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 .
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finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/11/2026 has been entered.
Status of Claims
Amendments dated 02/11/2026 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.
Claim Interpretation
In regard to the instant claims, it should be noted that Applicant states that the terms "herbicide tolerance" and "herbicide resistance" are used interchangeably in the instant application, both referring to herbicide tolerance and herbicide resistance, meaning a plant, seed, cell or plant part's ability to resist the toxic effects of one or more herbicide(s) (Specification, paragraph 0065). As such, for purposes of examination, the broadest reasonable interpretation of the term "herbicide tolerance" will also encompass the term "herbicide resistance" in view of the definition recited in the instant specification.
Improper Markush Grouping
---The following are new rejections from those set forth in the Office Action dated 10/16/2025 in view of further examination of the claims. Applicant’s Remarks dated 02/11/2026 have been reviewed and are deemed inapposite to the new rejections---
Claims 8, 11, 15-18, 20, 30, and 33-35 are rejected on the basis that they contain an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of SEQ ID NOs: 41, 51, 59, 63, 65, 67, 69, 83, 85, 87, 89, 91, 93, 95, 97, 99, 101, 103, 105, 107, 109, 113, 115, 123, 143, 145, 147, 149, and 151 and SEQ ID NOs: 42, 52, 60, 64, 66, 68, 70, 84, 86, 88, 90, 92, 94, 96, 98, 100, 102, 104, 106, 108, 110, 114, 116, 124, 144, 146, 148, 150 and 152 is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons:
Claims 8, 11, 15-18, 20, 30, and 33-35 recite or depend from a claim that recites a recombinant DNA molecule comprising a nucleic acid sequence selected from: a nucleic acid sequence or a complementary sequence thereof, wherein the nucleic acid sequence encodes a protein that comprises the amino acid sequence of any one selected from the following group: SEQ ID NO: 41, SEQ ID NO: 51, SEQ ID NO: 59, SEQ ID NO: 63, SEQ ID NO: 65, SEQ ID NO: 67, SEQ ID NO: 69, SEQ ID NO: 83, SEQ ID NO:85, SEQ ID NO: 87, SEQ ID NO: 89, SEQ ID NO: 91, SEQ ID NO: 93, SEQ ID NO: 95, SEQ ID NO: 97, SEQ ID NO: 99, SEQ ID NO: 101, SEQ ID NO: 103, SEQ ID NO: 105, SEQ ID NO: 107, SEQ ID NO: 109, SEQ ID NO: 113, SEQ ID NO: 115, SEQ ID NO: 123, SEQ ID NO: 143, SEQ ID NO: 145, SEQ ID NO: 147, SEQ ID NO: 149 and SEQ ID NO: 151 or the nucleic acid sequence of any one selected from the following group: SEQ ID NO: 42, SEQ ID NO: 52, SEQ ID NO: 60, SEQ ID NO: 64, SEQ ID NO: 66, SEQ ID NO:68, SEQ ID NO: 70, SEQ ID NO: 84, SEQ ID NO: 86, SEQ ID NO: 88, SEQ ID NO: 90, SEQ ID NO: 92, SEQ ID NO: 94, SEQ ID NO: 96, SEQ ID NO: 98, SEQ ID NO: 100, SEQ ID NO: 102, SEQ ID NO: 104, SEQ ID NO: 106, SEQ ID NO: 108, SEQ ID NO: 110, SEQ ID NO: 114, SEQ ID NO: 116, SEQ ID NO: 124, SEQ ID NO:144, SEQ ID NO: 146, SEQ ID NO: 148, SEQ ID NO: 150 or SEQ ID NO: 152. An ABSS sequence search for SEQ ID NO: 83 (elected species) (See file wrapper for 20240823_101523_us-18-019-498a-83.rapbm) returned results down to 26% sequence identity relative to SEQ ID NO: 83, wherein the majority of all other non-elected sequences as they appear in the claims had only 75.8-26.0% sequence identity relative to instant SEQ ID NO: 83. An ABSS sequence search for SEQ ID NO: 84 (elected species) (See file wrapper for 20240823_101523_us-18-019-498a-84.rnpbm) returned results down to 54% sequence identity relative to SEQ ID NO: 84, wherein the majority of all other non-elected sequences as they appear in the claims had only 56.7-54.0% sequence identity relative to instant SEQ ID NO: 84.
Hence, the included species of the claimed invention do not share both a substantial structural feature and a common function that flows from the substantial structural feature.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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 10/16/2025 in view of further examination of the claims. Applicant’s Remarks dated 02/11/2026 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.
Claims 8 and 18 recite the limitation "…a nucleic acid sequence encoding the same amino acid sequence as the sequences shown in (1) or (2)…" in part (3). There is insufficient antecedent basis for this limitation in the claim. Both Claim 8, part (2) and Claim 18, part (2) are drawn to a group of nucleic acid sequences—not amino acid sequences as recited in Claim 8, part (3) and Claim 18, part (3). As such, one of ordinary skill in the art would not be reasonably apprised of the meets and bounds of the claims because it is unclear what amino acid sequence Applicant is referring to in Claim 8 part (2) and 18, part (2), as no amino acid sequences are currently recited in part (2) of either claim. For purposes of examination Claim 8 part (3) and Claim 18 part (3) are interpreted to only encompass a nucleic acid sequence encoding the same amino acid as the sequence shown in Claim 8, part (1) and Claim 18, part (1). This determination does relieve Applicant from their duty to amend the claims in any further correspondence.
All dependent claims thereof are included in the rejection for the same reasons as given above.
Claims 8 and 18 recite the term “complementary” which renders the claims indefinite. Applicant does not define the term “complementary” in the claims or instant specification in such a way that one of ordinary skill in the art would be reasonably apprised on the metes and bounds of the claimed invention. It is unclear what degree of complementarity is required by the claims for a nucleic acid sequence to be “complementary” to the claimed nucleic acid sequences in Claim 8, part (2) and Claim 18, part (2). In other words, is Applicant requiring the sequences be 100% complementary across the whole length of the claimed nucleic acid sequences or can the sequences be partially complementary to the claimed nucleic acid sequences. Furthermore, if the sequences can be partially complementary to the claimed nucleic acid sequences, what degree of complementarity is required (i.e., 5%, 10%, 95%, or 99% complementary) for a sequence to be considered complementary to SEQ ID NO: 84 (elected species)? As such, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claimed invention. For purposes of examination, the broadest reasonable interpretation of the term “complementary” will encompass nucleic acid sequences that have any degree of complementarity relative to SEQ ID NO: 84 and nucleic acid sequences that encode proteins that have any degree of complementarity relative to SEQ ID NO: 84. This determination does not relieve Applicant from their duty to amend the claims in any further correspondence.
Claim Rejections - 35 USC § 112
Written Description
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
---The following are new rejections from those set forth in the Office Action dated 10/16/2025 in view of further examination of the claims. Applicant’s Remarks dated 02/11/2026 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(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The Federal Circuit has clarified the written description requirement. The court stated that a
written description of an invention "requires a precise definition, such as by structure, formula, [or] chemical name, of the claimed subject matter sufficient to distinguish it from other materials". University of California v. Eli Lilly and Co., 119 F.3d 1559, 1568; 43 USPQ2d 1398, 1406 (Fed. Cir. 1997).
The court also concluded that "naming a type of material generally known to exist, in the absence of
knowledge as to what that material consists of, is not description of that material". Id. Further, the court
held that to adequately describe a claimed genus, Patent Owner must describe a representative number
of the species of the claimed genus, and that one of skill in the art should be able to "visualize or recognize the identity of the members of the genus". Id.
Claims 8, 11, 15-16, 20, 30, 33, and 35 are drawn to a plant, seed, cell or plant part comprising a recombinant DNA molecule responsible for (2,4-dichlorophenoxy) acetic acid (2,4-D) degradation, a protein encoded by the recombinant DNA molecule, or a DNA construct; wherein, the DNA construct comprises a heterologous promoter functional in a plant cell that is operably linked to the recombinant DNA molecule, wherein, the recombinant DNA molecule comprising a nucleic acid sequence selected from:(1) a nucleic acid sequence or a complementary sequence thereof, wherein the nucleic acid sequence encodes a protein that comprises the amino acid sequence of any one selected from the following group: SEQ ID NO: 41, SEQ ID NO: 51, SEQ ID NO: 59, SEQ ID NO: 63, SEQ ID NO: 65, SEQ ID NO: 67, SEQ ID NO: 69, SEQ ID NO: 83, SEQ ID NO:85, SEQ ID NO: 87, SEQ ID NO: 89, SEQ ID NO: 91, SEQ ID NO: 93, SEQ ID NO: 95, SEQ ID NO: 97, SEQ ID NO: 99, SEQ ID NO: 101, SEQ ID NO: 103, SEQ ID NO: 105, SEQ ID NO: 107, SEQ ID NO: 109, SEQ ID NO: 113, SEQ ID NO: 115, SEQ ID NO: 123, SEQ ID NO: 143, SEQ ID NO: 145, SEQ ID NO: 147, SEQ ID NO: 149 and SEQ ID NO: 151; (2) the nucleic acid sequence of any one selected from the following group: SEQ ID NO: 42, SEQ ID NO: 52, SEQ ID NO: 60, SEQ ID NO: 64, SEQ ID NO: 66, SEQ ID NO:68, SEQ ID NO: 70, SEQ ID NO: 84, SEQ ID NO: 86, SEQ ID NO: 88, SEQ ID NO: 90, SEQ ID NO: 92, SEQ ID NO: 94, SEQ ID NO: 96, SEQ ID NO: 98, SEQ ID NO: 100, SEQ ID NO: 102, SEQ ID NO: 104, SEQ ID NO: 106, SEQ ID NO: 108, SEQ ID NO: 110, SEQ ID NO: 114, SEQ ID NO: 116, SEQ ID NO: 124, SEQ ID NO:144, SEQ ID NO: 146, SEQ ID NO: 148, SEQ ID NO: 150 or SEQ ID NO: 152, or a complementary sequence thereof; or (3) a nucleic acid sequence encoding the same amino acid sequence as the sequence shown in (1) or (2) due to degeneracy of genetic code, or a complementary sequence thereof; wherein the plant, seed, cell or plant part has tolerance to (2,4-D) herbicide.
Claim 18 is broadly directed to a method for conferring 2,4-D herbicide tolerance on a plant, seed, cell or plant part, wherein it is characterized in that the plant, seed, cell or plant part comprises a DNA construct; wherein the DNA construct comprises a heterologous promoter functional in a plant cell that is operably linked to a recombinant DNA molecule, and the recombinant DNA molecule comprising a nucleic acid sequence encoding the protein responsible for 2,4-D degradation, which is selected from:(1) a nucleic acid sequence or a complementary sequence thereof, wherein the nucleic acid sequence encodes a protein that comprises the amino acid sequence of any one selected from the following group: SEQ ID NO: 41, SEQ ID NO: 51, SEQ ID NO: 59, SEQ ID NO: 63, SEQ ID NO: 65, SEQ ID NO: 67, SEQ ID NO: 69, SEQ ID NO: 83, SEQ ID NO: 85, SEQ ID NO: 87, SEQ ID NO: 89, SEQ ID NO: 91, SEQ ID NO: 93, SEQ ID NO: 95, SEQ ID NO: 97, SEQ ID NO: 99, SEQ ID NO: 101, SEQ ID NO: 103, SEQ ID NO: 105, SEQ ID NO: 107, SEQ ID NO: 109, SEQ ID NO: 113, SEQ ID NO: 115, SEQ ID NO: 123, SEQ ID NO: 143, SEQ ID NO: 145, SEQ ID NO: 147, SEQ ID NO: 149 and SEQ ID NO: 151;(2) the nucleic acid sequence of any one selected from the following group: SEQ ID NO: 42, SEQ ID NO: 52, SEQ ID NO: 60, SEQ ID NO: 64, SEQ ID NO: 66, SEQ ID NO: 68, SEQ ID NO: 70, SEQ ID NO: 84, SEQ ID NO: 86, SEQ ID NO: 88, SEQ ID NO: 90, SEQ ID NO: 92, SEQ ID NO: 94, SEQ ID NO: 96, SEQ ID NO: 98, SEQ ID NO: 100, SEQ ID NO: 102, SEQ ID NO: 104, SEQ ID NO: 106, SEQ ID NO: 108, SEQ ID NO: 110, SEQ ID NO: 114, SEQ ID NO: 116, SEQ ID NO: 124, SEQ ID NO:144, SEQ ID NO: 146, SEQ ID NO: 148, SEQ ID NO: 150 or SEQ ID NO: 152, or a complementary sequence thereof; or (3) a nucleic acid sequence encoding the same amino acid sequence as the sequence shown in (1) or (2) due to degeneracy of genetic code, or a complementary sequence thereof.
As discussed in the 35 U.S.C. §112(b) rejection above, the specification does not define or adequately describe the claimed term “complementary” in such a way that one of ordinary skill in the art would be able to identify nucleic acid sequences that are adequately complementary to the instantly claimed nucleic acid sequences from nucleic acid sequences that are not adequately complementary to the instantly claimed nucleic acid sequences. Applicant does not adequately describe the term “complementary” in the claims or instant specification in such a way that one of ordinary skill in the art would be able to identify sequences that are adequately complementary to the instantly claimed nucleic acid sequences that perform the recited function of providing 2,4-D herbicide resistance to plant cells from sequences that are not adequately complementary to the instantly claimed nucleic acid sequences that perform the recited function of providing 2,4-D herbicide resistance to plant cells. Applicant does not describe the degree of complementarity required by the claims for a nucleic acid sequence to be “complementary” to the claimed nucleic acid sequences in Claim 8, part (2) and Claim 18, part (2). Applicant does not describe whether the instant claims require the sequences be 100% complementary across the whole length of the claimed nucleic acid sequences or if the sequences be partially complementary to the claimed nucleic acid sequences. Furthermore, if the sequences can be partially complementary to the claimed nucleic acid sequences, Applicant does not describe the degree of complementarity that is required by the instant claims (i.e., 5%, 10%, 95%, or 99% complementary).
Applicant describes working examples wherein the claimed nucleic acid sequences and the amino acids they encode are transformed into bacterial cells and plant cells for the methods of the invention (See Examples 1-8, pgs. 22-36, Table 2), wherein the genetically modified bacterial cells and plant cells have varying degrees of resistance or tolerance to 2,4-D herbicides. However, Applicant does not describe any nucleic acid sequence known in the art that have any degree of complementarity to the instantly claimed SEQ ID NOs. Applicant does not describe any nucleic acid sequences with full complementarity relative to the instantly claimed SEQ ID NOs. Applicant does not describe any nucleic acid sequences with any degree of partial complementarity to the instantly claimed SEQ ID NOs. The instant application fails to provide guidance for which nucleic acids of the instantly claimed complementary sequences must be fully complementary to the instantly claimed SEQ ID NOs to retain the recited function of providing resistance or tolerance to 2,4-D herbicides when transformed into a plant cell. The instant application fails to provide guidance for which nucleic acids of the instantly claimed complementary sequences can be partially complementary to the instantly claimed SEQ ID NOs to retain the recited function of providing resistance or tolerance to 2,4-D herbicides when transformed into a plant cell. Applicant does not describe any working or prophetic examples wherein the bacterial cells or plant cells are transformed with amino acids that are encoded by the instantly claimed nucleic acids that are fully complementary to the instantly claimed nucleic acid SEQ IDs, much less bacterial cells or plant cells that are transformed with amino acids that are encoded by the instantly claimed nucleic acids that have any degree of partial complementarity to the instantly claimed nucleic acid SEQ IDs. Applicant does not describe any working or prophetic examples wherein the plant cells are transformed with amino acids that are encoded by the instantly claimed nucleic acids that are fully complementary to the instantly claimed nucleic acid SEQ IDs, further wherein the genetically modified plant cells have any degree of resistance or tolerance to 2,4-D herbicides. Applicant does not describe any working or prophetic examples wherein plant cells are transformed with amino acids that are encoded by the instantly claimed nucleic acids that have any degree of partial complementarity to the instantly claimed nucleic acid SEQ IDs, further wherein the genetically modified plant cells have any degree of resistance or tolerance to 2,4-D herbicides.
Applicant has failed to describe a representative number of nucleic acid sequences that have any degree of complementarity relative to the instantly claimed SEQ ID NOs. Applicant has failed to describe a representative number of species of nucleic acid sequences that have any degree of complementarity relative to the instantly claimed SEQ ID NOs and have the recited function of any degree of resistance or tolerance to 2,4-D herbicides when transformed into a plant cell.
Hence, Applicant has not, in fact, described the vast genus of nucleic acids that could have any degree of complementarity relative to the instantly claimed SEQ IDs and the specification fails to provide an adequate written description of the claimed invention.
Therefore, given the lack of exemplified species of the claimed complementary nucleic acids sequences and the lack of written description with regard to the structural and functional characteristics of the claimed compositions, Applicant does not appear to have been in possession of the claimed genus at the time this application was filed.
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.
---The following are new rejections from those set forth in the Office Action dated 10/16/2025 in view of further examination of the claims. Applicant’s Remarks dated 02/11/2026 have been reviewed and are deemed inapposite to the new rejections---
Claims 8, 11, 15-18, 20, 30, and 33-35 are rejected 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).
Regarding Claim 8, 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).
However, Larue does not explicitly teach the limitation of Claims 8, 11, 15-16, and 20 wherein the herbicide-tolerance protein taught by Larue is SEQ ID NO: 83 (elected species) or SEQ ID NO: 84 which encodes SEQ ID NO: 83, or a complementary sequence of SEQ ID NO: 84 (See 35 U.S.C. §112(b) rejection above for interpretation of this claim limitation), nor the limitation wherein the plant, seed, cell or plant part has tolerance to 2,4-D herbicide.
Regarding Claims 8,11,15-16, and 20, 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, as shown in the sequence alignment located in the instant file wrapper denoted as: “Sequence_Alignment_M16730_reverse_complement_SEQ_ID_NO_84”.
Regarding Claims 8, 11, 15-16, and 20, 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).
Based on the above teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the Alpha-ketoglutarate-dependent 2,4-dichlorophenoxyacetate dioxygenase (tfdA) from Cupriavidus necator (strain JMP 134) taught by UniProt Accession P10088 in the DNA construct and methods taught by Larue to have plants, regenerated plants, plant genomes, seeds, and cells that also 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. Because of the comprising language of the instant claims and because Larue explicitly teaches that their claimed DNA construct could also include additional herbicide tolerance genes such as 2,4-dichlorophenoxyproprionate dioxygenases (TfdA), one of ordinary skill in the art would be motivated to include any TfdA gene in the DNA construct used in the methods taught by Larue, because Larue puts one of ordinary skill in the art on notice that adding TfdA herbicide resistance traits into a plant or a method of improving a plant with herbicide resistance is routine and well known in the art and an explicit alternative embodiment of the invention. Because of the explicit teachings of UniProt Accession P10088 and Lurquin, one of ordinary skill in the art would have been motivated to specifically use the Alpha-ketoglutarate-dependent 2,4-dichlorophenoxyacetate dioxygenase (tfdA) from Cupriavidus necator (strain JMP 134) taught by UniProt Accession P10088 in the DNA construct and methods taught by Larue, because UniProt Accession P10088 explicitly recites that this specific tdfA protein is implicated in 2,4-D herbicide degradation and Lurquin explicitly teaches that this specific tdfA has been show to provide herbicide resistance to 2,4-D in plants by degrading 2,4-D in plant cells. One of ordinary skill in the art would have been able to get to the Alpha-ketoglutarate-dependent 2,4-dichlorophenoxyacetate dioxygenase (tfdA) from Cupriavidus necator (strain JMP 134) taught by UniProt Accession P10088, using ordinary techniques known in the art (NCBI BLAST, UniProt BLAST) and would have been motivated to do so to enable the claimed invention, because Larue explicitly teaches that their claimed DNA construct could also include additional herbicide tolerance genes such as 2,4-dichlorophenoxyproprionate dioxygenases (tfdA), because UniProt Accession P10088 explicitly recites that this specific tdfA protein is implicated in 2,4-D herbicide degradation, and because Lurquin explicitly teaches that this specific tdfA has been show to provide herbicide resistance to 2,4-D in plants by degrading 2,4-D in plant cells— therefore it is an available sequence known in the art. The rationale to support a conclusion that the claims would have been obvious is that all the claimed elements were known in the prior art, and one of ordinary skill could have combined these elements as claimed with no change to their respective functions. Thus the combination yielding predictable results would have been expected by a skilled artisan.
Regarding Claim 11, Larue teaches a DNA construct 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), wherein the recombinant DNA molecule is comprised in a genome of a plant cell (pg. 153, Claim 8).
Regarding Claim 15, Larue teaches a method for producing an herbicide-tolerant plant, comprising the steps of: a) transforming a plant cell with the recombinant DNA molecule 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); and b) regenerating a plant from the plant cell that comprises the recombinant DNA molecule (pg. 153, Claim 17).
Regarding Claim 16, Larue teaches a method for producing an herbicide-tolerant plant, comprising the steps of: a) transforming a plant cell with the recombinant DNA molecule 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); and b) regenerating a plant from the plant cell that comprises the recombinant DNA molecule (pg. 153, Claim 17) which would inherently comprise the seeds produced by the above method.
Regarding Claim 20, Larue teaches a method for controlling or preventing weed growth in a plant growth area, comprising applying an effective amount of at least one PPO herbicide to a plant growth area that comprises the transgenic plant or seed comprising the recombinant DNA molecule 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 transgenic plant or seed is tolerant to the PPO herbicide (pg. 153, Claim 20).
Regarding Claims 30, 33, and 35, Larue 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 exemplary additional herbicide-tolerance traits may include transgenic or non-transgenic tolerance to one or more herbicides such as ACCase inhibitors (for example, aryloxyphenoxy propionates) and synthetic auxins (for example, benzoic acids) (paragraph 0074).
Regarding Claims 17 and 18, Larue teaches a method for conferring PPO herbicide tolerance to a plant, seed, cell, or plant part (pg. 153, Claim 15) comprising: heterologously expressing in said plant, seed, cell, or plant part the engineered protein (pg. 153, Claim 10) encoded by the recombinant DNA molecule 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). 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).
Regarding Claim 34, Larue 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 exemplary additional herbicide-tolerance traits may include transgenic or non-transgenic tolerance to one or more herbicides such as ACCase inhibitors (for example, aryloxyphenoxy propionates) and synthetic auxins (for example, benzoic acids) (paragraph 0074).
However, Larue does not explicitly teach the limitation of Claims 17, 18, and 34 wherein the herbicide-tolerance protein taught by Larue is SEQ ID NO: 83 (elected species) or SEQ ID NO: 84 which encodes SEQ ID NO: 83, or a complementary sequence of SEQ ID NO: 84 (See 35 U.S.C. §112(b) rejection above for interpretation of this claim limitation), nor the limitation wherein the plant, seed, cell or plant part has tolerance to 2,4-D herbicide.
Regarding Claims 17, 18, and 34, 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, as shown in the sequence alignment located in the instant file wrapper denoted as: “Sequence_Alignment_M16730_reverse_complement_SEQ_ID_NO_84”.
Regarding Claims 17, 18, and 34, 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).
Based on the above teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the Alpha-ketoglutarate-dependent 2,4-dichlorophenoxyacetate dioxygenase (tfdA) from Cupriavidus necator (strain JMP 134) taught by UniProt Accession P10088 in the DNA construct and methods taught by Larue to have plants, regenerated plants, plant genomes, seeds, and cells that also 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. Because of the comprising language of the instant claims and because Larue explicitly teaches that their claimed DNA construct could also include additional herbicide tolerance genes such as 2,4-dichlorophenoxyproprionate dioxygenases (TfdA), one of ordinary skill in the art would be motivated to include any TfdA gene in the DNA construct used in the methods taught by Larue, because Larue puts one of ordinary skill in the art on notice that adding TfdA herbicide resistance traits into a plant or a method of improving a plant with herbicide resistance is routine and well known in the art and an explicit alternative embodiment of the invention. Because of the explicit teachings of UniProt Accession P10088 and Lurquin, one of ordinary skill in the art would have been motivated to specifically use the Alpha-ketoglutarate-dependent 2,4-dichlorophenoxyacetate dioxygenase (tfdA) from Cupriavidus necator (strain JMP 134) taught by UniProt Accession P10088 in the DNA construct and methods taught by Larue, because UniProt Accession P10088 explicitly recites that this specific tdfA protein is implicated in 2,4-D herbicide degradation and Lurquin explicitly teaches that this specific tdfA has been show to provide herbicide resistance to 2,4-D in plants by degrading 2,4-D in plant cells. One of ordinary skill in the art would have been able to get to the Alpha-ketoglutarate-dependent 2,4-dichlorophenoxyacetate dioxygenase (tfdA) from Cupriavidus necator (strain JMP 134) taught by UniProt Accession P10088, using ordinary techniques known in the art (NCBI BLAST, UniProt BLAST) and would have been motivated to do so to enable the claimed invention, because Larue explicitly teaches that their claimed DNA construct could also include additional herbicide tolerance genes such as 2,4-dichlorophenoxyproprionate dioxygenases (tfdA), because UniProt Accession P10088 explicitly recites that this specific tdfA protein is implicated in 2,4-D herbicide degradation, and because Lurquin explicitly teaches that this specific tdfA has been show to provide herbicide resistance to 2,4-D in plants by degrading 2,4-D in plant cells— therefore it is an available sequence known in the art. The rationale to support a conclusion that the claims would have been obvious is that all the claimed elements were known in the prior art, and one of ordinary skill could have combined these elements as claimed with no change to their respective functions. Thus the combination yielding predictable results would have been expected by a skilled artisan.
Response to Arguments
Applicant’s arguments, see Applicant's Remarks, pgs. 7-10, filed 02/11/2026, with respect to the rejections 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 A0A480ANZ5_9BURK (published 06/05/2019) and Chekan et al. (Proceedings of the National Academy of Sciences 116.27 (2019): 13299-13304) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the new claim interpretation of the term “complementary”, wherein the broadest reasonable interpretation of the term “complementary” will encompass sequences that have any degree of complementarity relative to SEQ ID NO: 84. As such, the claims remain rejected for the reasons given in the 35 U.S.C. 103 rejection above.
Conclusion
No claims are allowed.
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/KELSEY L MCWILLIAMS/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663