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
Amendments dated 06/03/2026 have been entered.
Claims 1-7, 9-10, 12-14, 19, 21-29 and 31-32 are cancelled.
Claims 8, 11, 15-18, 20, 30, and 33-35 are pending.
Claims 8, 11, 15-18, 20, 30, and 33-35 are examined herein.
The rejection of Claims 8, 11, 15-18, 20, 30, and 33-35 on the basis that they contain an improper Markush grouping of alternatives is withdrawn in view of Applicant’s amendments to the claims.
The rejection of Claims 8, 11, 15-18, 20, 30, and 33-35 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112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is withdrawn in view of Applicant’s amendments to the claims.
The rejection of Claims 8, 11, 15-18, 20, 30, and 33-35 under 35 U.S.C. 103 as being unpatentable over Larue et al. (US 2019/0185873 A1, published 06/20/2019) in view of UniProt Accession P10088 (dated 07/01/1989) and Lurquin (3 Biotech 6.1 (2016): 82) is withdrawn in view of Applicant’s amendments to the claims.
Nucleotide and/or Amino Acid Sequence Disclosures
Specific deficiency – Nucleotide and/or amino acid sequences appearing in the specification (paragraphs 0099 and 0103) are not identified by sequence identifiers in accordance with 37 CFR 1.821(d).
Required response – Applicant must provide:
A substitute specification in compliance with 37 CFR 1.52, 1.121(b)(3) and 1.125 inserting the required sequence identifiers, consisting of:
A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
A copy of the amended specification without markings (clean version); and
A statement that the substitute specification contains no new matter.
Specific deficiency - This application contains sequence disclosures in accordance with the definitions for nucleotide and/or amino acid sequences set forth in 37 CFR 1.821(a)(1) and (a)(2). However, this application fails to comply with the requirements of 37 CFR 1.821 - 1.825.
The sequence disclosures are located in paragraphs 0099 and 0103.
Required response – Applicant must provide:
A "Sequence Listing" part of the disclosure, as described above in item 1); as well as
An amendment specifically directing entry of the "Sequence Listing" part of the disclosure into the application in accordance with 1.825(b)(2);
A statement that the "Sequence Listing" includes no new matter in accordance with 1.825(b)(5); and
A statement that indicates support for the amendment in the application, as filed, as required by 37 CFR 1.825(b)(4).
If the "Sequence Listing" part of the disclosure is submitted according to item 1) a) or b) above, Applicant must also provide:
A substitute specification in compliance with 37 CFR 1.52, 1.121(b)(3) and 1.125 inserting the required incorporation-by-reference paragraph, consisting of:
A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
A copy of the amended specification without markings (clean version); and
A statement that the substitute specification contains no new matter;
If the "Sequence Listing" part of the disclosure is submitted according to item 1) b), c), or d) above, Applicant must also provide:
A replacement CRF in accordance with 1.825(b)(6); and
Statement according to item 2) a) or b) above.
Claim Objections
Claims 8, 11, 15-18, 20, 30, and 33-35 are objected to because of the following informalities:
The comma after the term “wherein” in Claim 8, line 6 should be deleted.
Claim 8, lines 6-23 should be amended to recite “…wherein the recombinant DNA molecule comprises a sequence selected from the group consisting of: SEQ ID NO: 83 and SEQ ID NO: 84…” for proper Markush format
In its currently amended form, Claim 8 has the “(2)” present where other numbers have been deleted.
The term “or” at the end of Claim 8, line 23 should be amended to recite “and” for proper Markush format.
Claim 8, line 27 should be amended to recite “…has tolerance to a (2,4-D) herbicide.”
Claim 17, line 1 should be amended to recite “A method for conferring 2,4-D herbicide tolerance to a plant…”
The term “and” recited in Claim 18, line 4 should be amended to recite “wherein”.
Claim 18, lines 4-22 should be amended to recite “…wherein the recombinant DNA molecule comprises a sequence responsible for 2,4-D degradation selected from the group consisting of: SEQ ID NO: 83 and SEQ ID NO: 84…” for proper Markush format.
The term “or” at the end of Claim 18, line 22 should be amended to recite “and” for proper Markush format.
Claim 20, line 3 should be amended to delete the phrase “a plant or seed comprising” after the phrase “the plant or seed comprises” to eliminate redundancy.
The comma after the term “wherein” in Claim 20, line 9 should be deleted.
Claim 30, line 3 should be amended to recite “…selected from the group consisting of: hormone herbicides and ACCase inhibitor herbicides…” for proper Markush format.
Claim 33, line 3 should be amended to recite “…selected from the group consisting of: hormone herbicides and ACCase inhibitor herbicides…” for proper Markush format.
Claim 34, line 3 should be amended to recite “…selected from the group consisting of: hormone herbicides and ACCase inhibitor herbicides…” for proper Markush format.
Claim 35, line 3 should be amended to recite “…selected from the group consisting of: hormone herbicides and ACCase inhibitor herbicides…” for proper Markush format.
All dependent claims are included in the objections above.
Appropriate correction is required.
Examiner’s Note
For Claims 30 and 33-35, Examiner suggests amending the claims to have indents between each different Markush group for readability and clarity of the record. For example, Claim 30 should be amended to be formatted like the following:
30. (Previously Presented) The plant, seed, cell or plant part according to claim 8, wherein
the plant, seed, cell or plant part further has tolerance to one or more herbicides selected from the group consisting of: hormone herbicides and ACCase inhibitor herbicides; or,
the plant, seed, cell or plant part further has tolerance to one or more herbicides selected from the following types: pyridinecarboxylic acids, benzoic acids, phenoxycarboxylic acids and aryloxy phenoxy propionates; or,
the plant, seed, cell or plant part further has tolerance to one or more herbicides selected from the following chemical compounds: fluroxypyr, triclopyr, dicamba, 4-(2,4-dichlorophenoxy)butanoic acid (2,4-DB), 2,4-DB sodium, 2,4-D isooctyl ester, (4- chloro-2-methylphenoxy)acetic acid (MCPA) and quizalofop-P-ethyl.
Claim Rejections - 35 USC § 112
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.
---The following are new rejections from those set forth in the Office Action dated 03/04/2026 made in view of further examination of the claims. Applicant’s Remarks dated 06/03/2026 have been reviewed and are deemed inapposite to the new rejections---
Claims 8, 11, 15-16, 18, 20, 30, 33, and 35 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.
Claim 8 recites the limitation, “…a nucleic acid sequence encoding the same amino acid sequence as the sequence shown in (1) due to degeneracy of genetic code;…” which renders the claim indefinite. It is unclear what the difference in scope is between a nucleic acid sequence encoding the same amino acid sequence as SEQ ID NO: 83 due to degeneracy of the code versus a nucleic acid sequence encoding SEQ ID NO: 83, because both would encode SEQ ID NO: 83. Therefore, it is unclear what the difference is between what was originally part (1) of the claim and part (3) of the claim. As such, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claimed invention.
Dependent claims are also rejected because they fail to overcome the deficiencies of the parent claim.
Claim 16 recites the limitation "A plant seed produced by the method according to Claim 15". There is insufficient antecedent basis for this limitation in the claim. Claim 15, from which Claim 16 depends, does not recite any methods steps where a seed is actually produced, it merely claims methods steps for transforming a plant and subsequent regeneration of a plant from transformed cells or tissues. As such, one of ordinary skill in the art is not reasonably apprised of the metes and bounds of the claimed invention.
Claim 18 recites the limitation, “…a nucleic acid sequence encoding the same amino acid sequence as the sequence shown in (1) due to degeneracy of genetic code;…” which renders the claim indefinite. It is unclear what the difference in scope is between a nucleic acid sequence encoding the same amino acid sequence as SEQ ID NO: 83 due to degeneracy of the code versus a nucleic acid sequence encoding SEQ ID NO: 83, because both would encode SEQ ID NO: 83. Therefore, it is unclear what the difference is between what was originally part (1) of the claim and part (3) of the claim. As such, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claimed invention.
Dependent claims are also rejected because they fail to overcome the deficiencies of the parent claim.
Claim Rejections - 35 USC § 112
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.
---The following are new rejections from those set forth in the Office Action dated 03/04/2026 made in view of further examination of the claims. Applicant’s Remarks dated 06/03/2026 have been reviewed and are deemed inapposite to the new rejections---
Claims 11, 15-16, 20, 33, and 35 are 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.
Claims 11, 15, and 20 all recite “the recombinant DNA molecule as defined in claim 8”. However, Claim 8 is drawn to a plant, seed, cell, or plant part, not to a recombinant DNA molecule. As such, Claims 11, 15, and 20 are rejected for failing to include all the limitations of the claim upon which they depend, because Claims 11, 15, and 20 do not include the plant, seed, cell, or plant part of claim 8 as well as the recited recombinant DNA molecule.
Dependent claims are also rejected because they fail to overcome the deficiencies of the parent claim.
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.
Examiner also suggests that another way to overcome this rejection would be to write a new claim that is drawn to a construct comprising a heterologous plant promoter operably linked to the claimed recombinant DNA molecule, and then amend the dependencies of Claims 11, 15, and 20 to depend from the newly added claim.
Closest Prior Art
Claims 8, 11, 15-18, 20, 30, and 33-35 appear to be free of the prior art. The closest prior art can be found in the combination of Larue et al. (US 2019/0185873 A1, published 06/20/2019) in view of UniProt Accession P10088 (dated 07/01/1989) and Lurquin (3 Biotech 6.1 (2016): 82).
Larue et al. (herein referred to as Larue) teaches a transgenic plant, seed, cell, or plant part comprising the recombinant DNA molecule (pg. 153, Claim 11) comprising a heterologous promoter operably linked to a nucleic acid molecule encoding a protein with herbicide-tolerant protoporphyrinogen oxidase activity, wherein the protein has at least 50% sequence identity to an amino acid sequence selected from the group consisting of SEQ ID NOs: 1-23 (pg. 152, Claim 1), wherein the heterologous promoter is functional in a plant cell (pg. 153, Claim 6). Larue also teaches that additional herbicide-tolerance traits also may be introduced by co-transforming a DNA construct for that additional herbicide-tolerance trait with a DNA construct comprising the recombinant DNA molecules provided by the invention (for example, with all the DNA constructs present as part of the same vector used for plant transformation) or by inserting the additional herbicide-tolerance traits into a transgenic plant comprising a DNA construct provided by the invention or vice versa (for example, by using any of the methods of plant transformation or genome editing on a transgenic plant or plant cell), wherein examples of herbicide-tolerance proteins that confer herbicide tolerance traits useful in the methods of the invention for producing additional herbicide-tolerance traits include 2,4-dichlorophenoxyproprionate dioxygenases (TfdA) (paragraph 0074).
UniProt Accession P10088 (dated 07/01/1989) which is a Alpha-ketoglutarate-dependent 2,4-dichlorophenoxyacetate dioxygenase (tfdA) from Cupriavidus necator (strain JMP 134) which is involved in degradation of the herbicide 2,4-dichlorophenoxyacetic acid (2,4-D) (See Uniprot Accession P10088, Function). When compared to the reverse complement of SEQ ID NO: 84, the nucleic acid sequence which encodes UniProt Accession P10088, denoted as GenBank Accession M16730 (dated 04/26/1993) in NCBI, has 33% complementarity relative to the reverse complement of instant nucleic acid sequence.
Lurquin explicitly teaches that when the bacteria C. necator 134 is grown in the presence of 2,4-D, the bacteria species produces 2,4-DCP. Lurquin demonstrated that 2,4-DCP is much less toxic to plants than 2,4-D, wherein plants engineered with C. necator’s tfdA gene would convert phytotoxic 2,4-D into much less phytotoxic 2,4-DCP, hence rendering these plants resistant to the herbicide (pg. 1, right column, first paragraph).
However, neither Larue, UniProt Accession P10088, Lurquin, nor other disclosures in the prior art teach an alpha-ketoglutarate-dependent 2,4-dichlorophenoxyacetate dioxygenase (tfdA) gene comprising 100% sequence identity relative to the entire length of instant SEQ ID NO: 83 or SEQ ID NO: 84, much less suggest a motivation or rational to integrate instant SEQ ID NO: 83 or SEQ ID NO: 84 into the DNA construct and methods taught by Larue to have plants, regenerated plants, plant genomes, seeds, and cells that comprise elevated resistance to 2,4-D herbicides and methods of conferring 2,4-D herbicide resistance to plants and controlling weeds that grow in the area of these herbicide resistant plants.
Conclusion
Claims 8, 11, 15-16, 18, 20, 30, 33 and 35 are rejected.
Claims 17 and 34 are objected to.
This action is NON-FINAL.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELSEY L. MCWILLIAMS whose telephone number is (703)756-4704. The examiner can normally be reached M-F 08:00-17:30.
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/KELSEY L MCWILLIAMS/Examiner, Art Unit 1663
/Anne Kubelik/Primary Examiner, Art Unit 1663
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