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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/28/2026 has been entered.
Status of the Claims
Claims 13-14 are canceled.
Claims 1-12, 15-19, and newly added claims 20-22 are pending.
Claims 1-12, 15-19, and newly added claims 20-22 are examined herein.
The previous objections to claims 15-16 are withdrawn in view of Applicant’s amendments. In view of Applicant’s amendments, a new objection has been made.
The previous rejections to claims 17-19 under 35 USC 112(b) are withdrawn in view of Applicant’s amendments.
Claims 1-12 and 15-22 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 9 is objected to because of the following informalities: “Crisper” is misspelled and should be written as “CRISPR”. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: Claim 12 recites “…and to allow for gene edits in the new growth.” However, it appears the claim should be written as “…
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, 6, 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).
Claim 1 is drawn to a method for producing a grafted plant for delivery of genome editing reagents, comprising:
grading cultured rootstock tissue to obtain at least one rootstock expressing an expression construct that includes a genome editing reagent messenger ribonucleic acid (mRNA) coding sequence and a zip-code element, and having a stem with a graft-compatible diameter and genotype;
making a cut through the at least one rootstock stem and placing a stabilization device adjacent to the cut on the rootstock stem;
generating a grafted plant by inserting at least one cut scion stem into the stabilization device, wherein the at least one cut scion stem aligns with vascular tissue within the cut rootstock stem; and
screening new growth from the grafted plant for gene edits resulting from genomic editing by the expression construct.
Claim 2 is drawn to the method of claim 1, including generating a transgenic plant expressing the expression construct in a genotype that is graft-compatible with a genotype of the cut scion stem.
Claim 3 is drawn to the method of claim 1, including generating a transgenic plant expressing the expression construct by infecting a host plant with Agrobacterium tumefaciens carrying the expression construct.
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 cut through the at least one rootstock stem, the method further including making a second angled cut through the at least one scion stem, wherein the second angled cut through the at least one scion stem is substantially similar to the first angled cut through the at least one rootstock stem.
Claim 8 is drawn to the method of claim 1, 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 9 is drawn to the method of claim 1, 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;
the zip-code element; and
a promoter.
Claim 10 is drawn to the method of claim 9, wherein the promoter is 35S.
Claim 12 is drawn to a non-naturally occurring plant, plant cell, or plant part generated by a genomic editing technique comprising:
generating a transgenic plant by infecting a host plant with Agrobacterium tumefaciens carrying an expression construct including:
a transcription activator like effector nuclease (TALEN) messenger ribonucleic acid (mRNA) coding sequence;
a zip-code element; and
a promoter;
grading rootstock tissue of the transgenic plant to obtain at least one rootstock expressing the expression construct and having a stem with a graft-compatible diameter;
making a cut through the at least one rootstock stem and placing a stabilization device adjacent to the cut on the rootstock stem;
generating a grafted plant by inserting at least one cut scion stem into the stabilization device, wherein the at least one cut scion stem aligns with vascular tissue within the cut rootstock stem; and
screening new growth from the grafted plant for gene edits resulting from genomic editing by the expression construct.
Claim 17 is drawn to the non-naturally occurring plant, plant cell, or plant part of claim 12, wherein the zip-code element includes cis-acting signals that permit the TALEN mRNA coding sequences to transport through the phloem such that the TALEN mRNA moves from transgenic rootstock to new growth from the grafted plant to allow for the gene edits in the new growth.
Claim 18 is drawn to the non-naturally occurring plant, plant cell, or plant part of claim 12, wherein new growth from the grafted plant includes wild-type tissue containing detectable transgenic mRNA or protein.
Claim 19 is drawn to the non-naturally occurring plant, plant cell, or plant part of claim 12, wherein new growth from the grafted plant includes new shoot tissue.
Claim 20 is drawn to the non-naturally occurring plant, plant cell, or plant part of claim 12, wherein the zip-code element includes an untranslated region (UTR) from the phloem-mobile RNA, or the full-length sequence from a phloem-mobile RNA and which is non-native to the gene editing reagent.
Claim 21 is drawn to the method of claim 1, wherein the zip-code element includes an untranslated region (UTR) from the phloem-mobile RNA, or the full-length sequence from a phloem-mobile RNA, and wherein the zip-code element includes cis-acting signals that permit the gene editing reagent 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.
Claim 22 is drawn to the method of claim 1, wherein the expression construct includes the gene editing reagent mRNA coding sequence and the zip-code element that is non-native to the gene editing reagent mRNA coding sequence.
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 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 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), 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).
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).
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).
Regarding claim 6, Kragler teaches a long slanting cut was made on the
rootstock stem (about 30 degrees from vertical) with a matching cut at the scion base,
the surfaces of both cuts were immediately pressed together and the junction was
tightly wrapped with parafilm, and the graft junction was established (Col. 22, lines 24-
29).
Regarding claim 9, Kragler teaches the expression construct included 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 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).
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 an DMC1 mRNA coding sequence and a StBel5 zip-code element (i.e. reasonably interpreted as a zip code element that is non-native to the gene editing reagent mRNA coding sequence).
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 and 12). This is because the mRNA being transferred from the transgenic rootstock to the nontransgenic scion was not mRNA of genome-editing reagents.
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 claim 20) This is because the mRNA is not a gene editing reagent 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 22). This is because the mRNA is not a gene editing reagent or TALEN mRNA.
Regarding the remaining limitations of claim 1 and claims 9, 17, 20, and 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).
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).
Kragler teaches all of the limitations of the rejected claims in alternative embodiments, but does not disclose a single embodiment having all the limitations. As such, the claims are not rejected as anticipated under 35 USC §102 but are instead rejected as obvious under 35 USC §103. 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).
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over
Kragler as applied to claim 1 above, and further in view of Cornish (US Patent Application Publication No. US-20170314033-A1).
Claim 4 is drawn to the method of claim 1, including generating a transgenic
plant expressing the expression construct by infecting a host plant with Rhizobium
rhizogenes carrying the expression construct.
Claim 5 is drawn to the method of claim 1, including generating a transgenic
plant expressing the expression construct using particle bombardment.
Regarding claims 4 and 5, Kragler teaches the limitations of claim 1 as
set forth in the previous obviousness rejection. The teachings of Kragler as
they are applied to claim 1 are set forth previously herein and are incorporated by
reference. 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).
However, Kragler does not explicitly teach:
including generating a transgenic plant expressing the expression construct by infecting a host plant with Rhizobium rhizogenes carrying the expression construct (claim 4)
including generating a transgenic plant expressing the expression construct using particle bombardment (claim 5)
In analogous art, Cornish teaches A. tumefaciens and A. rhizogenes are 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). Cornish also teaches several methods of plant transformation, collectively referred to as direct gene transfer, have been
developed as an alternative to Agrobacterium-mediated transformation, and generally
applicable method of plant transformation is microprojectile-mediated transformation
wherein DNA is carried on the surface of microprojectiles (i.e. particle bombardment)
(¶0072, and 0097-0098).
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, or use of the alternative
method of particle bombardment, 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 particle bombardment as
alternative methods to produce transgenic plants, and it would be prima facie obvious to
use the known alternative methods for the same purpose.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kragler 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).
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 teaches the limitations of claim 1 as set forth
in the previous obviousness rejection. The teachings of Kragler as they are applied to claim 1 are set forth previously herein and are incorporated by reference.
Kragler also teaches a slanted or angled cut (Col. 22, lines 24-30).
However, Kragler does not explicitly teach 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 (claim 7).
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 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 as applied to claim 1 above, and further in view of Gal-On (US Patent Application Publication No. US-20080016593-A1)
Claim 11 is drawn to the method of claim 9, wherein the promoter is nopaline
synthase (Nos).
Regarding claim 11, Kragler teaches the limitations of claim 1 as set forth
in the previous obviousness rejection. The teachings of Kragler as they are
applied to claim 1 are set forth previously herein and are incorporated by reference.
However, Kragler does 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 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 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 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).
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 teaches the limitations of claim 12 as set forth in the previous obviousness rejection. The teachings of Kragler as they are applied to claim 12 are set forth previously herein and are incorporated by reference.
However, Kragler does 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 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 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).
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 teaches the limitations of claim 12 as set forth in the previous obviousness rejection. The teachings of Kragler as they are applied to claim 12 are set forth previously herein and are incorporated by reference.
However, Kragler does 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 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 01/28/2026 the
following arguments:
First, Applicant respectfully submits that Kragler, alone or in combination with Kim, does not teach or suggest the claimed invention as whole. As acknowledged by the Office Action, Kragler does not teach or suggest an expression construct includes an mRNA coding sequence and a zip-code element. In particular, the Office Action acknowledges that Kragler does not teach or suggest that the expression construct includes a zip-code element. For such an alleged teaching, as noted above, the Office Action cites to the KNOX transcript fused to a mutant mRNA in Kim. However, Kim describes a naturally occurring mutant mRNA which is caused by a plant viral infection and includes the KNOX transcript fused thereto, and not that the KNOX transcript forms part of an expression construct.
That is, Kim does not cure the deficiencies of Kragler. Kim teaches long-distance
movement of RNA through the phloem, and describes grafting experiments with a naturally occurring dominant gain-of-function leaf mutation in tomato which were used to demonstrate long-distance movement of the naturally occurring mutant mRNA into wild-type scions, and that the translocated mRNA caused changes in leaf morphology of the wild-type scions, suggesting that the translocated naturally occurring RNA remained functional. Kim describes a Mouse ears (Me) mutant phenotype caused by a gene fusion between PYROPHOSPHATE-DEPENDENT PHOSPHOFRUCTOKINASE (PFP) and LeT6, a tomato KNOTTED-1-like homeobox (KNOX) gene, where the PFP-LeT6 fusion gene includes about 10 kb of native PFP upstream sequence, allowing for a high-level expression pattern of the functional homeobox fusion transcript in the Me plants. However, Kim does not teach or suggest incorporating a zip-code element into an expression construct for genome editing, as recited in claim 1 and from which claims 3, 6, and 8- 10 depend.
Applicant submits that the independent claim 1 (as well as claim 12) recites the specific combination of an expression construct that includes both an mRNA coding sequence and a zip- code element for genome editing reagent delivery through grafted plants, which is not taught or suggested by the cited prior art. Kragler and Kim address fundamentally different techniques which address different technical problems: (i) Kragler focuses on methods for changing intercellular mobility of mRNA by modifying tRNA-like structures and (ii) Kim describes a naturally occurring mobile transcript resulting from a gene fusion. Neither reference teaches nor suggests creating 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, alone or in combination with Kim, 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 recited by claim 1.
Further, a POSA would not be motivated to combine the alleged teachings of Kragler with Kim and to obtain the claimed invention with a reasonable expectation of success and/or 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 taught by Kim to arrive at the claimed method 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 KNOX transcript with the (genome editing reagent) mRNA coding sequence in an expression construct and whether or not the KNOX transcript would function with a different mRNA coding sequence than the naturally occurring mutant mRNA caused by the plant viral infection to cause the transport mechanism for the (genome editing reagent) mRNA coding sequence. For example, and supporting Applicant's position, Kragler provides "the transport mechanism seems to be selective for certain mRNAs" and that the "PFP-LeT6 mRNA loading into the phloem and unloading and transport to the meristematic regions might be facilitated by chaperones that recognize specific signals on the PFT or LeT6 mRNA... [and] certain specific RNAs might exhibit the capacity to move and accumulate in regions of the shoot with distinct developmental and phenotypical consequences" (emphasis added). When the expression construct includes an mRNA coding sequence that is different than the PFP-LeT6 mRNA in Kim, such as the claimed genome editing reagent mRNA, the POSA cannot expect that the genome editing reagent and/or the zip-code element would retain their functionality and would rather anticipate that changes to the expression construct may impact the same, which supports Applicant's position that the claimed invention would not be obtained by a POSA with a reasonable expectation of success and/or without undue experimentation. As such, the alleged combination would require undue experimentation and the results are unexpected, which demonstrates that the alleged teaching of the cited references are not an obvious combination.
Notwithstanding the above traversal, and solely in the interest of facilitating compact prosecution, Applicant has amended claim 1 to recite "an expression construct that includes a genome editing reagent messenger ribonucleic acid (mRNA) coding sequence and a zip-code element", which is not taught or suggested by Kragler and Kim. Further, Applicant has added new claims 20-22 to further clarify the already existing distinction over Kragler and Kim. Support for the claim amendments and new claims is provided throughout the originally filed specification, as exemplified, for example, at least at paras. 21, 26-28, and 33-39.
For at least the reasons provided above, Applicant respectfully submits that Kragler and Kim, alone or in combination, do not teach or suggest the claimed invention as whole as recited by claims 1-3, 6, 8-10, 12, 14, and 17-19 and requests withdrawal of the §103 rejections thereof.
This argument has been fully considered and is found not persuasive for
the following reason(s):
Upon further review of the Kragler document, it appears Kragler does in fact teach using a zip-code element (StBEL5) to transport transgenic mRNA across a graft junction from transgenic rootstock to wild-type (WT) scion (see 103 rejection above). Therefore, Applicant’s arguments regarding Kim are moot since Kim is no longer used as a secondary reference. Additionally, because Kragler teaches transgenic mRNA can successfully be transported to WT scion, and explicitly suggests rendering a Cas9 endonuclease mRNA transcript mobile by a DNA construct that is integrated into the genome of one plant onto which another plant is subsequently grafted and the RNA- guided endonuclease can move across the graft junction into the cells of the scion (Col. 14, lines 42-5) to modify a chromosomal sequence in the scion cells (Col. 15, lines 51-56), (and further teaches in another alternative embodiment that TALEN is an alternative method to CRISPR/Cas9 (Col. 7, lines 29-30)), it would therefore be obvious to arrive at the instantly claimed method with a reasonable expectation of success. Kragler provides explicit motivation that is 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).
Applicant argues beginning on p. 12 of remarks dated 01/28/2026 the following arguments:
Applicant essentially argues that rejections to all remaining depending claims should be withdrawn because Kragler and Kim fail to teach the limitations of the independent claims, and the additional references also fail to cure the argued deficiencies.
This argument has been fully considered and is found not persuasive for
the following reason(s):
Upon further review of the Kragler document, it appears Kragler does in fact teach using a zip-code element (StBEL5) to transport transgenic mRNA across a graft junction from transgenic rootstock to wild-type (WT) scion (see 103 rejection above). The rejections to the claims have been modified accordingly, and the claims are rejected as a single reference 103 in view of Kragler. All depending claims are also obvious in view of Kragler with or without a secondary reference.
Applicant argues beginning on p. 18 of remarks dated 01/28/2026 the
following arguments: Applicant argues for the withdrawal of the provisional nonstatutory double patenting rejection on the ground of divergent subject matter.
Examiners Response: In view of the abandonment of previously copending Application no. 18/248,010, the provisional NSDP rejection has been withdrawn.
Conclusion
No claims are allowed.
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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