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 .
Status of Claims
Claims 1-3, 7, 11, 13-14, 19-20, 25, 28-29, & 36-43 are under examination on the merits.
The objection to claims 19 & 43 are withdrawn in light of Applicant’s amendments.
The rejections of 2 & 3 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are withdrawn in light of Applicant’s amendments.
The rejection of claims 1, 2, 11, 18, 25, & 28 under 35 U.S.C. 102(a)(2) as being anticipated by Nuccio et al (US 2022/0389438 A1) is withdrawn in light of Applicant’s amendments.
Claim Rejections - 35 USC § 112
Improper Dependency
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 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. This is a new rejection necessitated by Applicant’s amendments.
Claim 1 recites the target cells in the second region comprise pre-existing gamete-producing cells and the gamete-producing cells are operable to give rise to gametes that produce gene edited seeds upon fertilization (lines 12-14). The instant specification describes that gamete-generating cells are cells that are capable of forming gametes or give rise to gamete forming cells (paragraph [0035]). However, claim 3 recites the second region is selected from shoot apical meristem, floral meristem, inflorescence meristems, root apical meristem, lateral meristem, and combinations thereof. Lateral meristem and root apical meristem would not give rise to gametes or even to gamete-forming cells, so claim 3 fails to include all the limitations of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1, 2, 3, 7, 11, 13-14, 19, 25, 28, & 36-38 are rejected under 35 U.S.C. 103 as being unpatentable over Nuccio et al (US 2022/0389438 A1, published 12/8/2022, but with a filing date of 10/22/2020 and a priority date of 10/22/2019, both prior to the effective filing date of the instant application) taken with the evidence of Wong et al (2009) The Plant Journal. 57: 832-845 (published 11/27/2008, hereafter Wong).
Due to Applicant' s amendment of the claims, the rejection is modified from the rejection as set forth in the Office action mailed 10/31/2025, as applied to claims 1, 2, 3, 7, 9, 11, 13-14, 18, 19, 25, 27-28, & 36-38. Applicant' s arguments filed 3/2/2026 have been fully considered but they are not persuasive.
Claims 1, 2, 3, 7, 11, 13-14, 19, 25, 28, & 36-38 are drawn to a method of editing at least one gene in plant target cells, comprising introducing genetic components of a gene editing system to a first region of the plant wherein the target cells are located in a second region of the plant.
Nuccio teaches a method which relies on RNA molecules comprising genome-editing reagents introduced into a plant and taken up into meristematic cells to alter the meristematic cell genomes so that the mutations are carried into germline cells (paragraph [0030]). Nuccio teaches an embodiment comprising generating a high copy plasmid comprising an optimized Cas12a coding sequence followed by a DR sequence of the CRISPR array and a guide RNA region for a soybean phytoene desaturase gene followed by a Flowering Time (FT) sequence (paragraph [0139]). Nuccio teaches that FT-based vectors work as meristem transport segments that travel through the plant, typically via phloem, and are taken up into meristematic tissues (paragraph ([0031]). Nuccio teaches soy plants with the leaf tip of the second trifoliate removed and submerged in the RNA solution so the plant can absorb the mRNA solution (paragraph [0140]). Nuccio teaches that in 1-2 weeks, the phenotype will appear in new growth; although the phytoene desaturase gene mutation is a lethal mutation and plants will not set seed, Nuccio envisions using the method to make non-lethal mutations that are transmissible through the germline (paragraph [0141]).
Nuccio also teaches an embodiment wherein DNA encoding the RNA-guided nuclease is provided in DNA provided in a viral vector or in DNA that is not integrated into the plant genome (paragraph [0041]). Nuccio envisions a plant comprising a vector encoding an RNA molecule comprising a cargo segment fused to a meristem transport segment and a DNA molecule encoding an RNA-guided nuclease (claim 35, paragraph [0111]). Nuccio envisions recombinant DNA having a sequence capable of producing a meristem delivery vector as a transcript (claim 23). Furthermore, Nuccio teaches that the RNA molecules comprising gRNA fused to an MTS may be provided in combination with a donor DNA template to effect insertions of DNA elements at the targeting editing site (paragraph [0050]).
Additionally, Nuccio teaches a motivation for in vivo transformation, because current genome editing methods delivered to transformable and regenerable germplasm requires prolonged backcrossing into commercial germplasm before the phenotypic impacts of edits can be assessed. Such methods require tissue culture, specific skills and equipment, and time and expense, so bypassing callus induction and/or tissue culture would reduce time and resources required (paragraphs [0005-0006]).
Nuccio teaches a meristem transport segment fused to the RNA molecule, and provides examples such as a Flowering Time-derived sequence or a tRNA like sequence (Nuccio claim 1, 16). Nuccio teaches that RNAs can be applied at a vegetative stage to reach vegetative meristems before they convert to floral meristems, in which case germline cells of the treated plant and their daughter cells will have the intended genome alteration prior to transitioning to reproductive development, but also teaches that the RNA molecules can be applied to floral meristems (paragraphs [0011 & 0056]). Nuccio teaches a method of contacting a plant with an RNA composition as described and retrieving a progeny of the plant with an altered genome (Nuccio claim 24). Nuccio teaches mutated seeds from plants edited with the method or pollen from edited plants used in crosses with other individuals (paragraph [0057]).
Nuccio envisions as an embodiment the delivery of an array of a plurality of guide RNAs separated by processing elements to provide for gene editing at a plurality of genomic locations, the guide RNAs separated by processing elements comprising direct repeats capable of being processed by an RNA-guided nuclease (paragraph [0046]). Alternatively, Nuccio envisions guide RNAs flanked by processing elements such as Csy4 so that functional guide RNAs are excised inside cells (paragraph [0045]). Nuccio envisions an embodiment wherein more than one composition is introduced to the plants, comprising RNA molecules comprising guide RNAs and processing elements not recognized by a RNA-guided nuclease polypeptide encoded by RNA molecules of the other composition (Nuccio claim 28).
Nuccio envisions the method wherein a cargo segment on a first RNA molecule comprises guide RNAs and also comprises an RNA-guided nuclease polypeptide encoding sequence (Nuccio claim 9) as well as an embodiment wherein the cargo segment comprising the guide RNA is on a first RNA molecule and an RNA-guided nuclease polypeptide encoding sequence is on a second RNA molecule (Nuccio claim 10).
Nuccio envisions the polynucleotide encoding the RNA-guided nuclease localized in meristem tissues of the plant (Nuccio claim 31), optionally wherein a DNA molecule encoding the RNA-guided nuclease is operably linked to a promoter preferentially expressed in meristem target plant cells (Nuccio claim 32). Nuccio teaches a recombinant DNA having a sequence capable of producing a transcript comprising the guide RNA and RNA-guided nuclease fused to the meristem transport segment of the method (Nuccio claim 23). Nuccio teaches that various methods, including Agrobacterium-mediated transformation, particle bombardment, and electroporation, may mediate the delivery of the compositions comprising the RNA molecules, nucleic acids encoding RNA guided nucleases, and/or donor DNA templates (paragraph [0048, 0051]).
Nuccio does not teach a working example wherein the genetic components of the CRISPR/Cas system are introduced in the form of DNA, wherein the genetic components are on different expression vectors, wherein the target cells are capable of forming gametes or giving rise to gamete forming cells capable of forming seeds upon fertilization or are floral meristem cells, or wherein the RNA molecules are delivered to the plant by particle bombardment, Agrobacterium-mediated transformation, or electroporation.
Wong provides evidence that flowering happens when shoot apical meristem switches from leaf production to the initiation of floral organs (page 832, left column, paragraph 1).
Prior to the effective filing date of the instant application, it would have been obvious to one of ordinary skill in the art to modify the method of Nuccio to introduce a non-lethal gene editing construct so that the modified meristematic target cells would be capable of forming gametes capable of forming seeds upon fertilization. One of ordinary skill would have been motivated to do so in order to reduce time and resources required to recover progeny plants with edited phenotypes. One of ordinary skill in the art would have had reasonable expectation of success, because Nuccio proposed the method to modify germline cells and recover seeds, and soybean genome editing had been performed prior to the filing of the instant application. In addition, because Wong provides evidence that floral tissues arise from shoot apical meristem, it would have been obvious that the meristematic cells targeted by Nuccio would read on pre-existing gamete-producing cells (instant claim 1, line 12) that would be operable to give rise to gametes that produce gene-edited seeds (instant claim 1, line 13) would encompass shoot apical meristem as a second region, whereas the first region of introduced genetic components would be a leaf (instant claim 3).
Under the broadest reasonable interpretation of claim 1, a donor DNA template is sufficient for the introduced genetic components to comprise DNA. One of ordinary skill in the art would have been motivated to introduce a donor DNA molecule in the method of Nuccio in order to insert DNA elements at the target editing site in the plant genome. However, before the filing of the instant application, it would also have been obvious to one of ordinary skill in the art to modify the method of Nuccio to introduce the genetic components in the form of DNA that is transcribed into RNA in the first region rather than introduced as RNA, either as one single expression vector or as two vectors comprising the Cas nuclease and the guide RNA separately. One of ordinary skill in the art would have been motivated to introduce the components as DNA, either as a single or as two separate expression vectors, because these embodiments are suggested by Nuccio. One of ordinary skill in the art would have had reasonable expectation of success, because introduction of genetic components as DNA to soybean was routine prior to the filing of the instant application.
Before the filing of the instant application, it would have been obvious to one of ordinary skill in the art to modify the method of Nuccio to have the genetic components of the gene editing system be transported to a floral meristem and/or to edit at least one gene in floral meristematic cells. One of ordinary skill in the art would have been motivated to target floral meristematic cells in a floral meristem, as presented above, because modifying germline cells would reduce time and resources required to recover progeny plants with edited phenotypes. One of ordinary skill in the art would have had reasonable expectation of success, because Nuccio envisions the RNA molecules applied directly to floral meristems in order to modify germline cells. Thus, instant claims 7 & 13 are obvious.
Before the filing of the instant application, it would have been obvious to one of ordinary skill in the art to modify the method of Nuccio to introduce the genetic components via electroporation, particle bombardment, or agroinfiltration. One of ordinary skill in the art would have been motivated to use one of these methods of introduction because they were suggested by Nuccio as suitable alternative methods of introducing the genetic components so they would be substitutions of known methods. One of ordinary skill in the art would have had reasonable expectation of success, because electroporation, particle bombardment, or agroinfiltration were all routine methods for introduction of genetic components to plants prior to the filing of the instant application. Thus, instant claim 19 is obvious.
Nuccio’s method of introducing genetic components of a Cas12a coding sequence, guide RNA targeting a soybean gene, and FT sequence into a soybean plant to observe a gene edited phenotype makes obvious the method of instant claim 1 comprising introducing genetic components of a gene editing system to a first region of the plant, wherein the target cells are located in a second region of the plant that is different, wherein the genetic components are transported from the first region to the second, and wherein the genetic components are processed in the target cells in the second region to form the gene editing system and wherein the gene editing system edits the at least one gene in the target cells. Instant claim 2, wherein the plant is a soybean, and instant claim 11, wherein the target cells are meristematic cells, are also obvious. The method makes obvious that the editing comprises introducing a mutation to the gene, in the case of Nuccio to the phytoene desaturase gene (instant claim 25). Claim 28 (wherein the gene editing system comprises a CRISPR/Cas system comprising at least one Cas nuclease and at least one guide RNA) is also obvious.
Instant claim 14 is obvious over Nuccio, because the introduced DNA would be transcribed in order for the meristem transport segment to function as a transport signal to facilitate the transport of the RNA from the first region to the meristem region. Claim 36 is also obvious, because the method of Nuccio relies on the Cas nuclease to cut the RNAs to form the guide RNA and association with the guide RNA to form the CRISPR/Cas system would be required to successfully edit the target cell genome. And, claims 37-38 are obvious, because the use of a single expression vector or two separate vectors is suggested by Nuccio.
Claims 1, 2, 3, 7, 11, 13-14, 19, 25, 28, & 36-38 are obvious over Nuccio.
Applicant urges that Nuccio fails to teach or suggest plant gene editing systems that introduce DNA-based genetic components and instead discloses the use of DNAse treatment to eliminate DNA components from RNA-based genetic components (Remarks, page 7, paragraph 4).
This argument is unpersuasive, because although the working example provided by Nuccio relied on RNA components, Nuccio teaches an embodiment wherein the provided components comprise a donor DNA template as well as an embodiment wherein the RNA molecule comprising the meristem transport segment is encoded by a vector (reads on DNA) in a plant. Nuccio therefore does teach embodiments that read on systems that introduce DNA-based genetic components.
Applicant urge that Nuccio fails to teach methods that focus on the genetic modification of pre-existing gamete-producing cells operable to give rise to gametes rather than gene editing after formation of meristem cells. Applicant points to Nuccio paragraph [0030] (Remarks, page 8, paragraph 1 & page 9, paragraph 2).
This argument is unpersuasive, because the instant specification defines gamete-generating cells as cells that are capable of forming gametes or give rise to gamete forming cells (paragraph [0035]). Nuccio (paragraph [0030]) describes embodiments wherein RNA molecules are introduced into a plant and taken up into meristematic cells, thus altering meristematic cell genomes. Nuccio teaches that the mutations to the meristematic cell genomes are carried into germline cells. The meristematic cells of Nuccio meet the instant specification definition of a gamete-generating cell, because the meristematic cells are capable of giving rise to cells that will form gametes, and they meet the requirement to be pre-existing because the cells are present when the genome-editing reagents are introduced into the plant.
If Nuccio’s targeted meristematic cells do not meet the limitation of a pre-existing gamete-producing cell, then it is unclear how the shoot apical meristematic cells of instant claim 11 fulfill the limitation.
Applicant urges that modifying Nuccio to utilize DNA-based genetic components would have made the reference unsuitable for its intended purpose of utilizing RNA-based genetic components and that Nuccio teaches away from using DNA-based genetic components because it teaches using DNAase treatment when using RNA-based genetic components (Remarks, page 9, paragraph 1).
This argument is unpersuasive, because Nuccio suggests embodiments wherein the components for altering the plant genome comprise a vector encoding an RNA molecule and/or a DNA molecule encoding an RNA guided nuclease (Nuccio claim 35) or a DNA donor molecule (paragraph [50]). Nuccio does not teach away from using DNA-based genetic components simply because Nuccio uses DNase treatment in an embodiment that does not rely on DNA-based genetic components. One of ordinary skill in the art would have recognized that embodiments utilizing RNA genetic components may require different treatment than embodiments utilizing DNA genetic components. Teaching an alternative method does not constitute teaching away, because Nuccio does not teach that methods utilizing DNA-based genetic components would be inoperable.
Applicant urges that DNA based genetic components provides for a more efficient and stable transport of genetic components, which is a significant distinction from Nuccio (Remarks, page 9, paragraph 3).
This argument is unpersuasive, because Nuccio describes embodiments wherein genetic components of the genome editing compositions are provided as DNA. DNA based genetic components would have been obvious over Nuccio prior to the filing of the instant application.
Applicant urges that genetic modification of pre-existing gamete-producing cells allows for the efficient production of gene edited seeds without de novo cell formation (Remarks, page 9, paragraph 3).
This argument is unpersuasive, because new cells would necessarily be formed in the production of gene-edited seeds. The meristematic cells targeted by Nuccio read on pre-existing cells because they are present when the genome-editing reagents are introduced into the plant. They also are encompassed by the instant specification’s definition of a gamete-generating cell, because the meristematic cells are capable of giving rise to cells that will form gametes. If Nuccio’s targeted meristematic cells did not meet the limitation of a pre-existing gamete-producing cell, then it is unclear how the shoot apical meristematic cells of instant claim 11 would fulfill the limitation. Furthermore, Nuccio teaches an embodiment wherein RNA molecules are applied to floral meristems (paragraphs [0011 & 0056]). Thus, genetic modification of pre-existing gamete-producing cells is obvious over Nuccio.
Applicant urges that remaining claims depend on independent claim 1, which Applicant urges is not anticipated by Nuccio, so remaining claims are not anticipated by Nuccio either. Applicant also urges that Nuccio fails to teach or suggest targeting cells that include shoot apical meristematic cells as required by claim 11 (Remarks, page 8, paragraphs 2-3). Applicant urges that Nuccio cannot be modified to render dependent claims as obvious because any modifications of Nuccio would make Nuccio unsuitable for intended purpose (Remarks, page 9, paragraph 4-page 10, paragraph 1).
This argument is unpersuasive, because independent claim 1 is obvious, for the reasons presented above. Nuccio would not have been made unsuitable by using one of the embodiments provided by Nuccio’s own disclosure. Additionally, the working example provided by Nuccio teaches that the albino phenotype resulting from the method to target the phytoene desaturase gene will appear in new growth of the soybean plant, which reads on targeting shoot apical meristematic cells even if the term “shoot apical” is not used by Nuccio.
Applicant urges that Nuccio fails to teach or suggest introduction of DNA-based genetic components into plants where the DNA components are transcribed into RNAs in a first region of a plant and include a transport signal for facilitating the transport of transcribed RNAs to the second region of the plant. Applicant urges this is a significant defect because RNA transport signals enhance transportation efficiency of the components (Remarks, page 10, paragraph 2).
This argument is unpersuasive, because Nuccio teaches an embodiment of a plant comprising a vector encoding the RNA molecule comprising the meristem transport segment. A vector encoding the RNA molecule reads on a DNA vector encoding the RNA molecule and would be obvious given Nuccio’s teachings of the composition provided as DNA. Instant claim 14 is obvious over Nuccio, because the introduced DNA would be transcribed in order for the meristem transport segment to function as a transport signal to facilitate the transport of the RNA from the first region to the meristem region.
Applicant urges that Nuccio fails to teach or suggest the introduction of any gene editing systems into plants through agroinfiltration as required by amended claim 19 (Remarks, page 10, paragraph 3).
This argument is unpersuasive, because although Nuccio does not teach a working example wherein the gene editing system is introduced into plants via agroinfiltration, Nuccio does teach that the composition comprising the gene editing system components may be delivered to the plant via Agrobacterium-mediated transformation (paragraph [0048, 0051]), which reads on agroinfiltration and makes instant claim 19 obvious.
Claim(s) 20, 29, & 40-43 are rejected under 35 U.S.C. 103 as being unpatentable over Nuccio as applied to claims 1, 2, 3, 7, 11, 13-14, 19, 25, 28, & 36-38 above, and further in view of Cermak et al (2017) The Plant Cell. 29:1196-1217 (published 5/18/2017, hereafter Cermak).
Due to Applicant' s amendment of the claims, the rejection is modified from the rejection as set forth in the Office action mailed 10/31/2025, as applied to claims 1, 2, 3, 7, 9, 11, 13-14, 18-20, 25, 27-29, 36-38, 40-43 & 50. Applicant' s arguments filed 3/2/2026 have been fully considered but they are not persuasive.
Claims 29 & 40-43 are drawn to the method of editing at least one gene in plant target cells wherein the genetic components comprise a genetic component of a guide RNA nuclease operable to convert the guide RNA precursor to guide RNA. Claim 20 is drawn to the method wherein the genetic components are introduced through a bacterial host strain of A. tumefaciens carrying the genetic components.
The teachings of Nuccio are presented above. Nuccio does not teach a working example wherein the introduced genetic components comprise a guide RNA nuclease.
Cermak teaches a method of genome engineering to target multiple sites simultaneously using vectors for multiplexed genome editing that comprise multiple gRNAs separated by Csy4 hairpins processed by the Csy4 protein (page 1198, left column, paragraph 2-page 1199, right column, paragraph 1). These vectors were cotransformed into tomato along with a vector encoding Cas9. Cermak teaches that the Cas9 contained a C-terminal nuclear localization signal (page 1197, right column, paragraph 2). Mutagenesis was 2-fold higher with the Csy4 expression system than constructs with multiple PolIII promoters (page 1200, left column, paragraph 1). Cermak teaches a similar genome editing method comprising Cas9 and Csy4 in M. truncatula (table 1). For this method, gRNAs were transformed into M. truncatula via A. tumefaciens EHA105 (page 1212, right column, paragraph 3).
Before the filing date of the instant application, one of ordinary skill in the art would have been motivated to modify the method of Nuccio to introduce a genetic component of a guide RNA nuclease such as Csy4 to process the RNA transcripts into guide RNA along with the Cas nuclease and guide RNA precursor molecule. One of ordinary skill would have been motivated to do so because Cermak teaches that mutagenesis occurs at a higher frequency with a Csy4 expression system than when multiple gRNA precursors are amplified with separate promoters. One of ordinary skill would have had reasonable expectation of success, because Nuccio suggested a method of using a complex of multiple gRNA precursors processed by Csy4. Thus, the method of claim 29 is obvious. In addition, because the method of introducing the genetic components as DNA is obvious as presented above, instant claims 40 and 43 are obvious.
Nuccio teaches the introduction of the genetic components of the gRNA precursor and Cas protein on a single expression vector, which makes obvious instant claim 41. However, Nuccio also teaches a method wherein multiple RNA molecules are introduced and flanked by different processing elements, and the guide RNAs of the first RNA molecule are not recognized by the RNA-guided nuclease polypeptide encoded by the first composition. This reads on instant claim 42, wherein the first expression vector (which reads on the genetic components comprising DNA) expresses a Cas nuclease and guide RNA and a second expression vector expresses a guide RNA nuclease.
Before the filing of the instant application, it would have been obvious to one of ordinary skill in the art to use A. tumefaciens as a bacterial host carrying the genetic component to introduce into the plant (instant claim 20). One of ordinary skill would have been motivated to use A. tumefaciens, even though Nuccio is silent as to the species used in Agrobacterium transformation, because Cermak teaches an example where this is a suitable species for transforming a plant with a gRNA construct. One of ordinary skill would have reasonable expectation of success because M. truncatula and soybean are both legumes.
Claims 1-3, 7, 11, 13-14, 19-20, 25, & 28-29, 36-38 & 40-43 are obvious over Nuccio in view of Cermak.
Applicant urges that Nuccio fails to teach or suggest a method that introduces DNA-based genetic components into plants and that modification to utilize DNA-based genetic components would have made the reference unsuitable for its intended purpose. Application urges that Nuccio fails to teach methods that focus on genetic modification of pre-existing gamete-producing cells. Applicant urges that Cermak fails to cure the defects of Nuccio (Remarks, page 10, paragraph 5-page 11, paragraph 2).
This argument is unpersuasive, because Nuccio teaches embodiments wherein the components for altering the plant genome comprise a vector encoding an RNA molecule and/or a DNA molecule encoding an RNA guided nuclease (Nuccio claim 35) or a DNA donor molecule (paragraph [50]). These embodiments read on a method that introduces DNA-based genetic components into plants. Nuccio would not have been made unsuitable by using one of the embodiments provided by Nuccio’s own disclosure. Teaching alternative methods does not constitute teaching away.
The meristematic cells targeted by Nuccio read on pre-existing cells because they are present when the genome-editing reagents are introduced into the plant. They are encompassed by the instant specification’s definition of a gamete-generating cell (paragraph [0035]), because the meristematic cells are capable of giving rise to cells that will form gametes. If Nuccio’s targeted meristematic cells did not meet the limitation of a pre-existing gamete-producing cell, then it is unclear how the shoot apical meristematic cells of instant claim 11 would fulfill the limitation. Furthermore, Nuccio teaches an embodiment wherein RNA molecules are applied to floral meristems (paragraphs [0011 & 0056]). Thus, genetic modification of pre-existing gamete-producing cells is obvious over Nuccio.
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Nuccio as applied to claims 1, 2, 3, 7, 11, 13-14, 19, 25, 28, & 36-38 above, and further in view of Al-Shayeb et al (WO 2020/181101 A1, published 9/10/2020 with priority to 3/7/2019; hereafter Al-Shayeb).
Due to Applicant' s amendment of the claims, the rejection is modified from the rejection as set forth in the Office action mailed 10/31/2025, as applied to claims 1, 2, 3, 7, 9, 11, 13-14, 18, 19, 25, 27-28, & 36-39. Applicant' s arguments filed 3/2/2026 have been fully considered but they are not persuasive.
Claim 39 is drawn to the method wherein the Cas nuclease comprises Casɸ fused to at least one nuclear localization peptide.
The teachings of Nuccio are presented above. Nuccio envisions the method wherein the guide RNAs are for a Cas12j RNA-guided nuclease (Nuccio claim 5). Nuccio teaches a sequence for Cas12j-1, & 3 proteins, Nuccio SEQ ID NOs: 57, 59, & 61, from Pausch (table 1).
Nuccio does not teach a Casɸ nuclease fused to at least one nuclear localization peptide.
Al-Shayeb teaches a heterologous Cas12j fusion polypeptide that contains a subcellular localization sequence such as a nuclear localization signal for targeting to the nucleus (paragraph [0199-0200]). Al-Shayeb teaches that when a Cas12J does not include an NLS the protein will not be targeted to the nucleus, which is advantageous when the target is an RNA present in the cytosol (paragraph [0199]). Al-Shayeb teaches that Cas12J is the same as Casɸ (paragraph [00728]).
Prior to the filing date of the instant application, it would have been obvious to one of ordinary skill in the art to substitute the Cas9 nuclease of the method of Nuccio for a Casɸ nuclease fused to at least one nuclear localization signal (NLS). One of ordinary skill in the art would have been motivated to use a Casɸ nuclease fused to an NLS in order to target the protein to the nucleus, where DNA would be edited, rather than the cytosol, where the Casɸ nuclease could target RNA instead. One of ordinary skill in the art would have had reasonable expectation of success because Nuccio suggested using a Cas12j protein as the Cas nuclease, and Al-Shayeb teaches that Casɸ is the same as Cas12j. Thus, instant claims 1, 2, 3, 7, 11, 13-14, 19, 25, 28, & 36-39 are obvious over Nuccio in view of Al-Shayeb.
Applicant urges that Al-Shayeb fails to cure the defects in Nuccio to teach introducing DNA-based genetic components into plants and the genetic modification of pre-existing gamete-producing cells. Applicant urges that these modifications would have made Nuccio unsuitable for its intended purpose of utilizing RNA-based genetic components. Applicant urges that Nuccio teaches away from amended claim 1 (Remarks, page 11, paragraph 4-page 12, paragraph 2).
This argument is unpersuasive, because Nuccio teaches embodiments wherein the components for altering the plant genome comprise a vector encoding an RNA molecule and/or a DNA molecule encoding an RNA guided nuclease (Nuccio claim 35) or a DNA donor molecule (paragraph [50]). These embodiments read on a method that introduces DNA-based genetic components into plants. Nuccio would not have been made unsuitable or inoperable by using one of the embodiments provided by Nuccio’s own disclosure. Teaching alternative methods does not constitute teaching away.
The meristematic cells targeted by Nuccio read on pre-existing cells because they are present when the genome-editing reagents are introduced into the plant. They are encompassed by the instant specification’s definition of a gamete-generating cell (paragraph [0035]), because the meristematic cells are capable of giving rise to cells that will form gametes. If Nuccio’s targeted meristematic cells did not meet the limitation of a pre-existing gamete-producing cell, then it is unclear how the shoot apical meristematic cells of instant claim 11 would fulfill the limitation. Furthermore, Nuccio teaches an embodiment wherein RNA molecules are applied to floral meristems (paragraphs [0011 & 0056]). Thus, genetic modification of pre-existing gamete-producing cells is obvious over Nuccio.
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Victoria L DeLeo whose telephone number is (703)756-5998. The examiner can normally be reached M-F 8:00am-4pm EDT.
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/VICTORIA L DELEO/Examiner, Art Unit 1662
/Anne Kubelik/Primary Examiner, Art Unit 1663
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