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 .
Status of the Claims
Claim 2, 5-6, and 10-12 are canceled.
Claims 1, 3-4, 7-9, and 13-23 are pending.
Claims 1, 3-4, 7-9, and 13-23 are examined herein.
Claims 1, 3-4, 7-8, and 13-23 are rejected.
Claim 9 is objected to.
Claim Objections
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims (see closest prior art section).
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 7-8, and 21-22 are rejected under 35 U.S.C. 102(A)(1) as being anticipated by Kaddoura (Kaddoura, R. L., & Mantell, S. H. (1991). Synthesis and characterization of Nicotiana-Solanum graft chimeras. Annals of Botany, 68(6), 547-556) and as evidenced by Notaguchi (Notaguchi, M., Kurotani, K. I., Sato, Y., Tabata, R., Kawakatsu, Y., Okayasu, K., ... & Higashiyama, T. (2020). Cell-cell adhesion in plant grafting is facilitated by β-1, 4-glucanases. Science, 369(6504), 698-702).
This is a modified rejection from the previous rejection set forth in the Office Action dated 11/03/2025, necessitated by Applicant’s amendments.
Claim 1 is drawn to a method of producing a shoot of a plant, comprising:(a) contacting a cell of a recalcitrant plant with a cell of a regenerative plant, wherein the cell of the regenerative plant shows a higher regeneration efficiency than the cell of the recalcitrant plant under a condition that allows for shoot regeneration; (b) allowing the contacted cells of (a) to form shoots under the condition that allows for shoot regeneration;(c) selecting a shoot formed in (b), wherein the shoot is substantially free of cells derived from the regenerative plant; and (d) growing a plant from the selected shoot of (c), wherein the cell of the recalcitrant plant and the cell of the regenerative plant of (a) are comprised in a tissue, wherein the contacting (a) is performed by stock-scion grafting and allowing a graft junction to heal, and wherein the allowing (b) comprises:(i) generating a wound at or near the graft junction;(ii) allowing callus to be formed at the wounded graft junction; and (iii) allowing a shoot to grow from the callus, wherein the recalcitrant plant is a plant that fails to regenerate or shows a poor regeneration efficiency under regenerative growth conditions, wherein the regenerative growth conditions include the presence of an externally supplied auxin and/or cytokinin.
Claim 7 is drawn to the method according to claim 1, wherein the cells contacted are exposed to a compound promoting aggregation of the cell membranes of the cells.
Claim 8 is the method according to claim 7, wherein the compound promoting aggregation is a plant cell and/or protoplast linking agent.
Claim 21 is drawn to the plant according to claim 1, wherein the plant from the selected shoot of (c) is a non-chimera plant.
Claim 22 is drawn to the plant according to claim 1, wherein vegetative propagation of the selected shoot of (c) produces a recalcitrant plant.
Regarding claim 1, Kaddoura discloses a method of grafting Nicotiana tabacum L. and Solanum laciniatum Ait. plants and decapitating the scion by making a cut parallel to the graft union so only 2-3 mm of scion tissue was left grafted to each rootstock (title, whole document) (i.e. wherein the contacting (a) is performed by stock-scion grafting and allowing a graft junction to heal, and wherein the allowing (b) comprises:(i) generating a wound at or near the graft junction). Kaddoura discloses checking the ability of each of the species to produce adventitious shoots at decapitated internodes (p. 548, Materials and Methods, Grafting, treatment, and shoot harvest). Kaddoura discloses none of the decapitated, non-grafted Nicotiana tabacum plants produced adventitious shoots however, five out of the 12 decapitated non-grafted plants of Solanum laciniatum gave a number of adventitious shoots ranging from 2 to 12 per plant (mean of 6.15) indicating that Solanum was more capable of forming adventitious shoots on decapitated stems than was its partner Nicotiana (p. 549, Results, Adventitious and chimeral shoot production) (i.e. Solanum is regenerative and Nicotiana is recalcitrant, and contacting a cell of a recalcitrant plant with a cell of a regenerative plant). Kaddoura then discloses producing shoots from the grafted, decapitated plants (p. 549, Results, Adventitious and chimeral shoot production), wherein some shoots were chimeric and many of the shoots of the Solanum scion-Nicotiana stock graft plants produced Nicotiana shoots (Table 3) (i.e. wherein the cell of the regenerative plant shows a higher regeneration efficiency than the cell of the recalcitrant plant under a condition that allows for shoot regeneration), and further discloses removing the shoots as cuttings and growing them under standard growth conditions (p. 548, Materials and Methods, Grafting, treatment and shoot harvest) (i.e. (b) allowing the contacted cells of (a) to form shoots under the condition that allows for shoot regeneration;(c) selecting a shoot formed in (b), wherein the shoot is substantially free of cells derived from the regenerative plant; and (d) growing a plant from the selected shoot of (c)). Furthermore, Kaddoura discloses investigating the conditions necessary to induce intergeneric Nicotiana-Solanum chimeras using exogenous applications of CPA and the cytokinin benzylaminopurine (BAP) to induce adventitious shoots from intermixed callus tissues at graft unions (p. 548, Introduction, ¶2), discloses application of CPA enhanced callus growth in another study (p. 548, Introduction, ¶1), and discloses shoots formed from the graft unions and the remaining scion tissues attached to each freshly decapitated grafted plants that were brushed with a control mixture, BAP, or CPA (p. 548, Materials and Methods, Grafting, treatment and shoot harvest), it is reasonably interpreted that the adventitious shoots grew from callus at the wound junction and decapitated scion (i.e. (i) generating a wound at or near the graft junction;(ii) allowing callus to be formed at the wounded graft junction; and (iii) allowing a shoot to grow from the callus). Specifically regarding Applicant’s amendment to claim 1 that recites “wherein the recalcitrant plant is a plant that fails to regenerate or shows a poor regeneration efficiency under regenerative growth conditions, wherein the regenerative growth conditions include the presence of an externally supplied auxin and/or cytokinin”, Kaddoura discloses none of the decapitated, non-grafted Nicotiana tabacum plants treated with BAP (a cytokinin) or CPA (a cytokinin) produced adventitious roots(p. 549, Results ¶1). Thus, Kaddoura discloses Nicotiana is a recalcitrant that plant fails to regenerate or shows a poor regeneration efficiency under regenerative growth conditions, wherein the regenerative growth conditions include the presence of an externally supplied auxin and/or cytokinin as defined and recited in claim 1. These conditions are further supported to be regenerative growth conditions because Solanum plants under the same treatments successfully produced adventitious shoots in 5 of the 12 decapitated plants (p. 549, Results ¶1).
Regarding claims 21-22, Kaddoura discloses many of the shoots produced from the solanum scion and nicotiana stock graft were not chimeric and were identical to the genotypes of the understock (p. 550, Table 3, and section titled Shoot genotype in relation to scion/stock combinations) (i.e. the plant is non-chimera and because it is the same genotype as the Nicotiana understock, it would also be recalcitrant)
Claims 7 and 8 are also anticipated as a function of inherency. Notaguchi provides evidence that Nicotiana shows graft compatibility with diverse plant species through the function of a conserved clade of extracellular-localized b-1,4-glucanases, which is naturally produced by Nicotiana and promotes cell-cell adhesion (title, abstract, p. 5) (i.e. because b-1,4-glucanases secreted by Nicotiana in grafting promotes cell-cell adhesion, b-1,4-glucanases is reasonably interpreted as a plant cell linking agent). Therefore, the contacted cells are reasonably interpreted to be exposed to a compound that promotes aggregation of the cell membranes of the cells and is a plant cell linking agent.
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 3 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Kaddoura (Kaddoura, R. L., & Mantell, S. H. (1991). Synthesis and characterization of Nicotiana-Solanum graft chimeras. Annals of Botany, 68(6), 547-556).
This is a modified rejection from the previous rejection set forth in the Office Action dated 11/03/2025, necessitated by Applicant’s amendments. This rejection is considered modified because the rejection of amended claim 1 (from which this claim depends) required a modified rejection.
Claim 3 is drawn to the method according to claim 1, comprising (d) growing a plant from the selected shoot of (c), and further comprising (e) obtaining seed or plant progeny of the plant grown in (d) by sexual propagation.
Claim 23 is drawn to the plant according to claim 3, further comprising (e) obtaining seed or plant progeny of the plant grown in (d) by selfing or backcrossing.
Regarding claims 3 and 23, Kaddoura teaches the limitations of claim 1 as set forth in the previous anticipation rejection. The teachings of Kaddoura as they are applied to claim 1 are set forth previously herein and are incorporated by reference.
However, Kaddoura does not explicitly teach in a single embodiment:
the method according to claim 1, comprising (d) growing a plant from the selected shoot of (c), and further comprising (e) obtaining seed or plant progeny of the plant grown in (d) by sexual propagation (claim 3).
the plant according to claim 3, further comprising (e) obtaining seed or plant progeny of the plant grown in (d) by selfing or backcrossing (claim 23).
In an alternative embodiment, Kaddoura teaches the shoots that were grown and determined to be chimera shoots were crossed with the parent tobacco plants and produced viable seed (p. 553, ¶2).
Kaddoura teaches all of the limitations of the rejected claims in alternative embodiments, but does not disclose a single embodiment having all the limitations. As such, the claims are not rejected as anticipated under 35 USC §102 but are instead rejected as obvious under 35 USC §103. One of ordinary skill in the art would have been motivated to combine the limitations as taught by Kaddoura into a single embodiment to arrive at Applicant’s claimed inventions because each limitation is explicitly taught as an alternative embodiment of the invention. It would therefore be obvious to combine the methods taught by Kaddoura for the purpose of obtaining progeny seed, and further determining seed viability as explicitly taught by Kaddoura (p. 553, ¶2). It would be prima facie obvious to apply the method of crossing chimera shoots and parent Nicotiana plants to the non-chimera shoots (therefore crossing non-chimera and parent Nicotiana plants) for the purpose of obtaining a seed viability control sample to compare the progeny of the chimera shoots to. One having ordinary skill in the art would have a reasonable expectation of success because the method Kaddoura teaches was functional and successful and the application to the alternative embodiments present no special technical obstacles.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kaddoura as applied to claim 1, and further in view of Stuurman (WO-2018115395-A1 published on 06/28/2018) and as evidenced by Abeyratne (Abeyratne, 2017, The Quest for a Key Gene Controlling Acquisition of Cell Competence During In Vitro Organogenesis in Tomato. West Virginia University).
This is a modified rejection from the previous rejection set forth in the Office Action dated 11/03/2025, necessitated by Applicant’s amendments. This rejection is considered modified because the rejection of amended claim 1 (from which this claim depends) required a modified rejection.
Claim 4 is drawn to the method according to claim 1, comprising (d) growing a plant from the selected shoot of (c), and further comprising (e) obtaining progeny of the plant grown in (d) by vegetative propagation.
Regarding claim 4, Kaddoura teaches the limitations of claim 1 as set forth in the previous anticipation rejection. The teachings of Kaddoura as they are applied to claim 1 are set forth previously herein and are incorporated by reference.
However, Kaddoura does not explicitly teach the method according to claim 1, comprising (d) growing a plant from the selected shoot of (c), and further comprising (e) obtaining progeny of the plant grown in (d) by vegetative propagation (claim 4). This is because Nicotiana is not typically vegetatively propagated.
In analogous art, Stuurman discloses producing a shoot by grafting two plants together, followed by graft healing and then transversely cutting at the graft junctions and allowing callus growth and shoot regeneration of chimeras, and selecting chimeras among the regenerated plants, and the shoots may be grown into plantlets. Stuurman also discloses a specific example of grafting between cells of a Solanum pennellii accession LA716 and Solanum lycopersicum LA3579 hybrid, and Solanum lycopersicum (Example 1), wherein Solanum pennellii is considered a highly regenerable plant and Solanum lycopersicum is considered a recalcitrant plant as evidenced by Abeyratne (see Abstract, sentences 5-6) (i.e. contacting a cell of a recalcitrant plant with a cell of a regenerative plant, wherein the cell of the regenerative plant shows a higher regeneration efficiency than the cell of the recalcitrant plant under a condition that allows for shoot regeneration). Specifically, Stuurman discloses crossing Solanum pennellii and Solanum lycopersicum to generate an F1 hybrid (Example 1, p. 27, lines 22-27), which is reasonably expected to be more regenerative than just Solanum lycopersicum alone, because the hybrid is a cross with a more regenerative species. Stuurman discloses grafting a scion of the hybrid onto S. lycopersicum rootstock. Stuurman discloses obtaining chimera shoots and vegetatively propagating plants derived from the chimera (p. 24, lines 28-29, p. 25, lines 21-22).
It would therefore have been obvious to a person of ordinary skill in the art to modify the invention taught by Kaddoura to include the limitations of Stuurman to arrive at the instantly claimed method with a reasonable expectation of success because
although Stuurman focuses on production of chimera shoots, based on the results of Kaddoura that many adventitious shoots of Kaddouras method were identical to the understock, incorporating the plant species of Stuurman into the grafting method of Kaddoura would be expected to also produce non-chimera shoots identical to the understock which could be achieved and further could be grown and vegetatively propagated by one of ordinary skill in the art without encountering any special technical difficulties. One having ordinary skill in the art would have been motivated to do so because Stuurman teaches a similar method of grafting a recalcitrant and regenerative pant species, and Kaddoura teaches a grafting method that produces shoots with an identical genotype to the recalcitrant species when used as an understock (p. 550, Table 3, and section titled Shoot genotype in relation to scion/stock combinations).
Claims 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kaddoura as applied to claim 1 above, and further in view of Schachtsiek (Schachtsiek, J., & Stehle, F. (2019). Nicotine‐free, nontransgenic tobacco (Nicotiana tabacum l.) edited by CRISPR‐Cas9. Plant biotechnology journal, 17(12), 2228).
This is a modified rejection from the previous rejection set forth in the Office Action dated 11/03/2025, necessitated by Applicant’s amendments. This rejection is considered modified because the rejection of amended claim 1 (from which this claim depends) required a modified rejection.
Claim 13 is drawn to the method according to claim 1, further comprising introducing in the cell of the recalcitrant plant of (a) or in a cell originating therefrom in the shoot formed in (b): (i) a transgene; or (ii) a mutation in a sequence of interest
Claim 14 is drawn to the method according to claim 13, wherein the introducing is prior to step (b).
Claim 15 is drawn to the method according to claim 13, wherein the transgene or the mutation is in at least one of:(i) a germline progenitor cell and/or a germline cell derived therefrom; and(ii) a plant part of the plant grown in (d) used for vegetative propagation of the shoot formed in (b).
Claim 16 is drawn to the method according to claim 13, wherein the mutation is introduced by programmed genome editing.
Claim 17 is drawn to the method according to claim 16, wherein the mutation is introduced using a site-specific endonuclease.
Claim 18 is drawn to the method according to claim 17, wherein the site-specific endonuclease is a CRISPR endonuclease.
Claim 19 is drawn to the plant obtainable by the method of claim 13, wherein the plant comprises at least one of:(i) a germline progenitor cell and/or a germline cell derived therefrom of the recalcitrant plant; and(ii) a plant part for clonal propagation of the recalcitrant plant, wherein the germline progenitor cell, germline cell and/or a plant part comprises the transgene or the mutation in the sequence of interest.
Claim 20 is drawn to the plant according to claim 19, comprising cells of the recalcitrant plant and cells of the regenerative plant.
Regarding claims 13-20, Kaddoura teaches the limitations of claim 1 as set forth in the previous anticipation rejection. The teachings of Kaddoura as they are applied to claim 1 are set forth previously herein and are incorporated by reference.
However, Kaddoura does not explicitly teach:
the method according to claim 1, further comprising introducing in the cell of the recalcitrant plant of (a) or in a cell originating therefrom in the shoot formed in (b): (i) a transgene; or (ii) a mutation in a sequence of interest (claim 13).
the method according to claim 13, wherein the introducing is prior to step (b) (claim 14).
the method according to claim 13, wherein the transgene or the mutation is in at least one of:(i) a germline progenitor cell and/or a germline cell derived therefrom; and(ii) a plant part of the plant grown in (d) used for vegetative propagation of the shoot formed in (b) (claim 15).
the method according to claim 13, wherein the mutation is introduced by programmed genome editing (claim 16).
the method according to claim 16, wherein the mutation is introduced using a site-specific endonuclease (claim 17).
the method according to claim 17, wherein the site-specific endonuclease is a CRISPR endonuclease (claim 18).
the plant obtainable by the method of claim 13, wherein the plant comprises at least one of:(i) a germline progenitor cell and/or a germline cell derived therefrom of the recalcitrant plant; and(ii) a plant part for clonal propagation of the recalcitrant plant, wherein the germline progenitor cell, germline cell and/or a plant part comprises the transgene or the mutation in the sequence of interest (claim 19).
The plant according to claim 19, comprising cells of the recalcitrant plant and cells of the regenerative plant (claim 20)
In analogous art, Schachtsiek teaches generating Nicotine‐free, nontransgenic tobacco (Nicotiana tabacum l.) edited by CRISPR‐Cas9 (title) (i.e. a mutation is introduced into the cell by programmed genome editing that is the site specific CRISPR endonuclease). Schachtsiek teaches that multiple generations of the edited Nicotiana plants were nicotine-free (p. 2228, ¶4) (i.e. the mutation remained in progeny, therefore the mutation must have been present in the progenitor cell and/ or germline cell derived therefrom).
It would therefore have been obvious to a person of ordinary skill in the art to modify the invention taught by Kaddoura to include the limitations of Schachtsiek to arrive at the instantly claimed method with a reasonable expectation of success because incorporating the plant genome edited plant taught by Schachtsiek into the method taught by Kaddoura, therefore using the nicotine free genome edited plant as the rootstock in Kaddoura’s method, could be achieved by one of ordinary skill in the art without encountering any special technical difficulties. By doing so, all of the limitations including introducing the mutation into Nicotiana prior to (b) by CRISPR/Cas9 genome editing, would be achieved. Because Kaddoura teaches the chimera plants that are primarily of the recalcitrant Nicotiana species (NNS) crossed to the parent Nicotiana plant (NNN) produced viable seed (p. 553, 2), and also teaches the nonchimera Nicotiana plants had identical genotypes to the parent Nicotiana understock (and would therefore also produce viable seed), and because Schachtsiek teaches the mutation was heritable into multiple generations, progenitor and/or germline cells derived from both the nonchimera and the chimera plants would be expected to comprise the mutation. One having ordinary skill in the art would have been motivated to do so because Schachtsiek teaches the genome-edited Nicotiana plants are nicotine free which could be useful in helping smokers overcome their nicotine addiction (title, p. 2228, ¶1), and Kaddoura teaches Nicotiana is relatively recalcitrant as compared to Solanum, and grafting Nicotiana stock to the more regenerative Solanum scion, many adventitious shoots identical to the understock, as well as chimera shoots that are primarily made up of Nicotiana cells (L1 and L2 layers), can be readily obtained (Tables 1-4, entire document).
Closest Prior Art
Claim 9 appears free of the prior art.
Regarding claim 9, the closest prior art is Kaddoura (Kaddoura, R. L., & Mantell, S. H. (1991). Synthesis and characterization of Nicotiana-Solanum graft chimeras. Annals of Botany, 68(6), 547-556). Kaddoura teaches a method of grafting Nicotiana tabacum L. and Solanum laciniatum Ait. plants and decapitating the scion by making a cut parallel to the graft union so only 2-3 mm of scion tissue was left grafted to each rootstock (title, whole document). Kaddoura teaches checking the ability of each of the species to produce adventitious shoots at decapitated internodes (p. 548, Materials and Methods, Grafting, treatment, and shoot harvest). Kaddoura teaches none of the decapitated, non-grafted Nicotiana tabacum plants produced adventitious shoots however, five out of the 12 decapitated non-grafted plants of Solanum laciniatum gave a number of adventitious shoots ranging from 2 to 12 per plant (mean of 6.15) indicating that Solanum was more capable of forming adventitious shoots on decapitated stems than was its partner Nicotiana (p. 549, Results, Adventitious and chimeral shoot production). Kaddoura then teaches producing shoots from the grafted, decapitated plants (p. 549, Results, Adventitious and chimeral shoot production), wherein some shoots were chimeric and many of the shoots of the Solanum scion-Nicotiana stock graft plants produced Nicotiana shoots (Table 3), and further discloses removing the shoots as cuttings and growing them under standard growth conditions (p. 548, Materials and Methods, Grafting, treatment and shoot harvest). Furthermore, Kaddoura teaches investigating the conditions necessary to induce intergeneric Nicotiana-Solanum chimeras using exogenous applications of CPA and the cytokinin benzylaminopurine (BAP) to induce adventitious shoots from intermixed callus tissues at graft unions (p. 548, Introduction, ¶2), teaches application of CPA enhanced callus growth in another study (p. 548, Introduction, ¶1), and teaches shoots formed from the graft unions and the remaining scion tissues attached to each freshly decapitated grafted plants that were brushed with a control mixture, BAP, or CPA (p. 548, Materials and Methods, Grafting, treatment and shoot harvest), it is reasonably interpreted that the adventitious shoots grew from callus at the wound junction and decapitated scion.
However, Kaddoura does not disclose, teach, or otherwise render obvious the method of claim 9 that requires the contacted cells of claim 1 to be exposed to a compound promoting aggregation of the cell membranes of the cells that is a plant cell and/or protoplast linking agent, wherein the linking agent is Yariv reagent. This is because Yariv reagent is primarily used for AGP detection as well as its quantitation, a result of the highly selective and tight binding between AGP and β–GlcY (see Leszczuk, 2025, Introduction, ¶2), as well as leads to protoplast agglutination (see Larkin, 1978, abstract). Because the claims are drawn to stock-scion grafted plants and not protoplasts, Kaddoura does not disclose, teach, or otherwise render obvious exposing the contacted cells to Yariv reagent.
Response to Arguments
Applicant argues beginning on p. 5 of remarks dated 02/19/2026 the
following arguments:
Claims 1, and 21-22 stand rejected under 35 U.S.C. § 102 for allegedly being anticipated by Kaddoura et al., Synthesis and characterization of Nicotiana-Solanum graft chimeras. Annals of Botany, 68(6), 1991 ("Kaddoura"), as evidenced by Notaguchi et al., Cell-cell adhesion in plant grafting is facilitated by B-1, 4-glucanases, Science, 369(6504), 698-702, 2020, ("Notaguchi"). Applicant respectfully disagrees.
For the sole purpose of expediting prosecution, Applicant has amended the claims to recite:
A method of producing a shoot of a plant, comprising:
(a) contacting a cell of a recalcitrant plant with a cell of a regenerative plant, wherein the cell of the regenerative plant shows a higher regeneration efficiency than the cell of the recalcitrant plant under a condition that allows for shoot regeneration;
(b) allowing the contacted cells of (a) to form shoots under the condition that allows for shoot regeneration;
(c) selecting a shoot formed in (b), wherein the shoot is substantially free of cells derived from the regenerative plant; and
(d) growing a plant from the selected shoot of (c),
wherein the cell of the recalcitrant plant and the cell of the regenerative plant of (a) are comprised in a tissue, wherein the contacting (a) is performed by stock-scion grafting and allowing a graft junction to heal, and wherein the allowing (b) comprises:
(i) generating a wound at or near the graft junction;
(ii) allowing callus to be formed at the wounded graft junction; and
(iii) allowing a shoot to grow from the callus, wherein the recalcitrant plant is a plant that fails to regenerate or shows a poor regeneration efficiency under regenerative growth conditions, wherein the regenerative growth conditions include the presence of an externally supplied auxin and/or cytokinin.
The cited references do not disclose all the elements of the present claims. In particular, claim 1 has been amended by further specifying that "the recalcitrant plant is a plant that fails to regenerate or shows a poor regeneration efficiency under regenerative growth conditions, wherein the regenerative growth conditions include the presence of an externally supplied auxin and/or cytokinin." In contrast, Kaddoura teaches a graft union between S. laciniatum and Nicotiana tabacum, two highly regenerative species. With regards to Nicotiana tabacum, Schachtsiek et al., Nicotine-free, nontransgenic tobacco (Nicotiana tabacum) edited by CRISPR- Cas9. Plant biotechnology journal, 17(12), 2019, ("Schachtsiek")1 teaches on page 2228 that:
After transformation in Nicotiana tabacum t. plants ‘Virginia Smoking Tobacco’ (Strictly Medicinal Seeds LLC., United States), we regenerated ten plants, denoted them as T0 generation and analysed the plants with regard to their nicotine content.
(emphasis added)
Schachtsiek does not mention any difficulties or concerns to regenerate of N. tabacum plants. In addition, Lu et al., "Horizontal Transfer of a Synthetic Metabolic Pathway between Plant Species", CURRENT BIOLOGY, vol. 27(19), 2017, ("Lu")2 also discloses the regeneration of N. tabacum. In particular, Lu teaches on page e2 (Plastid transformation and selection of transplastomic lines) the following:
Young leaves from aseptically grown N. tabacum plants were bombarded with plasmid-coated 0.6 pm gold particles (BioRad) using a helium-driven biolistic gun (PDSOOOHe; BioRad) with the Hepta Adaptor setup and 1,100 psi rupture disks (BioRad). [...] Several independent transplastomic lines were subjected to two additional rounds of regeneration by placing tissue explants regeneration medium [13, 20, 42] supplemented with spectinomycin (500 mg/L) followed by regeneration into plantlets. This procedure enriches the transplastome and selects for homoplasmic cell lines.
(Emphasis added.)
Indeed, the present application also evidences that N. tabacum is known in the art as a highly regenerative species at page 13, lines 17 - 19 of the as-filed specification:
Although within species both recalcitrant and regenerative cultivars, varieties and/or accessions may exist, in general, seedling hypocotyls of tomato and tobacco, Capsicum baccatum, Solanum melongena, Solanum tuberosum are known in the art as examples of regenerative explants.
Hence, Kaddoura does not disclose a method of producing a shoot of a plant, wherein the recalcitrant plant is a plant that fails to regenerate or shows a poor regeneration efficiency under regenerative growth conditions. Rather, Kaddoura teaches the grafting between two highly regenerative species and cannot anticipate the present claims. Reconsideration and withdrawal of the subject rejection are therefore respectfully requested.
This argument has been fully considered and is found not persuasive for
the following reason(s):
Applicant argues the amended claim is no longer anticipated by Kaddoura and that Nicotiana tabacum is not recalcitrant. In view of Applicant’s amendment which recites “…wherein the recalcitrant plant is a plant that fails to regenerate or shows a poor regeneration efficiency under regenerative growth conditions, wherein the regenerative growth conditions include the presence of an externally supplied auxin and/or cytokinin”, Applicant has provided a limitation that further defines a recalcitrant plant and regenerative growth conditions.
However, Kaddoura discloses:
“None of the decapitated, non-grafted Nicotiana tabacum plants treated with exogenous 50 % ethanol, BAP or CPA produced adventitious shoots at the cut-stem ends. By the end of the fourth month after decapitation all cut stems had dried and shrivelled. However, five out of the 12 decapitated non-grafted plants of Solanum laciniatum gave a number of adventitious shoots ranging from 2 to 12 per plant (mean of 6-15). This indicated that Solanum was more capable of forming adventitious shoots on decapitated stems than was its partner Nicotiana.See p. 549, Results ¶1.
Thus, Kaddoura discloses that a cytokinin or an auxin were applied to decapitated Nicotiana tabacum, and the plants failed to regenerate shoots. Because an auxin or a cytokinin were applied, the growth conditions were considered regenerative growth conditions. This is supported by the fact that Solanum plants under the same treatment successfully regenerated shoots. Further, because the Nicotiana tabacum plants did not regenerate shoots under regenerative growth conditions, the plants is reasonably interpreted as a recalcitrant plant that fails to regenerate or shows a poor regeneration efficiency under regenerative growth conditions as recited in pending claim 1.
For this reason, Applicant’s amendments and arguments herein are not found persuasive.
Applicant argues beginning on p. 5 of remarks dated 02/19/2026 the
following arguments:
Claims 3 and 23 are rejected under 35 U.S.C. 103(a) as being unpatentable over
Kaddoura. Claim 4 is rejected under 35 U.S.C. 103(a) as allegedly unpatentable over Kaddoura in view of W02018115395 ("Stuurman") as evidenced by Abeyratne, West Virginia University, 2017 ("Abeyratne"). Claims 13-20 stand rejected under 35 U.S.C. 103(a) as allegedly unpatentable over Kaddoura in view of Schachtsiek. Applicant respectfully traverses this rejection on the following grounds.
The subject rejection relies on that on that Kaddoura allegedly teaches all the elements of claim 1. As explained above, Kaddoura does not teach or suggest all the elements of claim 1. Reconsideration and withdrawal of the subject rejection are therefore respectfully requested.
This argument has been fully considered and is found not persuasive for
the following reason(s):
Applicant argues the claims rejected under 35 USC 103 are not obvious because Applicant believes claim 1 is not anticipated. This is not persuasive because claim 1 remains anticipated by the disclosure of Kaddoura despite Applicant’s amendments and arguments (see 102 and 103 rejections previously herein, and response above).
Conclusion and Inquiries
No claims are allowed.
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.
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.
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) 270-7058. 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.
JESSICA N. STOCKDALE
Examiner
Art Unit 1663
/JESSICA NICOLE STOCKDALE/Examiner, Art Unit 1663
/CHARLES LOGSDON/Primary Examiner, Art Unit 1662
Prosecution Insights