijram reference because of the extended culture period that trehalose provides.
Applicant argues that the Yamaguchi reference teaches a decrease in biomass in the presence of trehalose in their in vitro culture and there would be no reason for the skilled person who is searching for viable and healthy embryos to believe that a component which decreases biomass in in vitro culture of plantlets could be applied to improve survival rate of embryos in an in vitro embryo rescue method (see page 5, last paragraph to page 6, first paragraph of ‘Remarks’ filed August 18, 2025).
This is not persuasive. The Yamaguchi reference does teach that adding trehalose to culture medium drastically extends the culture period and that there were no harmful effects arising from the trehalose based medium observed during a bimonthly subculture for over 12 months (see, for example, the ‘Abstract’). Thus, one of ordinary skill in the art looking to solve the problem of increasing survival rate of plant embryos would look at the Yamaguchi reference as guidance to using trehalose in culture medium.
Applicant argues that the instant rejection amounts to a conclusion that because in vitro embryo rescue was known it would have been obvious to modify Yamaguchi’s method by using a hybrid plant embryo and thus is an insufficient rationale (see page 6, third and fourth paragraphs of ‘Remarks’ filed August 18, 2025).
This is not persuasive. It would have been obvious to one of ordinary skill in the art to use trehalose in a culture medium based on the teachings of the Yamaguchi reference that teach how trehalose extends the culture period. Thus, one of ordinary skill looking to increase the survival rate of a hybrid embryo would look to the Yamaguchi reference as guidance regardless of the method used.
Applicant argues that even if the skilled person sought to combine the cited references they would not have a reasonable expectation of success because the specification explains that prior in vitro embryo rescue methods had low success rates whereas the claimed methods unexpectedly resulted in significantly higher survival rates (see page 6, last paragraph to page 7, bridging paragraph of ‘Remarks’ filed August 18, 2025).
This is not persuasive. Based on the teachings of the Yamaguchi reference, one of ordinary skill in the art would have had a reasonable expectation of success in increasing the survival rate of plant embryos when culturing the plant embryo in a culture medium comprising trehalose because the Yamaguchi reference teaches that adding trehalose to a culture medium extends the culture period.
Conclusion
No claims are allowed.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEITH O. ROBINSON whose telephone number is (571)272-2918. The examiner can normally be reached Monday - Friday, 9:00 a.m. - 5:30 p.m. EST.
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/KEITH O. ROBINSON/Primary Examiner, Art Unit 1661