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 .
Claim Status
1. Claims 1-3 and 5-7 are pending and under examination on the merits.
Claims 4 and 8-12 are cancelled.
Priority
2. The Office acknowledges Applicant’s claim of priority to foreign document Chinese Application No. CN202310639011.3 filed May 31, 2023. A non-English copy of the foreign priority document was received on October 16, 2025. No certified English translation of the foreign priority document has been received by the Office.
Information Disclosure Statement
3. The Information Disclosure Statement (IDS) submitted on October 20, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered. A signed copy is attached.
Response to Arguments – Objections to the Specification
4. Applicant’s arguments and amendments filed October 16, 2025 have overcome the objections of record.
Response to Arguments – Claim Objections
5. Claims 4 and 8-9 are cancelled; thus, any objections to these claims have been rendered moot.
Applicant’s arguments and amendments filed October 16, 2025 have overcome the remaining objections of record.
Response to Arguments – Claim Rejections - 35 USC § 112(b)
6. Claims 4, 8-9, and 12 are cancelled; thus, any objections to these claims have been rendered moot.
Applicant’s arguments and amendments filed October 16, 2025 have overcome the remaining rejections of record under 35 U.S.C. 112(b).
Response to Arguments – Claim Rejections - 35 USC § 112(d)
7. Claim 4 is cancelled; thus, any rejection to this claim has been rendered moot.
Applicant’s arguments and amendments filed October 16, 2025 have overcome the remaining rejections of record under 35 U.S.C. 112(d).
Response to Arguments – Claim Rejections - 35 USC § 103
8. Applicant’s arguments and amendments filed October 16, 2025 have been fully considered but are not persuasive and do not overcome the remaining rejections of record under 35 U.S.C. 103.
Applicant argues primarily that the prior art fails to teach targeting the premature termination codon of the Glu-1Ax-null allele and one of ordinary skill in the art could not predict how to design and use CRISPR to edit said premature termination codon without extensive experimentation. The Office respectfully disagrees.
Regarding Applicant’s first argument, the cited art (Yuan et al. (PLoS One. 2011; 6(8):e23511 (previously cited)) teaches the role of the wheat Glu-1 locus, the presence of a premature termination codon at position 1216 of the Glu-1Ax-null allele, and that deletions involving the in-frame stop codon restored expression of the Glu-1Ax allele. Though Applicant purports the inventor identified the presence of the premature termination codon through gene sequencing (p. 07, Applicant’s Remarks dated 10/16/2025), Yuan clearly describes said termination codon (Abstract; p. 03, first paragraph, lns. 6-10; p. 03, fourth paragraph; p. 05, Fig. 4; p. 06, Fig. 6) prior to Applicant’s disclosure. Applicant also argues that Yuan (i.e., “the comparative literature) does not provide any inspiration for the technical solution of the present invention. The Office disagrees; Yuan explicitly states that deletion of the premature termination codon results in expression of Glu-1Ax (Abstract). The fact that Yuan mentions other mutations does not create a lack of inspiration for one of ordinary skill in the art to target the premature termination codon for removal. In fact, one of ordinary skill in the art would be motivated to target said codon because Yuan stated the deletion of said premature termination codon resulted in the expression of Glu-1Ax (Abstract).
Applicant further argues the prior art does not teach using a gene editing vector (e.g., CRISPR/Cas9) for deleting the premature termination codon, that only the sequence targeting positions 1208-1235 of the Glu-1Ax-null allele, and that the prior art is “unable to achieve the effect achievable by the claimed invention.” While the Office agrees that Yuan does not teach the design and/or use of a CRISPR/Cas9 editing vector, the Office disagrees with and is not convinced of Applicant’s assertion that targeting positions 1208-1235 yields results unachievable by the methods discussed in the prior art. The claimed invention is broadly directed to a method of activating expression of a Glu-1Ax-null subunit in wheat with gene editing. Yuan teaches that deletion of the premature termination codon present at position 1216 of the Glu-1Ax-null allele restores expression of the subunit encoded therein (Abstract). The claims provide structure and limitations to the methodology by which said gene is activated but places no limitations on the results, effects, or impacts of said activation. Accordingly, there is no difference in the instant claimed effect (i.e., activation of expression of Glu-1Ax) and the effect taught by the prior art (i.e., activation of expression of Glu-1Ax). With regard to Applicant’s argument that the prior art does not teach the design or use of a CRISPR/Cas9 construct to achieve this effect, the selection of a suitable initial vector and the design of targeting sgRNAs for CRISPR/Cas9-based gene editing is routine in the art. Furthermore, the design of a CRISPR/Cas9 construct to activate expression of the Glu-1Ax-null allele is obvious when the teachings of Yuan are considered in view of the teachings of Li et al. (Plant Biotechnology Journal. 2020; 19(3):427-429 (previously cited)) regarding a method for gene editing in wheat comprising designing a specific sgRNA (p. 427, left column, first full paragraph), cloning the specific sgRNA onto a pair of restriction sites of the pEtRNA vector pBUE411 to construct a CRISPR/Cas9 editing vector (p. 427, left column, first full paragraph), and transforming the CRISPR/Cas9 editing vector into a wheat cell via Agrobacterium-mediated transformation and selecting a line in which the target gene has been disrupted (p. 427, right column, first partial paragraph). The editing and/or removal of a premature termination codon is achievable by a variety of means including gene editing vectors such as CRISPR/Cas9. The selection of said means is a simple design choice parameter that is routine for one of ordinary skill in the art. Applicant provides no evidence that the claimed sgRNA sequences yield results that are surprising and unexpected in view of the prior art because both the prior art and Applicant’s disclosure teach the restoration of Glu-1Ax expression as a result of the deletion of the premature stop codon at position 1216. While Applicant argues that the selection of the claimed sgRNAs was achieved through extensive experimentation, the design of sgRNAs is routine and trivial for one of ordinary skill in the art.
Accordingly, the rejections of claims 1-12 under 35 U.S.C. 103 are maintained.
Claim Rejections - 35 USC § 103
9. 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.
10. Claims 1-3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Yuan et al. (PLoS One. 2011; 6(8):e23511 (U), hereinafter “Yuan 2011”) in view of Li et al. (Plant Biotechnology Journal. 2020; 19(3):427-429 (V)), and further in view of Lee et al. (US-20190218547-A1, published 07/08/2019 (A)).
Regarding claim 1, Yuan 2011 teaches the role of the bread wheat Glu-1 locus, which houses three genes (Glu-1A, Glu-1B, and Glu-1D) with two alleles each (e.g., Glu-1Ax and Glu-1Ay) that encode high-molecular weight glutenin subunits (HMW-GS) in wheat endosperm (p. 01, second paragraph); the null allele of Glu-1Ax (Glu-1Ax-null) contains a premature termination codon at 1216 (Abstract; p. 03, first paragraph, lns. 6-10; p. 03, fourth paragraph; p. 05, Fig. 4; p. 06, Fig. 6); and a method for activating expression of a Glu-1Ax-null subunit in wheat with gene editing comprising targeting and editing the premature termination codon at site 1216 of the Glu-1Ax-null allele (Abstract; p. 05, Fig. 4).
Yuan 2011 does not teach designing a specific sgRNA, constructing a CRISPR/Cas9 editing vector, transforming the editing vector into a wheat cell, or a pEtRNA vector.
However, Li teaches a method for gene editing in wheat comprising designing a specific sgRNA (p. 427, left column, first full paragraph), cloning the specific sgRNA onto a pair of restriction sites of the pEtRNA vector pBUE411 to construct a CRISPR/Cas9 editing vector (p. 427, left column, first full paragraph), and transforming the CRISPR/Cas9 editing vector into a wheat cell via Agrobacterium-mediated transformation and selecting a line in which the target gene has been disrupted (p. 427, right column, first partial paragraph), and a U3-sgRNA expression cassette regulated by a wheat TaU3 promoter (p. 427, first paragraph, lns. 14-21) and a Cas9 expression cassette regulated by a Zea mays ubiquitin promoter (p. 427, first paragraph, lns. 27-28); wherein the U3-sgRNA expression cassette includes, from upstream to downstream: the wheat TaU3 promoter (p. 427, first paragraph, lns. 14-21); a first tRNA (p. 427, first paragraph, lns. 14-21; p. 428, Fig. 1(a)); a specific sgRNA for editing a target gene (p. 427, first paragraph, lns. 28-38); an optimized sgRNA scaffold sequence (p. 427, first paragraph, lns. 25-26); a second tRNA which identical to the first tRNA (p. 427, first paragraph, lns. 14-21; p. 428, Fig. 1(a)); and an OsU3 terminator (p. 428, Fig. 1(a)).
Additionally, Lee teaches a tracrRNA sequence that has 100% sequence similarity and 76.7% sequence identity to the instant SEQ ID NO:21 (See Attached STIC Search Results, Lee: SEQ ID NO:8) and that any sequence that retains ability to bind Cas9 would be functionally sufficient for the protein binding segment of a CRISPR/Cas9 construct[0030]. After transcribing the uracil residues of Lee’s SEQ ID NO:8 to thymine residues, Lee’s SEQ ID NO:8 is identical to the instant SEQ ID NO:21. The Examiner also notes that one of ordinary skill in the art understands that tracrRNA forms a crucial component of the guide RNA scaffold required for targeting CRISPR/Cas9 constructs to target sites. Accordingly, Lee teaches a guide RNA scaffold wherein the sequence of said scaffold is identical to instant SEQ ID NO:21.
The combination of Yuan 2011, Li, and Lee teaches a method for activating expression of a Glu-1Ax-null subunit in wheat with gene editing comprising the steps of: designing a specific sgRNA for targeting a premature termination codon in a Glu-1Ax-null gene of wheat; cloning the specific sgRNA into a pair of restriction sites of a pEtRNA vector to construct a CRISPR/Cas9 editing vector for the Glu-1Ax-null gene; and transforming the CRISPR/Cas9 editing vector for the Glu-1Ax-null gene into a wheat cell via Agrobacterium-mediated transformation and selecting a homozygous line in which the premature termination codon is disrupted, wherein:
Yuan teaches a target sequence for a specific sgRNA comprising a sequence having a length of 20-22 nucleotides between the 1208-1235 sites of the Glu-1Ax-null gene (p. 05, Fig. 4);
the vector includes: a U3-sgRNA expression cassette regulated by a wheat TaU3 promoter and a Cas9 expression cassette regulated by a Zea mays ubiquitin promoter; wherein the U3-sgRNA expression cassette includes, from upstream to downstream: the wheat TaU3 promoter; a first tRNA; a specific sgRNA for targeting the premature termination codon in the Glu-1Ax-null gene; an optimized sgRNA scaffold sequence; a second tRNA which identical to the first tRNA; and an OsU3 terminator; and wherein the optimized sgRNA scaffold sequence is identical to SEQ ID NO:21.
The level of ordinary skill in the biotechnology art is high as evidenced by Yuan 2011, Li, and Lee. It would have been prima facie obvious for one of ordinary skill in the art to use the CRISPR/Cas9-based wheat gene editing method taught by Li to edit and activate expression of the Glu-1Ax-null allele as taught by Yuan 2011. One of ordinary skill in the art would be motivated to do so, because site 1216 of the Glu-1Ax-null allele corresponds to a premature termination codon and mutation or deletion of that codon results in expression of the modified Glu-1Ax gene, which encodes HMW-GS proteins. Gluten content, which is controlled by high and low molecular weight glutenin subunits are crucial to the quality and elasticity of doughs and breads. Given the role of Glu-1Ax alleles in encoding HMW-GS, one of ordinary skill in the art would be motivated to increase the activity and/or expression of glutenin genes such as Glu-1Ax. It would have prima facie obvious to use the guide RNA scaffold sequence taught by Lee in combination with the CRISPR/Cas9-based method of gene editing taught by Yuan 2011 and Li, because the design and use of CRISPR/Cas9-based constructs is routine in the art and the guide RNA scaffold sequence comprising the instant SEQ ID NO:21 is well-known in the art, as demonstrated by Lee. The selection of the initial pEtRNA vector in the design of a CRISRP/Cas9 gene-editing construct is simply a design choice parameter well within the means of one of ordinary skill in the art. The choice of guide RNA scaffold sequence is a design parameter well within the means of one of skill in the art. The selection of a sequence comprising SEQ ID NO:21 would not have produced unexpected or surprising results in the operation or results of the method. The use of any commercially available vector suitable for the development of a CRISPR/Cas9 gene-editing construct would not have modified the operation of the device. See MPEP 2144.04. Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention with a reasonable expectation of success and without any surprising results.
Regarding claim 2, the selection of the initial pEtRNA vector in the design of a CRISRP/Cas9 gene-editing construct is simply a design choice parameter well within the means of one of ordinary skill in the art. The use of any commercially available vector suitable for the development of a CRISPR/Cas9 gene-editing construct would not have modified the operation of the device. See MPEP 2144.04. Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention with a reasonable expectation of success and without any surprising results.
Regarding claim 3, the design of guide RNAs (including sgRNAs) is routine in the biotechnology art, as stated above. Furthermore, Yuan 2011 teaches a premature stop codon located at position 1216 between the 1208-1235 sites of the Glu-1Ax-null gene (p. 05, Fig. 4). Because the Glu-1Ax-null allele taught by Yuan 2011 comprises SEQ ID NO:1, Yuan teaches the premature stop codon located at site 1216, and Yuan 2011 teaches that deletion of said premature codon activates expression of Glu-1Ax, it would have been prima facie obvious for one of ordinary skill in the art to design sgRNAs, including SEQ ID NO:1 (which occurs naturally in the Glu-1Ax gene sequence), to target and edit the premature stop codon.
Regarding claim 7, Yuan 2011 teaches transforming a vector into E. coli, screening the E. coli for positive clones, and verifying the positive clones through sequencing (p. 08, “Cloning, sequencing, and comparative analyses of the HMW-GS genes”; p. 08, “Expression of Glu-1Ax gene in E. coli”).
Yuan 2011 does not teach further transforming the vector into Agrobacterium.
Li teaches introducing a positive Agrobacterium clone containing a CRISPR/Cas9 gene editing vector into wheat to obtain a transgenic wheat (p. 427, first paragraph, lns. 36-38).
The combination of Yuan 2011 and Li teaches transforming a CRISPR/Cas9 editing vector for the Glu-1Ax-null gene into a wheat cell via Agrobacterium-mediated transformation and selecting a homozygous line in which the premature termination codon is disrupted. Though Li and Yuan 2011 are silent to the propagation of the vector in E. coli and the transformation of the obtained from the E. coli into Agrobacterium prior to transforming wheat with said Agrobacterium, the transformation and propagation of vectors within bacteria, the screening of bacteria for positive transformants, and verifying of positive transformants through sequencing is routine and well within the means of one of ordinary skill in the biotechnology arts. The bacterial transformation, identification, and purification steps would not alter or impact the function of the recited method or CRISPR/Cas9 construct. Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention with a reasonable expectation of success and without any surprising results.
Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention with a reasonable expectation of success and without any surprising results.
11. Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yuan et al. (PLoS One. 2011; 6(8):e23511 (previously cited), hereinafter “Yuan 2011”) in view of Li et al. (Plant Biotechnology Journal. 2020; 19(3):427-429 (previously cited)), further in view of Lee et al. (US-20190218547-A1, published 07/08/2019 (previously cited)), and further in view of Gao et al. (US-20200224221-A1, published 07/16/2020 (previously cited )).
The teachings of Yuan 2011, Li, and Lee are as discussed above.
Regarding claim 5, Yuan 2011 does not teach a tRNA or SEQ ID NO:19.
However, in addition to the teachings discussed above, Li teaches tRNA (p. 427, first paragraph, lns. 14-21).
Additionally, Gao teaches a CRISPR/Cas9 gene editing construct which comprises a tRNA (SEQ ID NO:1) which is identical to instant SEQ ID NO:19[0061] and asserts that the design of tRNAs is within the skill of one in the art[0062].
The combination of Yuan 2011, Li, Lee, and Gao teaches, in addition to the teachings of Yuan 2011 and Li as discussed above, a CRISPR/Cas9 editing vector for the Glu-1Ax-null gene, wherein the vector includes a first tRNA with the sequence of SEQ ID NO:19 and a second tRNA which is identical to the first tRNA.
The level of ordinary skill in the biotechnology art is high as evidenced by Yuan 2011, Li, Lee, and Gao. The rationale and motivation for combining the teachings of Yuan and Li are as discussed above. It would have prima facie obvious to use the tRNA sequence taught by Gao in combination with the CRISPR/Cas9-based method of gene editing taught by Yuan 2011 and Li, because the design and use of CRISPR/Cas9-based constructs is routine in the art and the design of tRNA sequences including the instant SEQ ID NO:19 is routine in the art, as evidenced by Gao. The choice of tRNA sequence is a design parameter well within the means of one of skill in the art. See MPEP 2144.04. The selection of a sequence comprising SEQ ID NO:19 would not have produced unexpected or surprising results in the operation or results of the method. Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention with a reasonable expectation of success and without any surprising results.
Regarding claim 6, Yuan 2011 does not teach a CRISPR/Cas9 editing vector or SEQ ID NO:2.
However, Li teaches a method for gene editing in wheat comprising designing a specific sgRNA (p. 427, left column, first full paragraph), cloning the specific sgRNA onto a pair of restriction sites of the pEtRNA vector pBUE411 to construct a CRISPR/Cas9 editing vector (p. 427, left column, first full paragraph), and transforming the CRISPR/Cas9 editing vector into a wheat cell via Agrobacterium-mediated transformation and selecting a line in which the target gene has been disrupted (p. 427, right column, first partial paragraph).
Lee teaches a guide RNA scaffold sequence that teaches the instant SEQ ID NO:21 (See Attached STIC Search Results, Lee: SEQ ID NO:8)[0030].
Gao teaches a CRISPR/Cas9 gene editing construct which comprises a tRNA (SEQ ID NO:1) which is identical to instant SEQ ID NO:19[0061] and asserts that the design of tRNAs is within the skill of one in the art[0062].
For the reasons discussed above, it would have been prima facie obvious to combine the teachings of Yuan 2011, Li, Lee, and Gao to develop a method for activating expression of a Glu-1Ax-null allele in wheat by designing a CRISPR/Cas9 construct and sgRNAs to target and edit the well-known premature stop codon in the null allele. While this combination of references may be silent to the specific SEQ ID NO:2, the combination teaches each of the components of SEQ ID NO:2 required for the encoded gene editing construct to target and edit Glu-1Ax-null. As stated above, the design and use of CRISPR/Cas9 gene editing constructs is routine and well-within the means of one of ordinary skill in the biotechnology arts. The elements of SEQ ID NO:2 of which the cited combination of prior art references is silent would not have produced unexpected or surprising results in the operation or results of the method. See MPEP 2144.04.
Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention with a reasonable expectation of success and without any surprising results.
Conclusion
12. No claim is 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.
Examiner’s Contact Information
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEQUANTARIUS JAVON SPEED whose telephone number is (703)756-4779. The examiner can normally be reached M-F; 9AM-5PM ET.
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/DEQUANTARIUS JAVON SPEED/Junior Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663