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 .
DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first-inventor-to-file provisions of the AIA .
Status
1. Claims 1-9, 12-20, and 24-25 -28 as filed on 19 September 2023 were subject to a species election requirement posted on 9 July 2025. Applicant replied on 8 October 2025 without traverse. Applicant’s elections were as follows:
In Group I, Applicant elected two species: the GA20 oxidase_3 gene and the GA20 oxidase 5 gene. On page 25 of the specification it states that the cDNA sequence for the former is SEQ ID NO:7 and the latter is SEQ ID NO:13..
In Group II, Applicant elected SEQ ID NO:39.
In Group III, Applicant elected SEQ ID NO:168. Since SEQ ID NO:169 appears to encode SEQ ID NO:168 it is included in this election.
In Group IV, Applicant elected SEQ ID NO:9 and SEQ ID NO:15.
The requirement is deemed proper and is therefore made FINAL.
Claims 1-9, 12-20, and 25-28 as of record on 8 October 2025 are examined herein.
Examiner’s Notes & Claim Interpretation
2. Citations to Applicant’s specification are abbreviated herein “Spec.”
Occasionally, “SIN:” may be used as an abbreviation “SEQ ID NO:” herein.
Applicant’s claims use the word “corn” in reference to the plant. That word is considered herein to by a synonym of “maize” which term will be used in this Office action (habit). In British use “corn” has a broader meaning but as per normal practice, the word is given its US meaning – a synonym for maize.
See e.g. Merriam Webster’s definition of “corn” (accessed 15 January 2026).
Neither the claims or specification are objected to because of their use of “corn” versus “maize.”
Ine part of claim 1, it requires “a DNA sequence encoding molybdenum cofactor (Moco) biosynthesis polypeptide.”
Paragraph 0090 of the specification states that
As used herein, a molybdenum cofactor (Moco) biosynthesis polynucleotide refers to a polynucleotide, gene or coding sequence encoding a Moco biosynthesis polypeptide, such as a molybdopterin synthase gene, which may comprise a small subunit of a molybdopterin 15 synthase gene (e.g., a MoaD gene from E.coli, a Cnx7 gene from plants, or a MOCS2B gene from animals, or a homolog thereof), involved in the biosynthesis of a molybdenum cofactor (Moco), and the isoforms, homologs, paralogs, and orthologs thereof. In an aspect, a Moco biosynthesis polynucleotide comprises an amino acid sequence as set forth in SEQ ID NOs:168, a functional fragment thereof, isoforms thereof, homologs thereof, paralogs thereof, or 20 orthologs thereof. In another aspect, a Moco biosynthesis polynucleotide comprises an amino acid sequence selected from the group consisting of SEQ ID NOs: 17 4-177, functional fragments thereof, isoforms thereof, homologs thereof, paralogs thereof, and orthologs thereof.
(only Cnx7 gene name italicized in original; “NOs:168” in original).
Paragraph 0203 recites the genera relative to SEQ ID NO:168 (protein) and SEQ ID NO:169 (nucleotide) requiring only 60% sequence identity to either.
When SEQ ID NO:168 is searched against the Office’s “rup” database, there are approximately 25 perfect matches without regard to date. The “first” is attached near the end of the Office action.
Thus the limitation “molybdenum cofactor (Moco) biosynthesis polypeptide” is not indefinite but it is very broad.
In claim 5, the limitation “leaf promoter” is used. That limitation is defined in paragraph 0053. Therefore amendment to add “-preferred” or “-specific” is not requested.
Claim Objections
3. Claim 5 is objected to because of the following informality.
Claim 5 is objected to because it recites the limitation “(RTBV)” in association with “rice tungro bacilliform virus” as a promoter. Since the parenthetical is not used later in the claim set as an abbreviation, removal here is requested.
35 USC § 112(b)-Based Claim Rejections
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.
4. Claims 1-9, 12-20, and 26-28 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 is drawn, in part, to ”transcribable DNA sequence encoding a noncoding RNA for suppression of gibberellic acid 20 (GA20) oxidase_3.” To identify what constitutes such a sequence when present in a “recombinant expression cassette” the nucleotide sequence of “gibberellic acid 20 (GA20) oxidase_3” must be ascertained.
The specification (p. 25) teaches that this entity has a “cDNA” sequence that is SEQ ID NO:7, a “gene” sequence that is SEQ ID NO:8, and a protein sequence that is SEQ ID NO:9.
As seen in the accompanying alignments using NCBI’s BLAST® website, the closest identified match to both SEQ ID NO:7 and SEQ ID NO:8 is “Z. mays gibberellin 20 oxidase 4.” SEQ ID NO:9, however is identified as GA20 oxidase_3.
SEQ ID NO:7, when searched using BLAST produces two perfect matches such as below, albeit SEQ ID NO:7 is longer than the version in NCBI’s databases. However, it is identified as Zea mays gibberellin 20 oxidase 4, not the 3rd oxidase. SEQ ID NO:8 also aligns to NM 001321686 (NCBI 2021). SEQ ID NO:9, however, aligns to the 3rd oxidase. (NCBI’s BLAST®). (all alignments and manipulations here were done on 13 January 2026).
Thus, oddly, the alignments identify a GA20 Oxidase that is not listed in the claims.
Independent claims 13 and 17 are rejected under the same analysis.
SEQ ID NO:39 forms art of both SEQ ID NO:7 and SEQ ID NO:8 in the same 5′ -3′ orientation.
In view of the above, identifying a target by name, as opposed to a DNA molecule with a defined sequence, is indefinite.
The dependent claims included in the above rejection fail to provide limitations obviating this rejection.
EXAMINER’S NOTE: Claim 25 is not included in this rejection because it narrows the scope to focus on specific SEQ ID NOs. See also, e.g., claim 1 of U.S. Patent No. 10,724,047.
Specification
5. The disclosure is objected to because of the following informalities.
The specification is objected to because of the inconsistency that forms the basis of the rejection under 35 USC 112(b) above.
Appropriate correction is requested.
Improper Markush Group
6. Claims 2, 3, 14, 15, and 19 are rejected on the basis that they contain an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984).
A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a "single structural similarity" and a common use. A Markush grouping meets these requirements in two
situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a "single structural similarity" and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush groupings in claims 2, 3, 14, 15, and 19 are improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons.
Claim 2: SEQ ID NOs: 39, 40, and 53-56. When SEQ ID NO:39 was compared to SEQ ID NO:56 using the BLAST® website, “No significant similarity found.”
Claim 14: same Markush group.
Claim 3: SEQ ID NOs: 168 and 17 4-177. When SEQ ID NO:168 was compared to SEQ ID NO:177 using the BLAST® website, only 30.53% identity was observed.
Claim 15: same Markush group.
Claim 19: same Markush group.
These comparisons were conducted on 24 January 2026.
Applicant does not provide teachings are that such a diverse group of sequences will have activity consistent with the claims when expressed transgenically in a plant. Therefore the species of the Markush group lack both a substantial structural feature and a common use that flows from the substantial structural feature.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Claims depending on the claims reciting an improper Markush group are included in this rejection.
Amending the claims to recite only the elected species would obviate the rejection.
35 USC § 112(a) based Claim Rejections
The following is a quotation of 35 U.S.C. 112(a):
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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
7. Claims 1-9, 12-20, and 25-28 are rejected under35 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The Federal Circuit held that a written description of an invention "’requires a precise definition, such as by structure, formula [or] chemical name,’ of the claimed subject matter sufficient to distinguish it from other materials." Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1405 (Fed. Cir. 1997) (quoting Fiers v. Revel, 984 F.2d 1164, 1171, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993)). The court also stated "naming a type of material generally known to exist, in the absence of knowledge as to what that material consists of is not a description of that material." Id., 119 F.3d at 1568, 43 USPQ2d at 1406. The court held that “[a] description of a genus of cDNAs may be achieved by means of a recitation of a representative number of cDNAs, defined by nucleotide sequence, falling within the scope of the genus or of a recitation of structural features common to members of the genus, which features constitute a substantial portion of the genus.” Id., 119 F. 3d at 1569, 43 USPQ2d at 1406.
Claim 1 is drawn to corn plant, reasonably interpreted to be a transgenic maize plant, with (1) a first construct which is designed to suppress gibberellic acid 20 (GA20) oxidase_3 and/or GA20 oxidase_5 genes and (2) a DNA sequence encoding a molybdenum cofactor (Moco) biosynthesis polypeptide.
The limitation associated with part (1) is rejected as indefinite as explained supra. The limitation associated with part (2) is discussed supra which discussion is incorporated herein. That limitation is not indefinite but it is very broad.
Dependent claim 2 explicitly defines the suppression element as at least 80% identical to SEQ ID NO:69 (over at least 15 consecutive nucleotides. Given the relative shortness of SEQ ID NO:69, for example, compared to the maize genome, and the low level of sequence identity required, this might produce numerous “hits” within the maize genome.
For example, searching the maize genome at Ensembl Plants (WWW plants.ensembl.org/Zea_mays/Tools/Blast/Results?tl=hybzNmDPQG9INjrj-25072088 (22 January 2026)) with SEQ ID NO:69 at 100% identity, produced eight hits with one full-length match.
Thus each of the elements required in part 1 and part 2 of claim 1 read on very large genera.
In part 1, a large number of GA20 Ox genes since they aren’t recited as SEQ ID NOs. Also a large genera of various suppression agents. (see discussion above)
The second part of claim 2 reads on a large number of Moco proteins to be transgenically expressed. Regarding the elected species, there a large number of protein variants. However, if, for example, a genus of SEQ ID NO:168 variants would be allowable, the genera encompassed by the definition in the specification is vast.
Although several claims read on a "recombinant” expression cassette, such a limitation is generally interpreted by the Office as how it was made and not defining any structural features. Applicant defines the term in paragraph 0056 but not in such a way to prevent this interpretation (e.g., the use of the term "normally").
Dependent claim 3 requires a sequence at least 60% identical to SEQ ID NO:168 where SEQ ID NO:168 is elected.
Dependent claim 5 requires certain promoters. However the promoters are not defined with any particularity with regard to species or SEQ ID NO. Additional descriptions of promoters are provided in the specification (e.g. para. 0053). Claim 5 therefore reads on vast genera of promoters.
Dependent claim 6 is drawn to a maize plant with a semi-dwarf phenotype and also one of more improved ear traits but it is compared to with a plant with either cassette of claim 1.
It is somewhat surprising that it would be “semi-dwarf without #1. This suggests another genus of maize plants that are semi-dwarf by a different mechanism. Dependent claim 7 recites various ear traits relative to claim 6.
Dependent claim 8 requires SEQ ID NO:39 and SEQ ID NO:169 and semi-swart stature and various ear traits.
Dependent claim 12 reads on a seed or product of claim 1 and requires the first and second cassettes.
Claim 13 is a method claim drawn to introducing the cassettes as recited in claim 1 into a maize cell and regenerating a plant.
“Moco biosynthesis polypeptide” is reasonably interpreted as being the same as “molybdenum cofactor (Moco) biosynthesis polypeptide” which, as seen above, is explicitly and broadly defined by the specification. This also applies to claim 15.
Dependent claim 14 requires that one element has a certain amount of, identity to, e.g., the elected SEQ ID NO:69.
Dependent claim 15 requires that the Moco polypeptide has at least 60% identity to, e.g., the elected SEQ ID NO:168.
Dependent claim 16 is drawn to a maize plant with a semi-dwarf phenotype and also one of more improved ear traits.
Claim 17 is drawn to method that crosses two maize plants to produce a progeny plant. One parent must have a reduced expression of at least one GA20 oxidase gene by any means. The other parent has an expression cassette expressing a Moco polypeptide. The progeny must have the cassette and reduced expression of a GA20 oxidase gene(s).
Dependent claim 18 is recites a low amount of sequence identity to, e.g. the elected SEQ ID NO:39.
Dependent claim 19 requires at least 60% sequence identity to a recited polypeptide SEQ ID NO, e.g. SEQ ID NO:168. SEQ ID NO:168 is a Moco polypeptide but no phenotype, advantageous or otherwise, is required by this claim. Dependent claims do require advantageous phenotypes.
Dependent claim 20 adds a selection step to the progeny plant.
Dependent claim 25 focuses on variants of SEQ ID NO:9 and SEQ ID NO:15 as the first part.
As an example, SEQ ID NO:168, for example, is 168 amino acids in length. If the first approximately 60% amino acids were held constant, and the remaining 67 (approximately 20%) were varied, this would result in 6720 different variants. However, that is only a small fraction of the number claimed, because different regions could be held constant.
Some claims are rejected under 35 USC 112(b). The uncertainty of the metes and bounds of those claims arguably adds to the interpreted scope of the claims.
Applicant claims various large genera. Applicant fails to describe a representative number of species in comparison to the claimed genus. In contrast, the protein art describes that minor changes to a polypeptide's sequence can abolish activity.
For example, Rhoads et al. describes that mutation of Cys-128 to Ala in an Arabidopsis alternative oxidase caused a pronounced overall increase in enzyme activity relative to the wild-type in the presence or absence of pyruvate (page 30753, Figure 3), whereas mutation of Cys-78 to Ala in the same Arabidopsis alternative oxidase resulted in a minimally active enzyme that showed no response to added pyruvate. Rhoads et al. (1998) J Biol Chem 273(46):30750-56, 30753 Fig. 3.
Furthermore, Guo et al. describes that while proteins are fairly tolerant to mutations resulting in single amino acid changes, increasing the number of substitutions additively increases the probability that the protein will be inactivated. Guo et al. (2004) Proc Natl Acad Sci USA 101:9205-10, 9209, rt. col., para. 2. Thus, according to Guo et al., changing up to 67 amino acids in SEQ ID NO:168 has a high likelihood of inactivating the protein when expressed transgenically.
Furthermore, SEQ ID NO:168 is being expressed in a non-native host.
In the transgenic transcription factor art, Zhang teaches that transgenic effects of transcription factor expression conceptually can be thought of as arising from hypermorph activity or neomorph activity. Zhang (2003) Curr Opin Plant Biol 6:430-40, 431. Here, Applicant is causing the transgenic overexpression of SEQ ID NO:168, but not defining why such overexpression brings about enhanced yield. Especially in the case of neomorph activity, one skilled in the art would be uncertain what sections of the polypeptide's amino acid sequence are necessary and/or sufficient for activity, and thus which amino acids of the polypeptide could be modified and retain activity in the instant invention.
Furthermore, there are many methods for gene suppression or inhibition of proteins. Genes can be suppressed using RNA, including antisense RNA and RNAi – see, for example, Troukhan & Mascia, US Patent Publication No. 2009/0094717 A 1, published 9 April 2009, paras 0087-90. Many elements go into designing just an optimum and effective siRNA for just RNA interference. E.g. Reynolds et al. (2004) Nature Biotech 22(3):326-30.
Confirming this analysis, Thomas et al. studied size constraints for posttranscriptional gene silencing in plants, and showed that 23 consecutive nucleotides of 100% identity was required for silencing of a target gene, and that one 27 nucleotide sequence that was used failed to induce silencing of the intended target because it contained one mismatch that divided the sequence to 12 and 14 nucleotides of identity. Thomas et al. (2001) Plant J 25:417-25, entire article & p. 419.
In a subsequent publication, Klahre et al. demonstrate that double-stranded 21-bp siRNAs could cause silencing of a target RNA in plants, but that single-stranded 21 or 22 nucleotide RNAs could not, and a siRNA with 6 mismatches out of 19 positions could not. Klahre et al. (2002) Proc Natl Acad Sci 99:11981-86, 11983-84. During dsRNA mediated interference, a dsRNA is cleaved by endonucleolytic cleavage to 21-23 nucleotide-long small interfering RNAs which then promote target RNA cleavage. Klahre et al., p. 11981, left col. As the smallest RNAs formed during RNA-mediated gene silencing are 21 nucleotides long, smaller dsRNAs 15 base pairs in length would be insufficient to initiate target RNA cleavage.
In contrast to the vast scope claimed, Applicant provides limited description. For example, Example 1 describes transformation using a vector encoding SEQ ID NO:168 but no variants thereof. Spec., paras. 0729-30.
After transformation this was crossed with a “SUP” which appears to be a plant transgenically expressing SEQ ID NO:39 to suppress expression of a GA20 oxidase. Id.
Therefore one skilled in the art would not be able to envision the claimed genera encompassed by the scope of the claims that would also be active in the instant invention.
Therefore Applicant has not demonstrated to one skilled in the art possession of the genus as broadly claimed. Since the specification fails to provide an adequate written description to support the breadth of the claims, one of skill in the art would not believe Applicant to be in possession of the broadly claimed invention at the time of filing.
Given the broad genera claimed and relative paucity of working examples, the claims resemble a research plan more than a fully worked-out invention.
The Federal Circuit held that merely providing a research plan does not satisfy the written description requirement.
Otherwise, one has only a research plan, leaving it to others to explore the unknown contours of the claimed genus. See Ariad, 598 F.3d [1336] at 1353. (The written description requirement guards against claims that "merely recite a description of the problem to be solved while claiming all solutions to it and ... cover any compound later actually invented and determined to fall within the claim's functional boundaries.").
AbbVie Deutsch/and GmbH & Co. v. Janssen Biotech, lnc.,759 F.3d 1285, 1300, 11
UIS.P.Q.2d 1790 (Fed. Cir. 2014).
Dependent claims are included in this rejection because none provide limitations obviating this rejection.
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 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:
§ 103. Conditions for patentability; non-obvious subject matter
A patent for a claimed invention may not be obtained, . . . . 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.
8. Claims 1 2 3 4 5 6 7 8 9, 12 13 14 15 16 17 18 19 20 NOT 25 26 27 28 under 35 USC 103 over Danilevskaya et al. U/S. Patent Pub. No. 2011/0167517 A1;
in view of the following supporting references.
Lange et al. WO 94/28141 A
Lu et al. (2013) PloS ONE 8:e52126.
Heddin (2003) Trends Genet 19(1 ):5-9
Puzio et al. U.S. Patent Pub. No. 2014/0223605 A1.
Ivashuta et al. U.S. Patent Publication No. 2011/0296555 A1.
Together with the teachings of NP 001144099 2 (2020) gibberellin 20 oxidase 3 Zea mays Protein.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 18, 148 USPQ 459, 467 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:a. Determining the scope and contents of the prior art.b. Ascertaining the differences between the prior art and the claims at issue.c. Resolving the level of ordinary skill in the pertinent art.d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1 is drawn to a maize plant or part with two molecular biology elements:
(1) a recombinant expression cassette comprising a transcribable DNA sequence encoding a noncoding RNA for suppression of gibberellic acid 20 (GA20) oxidase_3 and/or GA20 oxidase_5 genes where GA20 oxidase 3 is elected.
(2) an expression cassette comprising a DNA sequence encoding a molybdenum cofactor (Moco) biosynthesis polypeptide. SEQ ID NO:168 is elected.
Both genes are claimed by name without reference to SEQ ID NO.
As can be seen in the alignment below, instant SEQ ID NO:9 closely resembles Danilevskaya et al.’s SEQ ID NO:423. Given the indefiniteness of claim 1, it reasonable to interpret that is falling within the scope, especially considering the sequence identity recited in, e.g. claim 3 relative to a different claim. Further, when Danilevskaya et al.’s SEQ ID NO:423 is used in a BLAST ® search it is identified as NP 001144099 2 (2020) gibberellin 20 oxidase 3 Zea mays Protein; NCBI 21 January 2026). On page 24, Danilevskaya et al. teaches suppression of expression of its taught sequences.
Lange et al. teaches antisense GA20 oxidase constructs (pp. 4,6) which reduce levels of gibberellins (p. 19). The benefit of this is a reduction in stature which would reduce, e.g. lodging. p. 26. Lange et al. also teaches producing transgenic maize (p. 23, 2nd para.).
Heddin also teaches that the genes behind the Green Revolution "interfere with the action or production of" gibberellins. Heddin (2003), abstract.
Lu et al. (2013) teaches that the Arabidopsis Molybdenum Cofactor Sulfurase Gene confers drought tolerance in maize. Lu et al., title. In view of the broad definition in the specification’s paragraph 0090, this is reasonably interpreted as falling with the scope of the claim limitation.
Further, as seen in the second alignment below, Puzio et al. teaches the transgenic of a protein identical to SEQ ID NO:168 to increase yield (title) It also calls attention to a “molybdopterin biosynthesis protein. Id., p. 20, 1st col. (btm.)).
Additionally, as seen in the third alignment below, Applicant’s elected SEQ ID NO:39 was comprised within a sequence associated with “Modulating Expression of a Target Gene.” Ivashuta et al.
Claim 1 uses imprecise language to claim the composition. Further, claim 1 only requires a maize plant part which contains two constructs in any form. For example, it does not require stable integration not does it require a phenotype.
Therefore it would have been obvious to an ordinary artisan to combine the recited elements. This is no more "combination of familiar elements according to known methods.
The K.S.R court held that such a combination "is likely to be obvious." KSR Int'/ Co. v. Teleflex Inc., 550 U.S. 398, 401, 127 S.Ct 1727, 1731, 82 U.S.P.Q.2d 1385, 1389 (2007) (citations mitted).
Therefore claim 1 is obvious.
The recited sequence elements in claims 2, 3, and 4 were discussed above and thus claims 2, 3, and 4 are obvious. Claims 26, 27 and 28 are also obvious because it recites SEQ ID NOs discussed above in connection with the rejection under 35 USC 112(b) and thus is interpreted broadly..
Lange et al. teaches promoters including "the constitutive 35S promoter" driving expression of a GA20 oxidase gene in a sense and antisense orientation (p. 39 btm.) and thus claim 5 is obvious. Lange et al.'s claim 45 teaches seeds and thus claim 12 is obvious.
Claim 13 is a method to produce a transgenic maize plant. Lange et al. teaches all the steps of this method (pp. 32-33). This teaching, together with the additional elements described above renders claim 13 obvious. Since the appropriate sequence elements are included in the above discussion, claims 14 and 15 are obvious.
Lange et al. teaches progeny plants (claim 45) and thus claim 17 is obvious.
Claim 20 is drawn to selecting a plant for, e.g. increased yield. It is obvious to select a plant for increased yield and thus claim 20 is obvious.
Claims 6, 7, 16 are drawn to plants with various properties. As seen above, their respective base claims are obvious.
Regarding the recited beneficial properties, failure of those skilled in the art to contemporaneously recognize an inherent property, function or ingredient of a prior art reference does not preclude a finding of anticipation. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1349,51 USPQ 2d 1943, 1948 (Fed. Cir. 1999).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F. 2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
MPEP § 2112.
"It is not invention to perceive that the product which others had discovered had qualities they failed to detect." General Elec. Co. v. Jewel Incandescent Lamp Co., 326 US 242, 249, 67 USPQ 155, 158 (1945).
The parameters themselves, e.g. “grain yield” are obvious advantageous properties.
Therefore claims 6, 7, 9 and 16 are obvious.
The sequence elements of claim 8 are discussed above, with SEQ ID NO:169 encoding SEQ ID NO:168, and thus claim 8 is obvious.
Claim 18 requires, e.g. SEQ ID NO:39 which is discussed above and thus claim 18 is obvious.
Claim 19 requires, e.g. SEQ ID NO:168 which is discussed above and thus claim 19 is obvious.
EXAMINER’S NOTE: Claim 25 is NOT included in this rejection because it narrows the scope to focus on specific SEQ ID NOs in the first part. See also, e.g., claim 1 of U.S. Patent No. 10,724,047. Since that claim is allowed over the prior art, adding another element to the claim is also free of the prior art.
Danilevskaya et al.
US-12-985-413-423
Filing date in PALM: 2011-01-06
Sequence 423, US/12985413
GENERAL INFORMATION
APPLICANT: Danilevskaya, Olga N.
APPLICANT: Habben, Jeffrey E.
APPLICANT: Hayes, Kevin R.
APPLICANT: Simmons, Carl R.
APPLICANT: Deschamps, Stephane D.
TITLE OF INVENTION: IDENTIFICATION OF DIURNAL RHYTHMS IN
TITLE OF INVENTION: PHOTOSYNTHETIC AND NON-PHOTOSYNTHETIC TISSUES FROM ZEA MAYS
TITLE OF INVENTION: AND USE IN IMPROVING CROP PLANTS
FILE REFERENCE: 3604
CURRENT APPLICATION NUMBER: US/12/985,413
CURRENT FILING DATE: 2011-01-06
PRIOR APPLICATION NUMBER: 61/362,382
PRIOR FILING DATE: 2010-07-08
PRIOR APPLICATION NUMBER: 61/302,389
PRIOR FILING DATE: 2010-02-08
PRIOR APPLICATION NUMBER: 61/292,572
PRIOR FILING DATE: 2010-01-06
NUMBER OF SEQ ID NOS: 491
SEQ ID NO 423
LENGTH: 392
TYPE: PRT
ORGANISM: Zea mays
Query Match 92.6%; Score 1903; Length 392;
Best Local Similarity 92.9%;
Matches 364; Conservative 12; Mismatches 10; Indels 6; Gaps 4;
Qy 1 MDASPTPPLPLRAPT--PSIDLPAGKDRADAAANKA-AAVFDLRREPKIPEPFLWPHEEA 57
||||| ||| ||||| ||||||||||:|||||:|| ||||||||||||| ||||| |||
Db 1 MDASPAPPLLLRAPTPSPSIDLPAGKDKADAAASKAGAAVFDLRREPKIPAPFLWPQEEA 60
Qy 58 RPTSAAELEVPVVDVGVLRNGDGAGLRRAAAQVAAACATHGFFQVCGHGVDAALGRAALD 117
||:||||||||:|||||||||| |||||||||||||||||||||||||||||||||||||
Db 61 RPSSAAELEVPMVDVGVLRNGDRAGLRRAAAQVAAACATHGFFQVCGHGVDAALGRAALD 120
Qy 118 GASDFFRLPLAEKQRARRVPGTVSGYTSAHADRFASKLPWKETLSFGFHDGAAAPVVVDY 177
|||||||||||||||||||||||||||||||||||:|||||||||||:|||||:||||||
Db 121 GASDFFRLPLAEKQRARRVPGTVSGYTSAHADRFAAKLPWKETLSFGYHDGAASPVVVDY 180
Qy 178 FTGTLGQDFEPVGRVYQRYCEEMKELSLTIMELLELSLGVE-RGYYREFFEDSRSIMRCN 236
| |||||||||:| ||||||||||||||||||||||||||| ||||||||||||||||||
Db 181 FVGTLGQDFEPMGWVYQRYCEEMKELSLTIMELLELSLGVELRGYYREFFEDSRSIMRCN 240
Qy 237 YYPPCPVPERTLGTGPHCDPTALTILLQDDVGGLEVLVDGEWRPVRPVPGAMVINIGDTF 296
|||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 YYPPCPEPERTLGTGPHCDPTALTILLQDDVGGLEVLVDGEWRPVRPVPGAMVINIGDTF 300
Qy 297 MALSNGRYKSCLHRAVVNRRQERQSLAFFLCPREDRVVRPPASAAPRQYPDFTWADLMRF 356
||||||||||||||||||:|: |:|||||||||||||||||||||||:||||||||||||
Db 301 MALSNGRYKSCLHRAVVNQRRARRSLAFFLCPREDRVVRPPASAAPRRYPDFTWADLMRF 360
Qy 357 TQRHYRADTRTLDAFTRWLSHGP--AAAAPCT 386
||||||||||||||||||||||| ||| |||
Db 361 TQRHYRADTRTLDAFTRWLSHGPAQAAAPPCT 392
Danilevskaya et al.
SEQ ID NO:423 used for BLAST® search.
1 MDASPAPPLLLRAPTPSPSIDLPAGKDKADAAASKAGAAVFDLRREPKIPAPFLWPQEEA 60
61 RPSSAAELEVPMVDVGVLRNGDRAGLRRAAAQVAAACATHGFFQVCGHGVDAALGRAALD 120
121 GASDFFRLPLAEKQRARRVPGTVSGYTSAHADRFAAKLPWKETLSFGYHDGAASPVVVDY 180
181 FVGTLGQDFEPMGWVYQRYCEEMKELSLTIMELLELSLGVELRGYYREFFEDSRSIMRCN 240
241 YYPPCPEPERTLGTGPHCDPTALTILLQDDVGGLEVLVDGEWRPVRPVPGAMVINIGDTF 300
301 MALSNGRYKSCLHRAVVNQRRARRSLAFFLCPREDRVVRPPASAAPRRYPDFTWADLMRF 360
361 TQRHYRADTRTLDAFTRWLSHGPAQAAAPPCT 392
Puzio et al.
US-14-151-271A-1564
(NOTE: this sequence has 5 duplicates in the database searched.
See complete list at the end of this report)
Sequence 1564, US/14151271A
GENERAL INFORMATION
APPLICANT: Puzio, Piotr
APPLICANT: Blaesing, Oliver
APPLICANT: Thimm, Oliver
APPLICANT: Ritte, Gerhard
APPLICANT: Schoen, Hardy
TITLE OF INVENTION: PLANTS WITH INCREASED YIELD
FILE REFERENCE: 13987-00234-US
CURRENT APPLICATION NUMBER: US/14/151,271A
CURRENT FILING DATE: 2014-01-09
PRIOR APPLICATION NUMBER: 12/678,387
PRIOR FILING DATE: 2010-03-16
PRIOR APPLICATION NUMBER: PCT/EP2008/062362
PRIOR FILING DATE: 2008-09-17
PRIOR APPLICATION NUMBER: EP 07117448.6
PRIOR FILING DATE: 2007-09-18
PRIOR APPLICATION NUMBER: EP 08161134.5
PRIOR FILING DATE: 2008-07-25
NUMBER OF SEQ ID NOS: 16680
SEQ ID NO 1564
LENGTH: 81
TYPE: PRT
ORGANISM: Escherichia coli
Query Match 100.0%; Score 411; Length 81;
Best Local Similarity 100.0%;
Matches 81; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MIKVLFFAQVRELVGTDATEVAADFPTVEALRQHMAAQSDRWALALEDGKLLAAVNQTLV 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MIKVLFFAQVRELVGTDATEVAADFPTVEALRQHMAAQSDRWALALEDGKLLAAVNQTLV 60
Qy 61 SFDHPLTDGDEVAFFPPVTGG 81
|||||||||||||||||||||
Db 61 SFDHPLTDGDEVAFFPPVTGG 81
Ivashuta et al.
US-12-999-777-2013
(NOTE: this sequence has 1 duplicate in the database searched.
See complete list at the end of this report)
Sequence 2013, US/12999777
Publication No. US20110296555A1
GENERAL INFORMATION
APPLICANT: Ivashuta, Sergey I.
APPLICANT: Wiggins, Barbara E.
APPLICANT: Zhang, Yuanji
TITLE OF INVENTION: Recombinant DNA Constructs and Methods for Modulating Expression of a Target Gene
FILE REFERENCE: 38-21(55745)B
CURRENT APPLICATION NUMBER: US/12/999,777
CURRENT FILING DATE: 2011-08-12
NUMBER OF SEQ ID NOS: 2067
SEQ ID NO 2013
LENGTH: 891
TYPE: DNA
ORGANISM: Zea mays
Query Match 100.0%; Score 21; Length 891;
Best Local Similarity 100.0%;
Matches 21; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 CTCCATCATGCGGTGCAACTA 21
|||||||||||||||||||||
Db 690 CTCCATCATGCGGTGCAACTA 710
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). MPEP § 804.
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-9, 12-20, and 25-28 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over the issued claims of the patents as discussed below as well as claims
of copending Application No.
All Patents and the Application are abbreviated with the last three digits.
Although the conflicting claims are not identical, they are not patentably distinct from each other. This is a provisional double patenting rejection since the conflicting claims have not yet been patented.
the patent family originating from US Provisional Application 62/746,298 and in turn application serial no. 15/679,699, now U.S. patent No. 10,724,047, has, in general, claims directed at creating shorter maize plants by suppressing expression of a GA20 oxidase.
The following supporting references are used.
Danilevskaya et al. U/S. Patent Pub. No. 2011/0167517 A1.
in view of the following supporting references.
Lange et al. WO 94/28141 A
Lu et al. (2013) PloS ONE 8:e52126.
Heddin (2003) Trends Genet 19(1 ):5-9
Puzio et al. U.S. Patent Pub. No. 2014/0223605 A1.
Ivashuta et al. U.S. Patent Publication No. 2011/0296555 A1.
Together with the teachings of NP 001144099 2 (2020) gibberellin 20 oxidase 3 Zea mays Protein. The discussion of the rejection under 35 USC 103 is incorporated by reference here.
9. U.S. Patent No. 10,724,047 has claims that relate to the first part of the independent claims – the cassette suppressing a GA20 oxidase in maize. Claim 1 is directed at GA20 oxidase proteins comprising SEQ ID NO:9 and/or SEQ ID NO:15. SEQ ID NO:9 and SEQ ID NO:69 are the same in both applications. The ‘047 Patent has claims 1-27 which render the instant pending claims obvious using the supporting references especially in view of the broad genera claimed in the instant claim set.
10. 11,414,670 is a sibling of the ‘047 Patent and its claims 1-73 encompass for example a method of using the cassette of instant claim 1, part 1. These claims render the pending claims obvious using the supporting references. Again, the interpretation includes the instant-claimed broad genera.
11. 11,319,550 is a sibling of the ‘047 Patent and its claims 1-40 encompass a cassette suppressing both GA20 oxidases, SEQ ID NO:9 and SEQ ID NO:15, in maize.
These claims render the pending claims obvious using the supporting references. Again, the interpretation includes the instant-claimed broad genera.
12. 12,319,922 is a sibling of the ‘047 Patent and its claims 1-83 encompass recombinant cassettes to suppress both SEQ ID NO:9 and SEQ ID NO:15, in maize. These claims render the pending claims obvious using the supporting references. Again, the interpretation includes the instant-claimed broad genera.
13. In application serial no. 19/198,339, claims 111-171 encompass obvious variations of the instant claims. The application was filed in May 2025. (It is currently unassigned to any examiner.) These claims render the pending claims obvious using the supporting references. Again, the interpretation includes the instant-claimed broad genera.
Allowable Subject Matter
14. Given the allowed claims in the U.S. Patents cited in the double-patenting rejection above, allowable subject matter is probably available.
Conclusion
No claim is allowed.
SEQ ID NO:168 v. “RUP” database
A0A2S8D693_SHIDY
(NOTE: this sequence has 22 duplicates in the database searched.
See complete list at the end of this report)
ID A0A2S8D693_SHIDY Unreviewed; 81 AA.
AC A0A2S8D693;
DT 12-SEP-2018, integrated into UniProtKB/TrEMBL.
DT 12-SEP-2018, sequence version 1.
DT 08-OCT-2025, entry version 34.
DE RecName: Full=Molybdopterin synthase sulfur carrier subunit {ECO:0000256|ARBA:ARBA00024247};
GN Name=moaD {ECO:0000313|EMBL:PQM99460.1};
GN ORFNames=C5K18_23955 {ECO:0000313|EMBL:PQM99460.1}, NCTC11868_00159
GN {ECO:0000313|EMBL:VDG86029.1}, RH555_003396
GN {ECO:0000313|EMBL:ELB7040150.1};
OS Shigella dysenteriae.
OC Bacteria; Pseudomonadati; Pseudomonadota; Gammaproteobacteria;
OC Enterobacterales; Enterobacteriaceae; Shigella.
OX NCBI_TaxID=622 {ECO:0000313|EMBL:PQM99460.1, ECO:0000313|Proteomes:UP000238186};
RN [1] {ECO:0000313|EMBL:PQM99460.1, ECO:0000313|Proteomes:UP000238186}
RP NUCLEOTIDE SEQUENCE [LARGE SCALE GENOMIC DNA].
RC STRAIN=BS979 {ECO:0000313|EMBL:PQM99460.1,
RC ECO:0000313|Proteomes:UP000238186};
RA Fogolari M., Mavian C., Angeletti S., Salemi M., Lampel K.A.,
RA Maurelli A.T.;
RT "Distribution and characterization of Shiga toxin converting temperate
RT phage carried by Shigella flexneri in Hispaniola.";
RL Submitted (FEB-2018) to the EMBL/GenBank/DDBJ databases.
RN [2] {ECO:0000313|EMBL:VDG86029.1, ECO:0000313|Proteomes:UP000274225}
RP NUCLEOTIDE SEQUENCE [LARGE SCALE GENOMIC DNA].
RC STRAIN=NCTC11868 {ECO:0000313|EMBL:VDG86029.1,
RC ECO:0000313|Proteomes:UP000274225};
RG Pathogen Informatics;
RL Submitted (NOV-2018) to the EMBL/GenBank/DDBJ databases.
RN [3] {ECO:0000313|EMBL:ELB7040150.1}
RP NUCLEOTIDE SEQUENCE.
RC STRAIN=PNUSAE150395 {ECO:0000313|EMBL:ELB7040150.1};
RG PulseNet: The National Subtyping Network for Foodborne Disease Surveillance;
RL Submitted (JUN-2023) to the EMBL/GenBank/DDBJ databases.
CC -!- PATHWAY: Cofactor biosynthesis; molybdopterin biosynthesis.
CC {ECO:0000256|ARBA:ARBA00005046}.
CC -!- SIMILARITY: Belongs to the MoaD family.
CC {ECO:0000256|ARBA:ARBA00024200}.
CC ---------------------------------------------------------------------------
CC Copyrighted by the UniProt Consortium, see https://www.uniprot.org/terms
CC Distributed under the Creative Commons Attribution (CC BY 4.0) License
CC ---------------------------------------------------------------------------
DR EMBL; ABMCAI010000049; ELB7040150.1; -; Genomic_DNA.
DR EMBL; PUGT01000519; PQM99460.1; -; Genomic_DNA.
DR EMBL; UYIT01000003; VDG86029.1; -; Genomic_DNA.
DR RefSeq; WP_000598619.1; NZ_UYIT01000003.1.
DR SMR; A0A2S8D693; -.
DR UniPathway; UPA00344; -.
DR Proteomes; UP000238186; Unassembled WGS sequence.
DR Proteomes; UP000274225; Unassembled WGS sequence.
DR Proteomes; UP001257645; Unassembled WGS sequence.
DR GO; GO:1990133; C:molybdopterin adenylyltransferase complex; IEA:TreeGrafter.
DR GO; GO:0000166; F:nucleotide binding; IEA:UniProtKB-KW.
DR GO; GO:0016740; F:transferase activity; IEA:UniProtKB-KW.
DR GO; GO:0006777; P:Mo-molybdopterin cofactor biosynthetic process; IEA:UniProtKB-KW.
DR CDD; cd00754; Ubl_MoaD; 1.
DR FunFam; 3.10.20.30:FF:000010; Molybdopterin synthase sulfur carrier subunit; 1.
DR Gene3D; 3.10.20.30; -; 1.
DR InterPro; IPR012675; Beta-grasp_dom_sf.
DR InterPro; IPR044672; MOCS2A.
DR InterPro; IPR016155; Mopterin_synth/thiamin_S_b.
DR InterPro; IPR003749; ThiS/MoaD-like.
DR NCBIfam; TIGR01682; moaD; 1.
DR NCBIfam; NF008347; PRK11130.1; 1.
DR PANTHER; PTHR33359; MOLYBDOPTERIN SYNTHASE SULFUR CARRIER SUBUNIT; 1.
DR PANTHER; PTHR33359:SF1; MOLYBDOPTERIN SYNTHASE SULFUR CARRIER SUBUNIT; 1.
DR Pfam; PF02597; ThiS; 1.
DR SUPFAM; SSF54285; MoaD/ThiS; 1.
PE 3: Inferred from homology;
KW Molybdenum cofactor biosynthesis {ECO:0000256|ARBA:ARBA00023150};
KW Nucleotide-binding {ECO:0000256|ARBA:ARBA00022741};
KW Transferase {ECO:0000313|EMBL:ELB7040150.1}.
SQ SEQUENCE 81 AA; 8758 MW; 1E0A440520EE82F4 CRC64;
Query Match 100.0%; Score 411; Length 81;
Best Local Similarity 100.0%;
Matches 81; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MIKVLFFAQVRELVGTDATEVAADFPTVEALRQHMAAQSDRWALALEDGKLLAAVNQTLV 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MIKVLFFAQVRELVGTDATEVAADFPTVEALRQHMAAQSDRWALALEDGKLLAAVNQTLV 60
Qy 61 SFDHPLTDGDEVAFFPPVTGG 81
|||||||||||||||||||||
Db 61 SFDHPLTDGDEVAFFPPVTGG 81
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL T BOGGS whose telephone number is (571)272-2805. The examiner can normally be reached Monday - Friday, 0800 to 1830 Mtn.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham can be reached at 571-270-0708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RUSSELL T BOGGS/Examiner, Art Unit 1663