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 of Group I in the reply filed on 5/4/2026 is acknowledged.
Applicant’s election of the species SEQ ID NO: 208 and SEQ ID NO: 255 in the reply filed on 5/4/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the species election requirement even though stating that election is with traverse, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Accordingly, claims 118, 120 and 123 are withdrawn from consideration for being directed to non-elected subject matter. Claims 1, 3, 7, 13, 16, 52, 70, 79, 80, 83, 86, 89, 90, 95, 96 are currently under examination.
Duplicated Claim Warning
Applicant is advised that should claim 3 be found allowable, claim 7 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 7, 13, 16, 52, 70, 79, 80, 83, 86, 89, 90, 95, 96 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the term "e.g." renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Moreover, the recitation of “selected from the group consisting of and a gene involved in autophagy and phagocytosis” renders the claim indefinite because it is unclear what the group encompasses. As such, the metes and bounds of the claim cannot be established.
Dependent claims 3, 7, 13, 16, 52, 70, 79, 80, 83, 86, 89, 90, 95, 96 are rejected for same reason because they depend on claim 1 but fails to remedy the indefiniteness.
Regarding claim 3, the recitation of “one or more target genes SEQ ID NO: 208 and/or ortholog thereof” renders the claim indefinite because it is unclear whether the target gene is encoded by SEQ ID NO: 208 and/or ortholog, or targeted by SEQ ID NO: 208 and/or ortholog.
Regarding claims 13 and 52, it is unclear whether the limitation in parenthesis is part of the claim limitation.
Regarding claim 79, the recitation of “a nucleotide sequence SEQ ID NO: 255” renders the claim indefinite because it is unclear whether it is referring to the entire sequence of SEQ ID NO: 255 or a nucleotides sequence within SEQ ID NO: 255 (a fragment thereof).
Regarding claim 86, the term “plant incorporated protectant” renders the claim indefinite because it is unclear whether it means the composition comprises a plant, or the composition is within a plant.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 13 and 16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Both claims depend on claim 3, which already recites the limitation that the target gene is SEQ ID NO: 208 and/or ortholog thereof, using a different name Pf04109 or Apg9 does not further limit claim 3. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by CN110747209.
The claimed invention of claim 1 is drawn to an isolated dsRNA for controlling an infection of a plant by a phytopathogen, wherein said dsRNA is capable of inhibiting or downregulating a gene involved in autophagy.
‘209 patent teaches autophagy related protein that comprises ATG5, ATG7 ATGIO are negative regulation factor of powdery mildew resistance. ‘209 teaches ATG2 encoded by EDR6 gene is also an autophagy related protein (paragraph [0008]-[00010]). ‘209 patent teaches in crops such as rice, wheat, RNAi reduces endogenous EDR6 gene expression (paragraph [0011]). Since RNAi is short double stranded RNA, the teaching from ‘209 patent anticipates claim 1.
Note: SEQ ID NO: 208 and SEQ ID NO: 255 are free from prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CELINE X QIAN whose telephone number is (571)272-0777. The examiner can normally be reached M-F (8-4:00).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dunston can be reached at 571-272-2916. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CELINE X QIAN/Primary Examiner, Art Unit 1637
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