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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/19/2025 has been entered.
Status of the Claims
Claims 3, 6, and 18 are canceled.
Claims 1-2, 4-5, 7-17, and 19-22 are pending.
Claims 8-17 and 19-22 are withdrawn from consideration.
Elected claims 1-2, 4-5, and 7 are examined herein.
Claims 1-2, 4-5, and 7 are rejected.
Priority
Application No. 18/451,658 filed on 08/17/2023 claims benefit of priority to provisional Application No. 63/398,726 filed on 08/17/2022.
Claim Objections
Claim 1 is objected to because of the following informalities: The period at the end of claim 1 has been deleted. A period should be inserted at the end of claim 1. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 4 and 7 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 4 recites the limitation "The cannabis seed of claim 3, wherein the marker gene is RUBY or a gene encoding tdTomato”. However, claim 3 has been canceled. Therefore, there is insufficient antecedent basis for the references of the cannabis seed and the marker gene in claim 4. For purposes of examination, the claim is interpreted to depend from claim 1. This interpretation does not relieve Applicant from duty to amend the recited deficiency.
Claim 7 recites the limitation " the ubiquitin promoter, 35S promoter, 2x35S promoter, 7S seed-specific soybean promoter, Edel seed promoter, or the CsEdelp seed promoter.". However, there is not previously recitation of the specifically recited promoters. For this reason, there is insufficient antecedent basis for this limitation in the claim. Applicant should amend the claim to recite “The cannabis seed of claim 1, wherein the promoter is a ubiquitin promoter, 35S promoter, 2x35S promoter, 7S seed-specific soybean promoter, Edel seed promoter, or
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 1-2, 4-5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Hildebrand (US-20210025014-A1), Zhao (Zhao, X., Wei, W., Pan, H., Nie, J., Chen, D., Zhang, P., ... & Zhang, M. (2019). Identification of the sex of pre-implantation mouse embryos using a marked Y chromosome and CRISPR/Cas9. Scientific reports, 9(1), 14315), He (He, Y., Zhang, T., Sun, H., Zhan, H., & Zhao, Y. (2020). A reporter for noninvasively monitoring gene expression and plant transformation. Horticulture research, 7), and Fletcher (US-20220152138-A1).
Claim 1 is drawn to a cannabis seed comprising a Y chromosome, wherein the Y chromosome is modified to comprise:
a) a heterologous promoter operably linked to a marker gene, or
b) a gene that is altered through gene editing to generate a marker gene; and wherein expression of the marker gene of (a) or (b) imparts a detectable phenotype wherein the detectable phenotype is chromogenic or fluorogenic and is visible through the seed coat.
Claim 2 is drawn to the cannabis seed of claim 1, wherein the marker gene is expressed in seeds and pollen grains.
Claim 4 ius drawn to the cannabis seed of claim 3 (interpreted to depend from claim 1), wherein the marker gene is RUBY or a gene encoding tdTomato.
Claim 5 is drawn to the cannabis seed of claim 1, wherein the marker gene is selected from RFP, GFP, YFP, CFP, meffRed, eforRed, aasPink, spisPink, scOrange, crtBl, crtI, crtE, CYP76AD1, DODA, or GT.
Claim 7 is drawn to the cannabis seed of claim 1, wherein the promoter is the ubiquitin promoter, 35S promoter, 2x35S promoter, 7S seed-specific soybean promoter, Edel seed promoter, or the CsEdelp seed promoter.
Regarding claim 1, Hildebrand teaches a method for determining a gender of a Cannabis seed, comprising: obtaining a biological sample from a dry Cannabis seed; determining a presence or absence of a Y-chromosome specific marker in the biological sample from the dry Cannabis seed; and identifying the dry Cannabis seed as being a male or female Cannabis seed based on the presence or absence of the Y-chromosome specific marker in the biological sample (abstract, claim 1 of Hildebrand).
However, Hildebrand does not explicitly teach:
wherein the Y chromosome is modified to comprise a heterologous promoter operably linked to a marker gene, or a gene that is altered through gene editing to generate a marker gene, and wherein expression of the marker gene of (a) or (b) imparts a detectable phenotype that is chromogenic or fluorogenic and is visible through the seed coat (remaining limitations of claim 1).
The cannabis seed of claim 1, wherein the marker gene is expressed in seeds and pollen grains (claim 2).
The cannabis seed of claim 3, wherein the marker gene is RUBY or a gene encoding tdTomato (claim 4).
The cannabis seed of claim 1, wherein the marker gene is selected from RFP, GFP, YFP, CFP, meffRed, eforRed, aasPink, spisPink, scOrange, crtB, crtl, crtE, CYP76AD1, DODA, or GT (claim 5).
The cannabis seed of claim 1, wherein the promoter is the ubiquitin promoter, 35S promoter, 2x35S promoter, 7S seed-specific soybean promoter, Edel seed promoter, or the CsEdelp seed promoter (claim 7).
Regarding the remaining limitations of claim 1, in analogous art, Zhao teaches a method of modifying the y-chromosome of a mouse line with a GFP visual reporter under the control of the CAG promoter for the purpose of easily and accurately identifying male embryos (title, abstract). In other analogous art, He teaches a noninvasive reporter gene to screen for transgenic plants and seeds (title, abstract), and specifically teaches using the 35S promoter (i.e. a heterologous promoter) to express the RUBY visual reporter gene (i.e. a marker gene) in plants and progeny seeds that harbor the T-DNA with the transgene (Fig. 2, Supplemental Fig. 3).
Regarding claim 2, He teaches the marker gene is expressed in seeds driven by the strong constitutive 35S promoter (Supplemental Fig. 3) (i.e. meaning the promoter expresses in all cells). He also teaches betalain was synthesized in all floral organs in 35S:RUBY plants (Supplemental Fig. 3 and caption). Because the strong, constitutively expressed 35S promoter (which is expresses in all cells) was used to drive RUBY expression, and expression was reported to be observed in seeds and all floral organs, it is reasonably interpreted that RUBY was expressed in the pollen cells.
Regarding claim 4, He teaches the marker gene is Ruby (Fig 2., Supplemental Fig. 3).
Regarding claim 5, Zhao teaches the marker gene is GFP (title, abstract).
Regarding claim 7, He teaches the promoter is the 35S promoter (Fig. 2, Supplemental Fig. 3).
It would therefore have been obvious to a person of ordinary skill in the art to modify the invention of as taught by Hildebrand to include the limitations of Zhao and He to arrive at the instantly claimed method with a reasonable expectation of success because Hildebrand teaches a method of identifying Cannabis seeds with a y- chromosome, Zhao teaches a y-chromosome can be modified to comprise a visual reporter gene to easily detect cells with the y-chromosome for sex determination, and He teaches a routine method and product in the biotechnology field that is a plants and seeds carrying a heterologous promoter linked to a visual reporter; this combination would allow identification of plants carrying the y-chromosome and could be achieved by one of ordinary skill in the art without encountering any special technical obstacles. One having ordinary skill in the art would have been motivated to combine the teachings of Hildebrand and Zhao because it would be prima facie obvious to modify a y- chromosome with a marker gene as taught by Zhao in plants rather than mice for the same purpose that is sex determination. One having ordinary skill in the art would have also been motivated to combine the teachings with He because He teaches the RUBY reporter is an effective, noninvasive reporter gene (title, abstract), and plants and seeds harboring the RUBY gene can be easily identified without additional equipment such as a microscope that limits identification of traditional fluorescent reporter genes (Introduction, 41, Fig. 2, Supplemental Fig. 3). Furthermore, one having ordinary skill in the art would have been motivated to combine these teachings to modify the y- chromosome of a Cannabis plant to impart a detectable phenotype in the male plants, seed, or pollen because Fletcher teaches Cannabis is an important agronomic crop, and much of the production today is done using feminized seed with the end goal of fields containing only female plants since the female reproductive tissue (e.g. the buds) produce the economically-important cannabinoids (i.e. male plants or plants with the y- chromosome are undesirable) (¶0010).
Response to Arguments
Applicant argues beginning on p. 6 of remarks dated 11/19/2025 the
following arguments:
Claims 1-5 and 7 are rejected for allegedly begin unpatentable under 35 U.S.C. §103 over Hildebrand et al. (US 2021/0025014), Zhao et al. (Scientific Reports 9:14315, 2019) He et al. (Horticulture Research 7(1):152, 2020), and Fletcher (US 2022/0152138). The Examiner cites Hildebrand for teaching a method of determining the gender of a Cannabis seed with a Y- chromosome-specific marker, also citing He for teaching the use of a strong promoter to drive RUBY expression in transgenic plants and seeds. The Examiner admits that Hilderbrand does not explicitly teach the use of a Y chromosome that “comprises a heterologous promoter operably linked to a marker gene”. Thus, the Examiner cites Zhao for teaching “a method of modifying the Y-chromosome of a mouse line with a GFP visual reporter under the control of the CAG promoter for the purpose of easily and accurately identifying male embryos”. The Examiner argues that it would have been obvious to modify the invention as taught by Hildebrand to include the limitations of Zhao and He, and that one would be motivated to do so in view of Fletcher, which teaches that feminized seed production is economically important for producing cannabinoids.
However, the seeds of cannabis are a dark brown color and while He teaches that the chromogenic, RUBY expression can be detected in Arabidopsis seeds, there would be no reasonable expectation of success in using such visible markers in a seed with a dark and dense seed coat such as cannabis. This required the experimentation provided by the inventors in the current application. As set forth in MPEP 2142, in order to establish a prima facie case of obviousness, there must be a reasonable expectation of success, and the prior art references must teach or suggest all of the claim limitations. Without acquiescing to the merits of the rejection, and solely to further prosecution of the application, Applicant has amended claim 1 to specify that the detectable phenotype is chromogenic or fluorogenic and is visible through the seed coat. Also, claims 1, 2, 4, 5, and 7 are amended to specify only the use of a cannabis seed. Claims 3 and 6 are cancelled. To reiterate, the claims now explicitly require that the detectable phenotype is visible through the seed coat, and the claims are narrowed to focus on the seeds.
Additionally, claim 6 is rejected under 35 U.S.C. §103 as being unpatentable over Hildebrand, He, and Fletcher in view of An et al. (Frontiers in Plant Science 8:34, 2007). The Examiner admits that Hildebrand, Zhao, He, and Fletcher do not explicitly teach using the marker genes listed in claim 6. Thus, the Examiner cites An as teaching WRIl knockout mutants that exhibit a wrinkled seed phenotype and argues that it would be obvious to use a detectable marker in the method of Hildebrand, He, Zhao and Fletcher. As stated above, the claim set has been narrowed to include only chromogenic and fluorogenic markers, and the dark seed coat of cannabis would not have been expected to allow for the visual detection of such markers. Applicant respectfully submits again that one skilled in the art would not have had a reasonable expectation of success with such a marker, and that An does not remedy that limitation.
Therefore, Applicant asserts that none of the references, either alone or in combination teach or suggest all of the claim limitations, and that one of skill in the art would not have had a reasonable expectation of success at arriving the currently pending claims using Hildebrand, Zhao, He, Fletcher, and An as a guide.
This argument has been fully considered and is found not persuasive for
the following reason(s):
Applicant’s argument, in sum, is that one skilled in the art would not have had a reasonable expectation of success in using such visible markers in a seed with a dark and dense seed coat such as cannabis.
However, it is well-known that cannabis seeds have varied coloration and in many Cannabis seeds, at least some if not all of the seed is a tan/ light brown color and may have dark brown specks, however the entire seed is often not dark brown. Therefore, one would reasonably expect at least some portion of the seed to have detectable red coloration from the RUBY reporter gene. There is also no provided reason as to why the density of the seed would inhibit RUBY expression in the seed coat when driven by a constitutive promoter including 35S. One of ordinary skill in the art would not expect the density of the cannabis seed to inhibit detection of the marker gene in or through the seed coat.
Furthermore, although He teaches detection of seeds using the RUBY reporter, claim 4 is not limited to the RUBY reporter but also a gene encoding tdTomato (i.e. a RFP). As recited in the 103 rejection previously herein, in analogous art, Zhao teaches a using a GFP visual reporter for the purpose of sex determination. It would be obvious to combine the teachings and use GFP rather than RUBY for the same purpose, as well as substitute the marker gene with any other well-known fluorescent protein encoding gene, e.g. tdTomato, for the same purpose of screening for sex determination. For these reasons, Applicant’s argument is not found persuasive.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA N STOCKDALE whose telephone number is (703)756-5395. The examiner can normally be reached M-F 8:30-5:00 CT.
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JESSICA N. STOCKDALE
Examiner
Art Unit 1663
/JESSICA NICOLE STOCKDALE/Examiner, Art Unit 1663
/CHARLES LOGSDON/Primary Examiner, Art Unit 1662