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 1-4 and 6-8 are pending and under examination to the extent of the elected species.
Claims 5 and 9-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on July 23, 2025.
Election/Restrictions
2. The Office acknowledges receipt of Applicant’s restriction election filed July 23, 2025. Applicant elects Group I, claims 1, 3, and 6-8, with traverse. Applicant further elects the species of SEQ ID NO:1, SEQ ID NO:4, SEQ ID NO:8, and Zea mays, with traverse.
Regarding the restriction of the claims, Applicant traverses primarily that the claims as filed allegedly recited a genetically altered plant or plant part comprising one or more first genetic alterations that increase activity of a PPDK regulatory protein (PDRP) as compared to a wildtype plant or plant part grown under the same conditions and one or more second genetic alterations that increase activity of a Rubisco activase (Rca) protein and that despite the combination of PDRP and Rca being present in claim 1, the Examiner characterized Group I as being directed to "a genetically altered plant/plant part comprising one or more genetic alterations that increase activity of a PPDK regulatory protein (PDRP)". Subsequently Applicant has amended the pending claims to remove the "optionally" language previously present and that as amended, pending claims 1-4 and 6-8 encompass Group I.
The Examiner notes that Group I was previously characterized as being directed to "a genetically altered plant/plant part comprising one or more genetic alterations that increase activity of a PPDK regulatory protein (PDRP)" due to the recitation encompassing Rca being limited to an optional embodiment. Applicant’s removal of the “optionally” language from the amended claims is persuasive. The Office agrees to examine claims 1-4 and 6-8 as Group I, directed to a genetically altered plant or plant part comprising one or more first genetic alterations that increase activity of a PDRP and one or more second genetic alterations that increase activity of a Rca protein as compared to a wildtype plant or plant part grown under the same conditions.
Regarding Applicant’s traversal of the requirement to elect species, Applicant’s arguments and amendments are persuasive. The claims will be examined to the extent of the SEQ ID NO:1, SEQ ID NO:4, SEQ ID NO:8, SEQ ID NO:14 and Zea mays.
The restriction requirement is deemed proper and is made FINAL.
Priority
3. This application is a 371 of Internation Application No. PCT/US2022/031036 filed May 26, 2022. The Office acknowledges receipt of Applicant’s domestic priority document Provisional Application No. 63/193,566 filed May 26, 2021.
Information Disclosure Statement
4. The Information Disclosure Statement (IDS) submitted on November 22, 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered. A signed copy is attached.
Specification
4. The specification is objected to because of the following:
The abstract of the disclosure is objected to because the abstract is not submitted on a separate sheet apart from any other text. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112(b)
5. 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.
6. Claims 4-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The scope of claim 4 is indefinite because SEQ ID NO:8 appears to comprise a Zea mays PPDK protein sequence, not a sequence comprising a Rubisco protein sequence (see STIC sequence search result #1). 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). Applicant is reminded that no new matter may be added.
The metes and bounds of claim 6 are indefinite because the antecedent basis of “the protein with the activity being increased” is unclear. Is Applicant referring to the PDRP protein of claim 1, the Rca protein of claim 1, or the protein expressed by a transgene in claim 6, ln. 5?
The metes and bounds of claim 6 are indefinite because it is unclear what is being modified by the phrase “with the activity being increased” (ln. 5). Is the activity being increased for the transgene overexpressing a protein, the protein (ln. 5), PDRP, or Rca?
The scope of claim 7 is undefined because it is unclear if the embodiment wherein the genetically altered plant/plant part has increase photosynthetic efficiency, yield, and/or water-use efficiency as compared to a wildtype plant grown under the same conditions is a required embodiment or an optional embodiment. The inclusion of this embodiment after the “optionally” language obscures the intended recitation.
The scope of claim 7 is undefined because it is unclear what is encompassed by “non-steady” light conditions. Applicant has provided no definition for said conditions regarding the frequency, intensity, and/or color of light required. Do such conditions require the light to flicker? Does an environment in which light is sometimes absent satisfy this condition. Applicant is required to clarify what features comprise “non-steady” light conditions to distinguish them from “steady” light conditions.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
7. 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.
8. Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Brutnell et al. (US-2017/0218387-A1, published 02/01/2018 (A)), in view of Wang et al. (Plant Physiology. 2008; 148(1):557-567 (U)), further in view of Furbank et al. (Australian Journal of Plant Physiology. 1997; 24:477–485 (V)), and further in view of Burnell et al. (Biochemical Biophysical Research Communications. 2006; 345:675-680 (W)).
Regarding claim 1, Brutnell teaches pyruvate phosphate dikinase (PPDK), Rubisco activase (Rca), and their regulatory proteins as proteins involved in C4 photosynthesis[0050], [0056], [0080] and overexpressing these proteins to increase plant growth and crop yield in C4 plants[0050], [0084]; an Rca gene sequence encoding an Rca protein having at least 88% sequence identity to Applicant’s SEQ ID NO:4 (see Sequence Listing, SEQ ID NO:33); Rubisco small and large subunit gene sequences (see Sequence Listing, SEQ ID NOs:29 and 31).
Accordingly, Brutnell teaches producing a genetically altered plant or plant part comprising one or more first genetic alterations that increase activity of a PPDK regulatory protein (PDRP) as compared to a wild type plant or plant part grown under the same conditions and one or more second genetic alterations that increase activity of a Rubisco activase (Rca) protein plant part grown under the same conditions, wherein the genetically altered plant is a C4 plant.
Though Brutnell suggests overexpressing a PPDK regulatory protein (PDRP), Brutnell is silent to PDRP, specifically.
Wang teaches that cold-induced decreases in leaf photosynthetic activity are associated with decreases in PPDK and Rubisco activity (p. 558, left column, second full paragraph); that PPDK and Rubisco coordinate in the control of light-saturated C4 photosynthesis (p. 558, left column, second full paragraph); that PPDK is a key limiting factor for photosynthesis at low temperatures (p. 558, right column, second full paragraph; p. 564, right column, final paragraph); and suggests that the PDRP-dependent activation/dephosphorylation of PPDK promotes photosynthesis under cold conditions (p. 563, left column, first full paragraph; p. 564, right column, second full paragraph).
Additionally, Furbank teaches PPDK and Rubisco as key photosynthetic enzymes in the C4 plant Flaveria bidentis (Abstract; p. 478, left column, first paragraph); positive correlations between Rubisco and PPDK and photosynthesis in maize and other C4 plants (p. 478, Table 1); the PDRP regulates the light-dependent regulation of PPDK (p. 480, right column, first full paragraph); and that Rca activity limits the rate of Rubisco activity and thus, photosynthesis (p. 483, left column, first full paragraph).
Furthermore, Burnell teaches PDRP as regulating the reversible inactivation of PPDK, which catalyzes a rate-limiting step in the initial carbon-fixation stage of photosynthesis (Abstract; p. 675, paragraphs 1-3) and the sequence of PDRP, which is identical to Applicant’s SEQ ID NO:1 (see STIC sequence search result # 2).
The combination of Brutnell, Wang, Furbank and Burnell teaches the genetic components and provides motivation for one of ordinary skill in the art to produce a genetically altered plant or plant part comprising one or more first genetic alterations that increase activity of a PDRP as compared to a wild type plant or plant part grown under the same conditions and one or more second genetic alterations that increase activity of a Rca protein plant part grown under the same conditions, wherein the genetically altered plant is a C4 plant.
The level of ordinary skill in the plant biotechnology art is high as evidenced by Brutnell, Wang, Furbank, and Burnell. It would have been prima facie obvious for one of ordinary skill in the art to produce a C4 plant recombinantly expressing both PDRP and Rca. One of ordinary skill in the art would have been motivated to co-express these two genes specifically given the teachings of the cited prior art. Brutnell provides a limited list of target genes/proteins, including PDRP (i.e., Brutnell teaches expressing a PPDK regulatory protein) and Rca, and suggests co-expressing those genes in C4 plants to increase photosynthesis[0084], [0111-0112]. In teaching that PDRP-dependent activation of PPDK promotes photosynthesis under stress (e.g., cold/freezing) conditions, Wang provides additional motivation for one of skill in the art to express PDRP in a C4 plant. Finally, the combination of Furbank and Burnell teach that PDRP and Rca regulate proteins that control rate-limiting steps in photosynthesis (i.e., PPDK and Rubisco). Given the key roles of PDRP and Rca in controlling photosynthesis, especially under stress conditions, one of ordinary skill in the art would have been further motivated to co-express PDRP and Rca in a C4 plant as taught by Burnell. One of ordinary skill in the art would have been motivated to do so because C4 plants include staple crops, such as Zea mays, and hold global nutritional and economic value. Thus, there is strong incentive to create C4 plants with increased growth characteristics as taught by Burnell. Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention without any surprising or unexpected results.
Regarding claim 2, in addition to the teachings discussed above, Brutnell teaches a genetic alteration that increases the activity of a Rubisco protein[0111].
Regarding claim 3, Brutnell is silent to SEQ ID NO:1. However, in addition to the teachings discussed above, Burnell teaches SEQ ID NO:1 (see STIC sequence search result #2).
Claim 4 is indefinite because the recited SEQ ID NO:8 does not comprise a Rubisco protein (see rejection of claim 4 under 35 U.S.C. 112(b)). For the purpose of compact prosecution, claim 4 is interpreted to recite the sequence of any Rubisco protein known in the art. Because Brutnell teaches the sequences of small and large subunits of Rubisco (see Sequence Listing, SEQ ID NOs:30 and 32), in addition to the other teachings discussed above, Brutnell meets each limitation of this claim.
Regarding claim 6, in addition to the teachings discussed above, Brutnell teaches overexpression due to a transgene overexpressing a protein[0050], [0088], [0111-0112], [0113].
As stated above in the rejection of claim 7 under 35 U.S.C. 112(b), the metes and bounds of “non-steady” light are undefined. For the purpose of compact prosecution, the Office herein interprets non-steady light to comprise any light that is not always on and/or shining. Regarding claim 7, in addition to the teachings discussed above, Brutnell teaches growth conditions comprising a 16hr light/8hr dark light cycle. Accordingly, Brutnell, in addition to the teachings discussed above, teaches each limitation of claim 7[103].
Regarding claim 8, in addition to the teachings discussed above, Brutnell teaches Zea mays[0084].
Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention without any surprising or unexpected results.
Conclusion
9. No claim is allowed.
Examiner’s Contact Information
10. 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham can be reached on (571)-270-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEQUANTARIUS JAVON SPEED/Junior Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663