DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 29 July 2026 has been entered.
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
Claims 1, 5, 7-10, 12, 14, 16, 21, 29, 32, 36-37 & 39 are under examination on the merits.
Claims 61, 69, 72, 77 & 79 are withdrawn from examination as being directed to non-elected inventive groups.
Claims 2-4, 6, 11, 13, 15, 17-20, 22-28, 30-31, 33-35, 38, 40-60, 62-68, 70-71, 73-76, 78 & 80-98 are canceled.
Priority
Claims 1, 5, 8-10, 12, 14, 16, 21, 29, 32, 36-37 & 39 receive the U.S. effective filing date of 04/21/2022.
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.
Claims 1, 5, 7-10, 12, 14, 16, 21, 29, 32, 36-37 & 39 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang [Plant Biotechnol J. 17(12):2272-2285 (2019); Published 20 May 2019, with supplement] in view of Chapman [Journal of Experimental Botany, Vol. 72, No. 22 pp. 7710–7728; Published 8 Aug 2021].
Due to Applicant’s amendment of the claims, the rejection is modified from that set forth in the Office action mailed 30 April 2026 as applied to claims 1, 5, 7-10, 12, 14, 16, 21, 29, 32, 36-37 & 39. Applicant’s arguments 29 July 2026 have been considered but are not persuasive.
The claims are drawn to generating a loss of transcription factor activity of NAC7 protein in maize, which causes a staygreen phenotype associated with higher yield.
Zhang teaches that loss of transcription factor activity of the NAC7 gene results in staygreen phenotype and increased yield of maize. They disclose germplasm with a naturally occurring deletion mutation in the NAC7 gene that causes loss of transcription factor activity and results in a higher-yielding ‘staygreen’ phenotype [p.2272, ‘Summary’]. Zhang provides sequence of this NAC7 as gene model GRMZM2G114850 or ‘nactf108’, submitted to the MaizeGDB database, and describes its role in the stay-green phenotype. Zhang describes the corresponding increase in yield seen in the germplasm of the Illinois Low Protein (ILP) maize population [p.2274, col.1, ¶.1].
They also report the wild-type variant of maize NAC7, which does not have the staygreen phenotype and associated higher yield of the ILP protein [p.2273, col.2, ¶.2—p.2274, col.1, ¶.3]. Applicant indicates SEQ ID NO.104 is sequence encoding the wild-type NAC domain of maize [Remarks, p.9, ¶.2]. This wild-type allele of NAC7 would inherently contain an intact wild-type NAC domain (i.e. Applicant’s SEQ ID NO.104) conferring normal (i.e. wild-type) function observed in the Illinois High Protein (IHP) population [p.2273, col.2, ¶.2].
Zhang validates the effect of function and loss-of-function of NAC7 polypeptide through traditional QTL mapping of the naturally occurring NAC7 alleles and functionally verifies this using RNAi gene silencing. Zhang describes disruption of the function of NAC7 protein which has an intact NAC7 domain (i.e. it is the wild-type allele) by down-regulation via RNAi [p.2272, ‘Summary’].
Zhang teaches a sequence (nactf108) of 94.47% identity (i.e. ‘at least 80% sequence identity’) to Applicant’s SEQ ID NO.72, relevant to making changes that would disrupt proper function of the gene [See MaizeGDB alignment in attached SEQ ID NO:72 NCBI search results]:
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495
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Zhang teaches a sequence (nactf108) of 98.42% identity (i.e. ‘at least 80% sequence identity’) to Applicant’s SEQ ID NO.75, relevant to making changes that would disrupt proper function of the gene [See MaizeGDB alignment in attached SEQ ID NO:75 NCBI search results]:
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Zhang teaches a sequence (nactf108) of 93.99% identity (i.e. ‘at least 90% sequence identity’) to Applicant’s SEQ ID NO.114, relevant to making changes that would disrupt proper function of the gene. [See MaizeGDB alignment in attached SEQ ID NO:114 NCBI search results]:
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Zhang teaches the NAC7 gene and provides depiction of variant alleles in Supporting Figure 2. This shows insertion/deletion of 1-12 nucleotides in the Exon 2 region of the NAC7 gene (i.e., at least one mutation is a deletion of at least one base pair), which causes a truncation of the NAC7 protein (i.e., ‘a mutated NAC7 gene that produces a truncated…polypeptide’). The insertion/deletion of nucleotides as depicted by Zhang results in loss of normal transcription factor activity/function in NAC7 (i.e. the mutant NAC7 protein does not perform its normal transcription factor functions).
Zhang teaches mutation in Exon 2 results in a truncated NAC7 protein without the C-terminus end of the protein, which includes loss of at least one amino acid residue (i.e. ‘truncation of one amino acid’) [Supporting Figure 2].
Zhang teaches disrupting NAC7’s transcription factor activity impacts yield via increased biomass [p.2275, col.1, ¶.2 & Figure 3]. Zhang states that functional staygreen results in higher grain yield and teaches that crosses involving nac7 mutants (i.e. ‘staygreen’ phenotypes) produced hybrids with increased grain yield over multiple years and environments [p.2272, ‘Summary’; p.2280, col.2, ¶.1].
Zhang teaches that mutants with defective NAC7 transcription factor activity are ‘staygreen’ maize plants. Zhang teaches disrupting the naturally occurring NAC7 gene (i.e. generating loss-of-function in NAC7) via RNAi results in staygreen maize plants. They clearly identify the molecular sequences of the NAC7 gene in maize. They demonstrate that staygreen phenotypes are associated with higher yield in the Illinois High & Low Protein maize populations [p.2272, ‘Summary’].
Zhang does not teach directed mutation of the NAC7 gene or mutant variants including an intact NAC domain per se. Zhang does not teach the specific mutation regions, mutations, or subcomponent/fragment sequences outside of Exon 2.
Chapman teaches that NAC transcription factors can be manipulated or mutated to impair transcription factor activity and induce staygreen phenotypes via base pair substitutions (i.e. still possessing an intact NAC domain). They teach disruption of normal NAC transcription factor function via directed mutation that results in the staygreen phenotype.
Chapman teaches the manipulation of NAM-1, which is a NAC gene, in wheat [p.7711, col.1, ¶.3, l.10-15]. They teach EMS mutagenesis to cause point mutations which substitute G:A and C:T transitions in NAM-1 [p.7713, col.1, ¶.4]. They describe mutants with intact NAC DNA-binding domains which negatively impact function of the expressed NAM-1 protein by interfering with higher-level protein structure [p.7716, col.2, ¶.2; p.7719, Table 2]. They teach that plants having mutations within the NAC domain exhibited altered senescence (i.e. staygreen) phenotypes, and that such novel allelic variants with an intact NAC domain can potentially enhance yield [p.7725, col.1, ‘Conclusions’].
Thus, Chapman teaches that in addition to the known naturally occurring deletion mutants in maize, making base pair substitutions or alterations in the context of intact NAC domains leads to reduced/loss of transcription factor activity, resulting in the ‘staygreen’ phenotype. This teaches that different types of mutations that would reasonably prevent normal transcription factor function of NAC proteins results in staygreen phenotypes.
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the loss of NAC7 activity taught by Zhang to a method of generating alternate, inactive alleles of NAC7 including those with intact, wild-type NAC domains (i.e. SEQ ID NO.104) via mutations or sequence changes, as described in Chapman.
One of ordinary skill in the art would have been motivated to generate or utilize such a mutation because the art of Zhang teaches that disruption of nac7 in naturally occurring maize mutants leads to increased yield via staygreen [p.2272, ‘Summary’; p.2280, col.2, ¶.1]. Chapman teaches such methods of disrupting of the nac7 ortholog in wheat via man-made mutations. These mutations generate various staygreen alleles having intact regulatory NAC domains [p.7716, col.2, ¶.2; p.7719, Table 2].
Replicating the natural nac7 mutant by disrupting or reducing activity of the NAC protein, while retaining the intact wild-type NAC regulatory domain (as in Chapman) would produce allele(s) with the potentially added benefit of having more varied or fine-tuned effects on senescence as well as other yield characteristics relevant to grain-filling [p.7725, col.1, ‘Conclusions’].
Chapman describes varied allelic effects when the NAC DNA-binding domain is included rather than being deleted completely from engineered variants [p.7724, col.2, ¶.3—p.7725, col.1, ¶.1]. They teach that such engineered variants contribute ‘more subtle phenotypes’ that may be beneficial to refined application of staygreen alleles in breeding programs [id]. One skilled in the art of plant breeding would be motivated to cross-apply such man-made nac7 mutations in corn, to test for ‘improved’ staygreen alleles Chapman describes.
Regarding claims 1, 7, 14, 21, 39; the limitation of truncation of NAC7 in maize and teaching the specific sequence identity to engineer the NAC7 transcription factor is met by Zhang who teaches sequences which have 94.47%, 98.42%, & 93.99% similarity to those claimed by Applicant and when mutated lose NAC7 activity (claim 1) [Zhang, Supporting Figure 2]. The limitation of inclusion of intact NAC7 domain, or partial protein, engineered by direct mutation of a nac gene is met by Chapman who teaches that mutation of intact NAC genes to generate varied alleles conditioning staygreen phenotypes. Applying the mutational approach to maize NAC7 gene (i.e. described sequences) is met when combining Zhang’s disclosed sequence with Chapman’s disclosed methods (claims 7, 14, 21, 39).
Regarding claims 5, 8-10, 12, 29, 32 & 36-37; the limitation(s) of specific mutations in NAC7 is met by Chapman who teaches mutating such transcription factors, in a directed manner, to generate mutant alleles resulting in staygreen. Chapman teaches that mutations within the NAC region can lead to alleles with varied ‘staygreen’ phenotypes; such mutations that retain the NAC region, as alternate ‘staygreen’ alleles, may have varied or improved function over those absent the entire NAC domain or not being translated into protein.
Mutations including those of various sizes (claim 5), those resulting in truncation and/or C-terminal truncations (claims 8 & 12), frame-shift mutations (claims 9 & 36), introduction of stop codons (claims 10 & 37), and use of gene-editing to induce mutations in a known gene (claims 29 & 32) which result in this same functional loss of activity of the transcription factor are merely design choices directed to the same outcome – generating a non-functional nac7 allele.
Regarding claim 16, the limitation of increasing yield through such manipulations is met by Zhang who teaches the crossing of staygreen phenotypes results in increased yield [p.2272, ‘Summary’; p.2280, col.2, ¶.1]. Increased amount of harvested grain results from increased number of ears on plants (i.e. ‘increased flower number’), more grains per ear (i.e. ‘increased ear length’), and/or increased size of seeds produced by ears (i.e. ‘increased size of floral structures’).
As such, broadest reasonable interpretation of the claim language is that increased grain contributed by increased flower number and/or floral structure size encompasses ‘increased yield’ even if Applicant does not use the term verbatim in claim 16, or report phenotype as bushel per acre per se.
Although Zhang does not explicitly state the exact positional numberings of Applicant’s claims verbatim, when producing the same functional outcome in a protein the specific mutational approach is a mere design choice. One would be motivated to inactivate this protein by altering sequence in slightly different locations within the reported NAC7 gene model GRMZM2G114850 and corresponding ‘nactf108’ sequence. They would want to do this to develop alternate staygreen/yield enhancing alleles, because such alleles are acknowledged as agronomically and economically valuable.
Applicant’s engineered NAC7 protein is apparently dominant in action, but it is a dominant loss of activity, resulting in the same phenotype as naturally occurring and manmade loss-of-function alleles for NAC7 transcription factors.
At the time of filing, it was known in the art that mutating the NAC7 protein or generally disrupting its transcription factor activity would be a way to recreate variations of the ‘staygreen’ phenotype, as already occurs in the germplasm reported by Zhang.
Response to Arguments
Applicant urges previous rejection under 103 is improper because amended claims are now drawn to mutated NAC7 protein with the intact, wild-type NAC domain encoded by SEQ ID NO.104 [Remarks, p.8, ¶.7—p.9, ¶.2]. Applicant indicates this results in a dominant negative effect and thus differs from Zhang’s description of a non-functional maize NAC7 allele which does not produce the encoded protein transcription factor [id; p.9, ¶.4], and also differs from Chapman’s mutated NAM-1 protein transcription factor in wheat because NAM-1 does not comprise SEQ ID NO.104 from maize [p.10, ¶.1].
Applicant argues there is no teaching, suggestion or motivation provided by prior art indicating proteins described by Zhang and Chapman are both structural and functional orthologs [p.10, ¶.3]. Applicant’s position is because of this, one would have no motivation or reasonable expectation of success in mutating a NAC7 gene so as to retain DNA binding activity but truncate/remove the portion of the protein responsible for its transcription factor activity [p.10, ¶.4]. Applicant does not allege any superior or unexpected results resulting from the active binding site. Applicant claims only a structural difference with no functional effect.
This is not persuasive because an obviousness rejection does not require explicit teaching, suggestion and motivation statements from prior art if the cited references viewed collectively would make the invention clear to one skilled in the art and provide reasonable expectation the invention would predictably work.
In the instant case, the claims are drawn to altering maize NAC7 to disrupt or disable its normal transcription factor activity (i.e. engineering a loss of activity). It is generally known in the art of molecular biology that there are multiple ways one can mutate or engineer a protein to disrupt normal function. One skilled in the art of molecular biology would understand different structural modifications can arrive at the same functional result of de-activating a protein if they truncate or otherwise shift or change codons and/or reading frame in a way that predictably alters protein structure. While Applicant emphasizes their mutation is dominant, it is a dominant loss-of-activity (i.e. reasonably predictable phenotypic effects) change to NAC7 that is being claimed. This dominant de-activation of NAC7 and staygreen phenotype is similarly reported by Zhang in maize, who indicates hybrids having one nac7 mutant parent exhibit staygreen characteristics [Zhang, p.2272, ‘Summary’]. Applicant’s modifications target the same gene reported by Zhang, to arrive at the same phenotypic outcome.
Chapman provides motivation to do this. They provide motivation to modify NAC genes in such a way as to not fully knock-out or delete the gene, but rather modify a structural component resulting in loss of normal transcription factor function [p.7724, col.2, ¶.3—p.7725, col.1, ¶.1]. They suggest this may provide alternate, improved alleles with superior performance to those that are a complete knock-out of NAC genes [p.7724, col.2, ¶.4].
It is reasonable to expect that engineering a change to a NAC7 protein in maize which eliminates sequence encoding critical functional domains (i.e. truncating or removing domains necessary to proper function) would cause a loss of transcription factor function. At the time of filing, prior art had clearly demonstrated that (a) natural loss of function of NAC7 resulted in staygreen phenotypes, (b) temporal loss of wild-type NAC7 function via RNAi resulted in staygreen phenotypes, and (c) engineered mutations causing loss of function of NAM-1 (i.e. a NAC protein) resulted in staygreen phenotypes. The common attribute among these is mutation or changes to NAC7 which result in loss of transcription factor functions, particularly in maize, that were known to induce staygreen phenotypes associated with higher yields.
Because of this, arguments are not convincing and claims 1, 5, 7-10, 12, 14, 16, 21, 29, 32, 36-37 & 39 are rejected.
Conclusion
No claims are allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEITH R WILLIAMS whose telephone number is (571)272-3911. The examiner can normally be reached Mon - Fri, 9:30 - 5:30 EST.
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/KEITH R. WILLIAMS/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
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