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 1-19 are pending and under examination.
WITHDRAWN REJECTIONS
Claim Rejections - 35 USC § 103
Claims 1-4, 6, 8-11 and 13 were rejected under 35 U.S.C. 103 as being unpatentable over Purcell et al (ACS Synth Biol. 2014 Oct; hereinafter "Purcell;" See PTO-892 of 09/30/2025) in view of Kagale et al (Plant Physiol. 2010 Mar; hereinafter "Kagale"; See PTO-892) and Tiwari et al (Plant J. 2012 Jun; hereinafter "Tiwari;" See PTO-892 of 09/30/2025).
Claim 5 was Purcell et al (ACS Synth Biol. 2014 Oct; hereinafter "Purcell;" See PTO-892 of 09/30/2025) in view of Lutfiyya (US20090144849-A1; Published 2009-06-04; See PTO-892 of 09/30/2025) and Tiwari et al (Plant J. 2012 Jun; hereinafter "Tiwari;" See PTO-892 of 09/30/2025).
Claim 12 was rejected under 35 U.S.C. 103 as being unpatentable over Purcell et al (ACS Synth Biol. 2014 Oct; hereinafter "Purcell;" See PTO-892 of 09/30/2025) in view of Kagale et al (Plant Physiol. 2010 Mar; hereinafter "Kagale"; See PTO-892) and Tiwari et al (Plant J. 2012 Jun; hereinafter "Tiwari;" See PTO-892 of 09/30/2025), further in view of Jensen et al (Biochem J. 2010 Feb 9; Hereinafter "Jansen;" See PTO-892); and Xu et al (Plant Cell. 2013 Nov; hereinafter "Xu;" See PTO-892).
The rejections are withdrawn following claim amendments.
NEW REJECTIONS
Claim Rejections - 35 USC § 112
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 1-19 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.
The claim requires a transcription factor comprising a DNA binding domain and an effector domain comprising one of the claimed sequences.
First, the specification does not demonstrate possession of the claimed synthetic transcription factor as a whole. The specification describes functional characterization of plant effector domains and discusses their ability to activate or repress transcription. However, the specification does not provide functional examples demonstrating synthetic transcription factors comprising DNA-binding domain linked to the claimed effector domains. Rather the disclosure is directed principally to characterization of effector activity of the effector domains themselves. The disclosure concerning the transcriptional network comprising 37 transcription factors and 171 direct genomic targets integrated effector activity of the effector activity data with previously published DNA-binding and temporal gene expression data but does not demonstrate synthetic transcription-factor constructs comprising the claimed sequences. Accordingly, the specification does not reasonably convey possession of the claimed DNA-binding domain /effector domain combinations.
Second, the specification does not demonstrate effector function for each of the numerous specific effector domain sequences recited in claim 1. Although the specification states that more than 400 plant effector domains were functionally characterized, the disclosure principally described aggregate characteristics of activator, repressor, and minimally active populations and provides functional validation for selected examples. The specification itself demonstrated that predicted activation domain sequences do not necessarily reproduce activity of their parent effector. For example, the specification at [0144] stated that “The ADpred predicted motifs of ESE3 and WRKY46 induce the expression of GFP similar to their full-length effectors and outperform VP16, showcasing the potential to mine plant TFs using a fungal predictor. The two motifs of PHL4 are not able to induce GFP in the same manner as their parent effector, suggesting that either the two motifs need to function as a bipartite motif or the parent effector uses a mechanism that the model cannot predict.”
Thus, the identification or characterization of a sequence as part of population of effector domains or identification of sequence composition does not by itself reasonably convey possession of each specific SEQ ID NO recited in claim 1 as a functional effector domain.
Accordingly, while the specification provides substantial disclosure concerning plant effector domains and their functional characteristics it does not reasonably convey that Applicant was in possession of (1) synthetic transcription factors comprising DNA-binding domains linked to the claimed effector domains or, (2) the full scope of specific SEQ ID NOs recited in claim 1 as functional effector domains.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAGAMYA VIJAYARAGHAVAN whose telephone number is (703)756-5934. The examiner can normally be reached 9:00a-5:00p.
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/JAGAMYA NMN VIJAYARAGHAVAN/Examiner, Art Unit 1633
/EVELYN Y PYLA/Primary Examiner, Art Unit 1633
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