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 .
Priority
Foreign Priority
Acknowledgment is made of applicant’s claim for foreign priority to application RU2017102986 (filed 1/20/2017) under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16479693, filed on 12/06/2017.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
A certified copy of the foreign patent and the non-English WIPO publication were received in parent application (US 16/479,693) on 07/22/2019. A copy of the WIPO publication was additionally attached to the application with the abstract translated to English. The Applicant was notified on 08/04/2020 of missing requirements under 35 U.S.C 371 in the file wrapper of the parent application and responded noting that the text file submitted on 07/22/2019 with the Doc code “SEQ.TXT” is a translation of the 77-page Russian language sequence listing. 1893.01(d) of the MPEP states that a translation of less than all of the international application (e.g., a translation that fails to include a translation of text contained in the drawings or a translation that includes a translation of claims amended under PCT Article 19 or 34 but does not include a translation of the original claims) is unacceptable.
A translation is required to perfect foreign priority. The effective filling date of the instant application is 12/06/2017, corresponding to the 16/479,693 application filing date.
Election/Restriction
Applicant’s election, without traverse, of Group I, encompassing Claims 1-10, in the reply filed 10/23/2025 is acknowledged, as is the election of the species of SEQ ID NO. 2.
Status of the Claims
Claims 1-18 are pending.
Claims 11-18 are withdrawn from consideration as being directed to a non-elected invention.
Claims 1-10 are examined herein.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/17/2024 was considered, initialed, and attached hereto. A signed copy of the list of references cited is included with this Office Action.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01. Paragraphs with hyperlinks in the specification include ¶ 044, 065, 0134, 0136.
Claim Interpretation
Claim 1 recites the transgenic plant comprising fungal luciferin within the plant cells. As claim 1 is not a method claim and does not recite steps to indicate a structure or methodology of how the plant cells comprise fungal luciferin, the recitation of fungal luciferin within the plant cells is interpreted to mean fungal luciferin within the cells by any origin, not necessarily from the recombinant level.
In addition, the instant specification states that 3-hydroxyhispidin is a membrane permeant molecule (¶ 013) and further supports this by providing only examples of the luciferin entering cells through cell membranes. For example, the specification states that in order to visualize the migration of cancer cells in an organism, the nucleic sequences of luciferases are introduced into cancer cells by any method known in the art. The specification further recites that since 3-hydroxyhispidin is capable of penetrating through cell membranes, the subject luciferases can be visualized in vivo in living organisms without tissue fixation and permeabilization (¶ 0115).
Further, as the mechanism for introducing the fungal luciferin 3-hydroxyhispidin into transgenic plants was soaking moss gametophyte in BCD medium containing 3-hydoxyhispidin at a concentration of 660 µg/ml (Example 13), it is assumed that the system comprising fungal luciferin in the plant cells is obtained through the cell membrane. Claim 1 can therefore be interpreted to mean that the fungal luciferin is within the plant cell by any origin.
Claim Rejections - 35 USC § 112(b) – Indefiniteness
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.
Claim 7 is 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 7 states the that the light emitted from the transgenic plant of Claim 1 as a result of bioluminescence is predominantly in the green region of the visible spectrum. The term “predominantly” is a relative term, which is not definite. As the specification states, “the subject luciferases emit predominantly green light and thus are optimally suitable for the emission of light through photosynthetic plant tissues due to reduced absorption of such tissues in the green region of the visible spectrum (¶0115).” Would this mean that the luciferases from one fungal species potentially emit (closer to) red light making them less suitable for emission of light through plant tissue as compared to another fungal species? Would this effect the claimed emission wavelength range, and to what extent?
In the interest of compact prosecution, claim 7 is examined.
Claim Rejections - 35 USC § 112(a) – Written Description
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.
Claim 4, and Claims 5 and 6 depending therefrom, 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 claims are broadly drawn to a bioluminescent transgenic plant comprising a luciferase with SEQ ID NO. 2 having the ability to oxidize a molecule selected from a group consisting of fungal luciferin molecules, wherein the transgenic plant comprises fungal luciferin in the plant cells and biosynthesizes the fungal luciferin. The claims require a transgenic plant with the ability to biosynthesize fungal luciferin, yet the instant specification describes only the coding sequence of luciferase from Neonothopanus nambi optimized for expression in Physcomitrella patens moss cells soaked in 3-hydoxyhispidin substrate (Example 13).
The level of skill and knowledge at the time of filing was such that creation of transgenic plants comprising optimized fungal luciferase sequences and fungal luciferin, wherein the plant is bioluminescent and has the ability to biosynthesize fungal luciferin within the plant’s cells, required additional steps not disclosed in the instant specification. Research published post-filing (of the foreign priority Russian application RU2017102986) with the author of the instant application, Ilia Yampolsky, conceded that future work should focus on finding the genes responsible for 3-hydroxyhispidin biosynthesis and expressing these genes in a transgenic plant with fungal luciferase (Guglya et al., 2017).
A later publication with the same common inventor disclosed autoluminescent plants engineered with a fungal bioluminescence system that converts caffeic acid into luciferin with integration of fungal bioluminescence genes (Mitiouchkina et al., 2020). The instant specification does not describe the potential for caffeic acid conversion to luciferin within a transgenic plant. The instant specification additionally does not describe biosynthesis of fungal luciferin or divulge any mechanism to achieve biosynthesis of luciferin within plant cells other than stating, “genetically modified plants may serve as light sources when 3-hydroxyhispidin or related molecules are added to the medium or soil, or autonomously bioluminese if 3-hydroxyhispidin biosynthesis occurs in the host cells (¶ 0115).” The mechanism for introducing the fungal luciferin 3-hydroxyhispidin was soaking in BCD medium containing 3-hydoxyhispidin at a concentration of 660 µg/ml and the instant specification states that 3-hydroxyhispidin is a membrane permeant molecule (¶ 013). The specification further discloses that in visualization of cancer cell migration in animal cells, the subject luciferases can be visualized in vivo in living organisms without tissue fixation and permeabilization since 3-hydroxyhispidin is capable of penetrating through cell membranes (¶ 0115). As such, it is assumed that the system comprising fungal luciferin in the plant cells is through the cell membrane and not through biosynthesis within the host plant cell as claimed.
Therefore, given the lack of reduction to practice in the specification with regard to the structural and functional characteristics of the plant’s ability to biosynthesize the fungal luciferin 3-hydroxyhispidin, or any other fungal luciferin, Applicant does not appear to have been in possession of the claimed plant at the time this application was filed.
Claim Rejections - 35 USC § 112(a) – Scope of Enablement
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.
Claim 1, and Claims 2-10 depending therefrom, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for bioluminescent transgenic moss gametophytes, does not reasonably provide enablement for the broadly claimed genus of all possible. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The factors to be considered in determining whether undue experimentation is required are summarized in In re Wands, 858 F.2d 731, 737, 8 U.S.P.Q.2d 1400, 1404 (Fed. Cir. 1988) (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. While all of these factors are considered, a sufficient number are discussed below so as to create a prima facie case.
The claims are broadly drawn to a bioluminescent transgenic plant comprising: a luciferase having the amino acid sequence at least 90% identical to that of SEQ ID NO. 2, 4, 6, 8, 10, 12, 14, 16, 18, 20, 22, 24, 26, 28, 30, 32, or 34, and the ability to oxidize a molecule selected from a group consisting of 3-hydroxyhispidin, (E)-6-(4-diethylamino)styryl)-3,4-dihydroxy-2H-pyran-2- one, (E)-3,4-dihydroxy-6-(4-hydroxystyryl)-2H-pyran-2-one, (E)-6-(2-1 H-indol-3-yl)vinyl)- 3,4-dihydroxy-2H-pyran-2-one, (E)-6-(2-(1,2,3,5,6,7-hexahydropyrido[3,2,1-ij]quinoline- 9-yl)vinyl)-3,4-dihydroxy-2H-pyran-2-one, and (E)-3,4-dihydroxy-6-(2-(6- hydroxynaphthalene-2-yl)vinyl)-2H-pyran-2-one, wherein fungal luciferin is within the plant cells. Applicant elected SEQ ID NO.2.
As currently claimed, this broad genus of “transgenic plant” includes a vast array of species in which fungal luciferin and luciferase may or may not be functional to obtain a bioluminescent plant. The instant specification provides only guidance for the coding sequence of luciferase from Neonothopanus nambi optimized for expression in Physcomitrella patens moss cells soaked in 3-hydoxyhispidin substrate (Example 13). At the time of filing, transgenic plants comprising optimized fungal luciferase sequences and fungal luciferin, particularly 3-hydroxyhispidin, wherein the plant is bioluminescent and comprises the fungal luciferin within the plant’s cells, were not possible to the full scope of plants as claimed. Morath et al. discloses that the bryophyte model organism Physcomitrella patens has several advantages over other model plants and is used regularly in biotechnical applications due to its facile cultivation and ease of genetic manipulation with the ability for homologous recombination (2014). As the mechanism for introducing the fungal luciferin 3-hydroxyhispidin in the instant application was soaking in BCD medium containing 3-hydoxyhispidin at a concentration of 660 µg/ml, it is assumed that the system for the fungal luciferin being in the plant cells is through the cell membrane. While this mode of entry into the plant cells may work effectively for P. patens, allowing for the bioluminescence and signal strength claimed in this invention, there is no evidence that this would be enabled in the full scope of the claims.
Knowledge gained from studying mosses is partially translatable to vascular plants, but significant differences in their fundamental biology mean that not all findings apply universally (Turetsky et al., 2012). Mosses (bryophytes) and vascular plants (like trees and flowering plants) are distinct groups that evolved different strategies for survival on land.
3-hydroxyhispidin was identified as the luciferin that most, if not all, luminous fungal species utilize suggesting that this is suitable substrate for bioluminescence in transgenic plants (Purtov et al., 2015, final ¶). No evidence was provided in the instant specification that the listed compounds other than 3-hydroxyhispidin are capable of acting as luciferins for the subject luciferases in transgenic plants. With only one working example provided in the specification, alternate species would require significant experimentation for protocol creation, as protoplast regeneration alone is often times not reproducible across species and the effectivity of creating bioluminescent plants would be unpredictable (Jeong, et al., 2021).
As the specification does not describe obtaining transgenic plants to the full scope of all possible claimed plant species/genera/families/orders/classes, undue trial and error and experimentation would be required to develop such a method and the tools required for it, if such methods are even obtainable.
Given the claim breadth, unpredictability in the art, and lack of guidance in the specification as discussed above, the instant invention is not enabled throughout the full scope of the claims.
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.
Instant SEQ ID NO. 2 appears to be free of the prior art. However, non-elected species SEQ ID NO. 10 was found in the prior art and was searched for examination purposes as follows:
Claims 1-2 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Dehvid (RU 2251571, 2005) in view of Purtov et al., (2015), “The Chemical Basis of Fungal Bioluminescence.” Angew. Chem. Int. Ed., 54: 8124-8128, and Tanaka et al., (2014), “Genome sequence of the luminous mushroom Mycena chlorophos for searching fungal bioluminescence genes.” Acc. DF848432.1.
Claim 1 discloses a transgenic plant, comprising:
a luciferase having the ability to oxidize a molecule selected from the group consisting of 3-hydroxyhispidin, (E)-6-(4-diethylamino)styryl)-3,4-dihydroxy-2H-pyran-2- one, (E)-3,4-dihydroxy-6-(4-hydroxystyryl)-2H-pyran-2-one, (E)-6-(2-1 H-indol-3-yl)vinyl)- 3,4-dihydroxy-2H-pyran-2-one, (E)-6-(2-(1,2,3,5,6,7-hexahydropyrido[3,2,1-ij]quinoline- 9-yl)vinyl)-3,4-dihydroxy-2H-pyran-2-one, and (E)-3,4-dihydroxy-6-(2-(6- hydroxynaphthalene-2-yl)vinyl)-2H-pyran-2-one,
and the luciferase having an amino acid sequence at least 90% identical to that of SEQ ID NO: 4.
wherein the transgenic plant comprises fungal luciferin in the plant cells, and
wherein the transgenic plant is bioluminescent.
Claim 2 discloses the transgenic plant of claim 1, wherein the fungal luciferin is 3- hydroxyhispidin.
Claim 7 discloses the transgenic plant of claim 1, wherein light emitted as a result of the bioluminescence is predominantly in the green region of the visible spectrum.
Claim 8 discloses the transgenic plant of claim 1, wherein light emitted as a result of the bioluminescence is in the range of 520-590 nm.
Claim 9 discloses the transgenic plant of claim 1, further comprising a nucleic acid encoding the luciferase.
Claim 10 discloses the transgenic plant of claim 1, wherein the amino acid sequence is at least 95% identical to that of SEQ ID NO: 4.
Regarding Claims 1, 2, 9, and 10, Dehvid et al. discloses firefly luciferase capable of oxidizing luciferin that can be obtained using recombinant DNA technology and used to transform microorganisms that then express the desired enzyme product (pg. 3, ¶ 2). D-luciferin was applied via spray in a solution to emit bioluminescence (pg. 13, Example 1), incubation in a citrate buffer containing D-luciferin (pg. 15, Example 3), or an assay buffer with D-luciferin (pg. 16, Example 4) (i.e., comprises luciferin within the cell). Dehvid discloses that the nucleic acids of the invention are suitably included in an expression vector, such as a plasmid, under the control of control elements such as a promoter that can then be used to transform a host cell such as a plant cell to obtain a bioluminescent transgenic plant (pg. 10, ¶ 10). Dehvid et al. further teaches that the invention provides nucleic acids that encode the luciferases and are based on wild-type sequences that are well known in the art (pg. 10, ¶ 3).
Dehvid et al. does not disclose a luciferase having the ability to oxidize a molecule selected from the group of luciferins in the instant application or a luciferase having an amino acid sequence at least 95% or 90% identical to those listed in the claims.
Purtov et al. teaches the fungal luciferin 3-hydroxyhispidin which was shown to lead to bioluminescence and suggests that “most, if not all, luminous fungi utilize hispidin as the luciferin precursor and 3-hydroxyhispidin as luciferin (pg. 8127, final ¶).” Purtov teaches that 3-hydroxyhispidin is biosynthesized by oxidation of the precursor hispidin, a known fungal and plant secondary metabolite (Abstract). Examiner notes that, although Ilia V. Yampolsky is a common author on Purtov et al., the publication date of this article is outside of the grace period for prior art even if foreign priority is corrected.
Purtov et al. does not teach a luciferase having an amino acid sequence at least 90% or 95% identical to those listed in the claims. However, in the search for fungal bioluminescence genes, Tanaka et al. teaches a sequence (Acc. DF848432.1) characterized as a luciferase with 100% similarity to SEQ ID NO 10 (shown below), meeting both the 90% identity requirement of Claim 1 and the 95% requirement of Claim 10.
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Although Dehvid et al. is based on bioluminescent firefly luciferase enzymes using the substrate D-luciferin, it would be obvious to one of ordinary skill in the art at the time of invention to combine the system of Dehvid et al. with known alternative luciferases and luciferin substrates to achieve a bioluminescent plant with fungal luciferin in the plant cells. One of ordinary skill in the art would have been motivated to do so as Purtov et al. teaches that 3-hydroxyhispidin acts as the luciferin for most, if not all, luminous fungi, and states that this luciferin is biosynthesized by oxidation of the precursor hispidin, a known fungal and plant secondary metabolite (Abstract). One of ordinary skill in the art would expect that using 3-hydroxyhispidin as the fungal luciferin with the known sequence for luciferase such as the one found in Tanaka et al. (Acc. DF848432.1), characterized as a luciferase, and the system of expression in Dehvid et al. would successfully produce bioluminescent plants or would at least be an obvious variant to try. As Dehvid et al. teaches that the nucleic acids of the invention are suitably included in an expression vector that can then be used to obtain transgenic plants, it would be obvious to one of ordinary skill that modifying the transgenic plant of Dehvid et al. with the luciferin of Purtov et al. and the luciferase sequence of Tanaka et al. would include nucleic acids that encode the luciferase for an expression vector such as a plasmid as described in Dehvid et al.
Regarding Claim 7 and 8, Dehvid et al. further teaches firefly luciferase mutant forms with different emission wave lengths in contrast to wild-type luciferase enzymes. Dehvid et al. teaches that the mutant forms have optionally different emission wavelengths in contrast to the respective wild-type enzymes, wherein the wild-type enzyme emits light at a wavelength of 562 nm (i.e., predominantly green; i.e., 520-590 nm) (pg. 4, ¶ 10). Dehvid et al. is drawn towards mutations that could shift away from the green light emitted from the bioluminescent signal and closer to red light emissions, suggesting that the non-mutated luciferases are predominantly in the green region of the visible spectrum and would emit a wavelength similar to the wild-type (pg. 4, ¶ 11).
Although Dehvid et al. does not explicitly teach the range of the claims, Purtov et al. further teaches that the normalized emission fluorescence spectra of hispidin in vivo in the M. chlorophos fruiting body and in vitro in a cold extract from M. chlorophos peaks around 525 nm (Fig. 3D), while the fungal luciferin displays a peak normalized absorbance at around 375 nm, similar to hispidin (Fig. 5).
It is reasonable to conclude that luciferases may vary in luminescence when integrated into a transgenic plant but would have similar spectral emissions to a wild-type luciferase if not mutated, based on Dehvid et al. One of ordinary skill in the art would be motivated to combine the method set forth by Dehvid et al and modified by the luciferin of Purtov et al. and the sequence of Tanaka et al. to obtain a bioluminescent plant with the potential to emit light in the green spectrum because, as Dehvid et al. states, determining the wavelength of a light sample emitted may be useful in analyzing the state of growth or activity of cells under different conditions (pg. 5, ¶ 6). One of ordinary skill in the art would assume that said plant would emit light in the green spectrum within the claimed range based on the properties of the fungal luciferin, 3-hydroxyhispidin, revealed in Purtov et al., where the bioluminescence peak fell around 525 nm for both hispidin and the fungal luciferin.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Dehvid et al. in view of Purtov et al., and Tanaka et al. as applied to Claims 1, 2, 7, 8, 9 and 10 above, and further in view of Krichevsky et al. (2010) Autoluminescent Plants. PLoS ONE 5(11): e15461.
Claim 3 recites the transgenic plant of Claim 1, having a bioluminescent intensity at least two orders of magnitude greater than a signal strength of a wild-type control plant. The transgenic plant of Claim 1 is rejected as above, with Dehvid et al. teaching the luciferin and luciferase incorporated into the bioluminescent transgenic plant, Purtov et al. teaching the luciferin 3-hydroxyhispidin and oxidation thereof by luciferase, and Tanaka et al. teaching an amino sequence with at least 90% similarity to that of SEQ ID NO. 10 (Acc. DF848432.1). These references do not teach a bioluminescent intensity at least two orders of magnitude greater than a signal strength of a wild-type control plant.
However, Krichevsky et al. teaches two lines of Nicotiana tabacum transplastomic plants carrying the bacterial lux operon from Photobacterium leiognathid through a plasmid transformation vector. One of the lines, LUX-TrnI/TrnA, emitted around 82.0
×
106 photons/min as compared to the wild-type tissue emission of 60-70
×
103 photons/min (Results, ¶ 2 & Fig. 4). The transgenic plant emitted around 136 times that of the wild-type, greater than two-fold magnitude.
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While this was demonstrated in transplastomic plants with bacterial luciferase in place of fungal luciferase, one of ordinary skill in the art would assume that with bioluminescent transgenic plants according to the method of Dehvid et al. with the fungal luciferin of Purtov et al. and the luciferase of Tanaka et al., the light emitted would be similar to the signal strength of the successful transplastomic plants of Krichevsky et al. with the available technologies at the time of filing.
Claims 4, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Dehvid et al. in view of Purtov et al. and Tanaka et al. as applied to claims 1, 2, 7, 8, 9, and 10 above, and further in view of Krichevsky et al. (US 9284569 B2, 2016).
Claim 1 is rejected as previously described over Dehvid et al. in view of Purtov et al. and Tanaka et al. Claim 4 recites the same transgenic plant of Claim 1, wherein the transgenic plant biosynthesizes fungal luciferin, Claim 5 further claims wherein the fungal luciferin is 3-hydroxyhispidin, and Claim 6 additionally claims wherein the 3-hydroxyhispidin is biosynthesized in host cells of the transgenic plant.
Krichevsky (2016) teaches, “an autoluminescent plant expressing a functioning luciferase pathway, comprising luciferase and one or more luciferin biosynthesis genes integrated in a plastid genome, wherein said luciferase pathway is obtainable from… Fungi (e.g., Panellus stipticus or Mycena citricolor) (Summary of Invention, ¶ 18),” and states that, “genes encoding for luciferase and biosynthesis of corresponding luciferin can be expressed in the form of synthetic operons in plant plastids (Description, ¶ 18).” One of ordinary skill according to the rationale in the rejection of Claim 1 would have the motivation and expectation of success to modify the transgenic plant of Dehvid et al. with the functioning biosynthetic genes of Krichevsky (2016) with the luciferin of Purtov et al. and the luciferase sequence of Tanaka et al. to achieve biosynthesis. Although Krichevsky (2016) includes luciferin biosynthesis genes and the potential for fungal luciferin biosynthesis within plant host cells beyond the scope of the instant claims, the instant application does not mention a system or mechanism for the transgenic plant biosynthesizing fungal luciferin within the specification and thus any method of inducing luciferin biosynthesis may be applicable.
Subject Matter Free of Art
A luciferase having an amino acid sequence at least 90% identical to SEQ ID NO. 2 appears to be free of prior art. The prior art fails to suggest such specifically claimed products, hence, said products are also non-obvious. Thus, Claims 1-10 are free of the prior art with SEQ ID NO. 2 as the elected species with proper amendment.
Conclusion
No claims are allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY K. JOHNSON whose telephone number is (571)272-5761. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 pm.
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/EMILY K JOHNSON/ Examiner, Art Unit 1662
/BRATISLAV STANKOVIC/ Supervisory Patent Examiner, Art Units 1661 & 1662