DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1-4 & 6-9 are under examination on the merits.
Claims 5 & 10 are canceled.
Priority
Claims 1-4 & 6-9 receive the U.S. effective filing date of 07/21/2023.
Foreign priority to CN202310900814X filed 07/21/2023 is recognized.
The objection to claims 1 & 5 for typographical error is withdrawn in light of Applicant’s amendment to the claims.
Previous rejection of claims 1-10 under 35 U.S.C. 112(b) is withdrawn because of Applicant’s claim amendment(s).
Previous rejection of claims 2 & 3 under 35 U.S.C. 112(b) is withdrawn because of Applicant’s claim amendment(s).
Previous rejection of claims 4-10 under 35 U.S.C. 112(b) is withdrawn because of Applicant’s claim amendment(s).
Previous rejection of claims 6 & 10 under 35 U.S.C. 112(b) is withdrawn because of Applicant’s claim amendment(s).
Previous rejection of claims 4, 8 & 9 under 35 U.S.C. 101 is withdrawn because of Applicant’s claim amendment(s).
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 1-4 & 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hu [Rice. 2018 Oct 5;11(1):55; Published Oct 2018] and in view of Shi [Molecular Plant 14, 1714–1732; Published 10-04-2021].
Claims are drawn to production of a transgenic rice plant expressing the BPH33.2 gene to confer brown planthopper (BPH) resistance to rice plants.
Hu teaches the identification of the genomic location, and relevant marker sequences used to identify, isolate, or fine-map BPH33.2 [p.2, col.3, ¶3; p.3, col.1, ¶1; p.4, col.1, ¶2]. They graphically depict the genomic location of the 60kb ‘Bph33’ region and its associated molecular marker H99 in Figure 7 [p.9]:
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Hu does not teach the use of BPH33.2 in recombinant vectors or transgenic plants.
Shi teaches a nucleotide (gene) encoding BPH resistance and describes its use in creating BPH resistant rice plants. Sequence search of Applicant’s BPH33.2 SEQ ID NO.1 shows it has 98.38% identity to the Bph30 sequence reported by Shi [see attached search histories NCBI BLAST results]. Shi reports their Bph30 sequence as the planthopper resistance gene ‘Bph30’ and teaches use recombinant vectors and resultant transgenic cell lines made expressing this ortholog of BPH33.2 to confer BPH resistance [p.1723, col.1, par.3].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use the BPH resistance allele BPH33.2 taught by Hu, in a transgenic breeding approach similar to that described for the orthologous Bph30 in Shi. This is because it would be obvious for a plant breeder to use the sequences disclosed by Shi to search for other BPH sequences in region near the H99 marker, taught by Hu. It is routine and obvious for plant breeders to cross-apply such molecular position information (i.e. H99) to uncover other likely BPH sequences.
One of ordinary skill in the art would have been motivated to combine the teaching of the BPH33.2 resistance allele with the known transgenic approaches for transferring BPH resistance because BPH resistance alleles are known to be agronomically valuable when creating improved rice cultivars. Moreover, transgenic approaches would allow faster direct transfer of such alleles as compared to traditional backcrossing methods. One would have reasonable expectation of success because it was previously demonstrated that such approaches are effective when working with BPH resistance genes, as taught by Shi.
Regarding claims 1-3, 6 & 9; Hu identifies and teaches relevant molecular sequences for the manipulation of BPH33.2 [p.3, col.1, ¶1—p.4, col.2, ¶1]. Shi teaches construction of a recombinant vector and bacterium carrying ortholog(s) of BPH33.2 [p.1727, col.1, par.2] as well as transgenic Nicotiana and Oryza plants [p.1728, col.1, par.6; p.1719, col.1, par.1].
Regarding claim 4; Shi further teaches transformation of a susceptible rice plant with their BPH ortholog to achieve gain-of-function resistance [p.1719, col.1, par.1]. Therefore, they also clearly disclose all limitations of claim 4 including making BPH resistant plants via transgenesis, applied to orthologs of BPH in rice.
Regarding claims 7 & 8; Shi additionally teaches the hybridization of BPH resistant plants to susceptible plants to generate BPH resistant F1 progeny [p.1724, col.2, par.1; p.1725, col.2, par.2]. This teaches limitations of claim 7 including the method of making BPH resistant progeny plants via hybridization of a parental line carrying BPH orthologs.
Because prior art has mapped relevant markers and provided all tools relevant to isolating and manipulating BPH33.2 claims 1-4 & 6-9 are obvious and rejected.
Claims 7 & 8 are rejected under 35 U.S.C. 103 as being unpatentable over IRRI [International Rice Research Institute; International Rice Genebank; Accession IRGC 36295, entered 19 Oct 1976] and in view of Muduli [Rice Science, 2021, 28(6): 532-546; Published 28 September 2021].
Claims are drawn to methods of preparing planthopper resistant rice via crossing plants with the resistance gene BPH33.2 to other plants, in order to generate brown planthopper (BPH) resistant progeny.
IRRI teaches that the cultivar ‘Kolayal’ (syn. IRGC 36295) is a variety of rice with resistance to brown planthopper [see p.7 attached ‘NPL_IRRI_Kolayal_passport.pdf’]. This rice variety inherently carries a native gene/allele that confers the pest resistance.
IRRI does not teach breeding methods involving crossing of planthopper resistant plants to other plants in order to generate pest-resistant progeny.
Muduli teaches methods of backcrossing or transfer resistance alleles from planthopper resistant rice plants to generate pest resistant progeny [p.534, col.1, ¶2—col.2, ¶1; p.540, col.2, ¶2-3; p.541, Figure1].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify planthopper resistant germplasm such as ‘Kolayal’ taught by IRRI to generate new genotypes, or progeny, via backcrossing or other routine breeding methods described in Muduli.
One of ordinary skill in the art would have been motivated to do this because improvement of crops via transfer of disease resistance alleles is used to create new and agronomically valuable cultivars (i.e. progeny). Moreover, this is stated explicitly by Muduli in describing rationale behind gene pyramiding efforts, directed specifically to BPH in rice [p.541, col.2, ¶2].
Regarding claim 7; Applicant recites the limitation of ‘resistance gene BPH33.2’. While IRRI does not directly state or name the underlying gene which causes the BPH resistance observed in ‘Kolayal’, this variety inherently possesses BPH33.2. Thus, any crossing of this plant would meet the limitations of Applicant’s claim 7.
Because BPH resistant rice germplasm comprising BPH33.2 such as ‘Kolayal’ were known at the time of filing, as were general methods of crossing to transfer such resistances to progeny plants were both known at the time of filing, Applicant’s claims 7 & 8 are rejected as obvious in view of prior art.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham can be reached on (571)270-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEITH R. WILLIAMS/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
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