Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Status of Claims
US Patent 11,286,497 issued on 3/9/22 from application 16/102,580 with claims 1-10. On 7/5/23, applicant filed a reissue application adding new claims 11-32.
On 7/8/26, the Office sent a notice informing applicant that there was no compliant sequence listing in the file.
On 8/24/26, applicant submitted a replacement sequence listing and an amendment to the specification. On 9/3/26, the Office generated a validation report finding the 8/24/26 sequence listing to be compliant.
Claims 1-32 are pending.
Specification
The disclosure is objected to because of the following informalities: the 7/5/23 insertion of a paragraph describing benefit claims has not been underlined in accordance with 37 CFR 1.173(d)(2). See MPEP 1453.
The 8/24/26 amendment to the specification regarding the sequence listing is noncompliant because it identifies material to be omitted using strikethrough rather than single brackets as required by 37 CFR 1.173(d)(2).
Replacement specification amendments are required.
Election by Original Presentation
37 CFR 1.176(b) permits the examiner to require restriction in a reissue application between claims newly added in a reissue application and the original patent claims where the added claims are directed to an invention that is separate and distinct from the invention(s) defined by the original patent claims. See MPEP 1450.
Further, in the reissue application, if a restriction requirement is made by the examiner, the original patent claims will be held to be constructively elected. Applicant may file divisional reissue applications directed to the constructively non-elected inventions. See MPEP 1450.
The reissue application contains claims drawn to multiple inventions:
Group I, claims 1-10, drawn to a transgenic plant comprising a promoter operably linked to a heterologous nucleic acid encoding a polypeptide comprising SEQ ID NO: 493 and a method for producing a transgenic plant comprising providing an expression vector comprising a promoter operably linked to a heterologous nucleic acid encoding a polypeptide with a ring-H2 zinc finger domain 100% identical to SEQ ID NO: 115.1 SEQ ID NO: 493 is Zea mays (corn) RING-H2 finger protein, UniProt accession number np_001151741.2.
Group II, claims 11-32, drawn to an expression-vector construct comprising a promoter operably linked to a heterologous nucleic acid that has at least 95% sequence identity to SEQ ID NO: 86 or 294. The sequence listing identifies SEQ ID NOs: 86 and 294 as being of Solanum tuberosum (potato) origin.
Inventions I and II are unrelated. Inventions are unrelated if it can be shown that they are not disclosed as capable of use together and they have different designs, modes of operation, and effects (MPEP § 802.01 and § 806.06). Here, the different inventions are drawn to distinct, non-overlapping subject matter. The expressed proteins are from two different biological species (Zea mays and Solanum tuberosum). The expressed sequences themselves are unrelated. SEQ ID NO: 493 is only 31.3% identical to SEQ ID NO: 86, while SEQ ID NO: 493 is only 29.7% identical, and there are no clear preserved sequence motifs. (See appendix at end of Office action for sequence alignments.)
Claims 11-32 are withdrawn from consideration as being drawn to constructively non-elected inventions. Claims 1-10 are under examination.
Reissue Oath/Declaration
The reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
The 7/5/23 declaration merely reproduces the text of patent claim 1. It does not explain why there is an error by reason of the patentees claiming more or less than they had the right to claim in the patent.
Claim Rejections—35 U.S.C. 251
Claims 1-10 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Conclusion
Claims 1-10 are rejected. Claims 11-32 are withdrawn from consideration.
Maintenance Fees
Applicant is reminded of the requirement to pay all applicable maintenance fees on the original patent. See MPEP 1415.01.
Duty to Disclose
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,286,497 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lora Driscoll, whose telephone number is (571)272-1928. The examiner can normally be reached M-F 7:00-4:00 p.m. ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle, can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Lora E Barnhart Driscoll/Patent Reexamination Specialist, Art Unit 3991
Conferees:
/KSO/
Patent Reexamination Specialist, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991
APPENDIX
Sequence alignment: SEQ ID NO: 493 AND SEQ ID NO: 86
Query Match 31.3%; Score 236; DB 1; Length 184;
Best Local Similarity 36.4%;
Matches 51; Conservative 27; Mismatches 54; Indels 8; Gaps 4;
493 1 GISSMPAPEDS-LLGFVLYNTAASVAILAGLVRAALLFLGLAAAA-EDEEPRQQAEAVTV 58
|:| | | |: :|| :| ||| |::|: ::|: | :|: |: || :::
86 2 GLSQYPTPADAGVLGVILVNTAISISIIKEILRSILRVIGIRIASWEDYSVEGPLDSLEC 61
493 59 TAVGP-SLADRFRSRFRPSRY-----GRRRGGDCRVCLVRFETESVVQRLPCGHLFHRAC 112
| | : ||:| | :| ||| :|| :: | | |||:||: |
86 62 RGSPPESYMEEFRNRTPAFCYDSLCISNHPEQECSVCLTKFEPDAGVNSLSCGHVFHKLC 121
493 113 LETWIDYDHATCPLCRHRLL 132
|| |: | | ||||||: |:
86 122 LEKWLRYWHVTCPLCRNYLM 141
Search completed: September 28, 2026, 12:15:13
Job time : 1 secs
Sequence alignment: SEQ ID NO: 493 AND SEQ ID NO: 294
Query Match 29.7%; Score 224; DB 1; Length 152;
Best Local Similarity 32.3%;
Matches 51; Conservative 27; Mismatches 56; Indels 24; Gaps 4;
493 1 GISSMPAPEDS-LLGFVLYNTAASVAILAGLVRAALLFLGLAAAAEDE----------EP 49
|:| | | |: :| :| ||| |::|: :||: | :|: |: |: |
294 2 GLSQYPTPADAGVLCVILVNTAISISIVKEMVRSILHVIGIHIASWDDYSIEGSLESFEC 61
493 50 RQQAEAVTVTAVGPSLADRFRSRFRPSRY-----GRRRGGDCRVCLVRFETESVVQRLPC 104
|: : | : ||| || :| ||| || :: : | |
294 62 RR--------SPSESYMEEFRSHTPAIRYDSICISNHAEKECSVCLTDFEPDAEINHLSC 113
493 105 GHLFHRACLETWIDYDHATCPLCRHRLLPPAAAADEVP 142
||:||: ||| |: | : ||||||: :: | |
294 114 GHVFHKHCLEKWLKYWNVTCPLCRNYMMSQEGEEDTCP 151
1 SEQ ID NO: 115 is 100% identical to amino acids 85-128 of SEQ ID NO: 493.
Prosecution Insights