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 2-5, 7-9, & 17 have been canceled.
Claims 1, 6, 10-16, & 18-22 are under examination on the merits.
Drawings
The drawings were received on 12/11/2024. These drawings are acceptable. The objection to the drawings is withdrawn in light of Applicants corrections.
Priority
Receipt is acknowledged of a statement that the translation of the certified copy of the foreign priority document required by 37 CFR 1.55 is accurate.
The objections to the specification are withdrawn in light of Applicant’s amendments.
The objections to claims 1, 6, 10, 12, 15 & 16 are withdrawn in light of Applicant’s amendment of the claims.
The rejection of claims 1-4, 7-11, and 14-15 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112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is withdrawn in light of Applicant' s amendment or cancellation of the claims.
The rejection of claims 1-11, 13-15 and 17 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph for not enabling any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims is withdrawn in light of Applicant’s amendment or cancelation of the claims.
The rejection of claims 1-10 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point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention is withdrawn in light of Applicant’s amendment of claim 1.
The rejection of claim 7 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being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends is withdrawn in light of Applicant' s amendment and cancellation of the claim.
The rejection of claims 1-8, & 10-17 under 35 U.S.C. 102(a)(1) and 102(a)(2) is withdrawn in light of Applicant’s amendment or cancellation of the claims.
The rejection of claim 9 under 35 U.S.C. 103 is withdrawn in light of Applicant’s cancellation of the claim.
Claim Objections
Claims 6 (line 2), 12 (lines 2-3), and 16 (lines 2-3) are objected to because of the following informalities:
“The gene enconding the ACh1 protein” should read --the gene encoding the ACh1 protein--.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 10, & 18-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. The claims recite a method for controlling a thrip pest, comprising allowing the thrip pest to be at least in contact with an ACh1 protein having the amino acid sequence show in SEQ ID NOs: 1 or 2. This judicial exception is not integrated into a practical application because the steps recited in claims 1, 6, 10, & 18-19 amount to no more than allowing a thrip to be in contact with a naturally occurring ACh1 protein, which occurs naturally when Bacillus thuringiensis and thrips such as Frankliniella occidentalis are present on the same host plant. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the steps of the method for controlling a thrip pest in claims 1, 6, 10, & 18-19 occur naturally and the sequences of SEQ ID NO: 1 and 3 occur naturally and because no additional limitations are recited that do not comprise a natural phenomenon. An ACh1 protein with the amino acid sequence shown in instant SEQ ID NO: 1 is found naturally in Bacillus thuringiensis. Likewise, the nucleotide sequence of instant SEQ ID NO: 3 is a naturally found nucleotide in Bacillus thuringiensis. The Bacillus thuringiensis, a host cell that produces the ACh1 protein (claim 18) that is also a bacterium (claim 19, line 2), is found naturally on plants, which leads to the thrip being in contact with the protein (claim 1) and may be ingested by thrips (claims 18 and 19). Claim 19 recites the growth of the thrip pest is inhibited and/or death is caused, but this is an inherent result of thrips ingesting the protein of instant SEQ ID NO: 1 as demonstrated by the instant specification (table 1).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 10-11, 14-15, & 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Akbar et al (US2017/166922A1, published 06/15/2017), hereafter Akbar, in view of UniProt record A7IZR5_BACTU (available 9/11/2007).
Claims 1, 10-11, 14-15, & 18-22 are drawn to a method for controlling a thrip pest comprising allowing the thrip pest to be at least in contact with an ACh1 protein of instant SEQ ID NO: 1 or 2 and a method of producing a plant for controlling a thrip pest comprising introducing a polynucleotide sequence encoding the ACh1 protein with instant SEQ ID NO: 1 or 2 into the genome of the plant.
Akbar teaches cotton plants, plant cells, plant tissues, and seeds resistant to Thysanopteran insect pests, including Frankliniella ssp, due to expression of a DNA segment encoding an insecticidal protein (protein TIC834_16, encoded by Akbar SEQ ID NO: 26) with an amino acid sequence of >97% identity with ACh1_1 (SEQ ID NO: 1 of instant application) (Akbar paragraph [0027]). See alignment below. Akbar teaches the cotton plants producing TIC834_16 in “an amount in the diet of insects in the order of Hemiptera or Thysanoptera that is insecticidal” (paragraph [0069]). Akbar teaches an embodiment of growing said cotton plants, where plants grown from seeds comprising the resistance protein have less damage compared with a control plant (Table 9, paragraph [0149]). Akbar teaches that the species F. occidentalis was among the thrips controlled by the transgenic cotton plant in field trials (Table 23). Akbar teaches that the damage caused by thrips in these field trials included damage to leaves and terminal buds (paragraph [0149]), although Akbar also teaches that thrips may feed on flowers (paragraph [0011]).
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Akbar teaches that transgenic alleles conferring traits in addition to the disclosed insect-resistant protein would be desirable (paragraph [0031]) and teaches plants that comprise both the TIC834_16 protein (>97% sequence identity to instant application SEQ ID NO: 1) and a transgenic event (MON 15985) carrying a Cry2AB gene (paragraph [00101]). Desirable stacked transgenic traits taught by Akbar include transgenic event SYN-IR102-7, which carries a vip3A(a) gene, and transgenic event SYN-IR67B-1, which carries a Cry1Ab protein (paragraph [0031]).
Akbar teaches a cotton plant, including cells, seed, plant parts, and plants, containing DNA diagnostic to the transgenic event MON 88702, which comprises a sequence (Akbar SEQ ID NO: 26), translated with >97% sequence identity to ACh1_1 protein (SEQ ID NO: 1 of instant application) (Akbar paragraph [0020]). The MON 88702 event comprises “a single locus of insertion in the cotton genome” of the resistance gene within an expression cassette (paragraph [0015]). Akbar teaches that the transgenic cotton plant was produced by an Agrobacterium-mediated transformation process (paragraph [0063]).
Akbar furthermore teaches a method of producing a hybrid plant comprising the nucleotide of Akbar SEQ ID NO: 26 by crossing a plant comprising this nucleotide with a second plant that does not comprise this nucleotide to acquire hybrid progeny seed carrying the nucleotide (Akbar paragraph [0101]).
Akbar teaches the cultivation of cotton seeds comprising a gene encoding a protein with high sequence similarity to instant SEQ ID NO: 1 (Akbar SEQ ID NO: 26), growing said seeds in the field in low, medium, and high thrips pressure sites, and scoring the cotton plants for thrips damage (paragraph [0149]). Akbar teaches that the plants grown from seeds comprising the resistance protein have less damage compared with a control plant (Table 9). Akbar also teaches a trial where cotton yields are scored for plants comprising the resistance protein and a control, finding that the plant with the resistance protein gene have higher yield (Table 8).
Akbar does not teach a ACh1 protein with 100% sequence identity to instant SEQ ID NO: 1 or 2 or a nucleotide encoding said protein with 100% identity to SEQ ID NO: 3 or 4.
UniProt record A7IZR5_BACTU teaches a Cry51Aa-like protein with an amino acid sequence with 100% identity to instant SEQ ID NO: 1. See alignment below.
A7IZR5_BACTU
ID A7IZR5_BACTU Unreviewed; 309 AA.
AC A7IZR5;
DT 11-SEP-2007, integrated into UniProtKB/TrEMBL.
DT 11-SEP-2007, sequence version 1.
DT 03-MAY-2023, entry version 37.
DE SubName: Full=Cry51Aa1 {ECO:0000313|EMBL:ABI14444.1};
GN Name=cry51Aa1 {ECO:0000313|EMBL:ABI14444.1};
OS Bacillus thuringiensis.
OC Bacteria; Bacillota; Bacilli; Bacillales; Bacillaceae; Bacillus;
OC Bacillus cereus group.
OX NCBI_TaxID=1428 {ECO:0000313|EMBL:ABI14444.1};
RN [1] {ECO:0000313|EMBL:ABI14444.1}
RP NUCLEOTIDE SEQUENCE.
RC STRAIN=F14-1 {ECO:0000313|EMBL:ABI14444.1};
RA Sun M.;
RL Submitted (JUL-2006) to the EMBL/GenBank/DDBJ databases.
RN [2] {ECO:0000313|EMBL:ABI14444.1}
RP NUCLEOTIDE SEQUENCE.
RC STRAIN=F14-1 {ECO:0000313|EMBL:ABI14444.1};
RX PubMed=17481651; DOI=10.1016/j.jip.2007.02.016;
RA Huang D.F., Zhang J., Song F.P., Lang Z.H.;
RT "Microbial control and biotechnology research on Bacillus thuringiensis in
RT China.";
RL J. Invertebr. Pathol. 95:175-180(2007).
RN [3] {ECO:0007829|PDB:4PKM}
RP X-RAY CRYSTALLOGRAPHY (1.65 ANGSTROMS).
RX PubMed=25957471; DOI=10.1016/j.bbrc.2015.04.068;
RA Xu C., Chinte U., Chen L., Yao Q., Meng Y., Zhou D., Bi L.J., Rose J.,
RA Adang M.J., Wang B.C., Yu Z., Sun M.;
RT "Crystal structure of Cry51Aa1: A potential novel insecticidal aerolysin-
RT type beta-pore-forming toxin from Bacillus thuringiensis.";
RL Biochem. Biophys. Res. Commun. 462:184-189(2015).
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DR EMBL; DQ836184; ABI14444.1; -; Genomic_DNA.
DR PDB; 4PKM; X-ray; 1.65 A; A=1-309.
DR PDBsum; 4PKM; -.
DR AlphaFoldDB; A7IZR5; -.
DR SMR; A7IZR5; -.
DR TCDB; 1.C.78.1.4; the crystal protein (cry) family.
DR CDD; cd20226; PFM_Cry51Aa-like; 1.
DR Gene3D; 2.170.15.10; Proaerolysin, chain A, domain 3; 1.
DR InterPro; IPR004991; Aerolysin-like.
DR Pfam; PF03318; ETX_MTX2; 1.
DR SUPFAM; SSF56973; Aerolisin/ETX pore-forming domain; 1.
PE 1: Evidence at protein level;
KW 3D-structure {ECO:0007829|PDB:4PKM}.
SQ SEQUENCE 309 AA; 33982 MW; 29D3BFC432CA96EE CRC64;
Query Match 100.0%; Score 1630; Length 309;
Best Local Similarity 100.0%;
Matches 309; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MIFLAILDLKSLVLNAINYWGPKNNNGIQGGDFGYPISEKQIDTSIITSTHPRLIPHDLT 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MIFLAILDLKSLVLNAINYWGPKNNNGIQGGDFGYPISEKQIDTSIITSTHPRLIPHDLT 60
Qy 61 IPQNLETIFTTTQVLTNNTDLQQSQTVSFAKKTTTTTSTSTTNGWTEGGKISDTLEEKVS 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 IPQNLETIFTTTQVLTNNTDLQQSQTVSFAKKTTTTTSTSTTNGWTEGGKISDTLEEKVS 120
Qy 121 VSIPFIGEGGGKNSTTIEANFAHNSSTTTFQQASTDIEWNISQPVLVPPRKQVVATLVIM 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 VSIPFIGEGGGKNSTTIEANFAHNSSTTTFQQASTDIEWNISQPVLVPPRKQVVATLVIM 180
Qy 181 GGNFTIPMDLMTTIDSTEHYSGYPILTWISSPDNSYNGPFMSWYFANWPNLPSGFGPLNS 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 GGNFTIPMDLMTTIDSTEHYSGYPILTWISSPDNSYNGPFMSWYFANWPNLPSGFGPLNS 240
Qy 241 DNTVTYTGSVVSQVSAGVYATVRFDQYDIHNLRTIEKTWYARHATLHNGKKISINNVTEM 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 DNTVTYTGSVVSQVSAGVYATVRFDQYDIHNLRTIEKTWYARHATLHNGKKISINNVTEM 300
Qy 301 APTSPIKTN 309
|||||||||
Db 301 APTSPIKTN 309
Before the filing date of the instant application, it would be obvious to one of ordinary skill in the art to modify the methods of Akbar to control a thrip pest, produce a plant, or cultivate a plant comprising a nucleotide encoding a ACh1 protein of instant SEQ ID NOs: 1 or 2 to substitute the ACh1 protein conferring resistance to thrips taught by Akbar (Akbar SEQ ID NO: 1) encoded by the nucleotide sequence of Akbar SEQ ID NO: 26 with the protein taught by UniProt record A7IZR5_BACTU. The rationale for substituting a known insecticidal Cry51A crystal protein for another insecticidal protein with high sequence similarity would be simple substitution of one known, equivalent element for another to obtain predictable results. One would have had reasonable expectation of success because the proteins had high sequence identity (98%, see alignment above) and methods to produce and use transgenic plants comprising Cry proteins were well known in the art before the time of filing of the instant application.
Regarding claims 1, 10, & 18-21, cotton cells expressing a DNA segment encoding an insecticidal protein (protein TIC834_16, encoded by Akbar SEQ ID NO: 26) with an amino acid sequence of >97% identity with ACh1_1 (SEQ ID NO: 1 of instant application) (Akbar paragraph [0027]) reads on a host cell and transgenic plant producing an ACh1 protein (claim 18 line 2; claim 19 line 2). Akbar describes the cotton plants as producing TIC834_16 in “an amount in the diet of insects in the order of Hemiptera or Thysanoptera that is insecticidal” (paragraph [0069]), which clearly reads on the thrip pest contacting the ACh1 protein through ingestion and dying as a result (claim 19, lines 3-5). Akbar’s teaching of growing said cotton plants, where plants grown from seeds comprising the resistance protein have less damage compared with a control plant (Table 9, paragraph [0149]) reads on a method for controlling a thrip pest wherein the growth of the thrip is inhibited or death is caused to achieve control of the damage of the thrip to plants (instant claim 1 lines 1-2; claim 19, lines 4-5). The plant taught by Akbar is cotton, which reads on instant claim 20. Akbar teaches that Frankliniella occidentalis was controlled by the transgenic cotton plant in field trials (table 23), which reads on instant claim 10 (lines 3-4). Akbar teaches that the damage caused by thrips in field trials included damage to leaves and terminal buds (paragraph [0149]), which reads on the tissue of the transgenic plant being ingested is a leaf (instant claim 21). Thus, claims 1, 10, & 18-21 are obvious over Akbar in view of UniProt record A7IZR5_BACTU.
Before the filing date of the instant application, it would have been obvious to one of ordinary skill in the art to modify the method of Akbar in view of UniProt record A7IZR5_BACTU to control a thrip pest to control a thrips pest to add a second nucleotide encoding a Cry-like insecticidal or Vip-like insecticidal protein to the transgenic plant comprising the nucleotide encoding the ACh1 protein such as transgenic traits taught by Akbar (paragraph [00101] or [0031]). One would have been motivated to add a nucleotide encoding a Cry-like or Vip-like insecticidal protein because Akbar taught that combining insect resistance traits is desirable and can further reduce damage from insect pests (paragraph [0031]). Thus, claim 22 (lines 2-4) is obvious over Akbar and UniProt record A7IZR5_BACTU.
Regarding claims 11 & 14, Akbar’s method of producing a hybrid plant comprising crossing a plant comprising the nucleotide encoding a Cry51Aa protein with a second plant that does not comprise this nucleotide to acquire hybrid progeny seed carrying the nucleotide (Akbar paragraph [0101]) clearly reads on a method of producing a seed containing a polynucleotide sequence encoding an ACh1 protein comprising hybridizing a plant encoding an ACh1 protein with a second plant (instant claim 14). This method, along with the method of producing the cotton plant via Agrobacterium-mediated transformation (Akbar paragraph [0063]), reads on a method comprising introducing a polynucleotide encoding an ACh1 protein into a genome of the plant (instant claim 11, lines 1-3). In view of UniProt record A7IZR5_BACTU, it would be obvious to produce a plant comprising the amino acid sequence of instant SEQ ID NO: 1. Thus, claims 11 & 14 are obvious over Akbar and UniProt record A7IZR5_BACTU.
Regarding claim 15, given that thrips naturally occur at the trial sites (paragraph [00149]), the field trials of transgenic cotton taught by Akbar (paragraph [0149] and tables 8-9) read on a method of cultivating a plant for controlling a thrip pest comprising planting seeds, growing the seed into a plant, growing the plant under conditions that a thrip pest naturally occurs, and harvesting a plant that has attenuated plant damage and/or higher yield compared with other plants that do not have polynucleotide sequences encoding the ACh1 protein.
Before the time of filing of the instant application, it would have been obvious to one of ordinary skill in the art to modify the method for controlling a thrip pest, producing a plant, and cultivating a plant comprising nucleotide encoding an ACh1 insecticidal protein taught by Akbar in view of UniProt record A7IZR5_BACTU, to substitute the polynucleotide taught by Akbar (Akbar SEQ ID NO: 26) for one with the polynucleotide sequence of instant SEQ ID NO: 3. Choosing the polynucleotide sequence of instant SEQ ID NO: 3 rather than another polynucleotide sequence encoding the amino acid sequence of UniProt record A7IZR5_BACTU would have been a design choice. One would have had reasonable expectation of success, because it was known to one of ordinary skill in the art at the time of filing that silent changes to polynucleotide sequences will encode proteins of the same amino acid sequence. Thus, claims 6, 12, and 16, wherein the nucleotide sequence of the gene encoding the ACh1 protein is shown in instant SEQ ID NO: 3 or 4 is obvious in view of Akbar and UniProt record A7IZR5_BACTU.
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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 11 & 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 & 13 of copending Application No. 18/062,567 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because a method of producing a plant for controlling Apolygus lucorum comprising introducing a polynucleotide sequence encoding an ACh1 protein with an amino acid sequence shown in ‘567 SEQ ID NO: 1 into a genome of the plant (‘567 claim 10) when ‘567 SEQ ID NO: 1 teaches a sequence 100% identical to instant SEQ ID NO: 1 (see alignment below) reads on instant claim 11.
US-18-062-567-1
Filing date in PALM: 2022-12-06
Sequence 1, US/18062567
Publication No. US20230183736A1
GENERAL INFORMATION
APPLICANT: Beijing Dabeinong Biotechnology Co.,Ltd. (en)
TITLE OF INVENTION: USE OF INSECTICIDAL PROTEIN (en)
FILE REFERENCE: PN192851_DBNS_US
CURRENT APPLICATION NUMBER: US/18/062,567
CURRENT FILING DATE: 2022-12-06
NUMBER OF SEQ ID NOS: 14
SEQ ID NO 1
LENGTH: 309
TYPE: PRT
FEATURE:
NAME/KEY: source
LOCATION: 1..309
QUALIFIERS: mol_type = protein
organism = synthetic construct
ALIGNMENT:
Query Match 100.0%; Score 1630; Length 309;
Best Local Similarity 100.0%;
Matches 309; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MIFLAILDLKSLVLNAINYWGPKNNNGIQGGDFGYPISEKQIDTSIITSTHPRLIPHDLT 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MIFLAILDLKSLVLNAINYWGPKNNNGIQGGDFGYPISEKQIDTSIITSTHPRLIPHDLT 60
Qy 61 IPQNLETIFTTTQVLTNNTDLQQSQTVSFAKKTTTTTSTSTTNGWTEGGKISDTLEEKVS 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 IPQNLETIFTTTQVLTNNTDLQQSQTVSFAKKTTTTTSTSTTNGWTEGGKISDTLEEKVS 120
Qy 121 VSIPFIGEGGGKNSTTIEANFAHNSSTTTFQQASTDIEWNISQPVLVPPRKQVVATLVIM 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 VSIPFIGEGGGKNSTTIEANFAHNSSTTTFQQASTDIEWNISQPVLVPPRKQVVATLVIM 180
Qy 181 GGNFTIPMDLMTTIDSTEHYSGYPILTWISSPDNSYNGPFMSWYFANWPNLPSGFGPLNS 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 GGNFTIPMDLMTTIDSTEHYSGYPILTWISSPDNSYNGPFMSWYFANWPNLPSGFGPLNS 240
Qy 241 DNTVTYTGSVVSQVSAGVYATVRFDQYDIHNLRTIEKTWYARHATLHNGKKISINNVTEM 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 DNTVTYTGSVVSQVSAGVYATVRFDQYDIHNLRTIEKTWYARHATLHNGKKISINNVTEM 300
Qy 301 APTSPIKTN 309
|||||||||
Db 301 APTSPIKTN 309
‘567 claim 13, drawn to a method for producing a plant seed comprising hybridizing a plant obtained by the method described above with a second plant so as to produce a seed containing a polynucleotide sequence encoding an ACh1 protein with the amino acid sequence of ‘567 SEQ ID NO: 1 is specific to instant claim 14, which merely requires the seed produced by the method to contain a polynucleotide encoding an ACh1 protein.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 15 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of copending Application No. 18/062,567 in view of Tian et al (2019) Insects, 10(6), 167 (published 6/11/2019, hereafter Tian) and Wu et al Ecotoxicology (2018) 27:1032–1038 (published 10/11/2016, hereafter Wu).
A method for cultivating a plant comprising planting at least one seed comprising a polynucleotide sequence encoding an ACh1 protein of ‘567 SEQ ID NO: 1 (‘567 claim 14, lines 3-5), growing the plant seed into a plant (‘567 claim 14 line 7), and harvesting a plant that has an attenuated plant damage or increased plant yield (‘567 claim 14 lines 9-10) reads on the method of instant claim 15. Growing the plant under conditions that the hazard of Apolygus lucorum naturally occurs (‘567 claim 14 lines 8-9) would read on growing the plant under conditions that the hazard of the thrip pest naturally occurs (instant claim 15, lines 6-7) because Apolygus lucorum and thrips co-occur in Shandong province, China (for A. lucorum see Tian figure 2; for thrips see Wu page 1033, right column, paragraph 1). Furthermore, ‘567 teaches an ACh1 protein with sequence (‘567 SEQ ID NO: 1) identical to instant SEQ ID NO: 1. See alignment with instant SEQ ID NO: 1 above. Thus, instant claim 15 would be obvious to one of ordinary skill in the art over ‘567 claim 14.
This is a provisional nonstatutory double patenting rejection.
Claims 11 & 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13 & 16 of copending Application No. 18/063,081 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because a method of producing a plant comprising introducing a polynucleotide sequence encoding an ACh1 protein into a genome of the plant wherein the ACh1 protein has an amino acid sequence shown in ‘081 SEQ ID NO: 1-4 (‘081 claim 13) reads on a method of producing a plant comprising introducing a polynucleotide sequence encoding an ACh1 protein into a genome of the plant wherein the amino acid sequence is shown in instant SEQ ID NO: 1 (instant claim 11) because ‘081 SEQ ID NO: 1 and instant SEQ ID NO: 1 are identical. See alignment below.
US-18-063-081-1
Filing date in PALM: 2022-12-08
Sequence 1, US/18063081
Publication No. US20230212602A1
GENERAL INFORMATION
APPLICANT: Beijing Dabeinong Biotechnology Co., Ltd. (en)
TITLE OF INVENTION: Use of insecticidal protein (en)
FILE REFERENCE: PN192848
CURRENT APPLICATION NUMBER: US/18/063,081
CURRENT FILING DATE: 2022-12-08
NUMBER OF SEQ ID NOS: 20
SEQ ID NO 1
LENGTH: 309
TYPE: PRT
FEATURE:
NAME/KEY: source
LOCATION: 1..309
QUALIFIERS: mol_type = protein
organism = synthetic construct
ALIGNMENT:
Query Match 100.0%; Score 1630; Length 309;
Best Local Similarity 100.0%;
Matches 309; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MIFLAILDLKSLVLNAINYWGPKNNNGIQGGDFGYPISEKQIDTSIITSTHPRLIPHDLT 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MIFLAILDLKSLVLNAINYWGPKNNNGIQGGDFGYPISEKQIDTSIITSTHPRLIPHDLT 60
Qy 61 IPQNLETIFTTTQVLTNNTDLQQSQTVSFAKKTTTTTSTSTTNGWTEGGKISDTLEEKVS 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 IPQNLETIFTTTQVLTNNTDLQQSQTVSFAKKTTTTTSTSTTNGWTEGGKISDTLEEKVS 120
Qy 121 VSIPFIGEGGGKNSTTIEANFAHNSSTTTFQQASTDIEWNISQPVLVPPRKQVVATLVIM 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 VSIPFIGEGGGKNSTTIEANFAHNSSTTTFQQASTDIEWNISQPVLVPPRKQVVATLVIM 180
Qy 181 GGNFTIPMDLMTTIDSTEHYSGYPILTWISSPDNSYNGPFMSWYFANWPNLPSGFGPLNS 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 GGNFTIPMDLMTTIDSTEHYSGYPILTWISSPDNSYNGPFMSWYFANWPNLPSGFGPLNS 240
Qy 241 DNTVTYTGSVVSQVSAGVYATVRFDQYDIHNLRTIEKTWYARHATLHNGKKISINNVTEM 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 DNTVTYTGSVVSQVSAGVYATVRFDQYDIHNLRTIEKTWYARHATLHNGKKISINNVTEM 300
Qy 301 APTSPIKTN 309
|||||||||
Db 301 APTSPIKTN 309
‘081 claim 16 to a method of producing a plant seed comprising hybridizing a plant obtained by the above method with a second plant to produce a seed containing a polynucleotide sequence encoding the ACh1 protein reads on instant claim 16.
Claims 15 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of copending Application No. 18/063,081 in view of He et al (2025) Scientific Data, 12(1), 1. (published 1/2/2025, after the filing date of the instant application, hereafter He) and Wu et al Ecotoxicology (2018) 27:1032–1038 (published online 10/11/2017, hereafter Wu).
A method for cultivating a plant comprising planting at least one seed comprising a polynucleotide sequence encoding an ACh1 protein (‘081 claim 17, lines 3-4), growing the plant seed into a plant (‘081 claim 17, line 5), and harvesting a plant that has an attenuated plant damage or increased plant yield (‘081 claim 17, lines 8-9) reads on the method of instant claim 15. Growing the plant under conditions that the hazard of Monolepta hieroglyphica naturally occurs (‘081 claim 17, lines 6-7) would read on growing the plant under conditions that the hazard of the thrip pest naturally occurs because Monolepta hieroglyphica and thrips co-occur in Beijing (for M. heiroglyphica see He page 2, paragraph 1; for thrips see Wu page 1033, left column, paragraph 4). As shown in the alignment above, ‘081 SEQ ID NO: 1 and instant SEQ ID NO: 1 are identical. Thus, instant claim 15 would be obvious to one of ordinary skill in the art over ‘081 claim 17.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
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/VICTORIA L DELEO/ Examiner, Art Unit 1662
/Anne Kubelik/ Primary Examiner, Art Unit 1662