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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/30/2026 has been entered.
Claim Status
Claims 1, 3-5, 7-8, 10-11 and 17-21 are pending.
Claims 17-20 are withdrawn from being examined, as explained in the previous Office action (in the Claim Status section in page 2) dated 10/31/2025.
Claims 1, 3-5, 7-8, 10-11 and 21 are being examined.
Claim Objections
Applicant is advised that should claim 11 be found allowable, claim 21 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 11 depends from claim 1 and recites a “regulator of gene silencing is underexpressed or downregulated”. Claim 21 also comprises all the claim limitations of claim 1 and recites “…wherein Regulator of gene silencing is underexpressed or downregulated.”
Claim 1 is objected to: Line 5 of claim 1 recites, “said plant”. There is no earlier reference in the claim to a plant. The recitations in lines 2 and 4 to ‘plant disease’ and ‘plant genes’ makes it apparent that laminarin is applied to a plant. However, the term “said” in line 5 in should be replaced with the article “a”.
Claim 8 is objected to: lines 1-2 of claim 8 recite, “said at least one plant defense gene”. Claim 1 in lines 7-9 recites, “one or more….of the following genes”. Claim 1 does not recite “defense gene”. It is apparent that the genes listed in claim 1 are the defense genes referred to in claim 8. The specification (for example on p. 6, 2nd paragraph) does refer to the genes recited in claim 1 as plant defense genes. However, for uniformity, it is suggested that either claim 1 in line 9 be amended by inserting “defense” before “genes”, or by amending claim 8 in line 2 by deleting “defense”.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-5, 7, 10-11 and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites, “a method of increasing tolerance to insect and fungal vectored pathogens, increasing plant disease or pest resistance…” (emphasis added).
It is not clear to the Examiner if the method increases tolerance to insect and fungal vectored pathogens, OR (any) plant disease, OR (any) pest resistance. As written, it is unclear whether;
the method is drawn to- a) increased tolerance to a plant disease caused by insect and fungal vector pathogens (implying that the same plant disease is caused by fungal and insect vectored pathogens), as opposed to, b) increased tolerance to a plant disease caused by insect or fungal vector pathogens.
the method is drawn to a) increased tolerance to insect and fungal vectored pathogens, OR (any) plant disease, OR (any) pest resistance, as opposed to, b) increased tolerance to insect and fungal vectored viral pathogens OR (any) pest resistance.It is also unclear whether the “pest” comprises the pathogen.
All the claims directly or indirectly depending from claim 1 inherit the indefiniteness.
As a courtesy to the Applicant and for compact prosecution, the Examiner interprets claim 1 to be drawn to a method to increase tolerance to insect and/or fungal vectored pathogens, OR (any) plant disease, OR (any) pest resistance.
Claims 11 and 21 recites “Regulator of gene silencing”. However, the Applicant does not describe or define what the term “Regulator of gene silencing” implies. “Gene Silencing” is a well-known process in the art. Many genes are known to be involved and regulate the process. The Applicant does not define what qualifies as a gene/protein to become a “Regulator of gene silencing”. There is no structure (sequence) of the “Regulator of gene silencing” in the instant description. The specification in Table 1 refers to an accession number as a Regulator of gene silencing, but the instant claims are not so limited.
The Applicant describes two PCR primers (SEQ ID NOs: 27-28) that potentially can align to specific cDNA sequence(s) in the tomato. The primers comprise significant sequence identity to many cDNA sequences in tomato and is expected to give positive results in qPCR, as done by the Applicant, as a standard BLAST search indicates, as shown below. The Applicant is reminded that primers with less than 100% sequence identity with its template also give positive results in PCR, depending on PCR conditions. A standard BLAST search using one of the primers (SEQ ID NO: 27) identifies the following genomic sequences/genes in tomato alone. Several of them have 100% identical sequence with instant SEQ ID NO: 27, as shown below.
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472
1263
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Greyscale
It is suggested to include a structure (sequence) of the specific gene identified as “Regulator of gene silencing” in relevant claims.
Claim Rejections - 35 USC § 112(a)
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.
Written Description
Claims 1, 3-8, 10-11 and 21 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 claims contain 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.
Claim 1 and all the claims directly or indirectly depending from claim 1 are drawn to a method of increasing tolerance to any insect and/or fungal vectored pathogens, or increasing any plant disease, or any pest resistance by modulating gene expression of one or more plant gene(s) (as interpreted by the Examiner, as explained above). The method comprises just one active step of applying laminarin to the plant. The claimed invention is drawn to an extremely large genus.
The working example provided by the Applicant is related to a plant virus- Tomato Spotted Wilt Virus (TSWV) (Spec, page 26, last para), which is known to transmitted by insect vectors, mainly thrips.
The Applicant does not describe increasing tolerance against fungal vectored viral, or other pathogens, in a plant.
The Applicant does not describe increasing tolerance against plant diseases caused by abiotic factors (e.g. lack of essential nutrients) or by pests like nematode, by applying laminarin. The Applicant also does not describe representative number of species of the broad genus of increased tolerance against vast array of plant diseases not caused by a virus, as well as against any insect and other pests.
Some of the genes listed in Table 1 (e.g. E3 Ubiquitin-protein ligase, Tropinone reductase, a-Tubulin, and Regulator of gene silencing) are not known to be involved in plant defense. Though the genes listed in Table 1 are described as plant “defense” genes, the prior art does not teach them to be involved in insect, fungal, pest, or plant pathogen defense. While the specification provides data indicating their expression is modulated in TSWV-infected tomato plants treated with laminarin, there is no indication that this modulation conferred TSWV tolerance/resistance to the plant. The Applicant also does not describe any structure function relationship with the very broad genus of plant diseases and increased resistance to pests as claimed, in relation to the 15 genes showing significant difference in expression level after application of laminarin.
Considering the breadth of the claims, lack of representative species of the broad genus claimed, lack of structure function relationship of the broad genus claimed in view of working examples, the Applicant does not appear to have been in possession of the claimed genus at the time this application was filed.
Claim Rejections - 35 USC § 112(d)
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 recites applying laminarin to a plant, claim 5 recites applying it to a locus of said plant. The specification teaches “locus” encompasses more than only a plant and includes “habitat, growing ground, soil, area, material or environment in which the plant is growing or may grow” (page 4, para 4, last 2 lines).
Applicant may cancel the claim, amend the claim to place the claim(s) in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 102(a)(1)
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-5, 7-8, 10-11 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ménard et al. ((Defense and Resistance-inducing Activities in Tobacco of the Sulfated 8-1,3 glucan PS3 and its Synergistic Activities with the Unsulfated Molecule, 2005, Plant Cell Physiol. 46:1964-1972) in evidence of Knapp et al. (Pathogen profile: Tobacco mosaic virus, not just a single component virus anymore, 2001, Molecular Plant Pathology, 2:117–123).
Ménard et al. teaches that laminarin acts as an elicitor of plant defense responses as applying algal extracts (containing laminarin) on crop plants increased resistance to pests and diseases and that fungal ß-glucans are efficient elicitors of defense responses in different plant species (page 1964, right column, para 1, line 3-8). Ménard et al. describes that laminarin induces ethylene-dependent defense responses in tobacco and Arabidopsis and applying laminarin induces (reads on to modulate or “modulated”) the accumulation of phytoalexins and the expression of a set of PR proteins (page 1964, right column, para 1, line 15-19).
Ménard et al. describes that treatment (reads on “applying”) with only laminarin affected or reduces the number of lesions caused by TMV (abstract; Fig. 3A) implying that laminarin increases resistance to TMV, as virus (TMV) infection rate is quantified by the lesion number (page 1969, left column, para 3, line 12-13). It is known in the art that TMV belongs to genus Tobamovirus (Knapp et al., page 117, Abstract) as recited in claim 3.
Further, the only positively recited method step recited in instant claim 1 is “applying laminarin to said plant”. As discussed above, Menard teaches application of laminarin to a plant. The recitation, “wherein, expression of one or more….of the following genes is modulated: ….Pti6” only expresses the intended result of the positively recited step of applying laminarin the plant. MPEP 2111.04(I)
Regarding claim 5, Ménard et al. teaches that applying (algal extracts comprising) laminarin on crop plants, acts as an elicitor of plant defense responses (page 1964, right column, para 1), as recited in claim 5. “On crop plants” is interpretated to read on the limitation “to a locus of said plants” based on applicant’s description on page 4, paragraph 4: “the locus, i.e. habitat, growing ground, plant, seed, soil, area, material or environment in which the plant is growing or may grow.”
Regarding claim 7; claim 7 depends from claim 1 and is drawn to the said at least one plant defense gene is overexpressed or upregulated. Menards et al. describes the positively recited step of applying laminarin and induction, which reads on “overexpressed” and “upregulated”, of PR proteins by laminarin (page 1964, right column, para 1, line 15-19). One of the PR proteins, PR1 protein, is a known gene related to plant defense and used as a molecular marker of plant defense and systemic acquired resistance (SAR) in tobacco (Menards et al., page 1965, left column, para 1, line 3-5; page 1969, left column, para 2, line 2-3).
Regarding claims 8, 10-11 and 21; the further limitations of claim 1, as recited in claims 8, 10-11 and 21, are inherently implied as consequences of the only active step recited in claim 1, i.e., applying laminarin to the plant. The Applicant does not undertake any extra step/process to achieve any of the intended outcome (in terms of up- or down-regulation of specific genes) and/or to “increase tolerance to insect and fungal vectored pathogens, increasing plant disease or pest resistance”, after applying laminarin to the plant. If an ordinarily skilled artisan practices the active step, as recited in claims 1 and 21, the intended outcome would inherently be achieved in terms of up- or down-regulation of specific genes and/or increased “tolerance to insect and fungal vectored pathogens, increasing plant disease or pest resistance”. MPEP 2111.04(I)
Applicants in their response filed 01/30/2026 argue that PS3 is not laminarin and that the claims no longer recite “a composition comprising” laminarin (page.8-9). However, as discussed above, Menard et al. also teach applying applying laminarin alone and that this treatment reduced TMV lesion number, implying increased pathogen tolerance in the plant.
Claims 1 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gauthier et al.
Gauthier et al. teaches that Laminarin (Lam) is able to induce resistance against fungal pathogens, downy mildew (Plasmopara viticola) and grey mould (Botrytis cinerea) (Abstract; page 2, left column, para 4, line 3-5). It is prudent to mention here that none of the said fungal pathogens are known to act as vectors of any viral pathogen. Lam elicits defense-related events in tobacco and grapevine (page 2, left column, para 3). Laminarin treatment results in resistance Tobacco Mosaic Virus (TMV) (page 2, left column, para 4, line 3-5), as recited in claim 1. Gauthier et al. describes up-regulation of 94 genes by Lam (page 5, left column, para 5, line 15) including Subtilisin-like protease and Hypersensitive-induced response protein (Supplemental Table S2), as recited in claim 10. Gauthier et al. also describes down-regulation of 4 genes after Lam application (page 5, left column, para 5, last 2 lines), although none of the genes being downregulated is among the list of 15 genes recited in claim 1.
Applicants argue that Gauthier et al. relates to PS3 for controlling Plasmopara viticola (response, p. 9-10). However, as discussed above, Gauthier et al. also teaches laminarin treatment induced resistance to fungal pathogens. This rejection addresses the claim interpretation that the instant claims encompass increasing resistance to any pest or plant disease. See the rejection under 35 U.S.C. 112(b) above.
Conclusion
Claims 1, 3-5, 7-8 and 10-11 and 21 are rejected.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY CHATTERJEE whose telephone number is (703)756-1329. The examiner can normally be reached (Mon - Fri) 8.30 am to 5.30 pm..
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Jay Chatterjee
Patent Examiner
Art Unit 1662
/Jay Chatterjee/Examiner, Art Unit 1662
/BRATISLAV STANKOVIC/Supervisory Patent Examiner, Art Units 1661 & 1662