Detailed Action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1, 3 and 5-20 are pending.
Claims 13-20 are withdrawn.
Claims 1, 3 and 5-12 are examined.
Withdrawn Objections
The objection to the Drawings is withdrawn in light of amendments made by Applicant to the Brief Description of the Drawings on 12/8/2025 to specify that the sequence of ZmDA1 of Figure 1B is SEQ ID NO: 2.
The objection to claims 1-3 and 5-12 is withdrawn in light of amendments made by Applicant.
Withdrawn rejections
The rejection of claims 1-3 and 5-12 under 35 USC 112(b) is withdrawn in light of amendments made by Applicant.
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, 3 and 5-12 remain rejected under 35 U.S.C. 103 as being unpatentable over Xie et al. (Xie et al. Plant Biotech Journal. 16(1):234-244. 2018) in view of Wang (Wang et al. African Journal of Biotech. 11(69):13387-13395. 2012) taken with evidence from NCBI Reference Sequence XP_008647311.1 (2020) and NCBI Reference Sequence XM_008649088.3 (2020).
Due to Applicant's amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 3/20/2025, as applied to claims 1-3 and 5-12.
Regarding claims 1 and 5, Xie teaches a modified corn plant comprising a genomic modification that reduces or disrupts the activity of ZmDA1 compared to the activity of ZmDA1 in a corn plant that lacks the modification (Summary, page 234). Xie teaches a single-base mutant was introduced into the ZmDA1 gene and expression was confirmed (page 235, left column) and therefore the modification is in a transcribable region of the ZmDA1 gene, i.e., an exon. Xie teaches there are at least 4 domains characteristic of the DA1 gene family (page 235, left column, paragraph 2). Additionally, Xie teaches a modification present in at least one allele of an endogenous ZmDA1 gene (page 235, left column, paragraph 3).
Regarding claim 3, Xie teaches a modification in an endogenous ZmDA1 gene encoding a protein that shares 100% sequence identity to SEQ ID NO:2 (Xie notes that ZmDA1 is GRMZM2G017845 on page 234). NCBI Reference Sequence XP_008647311.1 provides that GRMZM2G017845 is a gene synonym for the sequence encoding the protein. See alignment below. Further, regarding the newly added limitation of cliam 1 that the modification is located about 4216 nucleotides or more downstream from the 5’ end of reference sequence SEQ ID NO: 3, an alignment of the region of positions 4118 to 4333 of instant SEQ ID NO: 3 shows that GRMZM2G017845 shares 100% identity with this region. See second alignment provided below.
Regarding claims 6 and 8 and 11, Xie teaches the modified plant comprises increased grain yield by enhancing the grain weight and grain number (page 235, left column, paragraph 1).
Xie does not teach the modification being in a region of the gene comprising a coding sequence for a C-terminal DA1-like domain located about 4216 nucleotides or more downstream from the 5’ end of reference sequence SEQ ID NO: 3 (claim 1).
Xie does not teach a different, modification in a second allele of the ZmDA1 gene (claim 7).
Xie does not teach the elected 10 base pair deletion wherein the resulting nucleotide sequence is elected SEQ ID NO: 30 (claim 9).
Xie does not teach a modification comprised within a genomic region from nucleotide position 3434 to 6811 of SEQ ID NO: 3 (claims 10 and 12).
Wang teaches that multiple sequence alignment of ZmDA1 with related genes, DA1, DAR1 and DA1 protein-like revealed two ubiquitin interaction motifs (page 13389, paragraph bridging left and right columns).
At the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the teachings of Xie to comprise the mutation in a DA1-like domain of the ZmDA1 gene (claim 1). While it is not clear that the mutation of Xie is comprised by Applicant’s definition of a DA1-like domain within the ZmDA1 gene wherein the modification is located about 4216 nucleotides or more downstream from the 5’ end of the reference sequence SEQ ID NO: 3, the domains identified by Wang are interpreted as reading on a DA1-like domain and would have been obvious to try to modify the DA1-encoding sequence as taught by Xie with the expectation of disrupting ZmDA1 activity with the motivation of increasing grain yield. Similarly, introducing a different mutation into a second allele (claim 7), as well as the specified regions within the ZmDA1 gene (claims 9-10 and 12) would have been obvious design choices expected to disrupt the ZmDA1 activity with the motivation of increasing grain yield in the modified plant.
Alignment of instant SEQ ID NO: 2 with NCBI Reference Sequence XP_008647311, also known as “GRMZM2G017845” and “ZmDA1”, which was modified by Xie:
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550
547
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Greyscale
Alignment of instant SEQ ID NO: 3 with NCBI Reference Sequence XM_008649088.3, also known as “GRMZM2G017845”, “LIM3” and encoding “protein DA1 isoform X1”, which was modified by Xie:
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303
801
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Accordingly, the claimed invention is obvious in light of the teachings and suggestions made by the prior art.
Applicant’s arguments regarding rejection under 35 USC 103
Applicant argues in the Remarks filed 12/8/2025 that no claim is obvious because the cited documents fail to teach or suggest all features of any claim. Applicant argues that neither reference teaches a modification in a region of the ZmDA1 gene comprising a coding sequence for a C-terminal DA1-like domain located about 4216 nucleotides or more downstream from the 5’ end of the reference sequence of SEQ ID NO: 3 that reduces or disrupts the activity of ZmDA1. Applicant argues that Wang and Xie teach overexpression of a mutated ZmDA1 gene comprising a substitution at position 998 of the cDNA sequence leading to an R333K mutation in the protein.
This argument has been fully considered but is not persuasive. The DA1, which Xie teaches modifying to increase yield, is shown to have 100% identity with the sequence modified by Xie. Therefore, a modification in this region would have been obvious to try as a mere design choice with the expectation of successfully increasing yield in a corn plant. The teaching of “overexpression” does not teach away from a modification which would reduce or degrade the function of the DA1 protein as the overexpression was of the modified DA1 protein, not a wild-type which would have increased expression of protein without reduced or degraded protein activity.
Conclusion
Claims 1, 3 and 5-12 remain rejected.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R BYRNES whose telephone number is (571)270-3935. The examiner can normally be reached 9:00 - 5:00 M-F.
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/DAVID R BYRNES/Examiner, Art Unit 1662
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