DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
2. Claims 1-6, 8 and 9 are pending and examined.
3. The rejection under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s amendment to the claims.
Claim Objections
4. In claim 1, line 2, the term “encoding for” should be amended to recite --encoding--. Appropriate correction is required.
Claim Interpretation
5. For the purpose of the examination, the claims are given their broadest reasonable interpretation as follows. Claim 1 is read as requiring the expression of the full-length SEQ ID NO: 1, 3, or 5.
Claim 10 is drawn to a seed of the plant of claim 1, but the seed is not limited by a filial generation, and is not required to comprise the nucleic acid encoding the exogenous HPPD of SEQ ID NO: 1, 3, or 5. The claim will thus read on any wild-type seed.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1-6, 8 and 9 remain rejected under 35 U.S.C. 103 as being unpatentable over Poree et al (US Patent Publication 2015/0159145), in view of Accinelli et al (Crop Protection (2014) 67:243-250) and GenBank Accession Number XM_024916819 (version of April 26, 2018). This rejection has been modified in view of Applicant’s amendments to the claims. Applicant’s arguments submitted on March 2, 2026 have been fully considered but they are not persuasive.
Poree et al teach a plant comprising a chimeric gene encoding a Rhodococcus sp. HPPD, including wherein the chimeric gene comprises a nucleic acid sequence encoding a transit peptide, so that the chimeric gene encodes the HPPD/transit peptide fusion protein (claims 17-24). Given the evidence in paragraphs 0042, 00112, and 0122, of Poree et al, and the fact that HPPD is a chloroplast enzyme, the term “transit peptide” is reasonably interpreted as synonymous with “chloroplast transit peptide.” Poree et al disclose maize, tobacco, rice, and soybean plants, expressing said HPPD, wherein the expression conferred tolerance to the HPPD inhibitor herbicides tembotrione and isoxaflutole (Examples 5-12; see Tables 6, 7-10). Poree et al teach using chloroplast transit peptides with the HPPDs of their invention (paragraphs 0042, 0112).
Poree et al teach as follows: “Homologous nucleotide sequence may also be identified and isolated by hybridization under stringent conditions using as probes identified nucleotide sequences encoding HPPD enzymes according to the invention or parts thereof. Such parts should preferably have a nucleotide sequence comprising at least 40 consecutive nucleotides from the coding region of HPPD encoding genes sequences according to the invention, preferably from the coding region of SEQ ID No. 1, SEQ ID No. 2, SEQ ID No. 3, SEQ ID No. 15, SEQ ID No. 16 or SEQ ID No. 17. The probes may however comprise longer regions of nucleotide sequences derived from the HPPD encoding nucleic acids, such as about 50, 60, 75, 100, 200 or 500 consecutive nucleotides from any of the mentioned HPPD genes. Preferably, the probe should comprise a nucleotide sequence coding for a highly conserved region which may be identified by aligning the different HPPD proteins” (paragraph 0074).
Poree et al do not teach an HPPD enzyme comprising SEQ ID NO: 1, 3, or 5 or a nucleic acid encoding said HPPDs.
Accinelli et al teach using isolates of the fungus Trichoderma harzianum to successfully degrade bicyclopyrone (BIR), an HPPD inhibitor, resulting in less injury to soybean plants from residual bicyclopyrone in a field that had been treated with said herbicide before planting (Fig. 6 and 7; see also Abstract; Introduction on pg. 243, both col.). Accinelli et al teach that “T. harzianum was effective in reducing BIR carry over risk” (page 249, left col.).
Accinelli et al teach as follows: “Although Trichoderma has been known for a long time mainly as a biocontrol fungus, more recently its use as a plant growth promoter and for bioremediation has been considered with increasing interest … Other than being tolerant to a wide number of synthetic compounds, including pesticides, Trichoderma species produce a vast array of extracellular enzymes capable to detoxifying different xenobiotics” (page 249, left col.)
GenBank Accession Number XM_024916819 teaches the HPPD from Trichoderma harzianum that has 100% sequence identity to the instant SEQ ID NO: 1. The sequence alignment is set forth below (SEQ ID NO: 1 is the “Query”).
Score
Expect
Method
Identities
Positives
Gaps
870 bits(2248)
0.0
Compositional matrix adjust.
415/415(100%)
415/415(100%)
0/415(0%)
Query 1 MSPSAISNSPEQRPANNNGTTPDNFAIQPPADFTGYDHVTWWVGNAKQAAAYYTTLFGFE 60
MSPSAISNSPEQRPANNNGTTPDNFAIQPPADFTGYDHVTWWVGNAKQAAAYYTTLFGFE
Sbjct 1 MSPSAISNSPEQRPANNNGTTPDNFAIQPPADFTGYDHVTWWVGNAKQAAAYYTTLFGFE 60
Query 61 TTAYRGLETGSRYFASYVVCNNGVRFVFTSPLRSEAHLPEDETISDSERKLLKEIHAHLE 120
TTAYRGLETGSRYFASYVVCNNGVRFVFTSPLRSEAHLPEDETISDSERKLLKEIHAHLE
Sbjct 61 TTAYRGLETGSRYFASYVVCNNGVRFVFTSPLRSEAHLPEDETISDSERKLLKEIHAHLE 120
Query 121 RHGDAVKDVAFEVDNVEAVYNKAVAEGAIA VQGPTATKDDHGSVTTAVICTYGDTTHTLI 180
RHGDAVKDVAFEVDNVEAVYNKAVAEGAIA VQGPTATKDDHGSVTTAVICTYGDTTHTLI
Sbjct 121 RHGDAVKDVAFEVDNVEAVYNKAVAEGAIA VQGPTATKDDHGSVTTAVICTYGDTTHTLI 180
Query 181 NRRGYTGPFLPGFRAGKERTSSVEMPNVPLARIDHCVGNQSWNEMVSACAFYEQCLSFHR 240
NRRGYTGPFLPGFRAGKERTSSVEMPNVPLARIDHCVGNQSWNEMVSACAFYEQCLSFHR
Sbjct 181 NRRGYTGPFLPGFRAGKERTSSVEMPNVPLARIDHCVGNQSWNEMVSACAFYEQCLSFHR 240
Query 241 FWSVDDSQICTEFSALNSIVMASPNNLVKMPINEPAPGKKKSQIEEYVIFNSGPGVQHIA 300
FWSVDDSQICTEFSALNSIVMASPNNLVKMPINEPAPGKKKSQIEEYVIFNSGPGVQHIA
Sbjct 241 FWSVDDSQICTEFSALNSIVMASPNNLVKMPINEPAPGKKKSQIEEYVIFNSGPGVQHIA 300
Query 301 LLTPDIITSVSALRARGVEFINVPTTYYDTMRQRLKTEKRNWQLKEDLDTIQRLNILIDY 360
LLTPDIITSVSALRARGVEFINVPTTYYDTMRQRLKTEKRNWQLKEDLDTIQRLNILIDY
Sbjct 301 LLTPDIITSVSALRARGVEFINVPTTYYDTMRQRLKTEKRNWQLKEDLDTIQRLNILIDY 360
Query 361 DEAGYLLQLFTKPLMDRPTVFIEIIQRNNFEGFGAGNFKSLFEAIEREQAERGNL 415
DEAGYLLQLFTKPLMDRPTVFIEIIQRNNFEGFGAGNFKSLFEAIEREQAERGNL
Sbjct 361 DEAGYLLQLFTKPLMDRPTVFIEIIQRNNFEGFGAGNFKSLFEAIEREQAERGNL 415
GenBank Accession Number XM_024916819 also teaches a nucleic acid sequence encoding said HPPD, which has 99% identity to the instant SEQ ID NO: 2 and differs from it at two nucleotides. The sequence alignment is set forth below (SEQ ID NO: 2 is the “Query”).
Score
Expect
Identities
Gaps
Strand
2294 bits(1242)
0.0
1246/1248(99%)
0/1248(0%)
Plus/Plus
Query 1 ATGTCCCCTTCTGCTATCAGCAACTCCCCAGAGCAGCGACCTGCAAACAACAACGGCACC 60
|||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 1 ATGTCCCCGTCTGCTATCAGCAACTCCCCAGAGCAGCGACCTGCAAACAACAACGGCACC 60
Query 61 ACCCCCGACAACTTCGCTATCCAGCCTCCCGCCGACTTCACCGGCTATGACCACGTAACG 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 61 ACCCCCGACAACTTCGCTATCCAGCCTCCCGCCGACTTCACCGGCTATGACCACGTAACG 120
Query 121 TGGTGGGTTGGCAACGCCAAGCAGGCGGCCGCTTATTACACCACCCTCTTTGGGTTCGAG 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 121 TGGTGGGTTGGCAACGCCAAGCAGGCGGCCGCTTATTACACCACCCTCTTTGGGTTCGAG 180
Query 181 ACTACGGCCTATCGTGGACTCGAGACTGGAAGCCGATACTTCGCTTCCTATGTCGTCTGC 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 181 ACTACGGCCTATCGTGGACTCGAGACTGGAAGCCGATACTTCGCTTCCTATGTCGTCTGC 240
Query 241 AACAATGGCGTCCGCTTCGTCTTCACGTCGCCTCTGCGATCGGAGGCTCACCTCCCTGAA 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 241 AACAATGGCGTCCGCTTCGTCTTCACGTCGCCTCTGCGATCGGAGGCTCACCTCCCTGAA 300
Query 301 GATGAGACCATCTCTGATTCTGAGCGGAAGCTCCTGAAGGAGATTCACGCTCACCTCGAG 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 301 GATGAGACCATCTCTGATTCTGAGCGGAAGCTCCTGAAGGAGATTCACGCTCACCTCGAG 360
Query 361 AGACACGGCGATGCCGTCAAGGACGTTGCCTTTGAAGTTGACAACGTCGAGGCCGTATAC 420
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 361 AGACACGGCGATGCCGTCAAGGACGTTGCCTTTGAAGTTGACAACGTCGAGGCCGTATAC 420
Query 421 AACAAGGCCGTGGCTGAGGGCGCCATCGCCGTCCAAGGCCCAACCGCCACCAAGGATGAT 480
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 421 AACAAGGCCGTGGCTGAGGGCGCCATCGCCGTCCAAGGCCCAACCGCCACCAAGGATGAT 480
Query 481 CACGGCTCCGTCACCACGGCCGTCATCTGCACCTATGGCGATACCACCCACACTCTCATC 540
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 481 CACGGCTCCGTCACCACGGCCGTCATCTGCACCTATGGCGATACCACCCACACTCTCATC 540
Query 541 AACCGCCGGGGCTACACGGGACCTTTCCTGCCCGGCTTCCGCGCCGGCAAGGAGCGCACC 600
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 541 AACCGCCGGGGCTACACGGGACCTTTCCTGCCCGGCTTCCGCGCCGGCAAGGAGCGCACC 600
Query 601 TCGTCCGTGGAGATGCCCAACGTGCCCCTTGCCCGCATCGACCACTGCGTCGGCAACCAG 660
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 601 TCGTCCGTGGAGATGCCCAACGTGCCCCTTGCCCGCATCGACCACTGCGTCGGCAACCAG 660
Query 661 TCGTGGAACGAAATGGTCTCGGCCTGCGCCTTTTACGAGCAGTGCCTGTCCTTCCACCGT 720
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 661 TCGTGGAACGAAATGGTCTCGGCCTGCGCCTTTTACGAGCAGTGCCTGTCCTTCCACCGT 720
Query 721 TTCTGGTCCGTCGACGACTCCCAGATCTGCACCGAGTTCTCGGCCCTCAACTCCATCGTC 780
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 721 TTCTGGTCCGTCGACGACTCCCAGATCTGCACCGAGTTCTCGGCCCTCAACTCCATCGTC 780
Query 781 ATGGCCTCGCCCAACAACCTCGTCAAGATGCCCATCAACGAGCCCGCCCCGGGCAAGAAG 840
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 781 ATGGCCTCGCCCAACAACCTCGTCAAGATGCCCATCAACGAGCCCGCCCCGGGCAAGAAG 840
Query 841 AAGTCCCAGATCGAGGAGTACGTCATCTTCAACTCCGGCCCGGGCGTCCAGCACATCGCC 900
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 841 AAGTCCCAGATCGAGGAGTACGTCATCTTCAACTCCGGCCCGGGCGTCCAGCACATCGCC 900
Query 901 CTCCTCACCCCGGACATCATCACCTCCGTCTCGGCCCTCCGCGCCCGCGGCGTCGAGTTC 960
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 901 CTCCTCACCCCGGACATCATCACCTCCGTCTCGGCCCTCCGCGCCCGCGGCGTCGAGTTC 960
Query 961 ATCAACGTGCCCACCACTTACTACGACACCATGCGCCAGCGCCTCAAGACGGAGAAGCGC 1020
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 961 ATCAACGTGCCCACCACTTACTACGACACCATGCGCCAGCGCCTCAAGACGGAGAAGCGC 1020
Query 1021 AACTGGCAGCTCAAGGAGGACCTGGACACCATCCAGCGCCTCAACATCCTCATCGACTAC 1080
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 1021 AACTGGCAGCTCAAGGAGGACCTGGACACCATCCAGCGCCTCAACATCCTCATCGACTAC 1080
Query 1081 GACGAGGCCGGCTACCTCCTGCAGCTCTTCACCAAGCCGCTCATGGACCGCCCTACCGTC 1140
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 1081 GACGAGGCCGGCTACCTCCTGCAGCTCTTCACCAAGCCGCTCATGGACCGCCCTACCGTC 1140
Query 1141 TTCATTGAGATTATCCAGAGAAACAACTTTGAGGGCTTCGGCGCCGGCAACTTCAAGAGC 1200
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Sbjct 1141 TTCATTGAGATTATCCAGAGAAACAACTTTGAGGGCTTCGGCGCCGGCAACTTCAAGAGC 1200
Query 1201 TTGTTCGAGGCCATTGAGCGCGAGCAGGCCGAGCGAGGAAACTTGTAA 1248
|||||||||||||||||||||||||||||||||||||||||| |||||
Sbjct 1201 TTGTTCGAGGCCATTGAGCGCGAGCAGGCCGAGCGAGGAAACCTGTAA 1248
At the time of filing, it would have been prima facie obvious to modify the teachings of Poree et al, using the teachings of Accinelli et al and GenBank Accession Number XM_024916819, and obtain an expression construct encoding the HPPD of the GenBank Accession Number XM_024916819, including wherein the HPPD is fused to a chloroplast transit peptide.
Given the conserved nature of a number of known HPPD domains, as taught by Poree et al, one would have been able to predictably identify the protein of GenBank Accession Number XM_024916819 as an HPPD, as well as to isolate its coding sequence. Moreover, one would have recognized that the amino acid sequence would have made obvious at least one nucleic acid sequence encoding it, due to the properties of the genetic code.
It would have been obvious to exogenously express said construct in any crop plant, including any monocot or dicot crop such as corn or soybean, as taught by Poree et al. It would have been obvious to use, in said expression construct, the nucleic acid of GenBank Accession Number XM_024916819, which would be considered an obvious variant of the instant SEQ ID NO: 2, given that both encode the same protein. Moreover, it would have been obvious to select the resultant transgenic plants for resistance to one or more HPPD inhibitors, including those taught by Poree et al, and including tolerance to the rates that would injure of kill a wild-type plant. Screening for tolerance level in plants expressing a transgene expressing an exogenous HPPD is also expressly taught by Poree (paragraph 115).
One would have been motivated to combine said teachings, and to specifically select the HPPD from Trichoderma harzianum given the teachings of Accinelli et al regarding the ability of said fungus to inactivate bicyclopyrone, an HPPD inhibitor. One would have also been motivated to arrive at the claimed invention given the desirability of obtaining HPPD inhibitor tolerant plants, as illustrated by the teachings of Poree et al.
Given the teachings of Accinelli et al, the fact that the HPPD T. harzianum was known in the prior art, and in view of the routine nature of the molecular biology methods involved, one would have had reasonable expectation of success in arriving at the claimed plant, including wherein the plant is resistant to at least one HPPD inhibitor.
Response to Arguments
Applicant argues that the claims have been amended. Applicant argues that “Poree does not teach an HPPD enzyme comprising SEQ ID NO: 1, 3, or 5 or a nucleic acid encoding said HPPDs. Moreover, Applicant submits that paragraph [0009] of Poree explicitly states that while overexpression of sensitive HPPD is sufficient to provide pre-emergence tolerance it was not sufficient for post-emergence treatment. Accinelli does not cure the deficiencies of Poree. In particular, as characterized in the Action itself, Accinelli is cited for teaching that T. harzianum can degrade bicyclopyrone such that there is "less injury to soybean plants from residual bicyclopyrone in a field that had been treated before planting," and that T. harzianum was effective in reducing carryover risk. … There is nothing in the teachings of Accinelli to suggest that expressing in a plant, an exogenous HPPD enzyme having an amino acid as currently claimed, renders the plant resistant to post-emergence HPPD inhibitors. The teaching of Accinelli is conceptually different from claim 1 as amended herein, which requires direct resistance of the transgenic crop plant to post-emergence applications of a HPPD inhibitor at a weed-killing (or plant-killing) concentration” (pages 6-7 of the Remarks).
Applicant argues that “the GenBank reference does not teach or suggest that expressing that fungal HPPD in a crop plant yields the claimed post-emergence resistance phenotype. The amended independent claim is thus not satisfied merely by identifying and cloning a sequence; the cited references still must teach or suggest achieving the recited resistance in the claimed context. Thus, one of ordinary skill in the art at the time of the invention would have lacked motivation to combine the teaching of Poree with the teaching of Accinelli and Genbank, since Accinelli only teaches that application of bioplastic granules with Beauveria bassiana, Rhizopus oryzae or Trichoderma harzianum leads to reduction of inoculated carry over risks caused by the residual herbicide BIR applied before planting of the plant. Furthermore, advantageously and unexpectedly as demonstrated in the application as filed, plants expressing the claimed exogenous HPPD genes grow essentially unhindered when subjected to various post-emergence herbicide treatments” (pages 6-7 of the Remarks).
Applicant’s argument is not found to be persuasive. Applicant’s amendments to the claims are acknowledged and the rejection has been modified accordingly. However, the claims remain rejected for the reasons set forth in the modified rejection above.
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, for example, there is no dispute that Accinelli et al do not expressly teach expressing the HPPD at issue in a plant. However, this would have been obvious in view of the combined teachings of the cited art.
With regard to the motivation, Applicant’s argument is not found to be persuasive either. Screening for wild-type HPPDs from various organisms to identify those that confer herbicide tolerance to plant - with or without being mutated first - is routine in the art. This is illustrated by the teachings Poree et al, who use the HPPD from Rhodococcus, a bacterium.
While bioremediation of HPPD inhibitors is different from the target-site approach of resistance, the teachings of Accinelli et al that Trichoderma - a commonly occurring fungus that is widely used for biocontrol of a number of pathogens - could inactivate a triketone would have pointed to that organism as a potential source of an HPPD, and would have contributed to the motivation to make and evaluate a transgenic crop expressing said HPPD. The prior art would not have needed to expressly teach herbicide tolerance properties of the HPPD at issue - merely screening said HPPD by making a transgenic crop expressing it would have been sufficient to arrive at the transgenic crop of the instant claims.
In addition, one of ordinary skill in the art would not have been needed to be motivated by the same rationale as Applicant in order to arrive at a claimed invention. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. MPEP 2144(IV) explains that a rationale to combine that is different from applicant’s is permissible. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
Regarding reasonable expectation of success, Applicant’s argument is not found to be persuasive. Paragraph 9 of Poree, refers to Matringe et al (Pest Manag Sci (2005) 61:269-276). Matringe et al, in turn, cites a previous study that overexpressed herbicide sensitive Pseudomonas fluorescens HPPD in tobacco, maize and soybean, with the result being as follows: “The transgenic HPPD plants were found to be highly resistant to isoxaflutole since they could support pre-emergence treatment at up to 400 g ha−1, whereas wild-type plants could not support pre-emergence treatment at 4–6 g ha−1 for tobacco, 20 g ha−1 for soybean and 100 g ha−1 for maize. However, all transgenic plants were found to be less resistant to post-emergence treatment, which was a major objective” (page 272, right col., emphasis supplied). The fact that the plants were “less resistant” to post-emergence application of isoxaflutole does not mean or imply the absence of said resistance. It is noted that the property recited in claim 1 will encompass any HPPD inhibitor, any application rate (so long as it is sufficient to kill a plant not expressing the HPPD at issue), and any level of resistance.
Claim Rejections - 35 USC § 102
8. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
9. Claim 10 remains rejected under 35 U.S.C. 102(a)(1) as being anticipated by Poree et al (US Patent Publication 2015/0159145).
The claim is drawn to a seed of the plant of claim 1, wherein the seed is not limited by a filial generation and is not required to comprise the nucleic acid encoding the fungal HPPDs of SEQ ID NO: 1, 3, or 5. The claim will thus read on any seed.
The teachings of Poree et al are set forth above. In addition, Poree et al teach seeds, including those of tobacco (Example 4). In view of the above claim interpretation, any seed of Poree et al will read and anticipate the limitations of claim 10.
Response to Arguments
Applicant argues that “As amended, claim 1 recites that the plant comprise the respective nucleic acid encoding for the exogenous HPPD. Accordingly, the seed recited in claim 10 is required to comprise the nucleic acid encoding the fungal HPPDs as recited in claim 1” (page 8 of the Remarks).
This argument is not found to be persuasive. The fact that the plant of claim 1 is expressly required to comprise the transgene at issue does not change the analysis for claim 10. The seed of claim 10 is not required to comprise the transgene encoding the HPPD of SEQ ID NO: 1, 3, or 5 nor it is the seed limited by a filial generation. A transgene will segregate in the progeny and thus a subsequent generation will necessarily encompass a seed that does not comprise the transgene, unless indicated otherwise. The Examiner notes that amending claim 10 to require that the seed comprise the nucleic acid molecule of claim 1 will overcome the rejection.
Relevant Prior Art
10. While the following art was not cited in the above rejections, it is made of record as it is relevant to the claimed subject matter.
Choudhury et al, Biodegradation of topramezone by a Trichoderma isolate in soil, Weeds -Journal of Asian-Pacific Weed Science Society (2019) 1:43-54, published August 2019. Choudhury et al teach that Trichoderma isolates degraded 85% of topramezone without 30 days of incubation, which is much faster than the reported half-life of the herbicide (Abstract).
Conclusion
11. No claims are allowed.
12. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MYKOLA V KOVALENKO whose telephone number is (571)272-6921. The examiner can normally be reached Mon.-Fri. 9:00-5:30 PST.
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/MYKOLA V. KOVALENKO/Primary Examiner, Art Unit 1662
Prosecution Insights