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 .
Election/Restrictions
Applicant's election without traverse the species of SEQ ID NO:14 in reply filed 08/22/2025 is acknowledged.
Applicant notes that additional sequences are included in original claim 3 (i.e., SEQ ID NOs: 12-14) and respectfully submit the request for an election of species should have included those sequences in the list of potential sequences to choose from when electing a single species for examination in the present application (Response to Restriction Election, page 7, paragraph 3).
Since Spec, page 42, Table 4 states SEQ ID NOs: 12 and 13 are RppK Genomic Region and RppK CDS respectively and SEQ ID NO:14 is RppK Amino Acid Sequence, all SEQ ID NOs:12-14 are examined in this office action.
Therefore claims 1-2 and 4-20 are pending and are examined in this office action along with species of SEQ ID NOs: 12-14.
The following analysis is based on the assumption that SEQ ID NOs: 12 and 14 are nucleic acid sequences and SEQ ID NO:13 is amino acid sequence as showed in sequence listings, see analysis below.
Specification
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some unclear, inexact or verbose terms used in the specification are:
Specification inaccurately states the SEQ ID NOs: 13 and 14 as nucleotide and amino acid sequence in multiple places and instead the sequence listing showed the sequences are amino acid sequence and nucleotide sequence respectively.
Page 42, Table 4 showed SEQ ID NO: 12-14 are RppK genomic region, CDS and Amino acid sequence respectively wherein based on provided sequence listing it would be RppK CDS, amino acids and genomic regions respectively.
In multiple places in the specification it states SEQ ID NO: 12-14 are RppK genomic region, CDS and Amino acid sequence respectively wherein based on provided sequence listing it would be RppK CDS, amino acids and genomic regions respectively and applicants are advised to correct in each places.
Drawings
The drawings are objected to because specification states Numbers between two markers indicate the genetic distance (upper) wherein it looks like the genetic distance is in cM, therefore applicant are advised to add the specific measuring unit for genetic distance. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The Figure is objected to because it fails to comply with 37 CFR 1.84.(u)(1) which states:
(u) Numbering of views.
(1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation "FIG." Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear.
Applicant must delete “FIG. 1" from the drawing and any reference in the specification should say -- the figure -- without any number designation.
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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
The terms “polypeptide” and “amino acid sequence” with regard to SEQ ID NO: 14 in claims 1, 7, 12, and 14-15 are used by the claim to mean polypeptide and amino acid sequence of a protein, wherein the sequence listing showed the SEQ ID NO: 14 is a nucleic acid sequence.
The terms “polynucleotide” and “nucleotide sequence” with regard to SEQ ID NO: 13 in claims 1, 7-9, 12, and 15-17 are used by the claim to mean polynucleotide and nucleotide sequence of a nucleic acid, wherein the sequence listing showed the SEQ ID NO: 13 is a polypeptide sequence.
The terms are indefinite because the claim inaccurately recite the SEQ ID NOs: 13 and 14 as nucleotide and amino acid sequence and the sequence listing does not clearly redefine the term.
Therefore, applicants are suggested to either change the sequence listings or amend claims and specification to recite the right molecule type (i.e. amino acid or nucleic acid).
Following analysis is based on the assumption that SEQ ID NOs: 12 and 14 are nucleic acid sequences and SEQ ID NO:13 is amino acid sequence as showed in sequence listings.
Claim Rejections - 35 USC § 112 - written description requirement
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.
Claims 1-2, 4-20 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.
Breadth of the Claim
All claims require that the polynucleotide provides increased resistance to the southern corn rust in any plant.
The claims broadly recite method of identifying a plant with increased southern corn rust by screening population of plants with one or more marker alleles within 5cM that are linked to and associated with any sequence with 95% identity to SEQ ID NO:14 and is linked or associate to SEQ ID NO:13 (i.e. SEQ ID NO:12 based on sequence listings).
What is Described in the Specification
Applicant describes the following:
The compositions and methods relate to a modified plant having increased resistance to a disease, wherein the allele causing the increased disease resistance comprises a nucleotide sequence encoding a RppK resistance gene (Spec, page 5, line 11-16).
"disease resistant" or "have resistance to a disease" refers to a plant showing increase resistance to a disease compared to a control plant (Spec, page 6, lines 33-35).
Disease resistance may manifest in fewer and/or smaller lesions, increased plant health, increased yield, increased root mass, increased plant vigor, less or no discoloration, increased growth, reduced necrotic area, or reduced wilting (Spec, page 6 and 7, lines 34-35 and lines 1-2 respectively).
Describes RppK gene is derived from resistant corn inbred line K22 (Spec, page 39, lines 20-39, Figure 1) and transgenic plant expressing RppK gene gave the resistant phenotype (Spec, page 42, lines 10-21).
Difference Between What was Reduced to Practice and What is Claimed
Applicant has not described the polynucleotide would cause increased resistance to the southern corn rust in any other plant other than corn.
Applicant has not described a representative number of alleles of markers that are within 5 cM that are linked to SEQ ID NO: 12 or a sequence having 95% identity to SEQ ID NO:14, which are determinants of southern corn rust (SCR) resistance in any plant; or that describe their physicochemical properties.
Analysis
The purpose of the written description is to ensure that the inventor had possession at the time the invention was made, of the specific subject claimed. For a broad generic claim, the specification must provide adequate written description to identify the genus of the claim.
Applicant has not described that the transgenic expression of RppK gave the resistant phenotype to any other species of crop other than corn. For example, Sun et al. (Published: 2021, Journal: Scientific reports, volume: 11(1), pages: 1-11) teaches there is no known alternate host of southern corn rust pathogen (Puccinia polysora) other than corn (Sun, page 1, paragraph 3). Therefore, it is unclear from the description in the specification how do we measure the increased disease resistance by RppK gene in any plants other than maize if pathogen does not infect the other plants. Therefore, there is dearth of description of the polynucleotide would provide increased resistance to the southern corn rust in any other plant other than corn by virtue of example.
The claims are drawn to any unspecified marker of any marker type, as long as the marker is within 5 cM (total of 10cM on upstream and downstream of the SEQ ID NOs: 12 or a sequence having 95% identity to SEQ ID NO:14) that are linked to SEQ ID NO: 12 or a sequence having 95% identity to SEQ ID NO:14. SEQ ID NO:14 is 11,437 nucleotides long. A sequence with having 95% identity to SEQ ID NO:14 would have at least ~572 nucleotide changes (addition, deletion and substitutions) leading to at least 4572 different nucleotide molecules. For example 1cM is the centimorgan which is equal to a 1% chance that a marker at one genetic locus will be separated from a marker at a second locus due to cross over in a single generation. Applicant has not described linked molecular marker for example that has less than or equal to 5% chance of separation from the SCR resistance.
For example Ding et al. (Publication Number: CN105861647A, Publication Date: 2016-08-17). Examiner is providing a English translation of Ding and will refer to it as “English translation version” when referencing page numbers, teaches localization of southern rust resistance by primers like RRD64, SSR4, RRD26 and Indel262 which produce same marker described in instant application (see Figure 1 of instant application) and are within 5cM of the gene (i.e. R3 as SEQ ID NO:13). Ding et al. for example teaches RRD64 is polymorphic across the population of CML496 with ZHENG58, GEMS41 and Lx9801 maize lines (page 11, paragraph 0071). Ding et al. teaches the genetic distance between their disclosed SCR resistance gene and RRD64 was 3.2cM (page 12, paragraph 0083). Therefore, the publicly available marker showed the marker are polymorphic for many SCR genes which are within 5cM of the SEQ ID NO: 12 or a sequence having 95% identity to SEQ ID NO:14. Therefore the marker has only been described by the phenotype of SCR resistance are not specific to the plant comprising SEQ ID NO: 12 or a sequence having 95% identity to SEQ ID NO:14.
Accordingly, the claims are drawn to an extremely large genus of marker loci encompassing any possible yet unspecified alleles associated with the claimed phenotype of SCR resistance in any plant, when Applicants have only reduced to practice few alleles within 5cM of SEQ ID NO: 14 or SEQ ID NO:12 only in line K22 (see Figure 1). The claims are drawn to any unspecified marker of any type and sequence, and any unspecified allele, vs. the exemplified SNPs listed in the Specification. The claims are not limited to alleles with the SNP indicative of the claimed phenotype of SCR resistance in any plant.
Relating to structure vs. function, the claims remain drawn to any unspecified allele of the unspecified marker loci. This leads to a situation where the instantly claimed allele of the claimed marker loci would not possess the necessary structural features needed to accomplish the claimed phenotype. The Specification makes clear that the specific single nucleotide polymorphisms comprised within the marker alleles lend to the detection of phenotype, thus it is necessary to claim the polymorphisms as such.
Given Applicants have provided very vague description of the method steps or structures that would link a to SEQ ID NO:12 or a sequence having 95% identity to SEQ ID NO:14 that are within 5cM of the recited marker, and which alleles are determinants of SCR resistance in soybean, it remains unclear what features or method steps are capable of performing the claimed function. The Specification fails to provide an adequate written description to support the breadth of the claims. Therefore, one skilled in the art would not have recognized Applicants to be in possession of the claimed invention at the time the application was filed. See Written Description guidelines published in 2008 online at https://www.uspto.gov/sites/default/files/web/menu/ written.pdf.
"The test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to one skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad Pharm, Inc, v EH Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Lockwood v. Amer. Airlines, ina, 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). "An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations. Lockwood, 107 F.3d at 1572, 41 USPG2d at 1966". While the written description requirement does not demand either examples or an actual reduction, actual "possession" or reduction to practice outside of the specification is not enough. Ariad Pharm, Inc. v. Eli Lilly & Co., 598 F,3d 1336,1352 (Fed. Cir. 2010). Rather, it is the specification itself that must demonstrate possession. Id.
Thus, based on the analysis above, it is not clear that Applicant was in possession of the claimed genus at the time this application was filed.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Obvious over Ding et al. and further in view of Zhou et al.
Claims 1, 2, 4-10, and 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ding et al. (Publication Number: CN105861647A, Publication Date: 2016-08-17). Examiner is providing a English translation of Ding and will refer to it as “English translation version” when referencing page numbers, and further in view of Zhou et al. (Published: 2017, Eur J Plant Pathol DOI 10.1007/s10658-017-1351-1, pages 1-9), and further evidenced by Chen et al. (Published: 2022, Journal: Nature Communications 13:4392 pages 1-11).
The following analysis is based on the assumption that SEQ ID NOs: 12 and 14 are nucleic acid sequences and SEQ ID NO:13 is amino acid sequence as showed in sequence listings.
Claims are drawn to a method of identifying a plant with increased resistance to southern corn rust, the method comprising screening a population of plants for the presence of a southern corn rust resistant one or more marker alleles within 5 cM and which is linked and associated with polynucleotide encoding amino acid sequence that is at least 95% identical to SEQ ID NO:14 (i.e. SEQ ID NO:13 in sequence listings). The claims are drawn to the method further comprises crossing the plant having the allele and produce progeny plant comprising the allele.
Regarding claim 1, Ding et al. teaches molecular marker combination closely linked to the maize southern rust resistance gene (Ding et al., English translated version, claims 1, 2, 3) and use of the molecular marker combination for maize southern rust gene mapping and maize breeding (Ding, English translated version, claim 4). Ding claim 5 teaches molecular marker combinations are used in maize variety the localization of its maize southern rust gene.
Ding et al. teaches the primers were used in their study for the screening of disease-resistant parents using SSR markers and other molecular markers with total of 15 pairs of markers (see Table 3.2 below) (Ding, English translated version, page 11, paragraph 0071). Ding et al. teaches in their pedigree analysis of the tested materials, the highly resistant materials is the germplasm K22 (Ding, English translated version, page 10, Paragraph 0067). Ding et al. teaches localization of southern rust resistance was carried out by primers like RRD64, SSR4, RRD26 and Indel262 which are same marker described in instant application (see Figure 1 of instant application) wherein Ding et al. teaches the RRD64 was found polymorphic in the parents of one or two segregated populations and is used for amplification for other parents (page 11, paragraph 0071, paragraph 0078).
Specification, page 40, Table 2 showed the evidence that the RRD64, SSR4, RRD26 and Indel262 are the same primers leading to the same markers for selection of maize southern corn rust resistance lines as showed by the Ding et al. (see snippet below for Ding et al. Table 3.2). Specification page 42 line4-5 teaches among three annotated NLR from their populations R3 is expressed in leaves, making R3 (SEQ ID NO: 14) a leading candidate for RppK (see Figure 1). Drawings Figure 1 showed the markers are within the 5cM wherein the marker Indel262 produce only 4 recombinants out of 3392 plants which would be lower than 0.5cM based on the recombination rates.
Instant application teaches that their disclosed polynucleotide that encodes SEQ ID NO: 14 is derived from K22 (Spec, page 42, lines 1-5, Figure 1). Ding et al. teaches germplasm K22 had high resistance for maize southern rust (page 15, paragraph 0118, Table 3.1).
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Furthermore, Chen et al. showed the evidence that the RRD64, SSR4, RRD26 and Indel262 are the same markers with same sequence showed by the Ding et al. (see enclosed PDF from supplementary data 5 of Chen et al.). Chen et al. Figure 1c showed the markers are within the 5cM wherein the marker Indel262 produce only 4 recombinants out of 3392 plants.
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Figure 2. Snippet of Table 3.2 from Original Foreign document (page 9, paragraph 0068-0069) disclosing molecular marker information between parents of BC1 population (Ding, English translated version, page 11, paragraph 0075).
Ding et al. however does not use their markers to screen for resistance allele in the germplasm K22.
Furthermore, Zhou et al. teaches K22 is a high southern corn rust resistant (SCR) maize inbred line and can be used as donor in SCR resistance breeding (page 7, right paragraph 2, Table 3). Zhou et al. teaches their identified SNPs associated with SCR are important for marker-assisted selection in maize disease resistance breeding and are attractive candidate regions for understanding the genetic mechanism of SCR (page 7, left paragraph 1).
Therefore, it would have been Prema facie obvious before effective date of filing of the invention from teaching, suggestion, or motivation from Ding et al. to utilize markers RRD64, SSR4, RRD26 and Indel262 linked to the southern corn resistance in maize plants from germplasm K22 which had showed very high southern corn resistance for importance of the markers for marker-assisted selection in maize disease resistance breeding which was further showed by Zhou et al. that K22 has high resistance to SCR and the line can be utilize to transfer the resistance gene, leading to the development of the method of identifying a plant with increased resistance to southern corn rust by screening a population of plants for the presence of a marker allele within 5 cM and which is linked and associated with polynucleotide encoding amino acid sequence that is at least 95% identical to SEQ ID NO:14 (i.e. SEQ ID NO:13 in sequence listings) since the SEQ ID NO:13 was from K22.
Regarding claim 2, Ding et al. pages 10-13 Table 3.3, Table 3.4 and Table 3.5 teaches identification of different resistant and susceptible (i.e. counter selecting for resistance) plants in two different backcross breeding programs using RRD64.
Regarding claim 4, Ding et al. teaches screening for southern corn resistance using the disclosed markers and further crossing the line for example CML496 for generating backcross population for screening using the markers (page 11, paragraph 0076).
Regarding claim 5, Ding et al. pages 10-13 Table 3.3, Table 3.4 and Table 3.5 teaches identification of different resistant plant in two different backcross breeding programs using RRD64.
Regarding claim 6, Ding et al. pages 10-13 Table 3.3, Table 3.4 and Table 3.5 teaches identification of different resistant and susceptible (i.e. counter selecting for resistance) plants in two different backcross breeding programs using RRD64.
Regarding claim 10, Ding et al. teaches backcrossing F1 plant to produce backcross progenies (page 7, paragraph 0047).
Regarding claim 12, Ding et al. pages 10-13 Table 3.3, Table 3.4 and Table 3.5 teaches identification of different resistant plant in two different backcross breeding programs using RRD64.
Ding et al. teaches backcrossing F1 plant to produce backcross progenies (page 7, paragraph 0047).
Regarding claim 13, Ding et al. pages 10-13 Table 3.3, Table 3.4 and Table 3.5 teaches identification of different resistant plant in two different backcross breeding programs using RRD64.
Regarding claim 18, Ding et al. teaches backcrossing F1 plant to produce backcross progenies (page 7, paragraph 0047).
Regarding claim 19, Ding et al. pages 10-13 Table 3.3, Table 3.4 and Table 3.5 teaches identification of different resistant plant in two different backcross breeding programs using RRD64. Further, selecting additional progeny plants would have been carried out with same marker system.
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Regarding claims 7-9 and 14-17, Instant application teaches that their disclosed polynucleotide that encodes SEQ ID NO: 14 is derived from K22 (Spec, page 42, lines 1-5, Figure 1). Ding et al. teaches germplasm K22 had resistance for maize southern rust (page 15, paragraph 0118, Table 3.1).
The close marker RRD64, SSR4, RRD26 and Indel262 taught by Ding et al. would have identified a nucleic acid comprising the nucleotide sequence encoding amino acid with 95% identity to SEQ ID NO: 14 (i.e. SEQ ID NO: 13 based on sequence listings) found in the line K22. Therefore the method would have identified the nucleic acid comprising the nucleic acid.
Obvious over Ding et al. and further in view of Zhou et al. and Fehr et al.
Claims 1, 4-6, 11-12, and 18 and 20 rejected under 35 U.S.C. 103 as being unpatentable over Ding et al. (Publication Number: CN105861647A, Publication Date: 2016-08-17). Examiner is providing a English translation of Ding and will refer to it as “English translation version” when referencing page numbers, and further in view of Zhou et al. (Published: 2017, Eur J Plant Pathol DOI 10.1007/s10658-017-1351-1, pages 1-9), and further in view of Fehr et al. (Published:1991, Book: Principle of Cultivar Development Vol. 1 Theory and Technique, Iowa state university, Macmillan Publishing Company, pages 360-376) and further evidenced by Chen et al. (Published: 2022, Journal: Nature Communications 13:4392 pages 1-11).
Claims are drawn to a method of identifying a plant with increased resistance to southern corn rust, the method comprising screening a population of plants for the presence of a southern corn rust resistant one or more marker alleles within 5 cM and which is linked and associated with polynucleotide encoding amino acid sequence that is at least 95% identical to SEQ ID NO:14 (i.e. SEQ ID NO:13 in sequence listings). The claims are drawn to the method further comprises repeated backcrossing the plant having the allele and produce progeny plant comprising the allele.
Regarding claims 1, 4-6, 12, and 18, Ding et al. teaches molecular marker combination closely linked to the maize southern rust resistance gene (Ding et al., English translated version, claims 1, 2, 3) and use of the molecular marker combination for maize southern rust gene mapping and maize breeding (Ding, English translated version, claim 4). Ding claim 5 teaches molecular marker combinations are used in maize variety the localization of its maize southern rust gene.
Ding et al. teaches the primers were used in their study for the screening of disease-resistant parents using SSR markers and other molecular markers with total of 15 pairs of markers (see Table 3.2 below) (Ding, English translated version, page 11, paragraph 0071). Ding et al. teaches in their pedigree analysis of the tested materials, the highly resistant materials is the germplasm K22 (Ding, English translated version, page 10, Paragraph 0067). Ding et al. teaches localization of southern rust resistance was carried out by primers like RRD64, SSR4, RRD26 and Indel262 which are same marker described in instant application (see Figure 1 of instant application) wherein Ding et al. teaches the RRD64 was found polymorphic in the parents of one or two segregated populations and is used for amplification for other parents (page 11, paragraph 0071, paragraph 0078).
Specification, page 40, Table 2 showed the evidence that the RRD64, SSR4, RRD26 and Indel262 are the same primers leading to the same markers for selection of maize southern corn rust resistance lines as showed by the Ding et al. (see snippet below for Ding et al. Table 3.2). Drawings Figure 1 showed the markers are within the 5cM wherein the marker Indel262 produce only 4 recombinants out of 3392 plants which would be lower than 0.5cM based on the recombination rates.
Instant application teaches that their disclosed polynucleotide that encodes SEQ ID NO: 14 is derived from K22 (Spec, page 42, lines 1-5, Figure 1). Ding et al. teaches germplasm K22 had high resistance for maize southern rust (page 15, paragraph 0118, Table 3.1).
Furthermore, Chen et al. showed the evidence that the RRD64, SSR4, RRD26 and Indel262 are the same markers with same sequence showed by the Ding et al. (see enclosed PDF from supplementary data 5 of Chen et al.). Chen et al. Figure 1c showed the markers are within the 5cM wherein the marker Indel262 produce only 4 recombinant out of 3392 plants.
Ding et al. however does not use their markers to screen for resistance allele in the germplasm K22.
Furthermore, Zhou et al. teaches K22 is a high southern corn rust resistant (SCR) maize inbred line and can be used as donor in SCR resistance breeding (page 7, right paragraph 2, Table 3). Zhou et al. teaches their identified SNPs associated with SCR are important for marker-assisted selection in maize disease resistance breeding and are attractive candidate regions for understanding the genetic mechanism of SCR (page 7, left paragraph 1).
Ding et al. pages 10-13 Table 3.3, Table 3.4 and Table 3.5 teaches identification of different resistant plant in two different backcross breeding programs using RRD64.
Therefore it would have been Prema facie obvious before effective date of filing of the invention from teaching, suggestion, or motivation from Ding et al. to utilize markers RRD64, SSR4, RRD26 and Indel262 linked to the southern corn resistance in maize plants from germplasm K22 which had showed very high southern corn resistance for importance of the markers for marker-assisted selection in maize disease resistance breeding which was further showed by Zhou et al. that K22 has high resistance to SCR and the line can be utilize to transfer the resistance gene, leading to the development of the method of identifying a plant with increased resistance to southern corn rust by screening a population of plants for the presence of a marker allele within 5 cM and which is linked and associated with polynucleotide encoding amino acid sequence that is at least 95% identical to SEQ ID NO:14 (i.e. SEQ ID NO:13 in sequence listings) since the SEQ ID NO:13 was from K22. Furthermore, it would have been obvious to crossing, and producing a plant having a gene allele associated with increased resistance to southern corn rust as taught by Ding et al.
Regarding claims 11 and 20, Fehr et al. teaches backcrossing one or more of the additional progeny plants to the second parent plant (page 361) and the crossing would have recover more recurrent parent background along with the resistance gene (page 362, Figure 28-1).
Therefore, someone skilled in the art would develop the method that would include backcrossing one or more of the selected additional progeny plants to the second parent plant as taught by Fehr et al. leading to development of resistant plant with recurrent parent background.
Summary
No claim is allowed.
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/SANTOSH SHARMA/ Examiner, Art Unit 1663
/DAVID H KRUSE/ Primary Examiner, Art Unit 1663