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
The claim amendments and submission of a new information disclosure statement (IDS) submitted on 08/04/2025 have been entered.
Claims 1-6, 14-17, 19, 21, 23, 30-32, and 35-36 are pending. Claims 7-13, 18, 20, 22, 24-29, 33-34, and 37-45 are cancelled by the Applicant.
All previous objections and rejections not set forth below have been withdrawn in view
of applicant’s amendments to the claims.
Priority
As described in previous Office action dated 4/4/2025 (page 2, para 3), claims 14 and 30 would not receive the benefit of the prior filed application. Hence, the effective filing date for claims 14 and 30 would be 04/13/2022 while the effective filing date for claims 1-6, 10, 15-17, 19, 21, 23, 26, 31-32, and 35-36 is maintained as 04/13/2021.
Claim Rejections - 35 USC § 112(a) (written description) and § 112(b)
Response to Applicant’s arguments: Amendments made to the claims filed in Applicant’s
response submitted on 08/04/2025 overcame the rejections of record under 35 USC § 112(a) (written description) and § 112(b).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-6, 15-17, 19, 21, 23, 31-32, and 35-36 are rejected under 35 U.S.C. 103 as being unpatentable over Roy–Chaudhuri et al. (US 2020/0340000 A1), in view of Bock R. (Engineering Plastid Genomes: Methods, Tools, and Applications in Basic Research and Biotechnology, 2015, Annu. Rev. Plant Biol., 66:3.1–3.31) and De Marchis et al. (Plastid Transformation in Sugar Beet: Beta vulgaris, 2014, In: Maliga, P. (eds) Chloroplast Biotechnology. Methods in Molecular Biology, vol 1132. Humana Press, Totowa, NJ., page 367-373).
Due to Applicant’s amendment to introduce a new term (Beta vulgaris) in claim 1, which was not present in any of the previous claims, this is a new rejection comprising a new prior art reference.
Claim 1 is drawn to a transgenic Beta vulgaris (sugar beet) plant comprising at least one chloroplast with one or more recombinant nucleic acid encoding a myoglobin protein. Claim 17 is drawn to the method of producing such sugar beet plants and isolating the myoglobin protein from such transgenic plants.
Roy–Chaudhuri et al. teaches materials and methods for efficient production of a bovine myoglobin comprising 100% sequence identity to instant SEQ ID NO: 4 (as recited in claims 6 and 23) in yeast (Pichia) expression system (page 1, para 0005). Sequence identity between SEQ ID NO: 18 as taught by Roy–Chaudhuri et al. and instant SEQ ID NO: 4 is shown below.
RESULT 1
US-16-858-443-18
Sequence 18, US/16858443
Patent No. 11965167
GENERAL INFORMATION
APPLICANT: Impossible Foods Inc.
TITLE OF INVENTION: MATERIALS AND METHODS FOR PROTEIN PRODUCTION
FILE REFERENCE: 38767-0158001
CURRENT APPLICATION NUMBER: US/16/858,443
CURRENT FILING DATE: 2020-04-24
PRIOR APPLICATION NUMBER: 62/838,770
PRIOR FILING DATE: 2019-04-25
NUMBER OF SEQ ID NOS: 66
SEQ ID NO 18
LENGTH: 154
TYPE: PRT
ORGANISM: Bos taurus
Query Match 100.0%; Score 807; Length 154; Best Local Similarity 100.0%;
Matches 154; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MGLSDGEWQLVLNAWGKVEADVAGHGQEVLIRLFTGHPETLEKFDKFKHLKTEAEMKASE 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MGLSDGEWQLVLNAWGKVEADVAGHGQEVLIRLFTGHPETLEKFDKFKHLKTEAEMKASE 60
Qy 61 DLKKHGNTVLTALGGILKKKGHHEAEVKHLAESHANKHKIPVKYLEFISDAIIHVLHAKH 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 DLKKHGNTVLTALGGILKKKGHHEAEVKHLAESHANKHKIPVKYLEFISDAIIHVLHAKH 120
Qy 121 PSDFGADAQAAMSKALELFRNDMAAQYKVLGFHG 154
||||||||||||||||||||||||||||||||||
Db 121 PSDFGADAQAAMSKALELFRNDMAAQYKVLGFHG 154
However, Roy–Chaudhuri et al. does not teach any transgenic Beta vulgaris plant comprising at least one chloroplast expressing a myoglobin protein.
Bock R. describes chloroplast (plastid) transformation to develop transplastomic plants (page 1, abstract) including in tobacco, Nicotiana tabacum (page 5, 4). It also describes several advantages of transplastomic plants over nuclear transformation. The advantages include, (a) the unique precision of the genetic engineering process in plastids resulting from the highly efficient homologous recombination system; (b) the absence from plastids of epigenetic transgene silencing mechanisms that interfere with transgene expression and/or durable expression over generations; (c) the possibility of stacking multiple transgenes in synthetic operons; (d) the extraordinarily high expression levels especially in seed plant plastids; and (e) increased biosafety resulting from maternal inheritance of the plastid genome. The latter greatly reduces the probability of outcrossing of transgenes by pollination (page 19, para 1).
Bock R. also describes that a typical leaf mesophyll cell contains 1,000–2,000 copies of the plastid genome and approximately 100 chloroplasts (page 5, para 4). It describes that transplastomic cells are initially heteroplasmic. To prevent the loss of the transgenic plastid genome (or transplastome), transplastomic cell lines are continuously propagated under selection pressure using at least one selectable marker until all residual wild-type genomes are eliminated. In seed plants, the stable homoplasmic transplastomic (as recited in claims 5 and 21) state, containing hundreds or thousands of stably integrated transplastomic genome (as recited in claims 2-3, 17, and 19), is typically achieved after two or three additional rounds of plant regeneration under selection (i.e., in the presence of the selection marker, often an antibiotic when an antibiotic resistance gene is used the selection marker) (page 8 last para and page 9 first para). Bock R. teaches several promoters (page 3.13, last para; page 3.14, first para), selectable markers used for chloroplast transformation (page 3.8, para 1; Table 1), and targeting sequences (in the pSB1 and pSB2 vectors) for homologous recombination in a Beta vulgaris plant chloroplast DNA (page 372, para 2, line 1-5), as recited in claims 4 and 32. It also describes transgene expression levels of up to 70% of the total soluble protein in tobacco (page 14, para 1), as recited in claims 15 and 31.
De Marchis et al. describes successful plastid (reads onto chloroplast as well) transformation in the important industrial crop of sugar beet, Beta vulgaris (abstract).
Before the date of effective filing of this application, a person with ordinary skill in the art would have been motivated to express a myoglobin gene encoding a myoglobin protein in plants, as taught by Roy–Chaudhuri et al., by transforming chloroplast genome (as described by Bock R.) in a plant including Beta vulgaris, as described by De Marchis et al., to have more efficient and higher production of the myoglobin protein, as taught by Bock R.
Before the date of effective filing of this application, it would have been obvious to a person with ordinary skill in the art to express myoglobin protein by transforming chloroplast genome in industrially important crop, Beta vulgaris, to have more efficient and higher production of the myoglobin protein.
Regarding claims 16-17, Roy–Chaudhuri et al. describes expressing a heterologous polypeptide comprising a target protein including a myoglobin fused with a polypeptide tag, such as 6X His and GST, used in isolating and purifying (page 14, para 0090, line 9-15) the target protein. Isolating and purifying 6X His or GST tagged proteins are routine and standard practice in the art.
Regarding claim 32, Roy–Chaudhuri et al. describes a recombinant nucleic acid comprising at least one enzyme (e.g. ferrochelatase) involved in heme biosynthesis pathway (Fig. 1; page 1, para 0007, right column, line 45-47; page 2, para 9, right column, line 22-31), operably linked to at least one promoter (abstract; page 1, para 0007, right column, line 24-28). The function of ALAS is the initial rate-limiting step in heme synthesis (page 3, para 0028, line 14-16). Ferrochelatase controls the final biosynthetic step to produce heme and is also known in the art to be very crucial for heme biosynthesis (Fig. 1) and is equally crucial for plants1.
Bock R. describes several promoters, selectable markers used for chloroplast (plastid) transformation, and targeting sequences (in the pSB1 and pSB2 vectors) for homologous recombination in a Beta vulgaris plant chloroplast DNA, as described above.
It would have been obvious to a person with ordinary skill in the art to express a recombinant nucleic acid comprising a myoglobin gene encoding a (heme binding) myoglobin protein in plant chloroplasts wherein the nucleic acid further comprises at least one enzyme (ferrochelatase) in the heme biosynthesis pathway, at least one selectable marker, and at least one targeting sequence needed for homologous recombination in the chloroplast in the Beta vulgaris plant with a realistic objective to increase yield of recombinant myoglobin protein in the transgenic plants. Increased demand for heme due to production of heterologous myoglobin protein would have been met by overexpressing ferrochelatase enzyme.
Regarding claim 35, Roy–Chaudhuri et al. teaches a bovine myoglobin protein comprising 100% sequence identity to instant SEQ ID NO: 4, as discussed above.
Regarding claim 36, Roy–Chaudhuri et al. describes expressing codon-optimized nucleic acid sequence introduced into a host cell (which reads on to Beta vulgaris chloroplast) from the same or a different organism or a nucleic acid generated synthetically (page 7, para 0053). Expressing a codon-optimized coding sequence (obtained from a different organism from a different classification kingdom) encoding a heterologous protein is a standard process in the art.
Claims 14 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Roy–Chaudhuri et al., in view of Bock R. and De Marchis et al. as applied to claims 1-6, 15-17, 19, 21, 23, 31-32, and 35-36; in further view of Eid et al. (Multiallelic, Targeted Mutagenesis of Magnesium Chelatase With CRISPR/Cas9 Provides a Rapidly Scorable Phenotype in Highly Polyploid Sugarcane, 2021, Frontiers in Genome Editing, 3:e654996).
Claim 14 is drawn to a transgenic plant comprising at least one chloroplast expressing a myoglobin protein, and contain a knock-down or knock-out of one or more genes encoding magnesium chelatase enzyme. Claim 30 is drawn to a method of producing such plants.
Roy–Chaudhuri et al., in view of Bock R. and De Marchis et al. describe a transgenic plant expressing a heme-binding bovine myoglobin protein by transforming chloroplast genome in industrially important crop, Beta vulgaris, as described above.
However, Roy–Chaudhuri et al., in view of Bock R. and De Marchis et al. do not explicitly describe any transgenic plant comprising a knock-down or knock-out of one or more gene(s) encoding magnesium chelatase enzyme.
Eid et al. describes naturally occurring mutations and transgenic plants to knock-down or knock-out one or more genes encoding magnesium chelatase enzyme (page 9, left column, para 4). It also describes that Mg-chelatase-impaired plants have yields similar to or higher than wild-type plants despite 50% reduction in chlorophyll content. Such mutant plants also have less requirement for nitrogen (page 9, right column, para 1).
Before the effective filing date, it would have been obvious to a person with ordinary skill in the art to express myoglobin protein in plant chloroplasts (as described by Roy–Chaudhuri et al., in view of Bock R. and De Marchis et al., as explained above), and knock-down or knock-out one or more gene(s) encoding magnesium chelatase enzyme in the Beta vulgaris plant to increase yield and reduce nitrogen requirement for the transgenic plants.
Before the effective filing date, an ordinarily skilled person would have been motivated to express myoglobin protein in the chloroplasts of a Beta vulgaris plant, and knock-down or knock-out one or more gene(s) encoding magnesium chelatase enzyme in the plant with a realistic expectation to increase yield and reduce nitrogen requirement in the transgenic plants.
Response to Applicants’ arguments
The argument set forth in the Applicant’s reply on 8/4/2025 to the rejection of claims
under 35 U.S.C. 103 has been fully considered but not found persuasive. Rejections under 35
U.S.C. 103 are modified necessitated by the claim amended.
The Applicant argues that the combination of references fails to teach or suggest all claimed elements (response, page 3, para 6). The Applicant also argues that the reference Eid et al. teaches naturally occurring mutations and transgenic plants to knock-down or knock-out magnesium chelatase (page 4, para 6) but do not disclose the element of a transgenic Beta vulgaris plant as claimed and do not cure the deficiencies of Roy–Chaudhuri et al. and Bock (page 5, para 1).
The Examiner disagrees. Roy–Chaudhuri et al. teaches a method for efficient production of a bovine myoglobin protein in yeast (Pichia) expression system while Bock R. describes chloroplast (plastid) transformation to develop transplastomic plants including in tobacco. Bock R. also describes several advantages of transplastomic plants over nuclear transformation. However, they do not teach any transgenic Beta vulgaris plant. That deficiency is cured by De Marchis et al. that describes plastid (reads on to chloroplast as well) transformation of sugar beet, Beta vulgaris. Using chloroplast transformation, as part of plant based protein production, is a well-known standard process to produce animal/mammalian proteins.
Similarly, Eid et al. teaches that Mg-chelatase-impaired tobacco plants have yields similar to or higher than wild-type plants despite 50% reduction in chlorophyll content. Such mutant plants also have less requirement for nitrogen, as discussed above. The Applicant does not provide evidence to support the opinion that the method of Eid et al. would not work in Beta vulgaris. Applicant’s opinion cannot take the place of evidence (MPEP 716.01(c)(II), 2145(I)).
In both the cases, there is no surprising result expected based on the current status of the art. Moreover, the Applicant is reminded that the burden is on Applicant to establish results that are unexpected and significant. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992).
The Applicant is reminded that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Conclusion
All claims rejected.
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.
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/Primary Examiner, Art Unit 1663
1Espinas et al. (Allocation of Heme Is Differentially Regulated by Ferrochelatase Isoforms in Arabidopsis Cells, 2016, Frontiers in Plant Science, 7:1326) provides the evidence that ferrochelatase is very crucial for plants, too (page 2, left column, last para).