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 .
Claim Status
1. Claims 1, 3, 5, and 7-9 are pending and under examination.
Claims 10-18, 21-23, and 26-27 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 02, 2025.
Claims 2, 4, 6, 19-20, 24-25, and 28-32 are cancelled.
Response to Arguments – Claim Objections
2. Applicant’s remarks and amendments dated 06/09/2026 have overcome the objections of record.
Response to Arguments – Claim Rejections - 35 USC § 112(b)
3. Applicant’s remarks and amendments dated 06/09/2026 have overcome the rejections of record.
Response to Arguments – Claim Rejections - 35 USC § 103
4. Applicant’s remarks and amendments dated 06/09/2026 have been carefully considered but are not persuasive and do not overcome the rejections of record.
Regarding the rejection of the claims as being unpatentable over Christensen et al. (US-2021/0115463-A1, published 04/22/2021 (Applicant’s IDS)) in view of Gerecke et al. (US-2017/0217847-A1, published 08/03/2017 (Applicant’s IDS)), Applicant argues primarily that the Office fails to provide sufficient rationale explaining why one of ordinary skill in the art would have combined the teachings of Christensen with the teachings of Gerecke to arrive at the claimed invention and that the Office’s analysis relies on impermissible hindsight. While Applicant’s argument has been carefully considered, the Office respectfully disagrees.
Both Christensen and Gerecke teach methods for optimizing the absorption and/or application of nitrogen exogenously applied to a field of corn plants. Christensen teaches a method of optimizing exogenously applied nitrogen use in a field of corn plants[0004], [0009], [0013-0016], [0020], [0031-0033], [0073], [0147] and that improving nitrogen utilization is an attribute to increasing crop yield[0242], which provides motivation for one of ordinary skill in the art to increase the amount of nitrogen available to be utilized by a crop. Gerecke teaches a method that increases the availability of nitrogen to be utilized by a crop via the control nutrient depletion from agricultural soils (Title) and application of nitrogen to a field of corn plants that comprises a nitrogen stabilizer (Abstract)[0013-0021], [0036], [0110], [0112], [0115], [0162], [0193]. One of ordinary skill in the art would be further motivated to use the method disclosed by Gerecke, because the method disclosed by Gerecke has the additional benefit of a reduction in harmful environmental impacts[0011-0012].
MPEP 2143 outlines examples of rationales that may support a conclusion of obviousness. Such rationales include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
In view of the above rationales, the Office finds that the results of combining the teachings of Gerecke (i.e., a method for increasing nitrogen availability in the soil) with those of Christensen (i.e., a plant with enhanced soil nitrogen uptake) would yield results predictable to one of ordinary skill in the art. It would also be simple to substitute the corn plants disclosed by Gerecke with the corn plants disclosed by Christensen and one of ordinary skill would be motivated to do so because Christensen provides motivation to increase nitrogen availability to the corn plants disclosed thereby. It would be obvious to use the method of Gerecke to improve the growth of the corn plant taught by Christensen in the same way the method of Gerecke was used to improve the growth of another corn plant. The plant taught by Christensen was ready for improvement and the results of the application of the known technique of Gerecke would be obvious to one of ordinary skill in the art.
For the reasons discussed above, the rejection of claims 1, 3, 5, and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Christensen et al. (US-2021/0115463-A1, published 04/22/2021 (Applicant’s IDS)) in view of Gerecke et al. (US-2017/0217847-A1, published 08/03/2017 (Applicant’s IDS)) is maintained.
Furthermore, Applicant did not address the rejection of claims 1, 3, 5, and 7-9 under 35 U.S.C. 103 as being unpatentable over Wu et al. (Proceedings of the National Academy of Sciences. 2019; 116(47):23850-23858 (previously cited)) in view of Gerecke et al. (US-2017/0217847-A1, published 08/03/2017 (Applicant’s IDS)). Because Applicant did not argue or explain any alleged flaws in the rejection, the rejection is maintained.
Claim Rejections - 35 USC § 103
5. 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.
6. Claims 1, 3, 5, and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Christensen et al. (US-2021/0115463-A1, published 04/22/2021 (Applicant’s IDS)) in view of Gerecke et al. (US-2017/0217847-A1, published 08/03/2017 (Applicant’s IDS)).
Regarding claim 1, Christensen teaches a method of optimizing exogenously applied nitrogen use in a field by a population of corn plants, the plants comprising a heterologous polynucleotide (i.e., ZmM28 gene) that encodes a MADS-box polypeptide (i.e., AG099)[0004], [0009], [0020], [0073], [0147], the method comprising: a) providing crop plants wherein the expression of the heterologous polynucleotide increases one or more yield related agronomic parameters to a field that comprises applied nitrogen fertilizer[0009], [0013-0016], [0031-0033], [0073] (see: Examples); and b) increasing the nitrogen assimilation and/or nitrogen utilization rate during the crop plants’ growing season compared to a control population of plants not comprising the polynucleotide, thereby optimizing the exogenously applied nitrogen in the field[0073], [0242].
Christensen does not teach application of nitrogen to a field that comprises a nitrogen stabilizer.
However, Gerecke teaches controlling nutrient depletion from agricultural soils (Title) and application of nitrogen to a field that comprises a nitrogen stabilizer (Abstract)[0013-0021], [0036], [0110], [0112], [0115], [0162], [0193].
The combination of Christensen and Gerecke teaches a method of optimizing exogenously applied nitrogen use in a field by a population of corn plants, the plants containing a heterologous polynucleotide that encodes a MADS-box polypeptide, the method comprising: a) providing corn plants wherein the expression of the heterologous polynucleotide that encodes a MADS-box polypeptide increases one or more yield related agronomic parameters to a field that comprises applied nitrogen fertilizer and a nitrogen stabilizer; and b) increasing the nitrogen assimilation and/or nitrogen utilization rate during the corn plants’ growing season compared to a control population of plants not comprising the trait, thereby optimizing the exogenously applied nitrogen in the field.
The level of ordinary skill in the plant biotechnology art is high as demonstrated by Christensen and Gerecke. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Christensen with the teachings of Gerecke to apply nitrogen to a field that comprises a nitrogen stabilizer. One of ordinary skill in the art would have been motivated to do so because both Christensen and Gerecke teach methods for optimizing the absorption and/or application of nitrogen exogenously applied to a field of corn plants and Christensen further teaches that improving nitrogen utilization is an attribute to increasing crop yield[0242], which provides motivation for one of ordinary skill in the art to increase the amount of nitrogen available to be utilized by a crop. Gerecke teaches a method that increases the availability of nitrogen to be utilized by a crop. Gerecke suggests that applying a nitrogen stabilizer to a field increases the nitrogen available to plant roots and minimizes the leaching of loss of nutrients into surface and subsurface ground waters (Abstract). In addition to improving the availability of nitrogen for promoting crop growth, reducing run-off of applied nitrogen into the environment also reduces the incidence and environmental impacts of nitrogen fertilizers. One of ordinary skill in the art would be motivated to use the method disclosed by Gerecke, because the method disclosed by Gerecke has the additional benefit of a reduction in harmful environmental impacts[0011-0012]. MPEP 2143 outlines examples of rationales that may support a conclusion of obviousness. In view of said rationales, the Office finds that combining the teachings of Gerecke (i.e., a method for increasing nitrogen availability in the soil) with those of Christensen (i.e., a plant with enhanced soil nitrogen uptake) would yield results predictable to one of ordinary skill in the art (i.e., improved nitrogen utilization by a field of corn plants comprising a heterologous MADS-box polypeptide). It would also be simple to substitute the corn plants disclosed by Gerecke with the corn plants disclosed by Christensen and one of ordinary skill would be motivated to do so because Christensen provides motivation to increase nitrogen availability to the corn plants disclosed thereby. It would be obvious to use the method of Gerecke to improve the growth of the corn plant taught by Christensen in the same way the method of Gerecke was used to improve the growth of another corn plant. The plant taught by Christensen was ready for improvement and the results of the application of the known technique of Gerecke would be obvious to one of ordinary skill in the art.
It would have been simple to substitute the corn plant disclosed by Gerecke with the corn plant disclosed by Christensen to increase the availability of nitrogen to the plant. The results of said substitution would have been predictable to one of ordinary skill in the art. 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 or unexpected results.
Regarding claim 3, the combined teachings of Christensen and Gerecke are as discussed above.
Christensen does not teach wherein the corn plants are planted in one or more zones characterized by nitrogen run-offs.
However, Gerecke teaches wherein the corn plants are planted in one or more zones characterized by nitrogen run-offs (Abstract).
Regarding claim 5, in addition to the teachings discussed above, Christensen teaches wherein the applied nitrogen is used more effectively by the crop plants as measured by an increase in stalk and/or leaf nitrogen content and/or an increase in shoot and/or root biomass[0242].
Regarding claim 7, the combined teachings of Christensen and Gerecke are as discussed above. Further regarding "wherein the crop plants are heat tolerant," the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old method new to the discoverer. Thus, the claiming of a new use, new function, or previously unknown property, which is inherently present in the prior art method, does not necessarily make the limitation novel. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (MPEP 2112.01(I)).
Regarding claim 8, in addition to the teachings discussed above, Christensen teaches wherein the plants are corn plants that comprise event DP202216-6[0002], [0004], [0021-0025], [0073].
Regarding claim 9, in addition to the teachings discussed above, Christensen teaches a method wherein the applied nitrogen is about 5% to about 50% less than an application rate[0073].
Christensen does not teach wherein an application rate of about 50lbs to about 400lbs of nitrogen per acre compared to a normal field not comprising the crop plants having the polynucleotide.
However, Gerecke teaches wherein an application rate of about 50lbs to about 400lbs of nitrogen per acre compared to a normal field not comprising the crop plants having the polynucleotide[0026], [0087]. It would have been obvious to one of ordinary skill in the art at the time the invention was made to apply about 5% to about 50% less nitrogen than an application rate of about 50lbs to about 400lbs of nitrogen per acre compared to a normal field not comprising the crop plants having the polynucleotide, since discovering the optimum or workable ranges involves only routine skill in the art wherein the general conditions of the claim are disclosed in the prior art.
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 or unexpected results.
7. Claims 1, 3, 5, and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (Proceedings of the National Academy of Sciences. 2019; 116(47):23850-23858 (previously cited)) in view of Gerecke et al. (US-2017/0217847-A1, published 08/03/2017 (Applicant’s IDS)).
Regarding claim 1, Wu teaches a method of optimizing exogenously applied nitrogen use in a field by a population of corn plants, the plants comprising a heterologous polynucleotide (i.e., ZMM28 gene) that encodes a MADS-box polypeptide (Abstract; p. 23851, full paragraphs 2-4), the method comprising: a) providing crop plants wherein the expression of the heterologous polynucleotide increases one or more yield related agronomic parameters to a hydroponic growth chamber that comprises applied nitrogen fertilizer (Abstract; p. 23852, full paragraphs 1-5; p. 23853, full paragraph 1); and b) increasing the nitrogen assimilation and/or nitrogen utilization rate during the crop plants growing season compared to a control population of plants not comprising the polynucleotide, thereby optimizing the exogenously applied nitrogen (p. 23852, “Extended and Increased zmm28 Expression Increases N Uptake and Assimilation.”).
Wu does not teach application of nitrogen to a field or a nitrogen stabilizer.
However, Gerecke teaches controlling nutrient depletion from agricultural soils (Title) and application of nitrogen to a field that comprises a nitrogen stabilizer (Abstract)[0013-0021], [0036], [0110], [0112], [0115], [0162], [0193].
The combination of Wu and Gerecke teaches a method of optimizing exogenously applied nitrogen use in a field by a population of corn plants, the plants containing a heterologous polynucleotide that encodes a MADS-box polypeptide, the method comprising: a) providing corn plants wherein the expression of the heterologous polynucleotide that encodes a MADS-box polypeptide increases one or more yield related agronomic parameters to a field that comprises applied nitrogen fertilizer and a nitrogen stabilizer; and b) increasing the nitrogen assimilation and/or nitrogen utilization rate during the corn plants growing season compared to a control population of plants not comprising the trait, thereby optimizing the exogenously applied nitrogen in the field.
The level of ordinary skill in the plant biotechnology art is high as demonstrated by Wu and Gerecke. It would have been prima facie obvious to one of ordinary skill in the art before the instant effective filing date to modify the teachings of Wu with the teachings of Gerecke to apply nitrogen to a field that comprises a nitrogen stabilizer. One of ordinary skill in the art would have been motivated to do so because Wu suggests that increasing nitrogen utilization is a sought-after mechanism for increasing crop yield (p. 23852, final paragraph) and Gerecke suggests that applying a nitrogen stabilizer to a field increases the nitrogen available to plant roots and minimizes the leaching of loss of nutrients into surface and subsurface ground waters (Abstract). In addition to improving the availability of nitrogen for promoting crop growth, reducing run-off of applied nitrogen into the environment also reduces the incidence and environmental impacts of nitrogen fertilizers. One of ordinary skill in the art would be motivated to use the method disclosed by Gerecke, because the method disclosed by Gerecke has the additional benefit of a reduction in harmful environmental impacts[0011-0012]. It would have been simple to substitute the corn plant disclosed by Gerecke with the corn plant disclosed by Wu to increase the availability of nitrogen to the plant. The results of said substitution would have been predictable to one of ordinary skill in the art. 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 or unexpected results.
Regarding claim 3, the combined teachings of Wu and Gerecke are as discussed above.
Wu does not teach wherein the corn plants are planted in one or more zones characterized by nitrogen run-offs.
However, Gerecke teaches wherein the corn plants are planted in one or more zones characterized by nitrogen run-offs (Abstract).
Regarding claim 5, in addition to the teachings discussed above, Wu teaches wherein the applied nitrogen is used more effectively by the crop plants as measured by an increase in stalk and/or leaf nitrogen content and/or an increase in shoot and/or root biomass (p. 23852, “Extended and Increased zmm28 Expression Results in Maize Plants with Altered Agronomic Traits.”; p. 23852, “Extended and Increased zmm28 Expression Increases N Uptake and Assimilation.”).
Regarding claim 7, the combined teachings of Wu and Gerecke are as discussed above. Further regarding "wherein the crop plants are heat tolerant," the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old method new to the discoverer. Thus, the claiming of a new use, new function, or previously unknown property, which is inherently present in the prior art method, does not necessarily make the limitation novel. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (MPEP 2112.01(I)).
Regarding claim 8, in addition to the teachings discussed above, Wu teaches wherein the plants are corn plants that comprise event DP202216-6 (p. 23851, “Transgenic Event Selection.”; p. 23852, full paragraphs 1-5).
Regarding claim 9, the combined teachings of Wu and Gerecke are as discussed above.
Wu does not teach a method wherein the applied nitrogen is about 5% to about 50% less than an application rate of about 50lbs to about 400lbs of nitrogen per acre compared to a normal field not comprising the crop plants having the polynucleotide.
However, Gerecke teaches an application rate of about 50lbs to about 400lbs of nitrogen per acre compared to a normal field not comprising the crop plants having the polynucleotide[0026], [0087]. It would have been obvious to one of ordinary skill in the art at the time the invention was made to apply about 5% to about 50% less nitrogen than an application rate of about 50lbs to about 400lbs of nitrogen per acre compared to a normal field not comprising the crop plants having the polynucleotide, since discovering the optimum or workable ranges involves only routine skill in the art wherein the general conditions of the claim are disclosed in the prior art.
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 or unexpected results.
Conclusion
8. 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
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEQUANTARIUS J 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
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