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 .
Claim Status
1. Claims 1-10, 14-19, 21, and 39-40 are pending and under examination on the merits.
Claims 11-13, 22-27, and 28-29 are withdrawn. Claims 11-13 and 28-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 22-27 are withdrawn as being directed to a nonelected species (i.e., dicot plants), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 10, 2025.
Claims 20 and 30-38 are cancelled.
Response to Arguments – Objections to the Specification
2. Applicant’s arguments and amendments filed December 15, 2025 have overcome the objections of record.
Response to Arguments – Claim Objections
3. Applicant’s arguments and amendments filed December 15, 2025 have overcome the objections of record. However, said amendments have necessitated new grounds of objection.
Claim Objections
4. Claims 19 and 21 are objected to for the following reasons.
Both of claims 19 and 21 contain the same error. It is suggested Applicant amend the claims such that the applicant spells out the full names of the genes represented by the acronyms “PPR10”, “ATPC”, and “CHLI” prior to the first use of the acronyms in the claims.
Applicant is advised that should claim 19 be found allowable, claim 21 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Appropriate correction is required.
Response to Arguments – Claim Rejections - 35 USC § 112(b)
5. Applicant’s arguments and amendments filed December 15, 2025 have overcome the rejections of record.
Claim 20 is cancelled; therefore, any rejections to the claim have been rendered moot.
Response to Arguments – Claim Rejections - 35 USC § 112(d)
6. Applicant’s arguments and amendments filed December 15, 2025 have overcome the rejections of record.
Claim 20 is cancelled; therefore, any rejections to the claim have been rendered moot.
Response to Arguments – Claim Rejections - 35 USC § 112(a)
7. Applicant’s arguments and amendments filed December 15, 2025 have overcome the rejections of record. However, the claims are rejected under 35 U.S.C. 112(a) for failing to comply with the written description requirement.
Claim Rejections - 35 USC § 112(a)
8. 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.9. Claims 1-10, 14-19, 21, and 39-40 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.
Applicant has not described a representative number of loss-of-function mutations in nuclear-encoded photosynthesis genes complemented by the introduction of a DNA molecule comprising said gene into plastids to reasonably convey possession of the claimed invention commensurate in scope with the claims.
Claim 1 is broad and encompasses any and all nuclear-encoded genes that encode chloroplast-localized proteins required for photosynthesis from any and all plants. The limitation regarding any nuclear-encoded genes that encode chloroplast-localized proteins required for photosynthesis from any and all plants lacks adequate written description.
Applicant describes mutant maize plants homozygous for loss-of-function mutations in the nuclear PPR10[0184-0185], [0200-0203], ATPC[0206], and CHLI genes[0214-0219]; the cloning of plastid codon-optimized PPR10[0204-0205], ATPC[0212-0213], and CHLI genes[0042-0043], [0221]; and the complementation of the nuclear loss-of-function mutations by the transformation of the synthetic genes into the nuclear genome of the mutant maize plants and selection of nuclear transformants via the identification of green cells[0203], [0213], [0226]. Applicant also discloses expression elements for expressing the plastid-encoded transgenes (p. 50, Table 5)[0227-0232].
Applicant does not describe working examples demonstrating the complementation of nuclear loss-of-function mutations via the transformation of plastids. Though plastid transformation methods are well-known in the art (see rejection of claims under 35 U.S.C. 103, below; see Applicant’s remarks dated 12/15/202, pp. 10-11), Applicant does not describe any working examples of transgenic plants wherein nuclear photosynthesis gene sequences are expressed from plastids. The state of the art teaches that thousands of chloroplast-localized proteins are encoded in the nucleus (Berry et al. Photosynthesis Research. 2013; 117:91–120 (U); Abstract; p. 104, left column, first full paragraph) and that the function of these proteins is not predictable when expressed in non-native host species. For example, the state of the art teaches that Rubisco subunits are not predictably functional when expressed heterologously in non-native species (fifth full paragraph; Horak, The Plant Cell. 2020: 32(9):2677-2678 (V)). Therefore, one cannot predict which nuclear-encoded chloroplast-localized photosynthesis proteins will function in any plant without further guidance from either Applicant’s disclosure or the prior art.
MPEP § 2163 states that the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. A “representative number of species” means that the species which are adequately described are representative of the entire genus. See, e.g., AbbVie Deutschland GMBH v. Janssen Biotech, 759 F.3d 1285, 111 USPQ2d 1780 (Fed. Cir. 2014). When there is substantial variation within a genus, as here in which the genus comprises millions of distinct genes among hundreds of thousands of plants (Abstract; Enquist et al. Science Advances. 2019; 5,eaaz0414 (W)), one must describe a sufficient variety of species to reflect the variation within the genus. Accordingly, the claims lack adequate written description.
Claims 2-18 and 39-40 do not address the limitations encompassing any plant nor the limitations encompassing any nuclear-encoded genes that encode chloroplast-localized proteins required for photosynthesis and therefore, also lack adequate written description.
Claims 19 and 21 do not address the limitations encompassing any plant and therefore, also lack adequate written description.
Claim Rejections - 35 USC § 103
10. 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.
11. Claims 1-10, 14-17, and 39-40 are rejected under 35 U.S.C. 103 as being unpatentable over Martin-Avila et al. (Plant Cell. 2020; 32(9):2898–2916; published online Jul 2020 (X)) as evidenced by Svab, Z., and Maliga, P. (Proceedings of the National Academy of Science. 1993; 90:913–917 (Y)) in view of Thorneycroft et al. (Journal of Experimental Botany. 2001; 52(361):1593-1601 (Z)).
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.
Regarding claim 1, Martin-Avila teaches a method for transforming a plant plastid with a DNA molecule comprising: introducing at least one DNA molecule comprising a first DNA sequence into a recipient cell of a non-photosynthetic plant comprising an RNAi expression construct that results in a loss-of-function in both copies of a nuclear gene encoding a chloroplast-localized protein for photosynthesis, wherein the DNA molecule encodes a protein having an enzymatic and/or biological activity of the chloroplast-localized protein required for photosynthesis and exposing the plant cell to light sufficient to support greening, and selecting a green photosynthetic plant cell comprising a transformed plant plastid containing a plastid genome comprising the DNA molecule from the plant cells exposed to said light, thereby transforming a plant plastid with a DNA molecule (Abstract; p. 2912, “Plant Tissue Culture, Growth Conditions, and Transformation”; p. 2902, Figure 2; p. 2902, right column, first and second full paragraphs; p. 2903, Figure 3; pp. 2902-2904, “Differences in Leaf Rubisco Content alter Photosynthetic Potential and Plant Growth”). The Office further notes that in identifying transformed tobacco plants capable of growth in soil, Martin-Avila inherently teaches selecting a green photosynthetic plant cell comprising a transformed plant plastid containing a plastid genome comprising the DNA molecule because the identified photosynthetic tobacco plants comprise green photosynthetic plant cells comprising transformed plant plastids.
Martin-Avila does not teach a loss-of-function mutation in each copy of a nuclear gene.
However, Thorneycroft teaches the use of gene silencing and insertional mutagenesis techniques to reduce the expression of target genes (Abstract; pp. 1593-1594, “Limitations of gene-silencing approaches”; pp. 1594-1595, “The power of gene knockouts generated by insertional mutagenesis”).
The combination of Martin-Avila and Thorneycroft teaches a method for transforming a plant plastid with a DNA molecule comprising: introducing at least one DNA molecule comprising a first DNA sequence into a recipient cell of a non-photosynthetic plant comprising a loss-of-function mutation in each copy of a nuclear gene encoding a chloroplast-localized protein required for photosynthesis, wherein the DNA molecule encodes a protein having an enzymatic and/or biological activity of the chloroplast-localized protein required for photosynthesis and exposing the plant cell to light sufficient to support greening, and selecting a green photosynthetic plant cell comprising a transformed plant plastid containing a plastid genome comprising the DNA molecule from the plant cells exposed to said light, thereby transforming a plant plastid with a DNA molecule.
The level of ordinary skill in the plant biotechnology art is high as evidenced by both Martin-Avila and Thorneycroft. Though Martin-Avila does not teach a loss-of-function mutation in each copy of a nuclear gene, Thorneycroft teaches both RNAi-based gene silencing and insertional mutagenesis as alternatives for reducing the expression of a target gene. Therefore, absent some assertion and/or evidence from Applicant that the recited loss-of-function mutations produce some surprising or unexpected result in comparison to the RNAi-based loss of gene expression taught by Martin-Avila, the instant loss-of-function mutation is considered prima facie equivalent to RNAi-based loss-of-function taught by Martin-Avila. Furthermore, various techniques of gene disruption, including RNAi and targeted mutagenesis, are well-established and routine in the art and the selection of a preferred technique is simply a design choice parameter well within the means of one of ordinary skill in the art. Additionally, Thorneycroft teaches that there are limitations to gene disruption via gene silencing and suggests gene knockouts via insertional mutagenesis as an alternative method of reducing gene expression; therefore, Thorneycroft teaches gene silencing and gene knockouts as alternatives and provides motivation for one of ordinary skill in the art to knockout a gene that demonstrates a loss-of-function phenotype when repressed via silencing. Furthermore, maize is a global staple crop and one of ordinary skill in the art would be motivated to engineer maize plants with improved photosynthetic capacity. Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention without any surprising or unexpected results.
Regarding claim 2, in addition to the teachings discussed above, the cells of the non-photosynthetic plants taught by Martin-Avila are homozygous for the loss-of-function mutation in the nuclear gene.
Regarding claim 3, in addition to the teachings discussed above, Martin-Avila teaches modifying the chloroplast-localized protein to provide for improved photosynthesis (p. 2898, second paragraph).
Regarding claim 4, in addition to the teachings discussed above, Martin-Avila teaches wherein a selectable antibiotic-resistance conferring gene is absent from the DNA molecule. Because the claims are not limited to DNA molecules comprising no selectable antibiotic-resistance conferring gene, claim 4 is broad and is interpreted to encompass DNA molecules that lack any one known selectable antibiotic resistance-conferring gene even if it contains other selectable antibiotic resistance-conferring genes. However, even if Applicant intends to recite a DNA molecule comprising no selectable antibiotic resistance marker, the use and selection of antibiotic resistance markers is standard and routine for one of ordinary skill in the art and would not provide any surprising or unexpected results in comparison to the teachings of the prior art.
Regarding claims 5-6, in addition to the teachings discussed above, Martin-Avila teaches obtaining a homoplasmic transplastomic plant (p. 2912, right column, first full paragraph).
Regarding claim 7, in addition to the teachings discussed above, the DNA molecule taught by Martin-Avila comprises i) a promoter which is functional in plant plastids; ii) DNA encoding the protein having an enzymatic and/or biological activity of the chloroplast-localized protein; and iii) a DNA comprising a transcription terminator, wherein the promoter, the DNA encoding the protein, and the DNA comprising a transcription terminator are operably linked (p. 2912, “Plant Tissue Culture, Growth Conditions, and Transformation”).
Regarding claim 8, in addition to the teachings discussed above, the DNA molecule taught by Martin-Avila comprises DNA homologous to a target insertion site in the plastid genome (p. 2912, right column, first full paragraph; see: Svab and Maliga, p. 915, “pZS197 Plastid Vector.”).
Regarding claim 9, in addition to the teachings discussed above, Martin-Avila teaches selecting the green photosynthetic plant cell for insertion of the DNA molecule comprising DNA encoding the protein having an enzymatic and/or biological activity of the chloroplast-localized protein into a target insertion site in the plastid genome (p. 2912, “Plant Tissue Culture, Growth Conditions, and Transformation”).
Regarding claim 10, in addition to the teachings discussed above, Martin-Avila teaches wherein a selectable herbicide-resistance conferring gene is absent from the DNA molecule and wherein a selection for herbicide resistance is not performed. Furthermore, the use and selection of antibiotic resistance markers is standard and routine for one of ordinary skill in the art and would not provide any surprising or unexpected results in comparison to the teachings of the prior art.
Regarding claim 14, in addition to the teachings discussed above, Martin-Avila teaches wherein the recipient homozygous cells are leaves (p. 2912, right column, first full paragraph).
Regarding claim 15, in addition to the teachings discussed above, Martin-Avila teaches regenerating a transplastomic plant from the green photosynthetic plant cell (p. 2912, right column, first full paragraph).
Regarding claim 16, in addition to the teachings discussed above, Martin-Avila teaches wherein the recipient homozygous cells of the non-photosynthetic plant are located in a whole plant or a whole plant part (p. 2912, right column, first full paragraph).
Regarding claim 17, in addition to the teachings discussed above, Martin-Avila teaches selecting a sector of green plant cells because the plants selected by Martin-Avila comprises sectors of green plant cells (p. 2902, right column, first and second full paragraphs; p. 2903, Figure 3; pp. 2902-2904, “Differences in Leaf Rubisco Content alter Photosynthetic Potential and Plant Growth”).
Regarding claims 39-40, in addition to the teachings discussed above, Martin-Avila teaches wherein a selectable herbicide-resistance conferring gene is absent from the DNA molecule and wherein a selection for herbicide resistance is not performed. Furthermore, the use and selection of antibiotic resistance markers is standard and routine for one of ordinary skill in the art and would not provide any surprising or unexpected results in comparison to the teachings of the prior art.
Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention without any surprising or unexpected results.
12. Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Martin-Avila et al. (Plant Cell. 2020 Jul 9;32(9):2898–2916 (X)) as evidenced by Svab, Z., and Maliga, P. (Proceedings of the National Academy of Science. 1993; 90:913–917 (Y)), in view of Thorneycroft et al. (Journal of Experimental Botany. 2001; 52 (361):1593-1601 (Z)), as applied above to claims 1-10, 14-17, and 39-40, further in view of Sidorov et al. (US-9267144-B2, published 02/23/2016 (Applicant’s IDS)).
The teachings of Martin-Avila and Thorneycroft are as discussed above.
Regarding claim 18, in addition to the teachings discussed above, Martin-Avila teaches introducing a nuclear-encoded chloroplast-localized protein into a maize plant and a need to identify a plastome transformation strategy to produce increased Rubisco relative to non-photosynthetic control plants (p. 2912, left column, first full paragraph).
Martin-Avila does not teach transforming maize plastids.
However, Sidorov teaches a method for transforming maize plant plastids and that plastids are an attractive target for genetic engineering which can allow the accumulation of 20,000 copies of a DNA molecule of interest in a plant cell (Abstract; claims).
The combination of Martin-Avila, Thorneycroft, and Sidorov teaches a method for transforming a plant plastid with a DNA molecule comprising: introducing at least one DNA molecule comprising a first DNA sequence into a recipient cell of a non-photosynthetic plant comprising a mutation that results in a loss-of-function in both copies of a nuclear gene encoding a chloroplast-localized protein for photosynthesis, wherein the DNA molecule encodes a protein having an enzymatic and/or biological activity of the chloroplast-localized protein required for photosynthesis and exposing the plant cell to light sufficient to support greening, and selecting a green photosynthetic plant cell comprising a transformed plant plastid containing a plastid genome comprising the DNA molecule from the plant cells exposed to said light, thereby transforming a plant plastid with a DNA molecule, wherein the plant cell is a monocot plant cell or wherein the plant cell is a maize cell.
The level of ordinary skill in the plant biotechnology art is high as evidenced by Martin-Avila, Thorneycroft, and Sidorov. It would have been prima facie obvious for one of ordinary skill in the art to apply the teachings of Martin-Avila to the method and maize plant taught by Sidorov to engineer a maize plant having improved photosynthetic capacity. One of ordinary skill in the art would have been motivated to do so because both Martin-Avila and Sidorov teach plastids as an attractive target for genetic engineering to produce high levels of a transgene and Martin-Avila teaches a need to identify a plastome transformation strategy to produce increased Rubisco relative to non-photosynthetic control plants. Furthermore, maize is a global staple crop and one of ordinary skill in the art would be motivated to engineer maize plants with improved photosynthetic capacity. Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention with a reasonable expectation of success and without any surprising or unexpected results.
13. Claims 19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Martin-Avila et al. (Plant Cell. 2020 Jul 9; 32(9):2898–2916 (X)) as evidenced by Svab, Z., and Maliga, P. (Proceedings of the National Academy of Science. 1993; 90:913–917 (Y)), in view of Thorneycroft et al. (Journal of Experimental Botany. 2001; 52(361):1593-1601 (Z)), as applied above to claims 1-10, 14-17, and 39-40, further in view of Huang and Li (Plant Physiology. 2009 Jun; 150(2):636–645 (UU)).
The combined teachings of Martin-Avila and Thorneycroft are as discussed above.
Regarding claims 19 and 21, Martin-Avila does not teach PPR10, ATPC, or magnesium-chelatase subunit I (CHLI).
However, Huang teaches that CHLI catalyzes the first committed step towards chlorophyll photosynthesis and that loss of either of the two CHLI (i.e., CHLI1 and CHLI2) genes in Arabidopsis results in an albino phenotype that is rescued by the introduction of at least one DNA molecule comprising a CHLI1 gene into the genome of said plant (Abstract; p. 636, left column, first full paragraph).
The combination of Martin-Avila, Thorneycroft, and Huang teaches a method for transforming a plant plastid with a DNA molecule comprising: introducing at least one DNA molecule comprising a first DNA sequence into a recipient cell of a non-photosynthetic plant comprising a loss-of-function mutation in each copy of a nuclear gene encoding a chloroplast-localized protein required for photosynthesis, wherein the DNA molecule encodes a protein having an enzymatic and/or biological activity of the chloroplast-localized protein required for photosynthesis and exposing the plant cell to light sufficient to support greening, and selecting a green photosynthetic plant cell comprising a transformed plant plastid containing a plastid genome comprising the DNA molecule from the plant cells exposed to said light, thereby transforming a plant plastid with a DNA molecule wherein the nuclear gene or wild-type nuclear gene is a magnesium chelatase subunit I (CHLI) gene.
The level of ordinary skill in the plant biotechnology art is high as evidenced by Martin-Avila, Thorneycroft, and Huang. It would have been prima facie obvious to modify the teachings of Martin-Avila with the teachings of Thorneycroft for the reasons described above. It would also have been obvious to further modify the teachings of Martin-Avila by the teachings of Huang because Huang teaches that CHLI catalyzes the first committed step towards chlorophyll photosynthesis and that overexpression of a single copy of either CHLI1 or CHLI2 is sufficient to restore greening and photosynthesis to an albino plant comprising loss-of-function mutations in either gene. Because CHLI is an essential photosynthesis gene and mutations in either gene encoding subunit I can be complemented by the introduction of a transgenic copy of CHLI1, one of ordinary skill in the art would be motivated to complement a chli nuclear loss-of-function mutation by re-introducing the gene to the plastid genome. One of ordinary skill would have been motivated to do so because plant cells contain multiple plastids and therefore multiple plastid genomes. Thus, the introduction of a gene into the plastids results in the production of a higher number of copies of said gene that would be produced from the introduction of said gene into the nuclear genome. Therefore, introduction of a gene into the plastids would be reasonably expected to produce a greater level of expression of said gene than the introduction of that gene into the nuclear genome. Furthermore, given CHLI’s role in chlorophyll production, one of ordinary skill in the art would be motivated to express the protein at its site of action (i.e., in plastids). Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention without any surprising or unexpected results.
Examiner’s Comments
14. Regarding claim 4, if Applicant intends for claim 4 to recite a process in which no selectable antibiotic resistance marker is present, it is suggested Applicant amend “wherein a selectable antibiotic resistance-conferring gene is absent from” to “wherein no selectable antibiotic resistance-conferring gene is present within”, if Applicant deems the suggestion appropriate for the intended recitation. Likewise, regarding claim 40, if Applicant intends to recite a process in which no selectable herbicide resistance marker is present, it is recommended Applicant amend “wherein a selectable herbicide resistance-conferring gene is absent from” to “wherein no selectable antibiotic resistance-conferring gene is present within” , if Applicant deems the suggestion appropriate for the intended recitation.
15. Regarding claims 10 and 39, if Applicant intends to recite limitations wherein no selectable antibiotic and no herbicide-resistance genes are introduced into the recipient plant cell, it is recommended Applicant amend “wherein a selectable antibiotic resistance- or herbicide resistance- conferring gene is not introduced” to “wherein no selectable antibiotic resistance-conferring gene and no herbicide resistance-conferring gene are introduced” for the purpose of clarity. Similarly, if Applicant intends to recite limitations wherein selection for neither antibiotic resistance nor herbicide resistance is performed, it is recommended Applicant amend “wherein a selection for antibiotic resistance or herbicide resistance is not performed” to “wherein no selection for antibiotic resistance and no selection for herbicide resistance is performed”.
Conclusion
16. No claim is allowed.
Examiner’s Contact Information
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEQUANTARIUS JAVON SPEED whose telephone number is (703)756-4779. The examiner can normally be reached M-F; 9AM-5PM ET.
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/DEQUANTARIUS JAVON SPEED/Junior Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
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