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 .
Election/Restrictions
[Copied from Nonfinal Action dated 20October2025 →] Applicant's election with traverse of (A) the EPSPS mutation combination G172A, P177S, and V403A (= the third listed combination in claim 3 and corresponding to SEQ ID NO: 6 in claim 5), and (B) the plant type rice (Oryza sativa) in the reply filed on 22August2025 is acknowledged. The traversal is on the ground(s) that the reference cited by the Office as evidencing that there is not a special technical feature amongst the claimed EPSPS mutants (CHEN et al.), “only discloses single mutants containing V403A and does not address the combination mutant schemes of the present application” (page 10 of the Remarks filed 22August2025). This is not found persuasive because (1) these claims are not limited to combinations of mutations (see claim 1) and (2) CHEN et al. does teach combinations of amino acid mutations (see the anticipation rejection herein below).
The requirement is still deemed proper and is therefore made FINAL.
Status of the Claims
The amendments and arguments filed 16January2026 are acknowledged and have been fully considered. Claims 2, 6-24, 26-27, 31-107 were previously canceled. Claims 25, 28-30 are now canceled. Claims 1, 3-5 are pending, currently amended, and examined on the merits herein.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 365(c) [national stage entry of PCT/CN2021/074029 filed 28January2021] is acknowledged. Claims 1, 3-5 MAINTAIN an effective filing date of 28January2021.
Withdrawn Objections and/or Rejections
Objections and/or rejections made of record in the nonfinal office action dated 20October2025 that are not otherwise discussed herein are withdrawn. In particular:
RE ¶ 6: The objection to the drawings is withdrawn in view of the amendments thereto; and
RE ¶¶ 7-11: The claim objections are withdrawn in view of the amendments to the claims (¶¶7-10) including claim 29 now being cancelled (¶11).
Comment on Claim Amendments
The claim amendments filed 16January2026 contain informalities. Please note that the claims only account for those numbered to 24, but the full set of previously-filed claims number to 30 (i.e., the last line of the claims should state “6-30. (Cancelled)”).
Claim Rejections - 35 USC §§ 112, 101 - Utility
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.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3-5 REMAIN rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility.
These claims are directed toward a mutant EPSPS polynucleotide. The specification and prior art explain that a plant or plant part comprising one such mutant EPSPS polynucleotide has glyphosate resistance, but there is no disclosed or well-recognized use of just the mutant EPSPS polynucleotide (i.e., outside of a recombinant construct/vector, plant, or plant part).
To ensure clarity, use of a mutant EPSPS polynucleotide to, for example, identify a rice plant with glyphosate resistance is a general utility applicable to a broad class of mutant EPSPS polynucleotides. Thus, use of the claimed polynucleotide in a manner that any other mutant EPSPS polynucleotide is used is not a specific utility under 35 U.S.C. 101) (MPEP § 2107.01(A)). Further, the claimed mutant EPSPS polynucleotide must be useful as disclosed—the fact that a desirable characteristic/use may be identified at some future date following further research/analysis is not sufficient for meeting the substantial utility requirement of 35 U.S.C. 101 (MPEP § 2107.01(B)).
Claims 1, 3-5 are also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
Response to Applicant’s Remarks 16January2026:
Applicant traverses this rejection and asserts several examples supposedly showing that the claimed subject matter has specific and substantial utility as claimed (Remarks at pages 8-9).
This is not persuasive because even Applicant’s cited examples all confirm the Office position and only evidence that the claimed polynucleotides have specific and substantial utility when within a cell, plant, or vector. Applicant’s own statements evidence that at Example 2, the claimed subject matter has specific and substantial utility when within an E.coli cell. Example 2 also evidences a specific and substantial utility for the claimed subject matter within a plant. The same is true of all of Examples 3-8 (all cited by Applicant in their Remarks): those examples only evidence a specific and substantial utility for the claimed subject matter within a plant.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-5 REMAIN rejected under 35 U.S.C. 102(a)(1) as being anticipated by CHEN et al. (US2019/0345464 filed 14November2019, which is an English language equivalent of CHEN et al. CN106636025).
CHEN et al. teach a mutant EPSPS polynucleotide encoding a V403A mutation (therein V342A)1 [claim 1] as well as a vector or rice plant/part comprising it [claims 25, 28-30] for, for example, glyphosate resistance. CHEN et al. specifically teach a mutant EPSPS polynucleotide encoding a V403A mutation (therein V342A), G172A (therein G111A), and a P177S (therein P116S)2 [claims 3-5 as elected].
Response to Applicant’s Remarks 16January2026:
Applicant traverses this rejection because CHEN et al. supposedly regards only a combination of eight mutations and does not disclose, teach, suggest, or verify “that any single amino acid mutation … by itself can confer glyphosate tolerance to the EPSPS protein, nor does it describe or claim “V403A” as an independent technical solution” (emphasis added) (Remarks at page 10).
This is not persuasive because, even if it were true that CHEN et al. does not disclose, teach, suggest, or verify that the V403A mutation is sufficient to confer glyphosate tolerance; that is not required by these claims. Applicant is arguing features of the claims which are not being recited.
Conclusion
[Copied from the Nonfinal Action 20October2025 →] The following prior art is cited for the sake of a clear record:
CHEN et al. (US 2020/0377868) teach SEQ ID NO: 8 which is a mutant EPSPS sequence comprising G172A (there G111A) and P177S (there P116S) (please see Result 1 of the “20250616_140229_us-18-263-514a-6.rapbm” ABSS sequence search results file dated 16June2025.
DONG et al. (WO2017059045) is cited because it teaches mutant EPSPS sequences.
DONG et al. (WO2018/183050) is cited because it teaches mutant EPSPS sequences.
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 Rebecca STEPHENS whose telephone number is (571)272-0070. The examiner can normally be reached Monday through Friday 8:30-4:30.
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/REBECCA STEPHENS/Examiner, Art Unit 1663
/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663
1 See CHEN et al. at ¶¶6-24 on page 1; ¶¶33-56 on pages 2-3; ¶¶77-85 on page 4; as well as FIG. 3.
2 See CHEN et al. at ¶24 on page 1, ¶¶36 and 41 on page 2, ¶¶77, 79-80, 85 on page 4; as well as FIG. 3.