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 the Claims
Clams 13-14 are cancelled.
Claims 1-12 and 15-20 are pending.
Claims 1-12 and 15-20 are examined herein.
Claims 1-12 and 15-20 are rejected.
Priority
Application No. 18/248,017 filed on 04/05/2023 is a 371 of PCT Application No.
PCT/US2021/053991 filed on 10/07/2021 which claims priority to provisional Application
No. 63/088,800 filed on 10/07/2020.
Claims 1-12 and 16-22 receive priority to provisional Application No. 63/088,800 filed on 10/07/2020.
Because provisional Application No. 63/088,800 filed on 10/07/2020 does not
disclose a Glycine max fatty-acid-desaturase 3 (GmFADS3) gene, a Cannabis sativa
phytoene desaturase (CsPDS) gene, or a Solanum tuberosum phytoene desaturase
(StPDS) gene, claim 15 does not receive priority to provisional Application No.
63/088,800, but does receive priority to PCT Application No. PCT/US2021/053991 filed
on 10/07/2021.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites “wherein the zip-code element includes cis-acting signals that permit the genome editing reagent mRNA sequence to transport through the phloem to the cultured rootstock tissue”. However, the invention is related to transporting mRNA through the phloem to new scion growth (claim 21, spec. ¶0036, and Fig. 2) It is interpreted that Applicant intended for the claim to read “wherein the zip-code element includes cis-acting signals that permit the genome editing reagent mRNA sequence to transport through the phloem of the cultured rootstock tissue”. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: Claim 17 recites “…such that the TALEN mRNA moves from transgenic rootstock to the new growth from the grafted plant cause the gene edits in the new growth in the absence of transgenic DNA”. Applicants’ amendments still present a grammatical error. The claims should read “…such that the TALEN mRNA moves from transgenic rootstock to the new growth from the grafted plant and causes the gene edits in the new growth in the absence of transgenic DNA”, similarly to how it is written in claim 3. Appropriate correction is required.
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 1-4, 8-10, 12, and 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kragler (US Patent No. US-10,351,865-B2) and Cornish (US Patent Application Publication No. US-20170314033-A1).
This is a modified rejection from the previous rejection set forth in the Office Action dated 03/09/2026, necessitated by Applicant’s amendments.
Regarding claims 1 and 12, Kragler teaches an invention that relates to a method for changing the intercellular mobility of an mRNA (title). In a working example, Kragler teaches a wild-type scion grafted onto a transgenic rootstock transformed via Agrobacterium tumefaciens-mediated transformation with a DNA construct comprising a modified DMC1 gene fused to StBel5 (a zip code element that includes cis-acting signals that permit the mRNA sequence to transport through phloem according to the instant specification, ¶0026) (Example 1, Table 1). Kragler teaches a DNA construct may be integrated into the genome of an organism by means of bacteria such as Agrobacterium for plants (Col. 10, lines 8-17). Regarding the graft method, Kragler teaches a cut was made on the rootstock stem with a matching cut at the scion base, and the surfaces of both cuts were immediately pressed together and the junction was tightly wrapped with parafilm (Example 1, Col. 22, lines 14-29). Additionally, Kragler teaches testing emerging flower samples for transcript by RT-PCR (Col. 22, lines 39-42) (i.e. screening new growth), and teaches the modified DMC1::StBel5 mRNA was mobile across the graft junction from the transgenic rootstock to the nontransgenic scion (Col. 30, lines 28-36) (i.e. the mRNA moved from rootstock through phloem to new growth of the grafted plant).
Regarding claim 2, Kragler teaches a wild-type scion grafted onto a transgenic rootstock transformed with a DNA construct comprising a modified DMC1 gene fused to StBel5 (a zip code element according to the instant specification) (Example 1, Table 1). Kragler teaches a cut was made on the rootstock stem with a matching cut at the scion base, and the surfaces of both cuts were immediately pressed together and the junction was tightly wrapped with parafilm (Example 1, Col. 22, lines 14-29). Kragler also teaches a DNA construct may be integrated into the genome of an organism by means of bacteria such as Agrobacterium for plants (Col. 10, lines 8-17).
Regarding claim 3, Kragler teaches a DNA construct may be integrated into the genome of an organism by means of bacteria such as Agrobacterium for plants (Col. 10, lines 8-17). Kragler also teaches StBEL5 fusion transcripts are mobile by observing wild-type plants grafted onto DNDMC1::StBEL5 stocks produced a significantly higher number of misshaped pollen (19.7±14.3%) than wild-type controls, and the presence of fusion transcript was confirmed by RT-PCR in closed wild-type flowers (i.e. the mRNA sequence moves for the transgenic rootstock to the grafted plant and alters the phenotype of the new growth in the absence of transgenic DNA) (Fig. 2E, Col. 30, lines 28-34).
Regarding claim 4, Kragler teaches testing emerging flower samples for transcript by RT-PCR (Col. 22, lines 39-42) (i.e. screening new growth), and teaches the modified DMC1::StBel5 mRNA was mobile across the graft junction from the transgenic rootstock to the nontransgenic scion (Col. 30, lines 28-36), and the presence of fusion transcript was confirmed by RT-PCR in closed wild-type flowers (i.e in the absence of transgenic DNA) (Fig.2E, Col. 30, lines 28-34).
Regarding claim 9, Kragler teaches the expression construct included a zip-code element and a pMDC7 promoter (Col. 29, 1-19).
Regarding claims 17 and 21, Kragler teaches the DNDMC1 mRNA was fused to the mobile full-length StBEL5 transcript and the fused modified DNDMC1::StBel5 mRNA was mobile across the graft junction from the transgenic rootstock to the nontransgenic scion and altered pollen phenotype as expected (Col. 30, lines 6-10 and 28-36), and the presence of fusion transcript was confirmed by RT-PCR in the emerging, closed wild-type flowers (i.e. the mRNA was transported from the rootstock to the new growth, and was present and effectively altered the phenotype of the new growth in the absence of transgenic DNA) (Col. 22, lines 39-42, Fig. 2E, Col. 30, lines 28-34).
Regarding claim 18, Kragler teaches the scion is wild type and the pollen is abnormal, representative of transport of the transgenic mRNA from the transgenic rootstock to the wild-type scion (Col. 30, lines 28-36).
Regarding claim 20, Kragler teaches the DNDMC1 mRNA was fused to the mobile full-length StBEL5 transcript and the fused modified DMC1::StBel5 mRNA was mobile across the graft junction from the transgenic rootstock to the nontransgenic scion (Col. 30, lines 6-10 and 28-36). The StBel5 zip-code element is reasonably interpreted as a zip code element that is non-native to the mRNA coding sequence.
Regarding claim 22, Kragler teaches the expression construct includes a DNDMC1 mRNA coding sequence and a StBel5 zip-code element (i.e. reasonably interpreted as a zip code element that is non-native to the mRNA coding sequence) (Example 1).
However, Kragler does not explicitly teach in a single embodiment:
The mRNA is genome editing mRNA (or TALEN mRNA according to claim 12), and screening new growth from the grafted plant for gene edits resulting from genomic editing by the expression construct (remaining limitations of claim 1, 3, 4, and 12). This is because the mRNA being transferred from the transgenic rootstock to the nontransgenic scion was not mRNA of genome-editing reagents.
The transgenic host plant was infected and generated using Rhizobium rhizogenes (as required by claims 1-3 and 12). This is because the working example used Agrobacterium tumefaciens to infect a hot plant and produce the transgenic plant used for rootstock material.
wherein the genome editing reagent mRNA in the expression construct is a transcription activator like effector nuclease (TALEN) mRNA, and wherein screening the new growth from the grafted plant includes sampling new shoot growth for the TALEN mRNA and/or protein using end-point reverse transcriptase PCR (RT- PCR) or western blot (claim 8)
wherein the expression construct includes: the genome editing mRNA coding sequence which comprises a nuclease including transcription activator like effector nuclease or Crispr associated protein 9 (remaining limitation of claim 9)
wherein the promoter is 35S (claim 10)
wherein new growth from the grafted plant includes new shoot tissue (claim 19)
the zip-code element is non-native to the gene editing reagent (remaining limitation of claims 20 and 22) This is because the mRNA is not a gene editing reagent mRNA or TALEN mRNA.
the zip-code element permits the gene editing reagent/ TALEN mRNA coding sequence to transport through the phloem and thereby causing the gene editing reagent mRNA to move from transgenic rootstock to the new growth from the grafted plant and to allow for the gene edits in the new growth via the gene editing reagent mRNA (remaining limitation of claims 17 and 21). This is because the mRNA is not a gene editing reagent or TALEN mRNA.
Regarding the remaining limitations of claims 1 and claims 3, 4, 9, 17, and 20-22, in an alternative embodiment, Kragler teaches a non-endogenous gene for which it is interesting to render its mRNA transcript mobile in an organism is the RNA-guided endonuclease that is Cas9 (i.e. a genome editing reagent) (Col. 13, lines 8-10), and Kragler teaches the RNA-guided endonuclease gene can be encoded by a DNA construct that is integrated into the genome of one plant (i.e. transgenic rootstock), onto which another plant is subsequently grafted (i.e. nontransgenic scion), and the RNA- guided endonuclease can move across the graft junction into the cells of the scion (Col. 14, lines 42-51). Kragler further teaches the RNA-guided endonuclease protein can be translated and modify a chromosomal sequence in the scion cells (Col. 15, lines 51-56), and RNA- guided endonuclease protein may comprise a marker domain such as a fluorescent marker or epitope tags (Col. 15, lines 63-67 and Col. 16, lines 1-3), which are known in the art to be used for screening/ detection. In another alternative embodiment, Kragler also teaches TALEN is an alternative method to CRISPR/Cas9 (Col. 7, lines 29-30). Furthermore, in analogous art Cornish teaches A. tumefaciens and A. rhizogenes are alternative plant pathogenic soil bacteria which genetically transform plant cells, and teaches the Ti and Ri plasmids of A. tumefaciens and A. rhizogenes, respectively, carry genes responsible for genetic transformation of the plant (¶0096).
Regarding the remaining limitation of claim 2, in analogous art Cornish teaches A. tumefaciens and A. rhizogenes are alternative plant pathogenic soil bacteria which genetically transform plant cells, and teaches the Ti and Ri plasmids of A. tumefaciens and A. rhizogenes, respectively, carry genes responsible for genetic transformation of the plant (¶0096).
Regarding claim 8, as previously described Kragler teaches testing emerging
flower samples for transcript by RT-PCR (Col. 20, lines 39-42) (i.e. screening new
growth for mRNA from expression construct), as well as using an RNA-guided
endonuclease protein to modify a chromosomal sequence in the scion cells (Col. 15,
lines 51-56). In another alternative embodiment, Kragler also teaches TALEN is an alternative method to CRISPR/Cas9 (Col. 7, lines 29-30).
Regarding claim 10, in an alternative embodiment, Kragler teaches suitable
constitutive promoters for plants include the 35S cauliflower mosaic virus (CaMV)
promoter (Col. 9, lines 24-26).
Regarding claim 19, Kragler teaches in an alternative embodiment after successful grafting, root and shoot materials were harvested separately for RT-PCR detection of GUS transcripts (Col. 33, lines 7-16).
One of ordinary skill in the art would have been motivated to combine the limitations as taught by Kragler into a single embodiment to arrive at Applicant’s claimed inventions because each limitation is explicitly taught as an alternative embodiment of the invention. It would therefore be obvious to combine the methods taught by Kragler and graft a StBEL5-fused CRISPR or TALEN-expressing rootstock to a WT scion for the purpose of providing a “DNA-free” delivery method of CRISPR-Cas components into intact plants that does not involve the introduction of DNA constructs into the cell or organism (Col. 13, lines 60-63). One having ordinary skill in the art would have a reasonable expectation of success because Kragler teaches StBel5 fused to a transgene can successfully transport mRNA across a graft junction from a transgenic rootstock to a WT scion (Example 1, Col. 30, lines 28-36). Furthermore, It would therefore have been obvious to a person of ordinary skill in the art to modify the inventions of Kragler to include the limitations of Cornish to arrive at the instantly claimed method with a reasonable expectation of success because both
teachings are directed to producing transgenic plants, and the incorporation of using
Rhizobium rhizogenes rather than Agrobacterium tumefaciens to produce the transgenic plants presents no special technical obstacles. One having ordinary skill in the art would have been motivated to do so because Cornish teaches Rhizobium rhizogenes and Agrobacterium tumefaciens as alternative methods to produce transgenic plants, and it would be prima facie obvious to use the known alternative bacterium for the same purpose.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kragler and Cornish as applied to claim 1 above, and further in view of Xu (Xu, H., Iwashiro, R., Li, T., & Harada, T. (2013). Long-distance transport of Gibberellic Acid Insensitive mRNA in Nicotiana benthamiana. BMC Plant Biology, 13(1), 165.).
This is a modified rejection from the previous rejection set forth in the Office Action dated 03/09/2026, necessitated by Applicant’s amendments.
Claim 5 is drawn to the method of claim 1, wherein the zip-code element comprises a gibberellic acid insensitive (GAI) mRNA which includes the cis-acting signals.
Regarding claim 5, Kragler and Cornish teach the limitations of claim 1 as set forth in the previous obviousness rejection. The teachings of Kragler and Cornish as they are applied to claim 1 are set forth previously herein and are incorporated by reference.
However, Kragler and Cornish do not explicitly teach wherein the zip-code element comprises a gibberellic acid insensitive (GAI) mRNA which includes the cis-acting signals.
In analogous art, Xu teaches an Arabidopsis thaliana gibberellic acid insensitive (Atgai) mRNA has been shown to be transportable through phloem (p. 2, section titled Atgai transgenic tobacco exhibits dwarfism and lower sensitive to GA3), and further teaches designing a construct with Atgai fused to a t7 epitope (Fig. 1). Xu teaches expressing the construct in transgenic stock grafted to WT-scion which transported the mRNA through the phloem and into the WT scion of the Nicotiana graft where the translated product was also found (abstract, p. 3 section titled Detection of Atgai-T7 protein in the scion of the WT/CgT combination).
It would therefore have been obvious to a person of ordinary skill in the art to
modify the inventions of Kragler and Cornish to include the limitations of Xu to arrive at the instantly claimed method with a reasonable expectation of success because both
inventions are directed to grafting plants, Xu teaches an alternative zip-code element that can transport mRNA across a graft junction to WT scion, and the incorporation of one over the other in the construct presents no special technical obstacles. One having
ordinary skill in the art would have been motivated to do so because it would be prima facie obvious to use one zip code element over another for the same purpose.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kragler and Cornish as applied to claim 1 above, and further in view of Lewis (Lewis, W.J... & Alexander, D. (2008). Grafting and budding: A practical guide for fruit and nut plants and
ornamentals. Landlinks Press) and Practical Gardening (Practical Gardening, Adenium Obesum (Desert Rose) Wedge Grafting, https://www.practicalgardening.blackdovenest.com/2013/08/adenium-obesum-desert-rose-wedge.html , published online at least by 07/01/2016 (wayback machine)).
This is a modified rejection from the previous rejection set forth in the Office Action dated 03/09/2026, necessitated by Applicant’s amendments.
Claim 6 is drawn to the method of claim 1, wherein making the cut through the at least one rootstock stem includes making a first angled vertical cut in the middle of a cut surface through the at least one rootstock stem to create a V-cut, the method further including making a second angled cut comprising a spear cut end formed by making 60-degree cuts on either side of the at least one scion stem, wherein the spear cut end in the at least one scion stem aligns with vascular tissue within the V-cut of the at least one rootstock stem.
Regarding claim 6, Kragler and Cornish teach the limitations of claim 1 as set forth in the previous obviousness rejection. The teachings of Kragler and Cornish as they are applied to claim 1 are set forth previously herein and are incorporated by reference. Specifically with regard to the grafting cut, Kragler also teaches making a slanted or angled cut (Col. 22, lines 24-30).
However, Kragler and Cornish do not explicitly teach wherein making the cut through the at least one rootstock stem includes making a first angled vertical cut in the middle of a cut surface through the at least one rootstock stem to create a V-cut, the method further including making a second angled cut comprising a spear cut end formed by making 60-degree cuts on either side of the at least one scion stem, wherein the spear cut end in the at least one scion stem aligns with vascular tissue within the V-cut of the at least one rootstock stem.
In analogous art, Lewis teaches a wedge/ cleft graft where the rootstock plant has a cleft (or inverted wedge) cut into the shoot, and the scion has a wedge that fits into the cleft of the rootstock shoot (p. 28- p. 30, and Fig. 18). In other analogous art, Practical Gardening teaches the wedge graft comprises a V-shaped groove in the stock and a v-shaped end of the scion (p. 1). In the first image below the title and the image of the v-cut or wedge graft made on both Adenium scion and Adenium stock on p.2, the cuts appear to be at approximately 60º angles on either end of the scion. Additionally, the cut end of the scion appears to align with vascular tissue within the v-cut of the at least one rootstock scion.
It would therefore have been obvious to a person of ordinary skill in the art to
modify the inventions of Kragler and Cornish to include the limitations of Lewis and Practical Gardening to arrive at the instantly claimed method with a reasonable expectation of success because both teachings are directed to grafting plants, and incorporating the wedge style graft of Lewis and Practical Gardening into the method of Kragler presents no special technical obstacles. One having ordinary skill in the art would have been motivated to do so because Lewis teaches a wedge graft is an easy graft to do, and therefore is often the initial choice of novice grafters as taught by Lewis (p. 28, 4 5), and it would be obvious to use the wedge graft as an alternative method to the angle graft for the same purpose. The ordinary artisan would make the specific v-cut in the stock and spear cut with cuts at 60-degrees because Practical Gardening teaches this is another way to make a wedge cut, as is taught by Lewis, and would do it would be obvious to modify the wedge graft to include the specific cuts taught by Practical Gardening as an alternative method to the angle graft taught by Kragler or the wedge graft taught by Lewis for the same purpose
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kragler and Cornish as applied to claim 1 above, and further in view of Lewis (Lewis, W.J... & Alexander, D. (2008). Grafting and budding: A practical guide for fruit and nut plants and
ornamentals. Landlinks Press).
This is a modified rejection from the previous rejection set forth in the Office Action dated 03/09/2026, necessitated by Applicant’s amendments.
Claim 7 is drawn to the method of claim 1, wherein making the cut through the at
least one rootstock stem includes making a first wedge-shaped cut through the at least
one rootstock stem, the method further including making a second wedge-shaped cut
through the at least one scion stem, wherein the second wedge-shaped cut through the
at least one scion stem is substantially similar to the first wedge-shaped cut through the
at least one rootstock stem.
Regarding claim 7, Kragler and Cornish teach the limitations of claim 1 as set forth in the previous obviousness rejection. The teachings of Kragler and Cornish as they are applied to claim 1 are set forth previously herein and are incorporated by reference. Specifically with regard to the grafting cut, Kragler also teaches making a slanted or angled cut (Col. 22, lines 24-30).
However, Kragler and Cornish do not explicitly teach wherein making the cut through the at least one rootstock stem includes making a first wedge-shaped cut through the at least one rootstock stem, the method further including making a second wedge-shaped cut through the at least one scion stem, wherein the second wedge-shaped cut through the at least one scion stem is substantially similar to the first wedge-shaped cut through the at least one rootstock stem.
In analogous art, Lewis teaches a wedge/ cleft graft where the rootstock plant
has a cleft (or inverted wedge) cut into the shoot, and the scion has a wedge that fits
into the cleft of the rootstock shoot (p. 28- p. 30, and Fig. 18).
It would therefore have been obvious to a person of ordinary skill in the art to
modify the inventions of Kragler and Cornish to include the limitations of Lewis to arrive at the instantly claimed method with a reasonable expectation of success because both
inventions are directed to grafting plants, and incorporating the wedge style graft into
the method of Kragler presents no special technical obstacles. One having
ordinary skill in the art would have been motivated to do so because Lewis teaches it is
an easy graft to do, and therefore is often the initial choice of novice grafters as taught
by Lewis (p. 28, 4 5), and it would be obvious to use the wedge graft as an alternative
method to the angle graft for the same purpose.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Kragler and Cornish as applied to claims 1 and 9 above, and further in view of Gal-On (US Patent Application Publication No. US-20080016593-A1)
This is a modified rejection from the previous rejection set forth in the Office Action dated 03/09/2026, necessitated by Applicant’s amendments.
Claim 11 is drawn to the method of claim 9, wherein the promoter is nopaline
synthase (Nos).
Regarding claim 11, Kragler and Cornish teach the limitations of claims 1 and 9 as set forth in the previous obviousness rejection. The teachings of Kragler and Cornish as they are applied to claims 1 and 9 are set forth previously herein and are incorporated by reference.
However, Kragler and Cornish do not explicitly teach wherein the promoter is
nopaline synthase (Nos) (claim 11).
In analogous art, Gal-On teaches plant expressible promoters are known in the
art, and specifically teaches use of the nopaline synthase (nos) promoter (10132).
It would therefore have been obvious to a person of ordinary skill in the art to
modify the inventions of Kragler and Cornish to include the limitations of Gal-On to arrive at the instantly claimed method with a reasonable expectation of success because both inventions are directed to grafting plants, and incorporating the constitutive nopaline synthase promoter into the method of Kragler and Cornish presents no special technical obstacles. One having ordinary skill in the art would have been motivated to do so because Gal-On teaches the nopaline synthase (Nos) promoter is an alternative to the 35S promoter taught by Kragler (¶0132), and it would be obvious to use the known alternative promoter that is Nos for the same purpose.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kragler and Cornish and applied to claim 12, and further in view of Banfalvi (Banfalvi, Z., Csakvari, E., Villanyi, V., & Kondrak, M. (2020). Generation of transgene-free PDS mutants in potato by Agrobacterium-mediated transformation. BMC biotechnology, 20, 1-10).
This is a modified rejection from the previous rejection set forth in the Office Action dated 03/09/2026, necessitated by Applicant’s amendments.
Claim 15 is drawn to the non-naturally occurring plant, plant cell, or plant part of claim 12, wherein the TALEN mRNA coding sequence targets includes a Glycine max fatty-acid-desaturase 3 (GmFAD3) gene, a Cannabis sativa phytoene desaturase (CsPDS) gene, or a Solanum tuberosum phytoene desaturase (StPDS) gene.
Regarding claim 15, Kragler and Cornish teach the limitations of claim 12 as set forth in the previous obviousness rejection. The teachings of Kragler and Cornish as they are applied to claim 12 are set forth previously herein and are incorporated by reference.
However, Kragler and Cornish do not explicitly teach wherein the mRNA coding sequence includes a Glycine max fatty-acid-desaturase 3 (GmFAD3) gene, a Cannabis sativa phytoene desaturase (CsPDS) gene, or a Solanum tuberosum phytoene desaturase (StPDS) gene (claim 15).
In analogous art, Banfalvi teaches generation of transgene-free PDS mutants in potato by Agrobacterium-mediated transformation (title) using a vector with the PDS coding sequence (i.e. StPDS) (Fig. 1).
It would therefore have been obvious to a person of ordinary skill in the art to modify the invention of as taught by Kragler and Cornish to include the limitations of Banfalvi to arrive at the instantly claimed method with a reasonable expectation of success because both inventions are directed to agrobacterium mediated transformation of plants with genome editing reagents, and targeting the specific gene that is StPDS taught by Banfalvi presents no special technical obstacles. One having ordinary skill in the art would have been motivated to do so because Banfalvi teaches mutating the StPDS gene, a model gene, generates visible albinos for easy identification of PDS null mutants (Fig. 3, and Discussion section, ¶1)
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kragler and Cornish as applied to claim 12 above, and further in view of Stadler (Stadler, R., & Sauer, N. (2019). The AtSUC2 promoter: a powerful tool to study phloem physiology and development. In Phloem: Methods and Protocols (pp. 267-287). New York, NY: Springer New York).
This is a modified rejection from the previous rejection set forth in the Office Action dated 03/09/2026, necessitated by Applicant’s amendments.
Claim 16 is drawn to the non-naturally occurring plant, plant cell, or plant part of claim 12, wherein the expression construct includes a phloem-specific promoter upstream from the TALEN mRNA coding sequence.
Regarding claim 16, Kragler and Cornish teach the limitations of claim 12 as set forth in the previous obviousness rejection. The teachings of Kragler and Cornish as they are applied to claim 12 are set forth previously herein and are incorporated by reference.
However, Kragler and Cornish do not explicitly teach wherein the expression construct includes the promoter comprising a phloem-specific promoter upstream from the mRNA coding sequence.
In analogous art, Stadler teaches transgene expression driven by the phloem specific SUC2 promoter resulted in movement of the transgene from transgenic rootstock to wild-type scion shoots (p. 270, ¶1).
It would therefore have been obvious to a person of ordinary skill in the art to modify the inventions of Kragler and Cornish to include the limitations of Stadler to arrive at the instantly claimed method with a reasonable expectation of success because Stadler teaches the phloem-specific promoter is capable of transporting proteins from transgenic roots to nontransgenic shoots, and incorporation of the phloem specific promoter into the expression construct to drive transgene expression could be achieved by a person of ordinary skill without encountering any special technical obstacles. One having ordinary skill in the art would have been motivated to do so because Stadler teaches the SUC2 promoter is involved in phloem loading and unloading, and teaches a method of transporting proteins from transgenic roots to observe protein expression in nontransgenic shoots (abstract, p. 270, ¶1).
Response to Arguments
Applicant argues beginning on p. 8 of remarks dated 07/09/2026 the
following arguments:
First, Applicant submits that Kragler does not teach or suggest an expression construct includes an mRNA coding sequence and a zip-code element. More specifically, independent claims 1 and 12 recite the specific combination of an expression construct that includes both a genome editing mRNA coding sequence and a zip-code element for genome editing reagent delivery through grafted plants, which is not taught or suggested by Kragler. Kragler addresses a fundamentally different technique which addresses a different technical problem; namely, Kragler focuses on methods for changing intercellular mobility of mRNA by modifying tRNA-like structures. Kragler does not teach or suggest using an expression construct that includes both a genome editing reagent mRNA coding sequence and a zip-code element for the specific purpose of grafted plant genome editing. Thus, Kragler fails to teach or suggest the use of these elements in expression construct or how to design such constructs for achieving DNA-free genome editing in grafted plants as claimed.
Examiner’s Response:
While much of Kragler is directed to changing intercellular mobility of mRNA by modifying tRNA-like structures, Kragler also does in fact teach in a working example an expression construct that includes an mRNA coding sequence and a zip-code element, and the mRNA:zip code element fusion is able to transport across a graft junction from transgenic rootstock to WT scion (Fig. 1A, Col 29. lines 1-11, and Col. 30 lines 28-36 ). The limitation that is lacking from this embodiment of Kragler is that the mRNA coding sequence is a genome editing reagent mRNA coding sequence. However, Kragler also does in fact explicitly suggest that the construct encode a genome editing mRNA. That is, Kragler teaches a non-endogenous gene for which it is interesting to render its mRNA transcript mobile in an organism is the RNA-guided endonuclease that is Cas9 (i.e. a genome editing reagent) (Col. 13, lines 8-10), and Kragler teaches the RNA-guided endonuclease gene can be encoded by a DNA construct that is integrated into the genome of one plant (i.e. transgenic rootstock), onto which another plant is subsequently grafted (i.e. nontransgenic scion), and the RNA- guided endonuclease can move across the graft junction into the cells of the scion (Col. 14, lines 42-51). Kragler further teaches the RNA-guided endonuclease protein can be translated and modify a chromosomal sequence in the scion cells (Col. 15, lines 51-56). For these reasons, Applicant’s argument is not persuasive.
Applicant argues beginning on p. 8 of remarks dated 07/09/2026 the
following arguments:
Further, a POSA would not be motivated to combine the alleged teachings of Kragler to obtain the claimed invention with a reasonable expectation of success and without undue experimentation. As the Office Action acknowledges, Kragler discloses a number of limitations in alternative embodiments, without teaching or suggesting how the methods work or what is the outcome of following such alternative methods. Even assuming, arguendo, a POSA were to combine the alternative embodiments of Kragler into a single embodiment, Kragler still does not teach, suggest, or provide any guidance or motivation for choosing particular limitations from a number of limitations in the alternative embodiments and for combining them into a single embodiment, and to include a zip code element to arrive at the claimed invention with a reasonable expectation of success and without undue experimentation. In particular, the field of gene editing is unpredictable and any proposed modification to the expression construct for gene editing would not yield predictable results. The POSA would recognize that changes to the expression construction, including the addition of a zip code element, may bring about different effects and functionality. Thus, the POSA would need to experimentally assess and determine whether and how to combine the disparate teachings in alternative embodiments, and without any guidance, in Kragler to arrive at the claimed invention. As such, the alleged combination would require undue experimentation and the results are unexpected, which demonstrates that the alleged teaching of the cited reference is not an obvious combination.
Examiner’s Response:
For the reasons described above, it would be prima facie obvious to combine the teachings. Additionally, DNA construct design and genome editing using CRISPR and/or TALENs of, e.g. especially of known genes in model species for proof of concept, is routine in the art and could be achieved with a reasonable expectation of success. The only skill the ordinary artisan would have to do that is not directly taught by Kragler is design the DNA construct so as to fuse the zip code element(s) to genome editing reagent coding sequences rather than the DNDMC1 coding sequence. The ordinary artisan would be capable of doing so without encountering any special technical difficulties, and have would expect the genome editing reagent mRNA to transport through the phloem to the scion and produce translated products similar to as was observed in the DNDMC1:StBEL5 grafted plants, especially without evidence to the contrary. The Examiner’s position is that the ordinary artisan would have a reasonable expectation of success that the ordinary artisan could design a construct that would transport genome editing reagents to scions for translation of the mRNA and gene-editing. For this reason, Applicant’s arguments are not found persuasive.
Applicant argues beginning on p. 9 of remarks dated 07/09/2026 the
following arguments:
Notwithstanding the traversal, solely in the interest of facilitating compact prosecution, Applicant has amended independent claim 1 to recite "infecting a host plant with Rhizobium rhizogenes carrying an expression construct" and "wherein the zip-code element includes cis- acting signals that permit the genome editing reagent mRNA sequences to transport through the phloem to the cultured rootstock tissue", and amended independent claim 12 to recite "wherein the zip-code element includes cis-acting signals that permit the TALEN mRNA coding sequence to transport through the phloem to the rootstock tissue" and "the TALEN mRNA coding sequence move from the rootstock to new growth from the grafted plant" to further clarify the already existing distinction over the cited art. Support for the claim amendments is provided throughout the originally filed specification, as exemplified, for example, at least at paras. 26 and 34-39.
In addition, Applicant has amended various dependent claims to further clarify the already existing distinction over Kragler. For example, dependent claim 3 is amended to clarify "the genome editing reagent mRNA sequence transports through the phloem such that the genome editing reagent mRNA sequence moves from transgenic rootstock to the grafted plant and causes the gene edits in the new growth in the absence of transgenic DNA." See also amended dependent claim 4. Similarly, dependent claim 17 is amended to clarify that "the TALEN mRNA moves from transgenic rootstock to the new growth from the grafted plant cause the gene edits in the new growth in the absence of transgenic DNA." For at least the reasons provided above, Kragler does not teach or suggest an expression construct including a genome editing reagent mRNA coding sequence or TALEN mRNA and a zip-code element and wherein the genome editing reagent mRNA coding sequence or TALEN mRNA moves and causes the gene edits in the new growth of the grafted plant in the absence of transgenic DNA. Rather, the cited portions of Kragler are directed to modifying tRNA-like structures to change the intercellular mobility of mRNA and are silent with respect to genome editing reagent mRNA coding sequence or TALEN mRNA, let alone that the genome editing reagent mRNA coding sequence or TALEN mRNA moves and the causes the gene edits. As another example, claim 5 is amended to recite "wherein the zip-code element comprises a gibberellic acid insensitive (GAI) mRNA which include the cis-acting signals", which is not taught or suggested by the cited portions of Kragler.
As a further example, dependent claim 6 is amended to clarify "making a first angled vertical cut in the middle of a cut surface through the at least one rootstock stem to create a V- cut" and "making a second angled cut comprising a spear cut end formed by making 60-degree cuts on either side of the at least one scion stem, wherein the spear cut end in the at least one scion stem aligns with vascular tissue within the V-cut of the at least one rootstock stem." In contrast, Kragler teaches a standard splice grafting procedure utilizing a "long slanting cut." Kragler, Col. 22, lines 24-30. Kragler does not teach or suggest the specific complementary geometry of a vertical V-cut in the rootstock receiving a spear cut end formed by 60-degree cuts on the scion, as recited by amended claims 6. As described in paragraphs 48 and 49 of the specification, this precise spear and V-cut geometry provides optimal surface area contact and mechanical stability specifically required for micrografting delicate tissue culture plantlets.
Based on at least the above, Applicant submits that Kragler does not teach or suggest the claimed invention as a whole as recited by at least amended claims 1 and 12, and respectfully requests reconsideration and withdrawal of the § 103 rejections of claims 1-3, 6, 8-10, 12, and 17- 22.
Examiner’s Response:
Regarding the amendments that require Rhizobium rhizogenes be used to carry the expression construct and infect the host plant to produce a transformed rootstock, this is not persuasive because the use of Rhizobium rhizogenes to transform plants is routine and well-understood in the art, and is a known alternative to Agrobacterium tumefaciens taught by Kragler. Regarding the further clarification of the genome editing reagent mRNA and TALEN mRNA throughout the claims, this is not persuasive because it would be obvious to transport genome-editing reagent mRNA (including TALEN which Kragler teaches is an alternative to CRISPR/Cas) through the phloem from transgenic rootstock to WT scion to produce edits in the scion for the reasons described in the previous argument response. Regarding the clarifying amendments that the genome editing reagent mRNA and TALEN mRNA moves to new growth and cases gene edits in new growth in absence of transgenic DNA, this is not persuasive because Kragler repeatedly teaches the emerging flowers (i.e. new growth) were WT, (i.e. they don’t have transgenic DNA), however RT-PCR confirmed the mRNA was present in the emerging flowers and the pollen produced the expected sterile phenotype meaning the mRNA was also successfully translated (Col. 22, lines 39-42, Fig. 2E, Col. 30 lines 28-34). Regarding the amendments to claim 5, it is reiterated that Kragler teaches using StBEL5 (a known zip-code element). Additionally, GAI is also a known zip code element that can transport mRNA through the phloem of grafted plants (see 103 rejection above). It would be obvious to use one known zip code element over another for the same purpose. Regarding Applicant’s argument about the grafting procedure, wedge cuts and v-grafting are known in the art and it would be obvious to use one over another for the same purpose of successfully grafting the plants. For all of these reasons, Applicant’s arguments are not persuasive.
Applicant argues beginning on p. 10 of remarks dated 07/09/2026 the
following arguments:
Applicant essentially argues the rejections to the remaining claims (4-5, 7, 11, and 15-16) should also be withdrawn because they do not cure the alleged deficiencies of Kragler. For the reasons provided previously herein, it would be obvious to transform a plant used for rootstock with a construct including a genome editing reagent mRNA coding sequence and zip code element to transport the mRNA across a graft junction to WT scion for gene editing. It would also be obvious to transform the rootstock with Rhizobium rhizogenes instead of Agrobacterium tumefaciens. Therefore, the claims remain rejected under a modified 103 and Applicant’s argument is not persuasive.
Conclusion
No claims are allowed.
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 JESSICA N STOCKDALE whose telephone number is (703)756-5395. The examiner can normally be reached M-F 8:30-5:00 CT.
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JESSICA N. STOCKDALE
Examiner
Art Unit 1663
/JESSICA NICOLE STOCKDALE/Examiner, Art Unit 1663
/CHARLES LOGSDON/Primary Examiner, Art Unit 1662
