DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Amendment to claims submitted on 01/21/2026 has been acknowledged. Claims 1-2, 5, 10, 13-15 and 18 are pending and are examined in this office action.
Rejections that are withdrawn
Objection to specification has been withdrawn in light of applicant’s amendment of specification to include a proper symbol indicating use in commerce in the trade name or marks used in commerce.
Objection to figure 2 and lack of compliance to sequence listing has been withdrawn in light of applicant’s amendment of figure 2 to include SEQ ID NOs. in drawings and in amendment to specifications.
35 USC § 112 Indefiniteness rejection has been withdrawn in light of applicant’s amendment of claim 1 to recite the polynucleotide comprise the mutation in SEQ ID NO:1, recitation of transplanting date in claim 2, deletion of the indefinite terms “represent” from claims 5 and 10, and deletion of claims 6-8, 11-12 and 16-17.
35 USC § 102 anticipation rejection of claims 5-7 and 10-11 over prior art Jiung et al.’19 has been withdrawn in light of applicant’s amendment of claims to delete the indefinite term “represent” and to recite the SNP marker is “A” at position 3333 in chromosome 5 that is detected by SEQ ID NOs:4 to 7.
35 USC § 103 obviousness rejection is withdrawn in light of applicant’s amendment of claims 1 and 10 to recite “wherein the polynucleotide corresponding to the 3,333rd position of a polynucleotide sequence of SEO ID NO: 1 is A” since the recited art of Wang et al. teaches the amino acid change is due to an SNP located in Exon 8 whereas the present disclosure involves a variation located in Exon 7 (see figure 2). There is no teaching or suggesting to make changes from GGT (Gly) to GAT (Asp) in the cyOsPPDK locus Exon 7.
Claim Interpretation
In claim 1, the recitation of the rice cultivar 'Samkwang (SA)-flo3' is interpreted that it is a mutant line and it is not the original line “Samkwang”. The cultivar is derived from “Samkwang” and the deposited mutant line with deposit accession number KACC 98101P comprises floury endosperm characteristics and everything else is open to be variable. For example, claim 2 further limits the traits of the cultivar.
In claims 5 and 10, the claims recite the phrase “IRGSP 1.0” is interpreted since applicant has not recited the full form of the term in anywhere in claim or specification. It is interpreted to the International Rice Genome Sequencing project version 1.0 as Os-Nipponbare-Reference-IRGSP-1.0 as defined in https://www.ncbi.nlm.nih.gov/datasets/genome/GCF_001433935.1/, accessed on 10/15/2025.
Following analysis is modified in light of applicant’s amendment of claims 1, 5 and 10 to recite any mutant comprising a polynucleotide corresponding to the 3,333rd position of the polynucleotide sequence of SEO ID NO: 1 is A.
Claim Rejections - 35 USC § 112– Written Description Requirements
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 5, 10, 13-15 and 18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Analysis of Breadth of Claims
The polynucleotide corresponding to the 3,333rd position of the polynucleotide sequence of SEQ ID NO: 1 is “A” would encompass any sequences or fragment of sequence since the term “corresponding” is a broad term. For example Merriam webster dictionary defines “corresponding” as “having or participating in the same relationship (such as kind, degree, position, correspondence, or function) especially with regard to the same or like wholes (such as geometric figures or sets)” accessed at https://www.merriam-webster.com/dictionary/corresponding, accessed on 05/07/2026) (claims 1, 5 and 10).
What is Described in the Specification?
Applicant describes the following:
Mutant line treated with sodium azide (NaN3) diluted in potassium phosphate buffer as a mutagen to 'Samkwang', a domestic high-quality rice cultivar ( Oryza sativa L.) was secured (page 13, paragraph 4).
As shown in FIG. 2, the SNP associated with the floury endosperm characteristics, which is a position corresponding to 19,721,940 bp in the IRGSP standard genome, was found to be 'G' in 'Samkwang' and 'A' in 'Samkwang (SA)-flo3' (page 16, paragraph 3).
it was confirmed that glycine (Gly, G) the amino acid at position 354 of OS05G0405000-02 was mutated to aspartic acid (Asp, D) (page 16, paragraph 3).
Difference Between What was Described and What is Claimed
Applicant has not described any mutant rice plant comprising the “corresponding” sequence to the 3,333rd position of the polynucleotide sequence of SEO ID NO: 1 is A other than the mutant plant comprising SEQ ID NO: 1 having base “A” at 3,333rd position that would cause floury endosperm (claims 1, 5 and 10).
Applicant has not described any mutant plant derived from ‘Samkwang’ other than the rice cultivar with SNP “A” at position 3333 as SEQ ID NO:1 that would cause floury endosperm and other characteristics (claims 1 and 2).
Applicant has not descried extract of foods without the extract comprising at least one cell comprising SEQ ID NO:1 (claim 13).
Analysis
The purpose of the written description is to ensure that the inventor had possession at the time the invention was made, of the specific subject claimed. For a broad generic claim, the specification must provide adequate written description to identify the genus of the claim.
Applicant has not described any mutant rice plant comprising the “corresponding” sequence to the 3,333rd position of the polynucleotide sequence of SEO ID NO: 1 is A other than the mutant plant comprising SEQ ID NO: 1 having base “A” at 3,333rd position that would cause floury endosperm (claims 1, 5 and 10).
The polynucleotide corresponding to the 3,333rd position of the polynucleotide sequence of SEQ ID NO: 1 is “A” would encompass any sequences or fragment of sequence since the term “corresponding” is a broad term. For example Merriam webster dictionary defines “corresponding” as “having or participating in the same relationship (such as kind, degree, position, correspondence, or function) especially with regard to the same or like wholes (such as geometric figures or sets)” accessed at https://www.merriam-webster.com/dictionary/corresponding, accessed on 05/07/2026) (claims 1, 5 and 10).
An SNP is described by a position and a nucleotide. For example, Wang et al. (Published: 2018, Journal: Molecular Genetics and Genomics 293:1151–1158) teaches a novel SNP (G–A) in the coding region of FLO4-4 caused the milky-white chalky endosperm with a loosely packed structure of starch granules was responsible for a fragile grain, with lower starch damage, and finer flour particle size than white-core endosperm mutants and the wild-type parent that made the grains attractive for use in the food industry (page 1157, right paragraph 2). Wang et al. teaches Comparative sequence analysis of Namil and mutant Suweon 542 revealed a recessive point mutation (G→A) in exon 8 of the cyOsPPDK allele of Suweon 542, which resulted in a missense mutation from Gly to Asp at amino acid 404 (Fig. 2) (page 1157, left paragraph 2). Wang et al. does not teach changes in any nucleotides at position 3333 and naturally that has G. Therefore there is dearth of description that changes to any nucleotide other than changing to “A” at position 3333 as in SEQ ID NO:1 compared to variety 'Samkwang' would cause floury endosperm characteristics.
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Applicant describes in their invention the nucleotide sequences at the [G/A] SNP position (19,721,943 bp) between 'Samkwang' and 'Samkwang (SA)-flo3' that were confirmed in exon 7, of 'Os05g0405000-02', which is an ORF (Open Reading Frame) containing 'cyOsPPDK' (cytosolic pyruvate orthophosphate dikinase protein) presumed to be a gene that determines floury endosperm (page 4, paragraph 5, Figure 2). Applicant confirms that 'Samkwang', the original cultivar and non-glutinous rice, had [G] base, and 'Samkwang(SA)-flo3' provided by the present invention had [A] base (page 4, paragraph 5, Figure 2). Applicant describes the SNP is present at position 3,333 (19,721,940 bp) of the polynucleotide sequence (ch;l9,718,538~19,726,410) derived from 'Samkwang(SA)-flo3' as in SEQ ID NO: 1 located on chromosome 5 (Spec, page 9, paragraph 3) and more specifically it would require to change glycine (Gly, G) the amino acid at position 354 of OS05G0405000-02 was mutated to aspartic acid (Asp, D) (Spec, page 16, second to last paragraph).
The polynucleotide corresponding to the 3, 333rd position of the polynucleotide sequence of SEQ ID NO: 1 is “A” would encompass any sequences or fragment of sequence since the term “corresponding” would mean any of the “having or participating in the same relationship (such as kind, degree, position, correspondence, or function) especially with regard to the same or like wholes (such as geometric figures or sets)” ( accessed at https://www.merriam-webster.com/dictionary/corresponding, accessed on 05/07/2026) (claims 1, 5 and 10). The characteristics is specific to mutation in the exon 7, of 'Os05g0405000-02', which is an ORF (Open Reading Frame) containing 'cyOsPPDK' (cytosolic pyruvate orthophosphate dikinase protein) and it is required to have the floury endosperm characteristic in the mutant rice plant. Therefore there is dearth of description of any “corresponding” sequence other than the SEQ ID NO:1 itself with SNP with “A” at position 3333 to cause floury endosperm characteristics leading to a 'Samkwang(SA)-flo3' rice cultivar.
Furthermore, applicant has not descried extract of foods without the extract comprising at least one cell comprising SEQ ID NO:1 (claim 13). The extracts of seed would comprise any of the purified starch, proteins, phenolic acids, flavonoids or oil not comprising any DNA to identify it as the extract from the 'Samkwang(SA)-flo3' rice cultivar. Therefore applicant has not described any rice seed extract from 'Samkwang(SA)-flo3'(claim 13).
Given the large diversity associated with the claimed genus of any mutant plant derived from ‘Samkwang’ comprising a corresponding polynucleotide comprising SNP with base “A” at position 3333 of SEQ ID NO:1 would cause floury endosperm characteristics, Applicant’s disclosure is not representative of the claimed genus as a whole. This point is particularly relevant because, as discussed above, the prior art speaks to the disconnection between the broadly claimed diverse structure of SNPs, probes and primers and its function of having floury endosperm characteristics of rice.
"The test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to one skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad Pharm, Inc, v EH Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Lockwood v. Amer. Airlines, ina, 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). "An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations. Lockwood, 107 F.3d at 1572, 41 USPG2d at 1966". While the written description requirement does not demand either examples or an actual reduction, actual "possession" or reduction to practice outside of the specification is not enough. Ariad Pharm, Inc. v. Eli Lilly & Co., 598 F,3d 1336,1352 (Fed. Cir. 2010). Rather, it is the specification itself that must demonstrate possession. Id.
Thus, based on the analysis above, Applicant has not met either of the two elements of the written description requirement as set forth in the court's decision in Eli Lilly. As a result, it is not clear that Applicant was has described the structure of claimed genus to have application as recited function at the time this application was filed.
Summary
No claim is allowed.
The claims are free of prior art. The closest prior art is Wang et al. which teaches flo4-4 gene wherein the nucleotide mutant G to A within exon 8 is associated with floury endosperm (page 1151, Abstract, page 1155, Figure 2, see snippet below). Wang et al. teaches Full-length genomic sequence of cyOsPPDK was 7556 bp with a cDNA sequence of 2649 bp containing 19 exons and encoding an 882 amino acid protein. Wang et al. teaches a novel SNP (G–A) in the coding region of FLO4-4 caused the milky-white chalky endosperm with a loosely packed structure of starch granules was responsible for a fragile grain, with lower starch damage, and finer flour particle size than white-core endosperm mutants and the wild-type parent that made the grains attractive for use in the food industry (page 1157, right paragraph 2). The patentable distinction is that Wang et al. does not teach the nucleotide sequences at the [G/A] SNP position (19,721,943 bp) at a mutant 'Samkwang (SA)-flo3' was in exon 7, of 'Os05g0405000-02', which is an ORF (Open Reading Frame) containing 'cyOsPPDK. Wang et al. does not teach making such mutation on specific nucleotides of exon 7.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/SANTOSH SHARMA/Examiner, Art Unit 1663
/DAVID H KRUSE/Primary Examiner, Art Unit 1663
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