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 claims 17-19, 21, 24, 27, and 31, as well as the species SEQ ID NO: 2, in the reply filed on 3/16/2026 is acknowledged.
Claims 1-2, 4, 6-10, 13, 16, and 28-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/16/2026.
Priority
This application is a 371 of PCT/EP2022/066416 (6/15/2022) which claims priority to EP21179 554.7 (6/15/2021).
Information Disclosure Statement
The information disclosure statement filed 4/3/2025 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. The references not considered by the examiner are lined through on the IDS form.
Drawings
The drawings are objected to for the following reasons:
37 CFR 1.84(u)(1) states “View numbers must be preceded by the abbreviation “FIG.”.
In the current case, the view numbers for Figures 1-7 are preceded by the word “Figure” instead of the abbreviation “FIG.”. View numbers should be updated to recite the abbreviation “FIG.”. Any changes to the drawings should also be reflected in the specification.
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.
Claim Objections
Claim 19 is objected to because of the following informalities:
Claim 19 recites “a coated a seed”. This should instead be “a coated seed”. Appropriate correction is required.
Claim Interpretation
Claim 18 recites “the composition is according to the composition of claim 1”. Claim 1 has been withdrawn. For clarity, claim 18 is rewritten including the limitations of claim 1:
A method for inducing plant immunity, wherein the method is a method of protecting a plant from abiotic stress and/or a pest, the method comprising the application of a composition comprising at least one anti-frost protein on the plant or a part thereof, wherein the composition is a composition comprising at least one anti-frost protein, the anti-frost protein comprising a first amino acid sequence that is at least 95% identical to an amino acid sequence selected from the group of SEQ ID NOs: 1-2.
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 19 and 24 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 19 recites the broad recitation “part of the plant”, and the claim also recites “such as a seed” and “for example a coated a seed” which is the narrower statement of the range/limitation.
Claim 24 recites the broad recitation “an organism that contains chitin”, and the claim also recites “such as a fungus or an insect” which is the narrower statement of the range/limitation.
The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For the purposes of examination, it is considered that these limitations are not required.
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.
Claims 17-19, 21, 24, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Ramlov et al., WO 2014/202089 A2 in view of Honjoh et al., Bioscience, biotechnology, and biochemistry; 64(8):1656-63, as evidenced by NCBI Chlorella hiC12 GenBank AB035642.
Regarding claims 17 and 18, Ramlov teaches anti-freeze polypeptides/proteins (AFPs) and methods of using these proteins (Ramlov p. 1 lines 8-11, 23-27). Ramlov teaches that AFPs reduce or inhibit the formation of ice crystals (Ramlov p. 46 lines 1-10; p. 57 lines 1-10).
Regarding the limitation “for inducing plant immunity, wherein the method is a method of protecting a plant from abiotic stress and/or a pest”, this is the intended use of the claimed method. The active method step is the application of a composition comprising an anti-frost protein to a plant or plant part.
Ramlov teaches that AFPs may be applied to plants externally by spraying or other external deposit to protect crops and plants from climactic freezing conditions (Ramlov p. 7 lines 31-35, p. 8 lines 1-5). Thus, Ramlov teaches a method comprising the active step of applying a composition comprising an anti-frost (anti-freeze) protein on a plant, and further teaches that this method is for protecting a plant from abiotic stress, i.e. freezing.
Regarding claim 19, Ramlov teaches that the composition is applied by spraying to a plant part (Ramlov p. 7 lines 31-35, p. 8 lines 1-5).
Regarding claim 21, Ramlov teaches that the method is for protecting the plant from abiotic stress, frost stress or freezing climactic conditions (Ramlov p. 8 lines 1-5).
Regarding claim 27, Ramlov teaches that the plant is a crop (Ramlov p. 7 lines 31-35), which includes grains, citrus fruits, and grapes, i.e. arable crops (Ramlov p. 108 lines 14-22).
Ramlov does not teach that the anti-frost protein comprises an amino acid sequence that is at least 95% identical to SEQ ID NO: 2 (claims 17 and 18).
Regarding claims 17 and 18, Honjoh teaches the sequence of hiC12, a gene from Chlorella vulgaris (Honjoh Abstract). hiC12 is a group 3 late embryogenesis abundant (LEA) protein which are known to act as cryoprotectants by helping plant cells withstand dehydration stress associated with freezing (Honjoh p. 1656 para. 2; p. 1657 first partial para.; p. 1661 first full para.). Honjoh teaches that LEA proteins are very hydrophilic and modify the structure or propagation of ice crystals during freezing to exert a cryoprotective effect (Honjoh p. 1661 first full para.).
Chlorella hiC12 (GenBank AB035642) has an amino acid sequence that is 100% identical to instant SEQ ID NO: 2 (see sequence alignment in OA appendix; see NCBI ref.; Honjoh p. 1658 “Nucleotide and deduced amino acid sequences of hiC12”). Honjoh teaches the hiC12 has cryoprotective activity, i.e., is an anti-freeze/anti-frost protein (Honjoh p. 1661 para. 2; p. 1662 para. 1).
It would have been obvious for a skilled artisan to modify the method as taught by Ramlov and apply an anti-frost protein as taught by Honjoh, hiC12, to a plant for protection from the abiotic stress of freezing. Both Ramlov and Honjoh teach antifreeze proteins that act by modifying ice crystal formation to exert a cryoprotective effect. Ramlov teaches applying proteins with such an activity to plants for protection against freezing stress. It would have been obvious to a skilled artisan that an antifreeze protein as taught by Honjoh, which is known to exhibit the same cryoprotective effects, could be applied to plants as taught by Ramlov. This would be considered a simple substitution of one known element for another having the same characteristics, given the teachings of Ramlov that AFPs used to treat plants work by limiting or inhibiting ice crystal formation, and the teachings of Honjoh that LEA proteins (i.e. hiC12) also function in plants for protection from frost stress by altering the propagation of ice crystals. Thus, a skilled artisan would have had a reasonable expectation of predictable results, i.e. that the antifreeze protein of Honjoh could be applied for protecting a plant from frost stress, when substituting the AFP of Honjoh in the method of Ramlov.
Regarding claim 24, Ramlov and Honjoh teach the active method steps of claim 17 as set forth above, and also teach that the method is used for protecting a plant from abiotic stress.
These references do not teach that the method is for protecting a plant from a pest, wherein the pest is an organism that contains chitin, such as a fungus, as set forth in claim 24. However, as discussed above, “protecting a plant from abiotic stress and/or a pest” is an intended use of the claimed method. The active method step of claim 17, applying an anti-frost protein with a sequence according to SEQ ID NO: 2 to a plant, is rendered obvious by Ramlov and Honjoh. It is considered that this method, comprising the same active steps as the instantly claimed method, is capable of performing the intended use of protecting the plant from a pest that contains chitin. Therefore, the teachings of Ramlov and Honjoh read on claim 24.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Ramlov and Honjoh as applied to claim 17 above, and further in view of Koubaa et al., Plant Physiology and Biochemistry; 156:396-406.
Claim 17 recites the limitation “the method is a method of protecting a plant from abiotic stress and/or a pest”. This is an intended use of the claimed method. The active method steps, i.e. application of a composition comprising an anti-frost protein to a plant, are taught by Ramlov and Honjoh as discussed above. Ramlov and Honjoh further teach that the method is used for protecting a plant from abiotic stress.
These references do not teach that the method is a method of protecting a plant from a pest, wherein the pest is an organism that contains chitin (claim 24). The use of the method for protection from a pest is an intended use as discussed above, and it is considered that the combined teachings of Ramlov and Honjoh read on claim 24. Further, use of the method taught by Ramlov and Honjoh for protecting a plant from a pest containing chitin is obvious in view of Koubaa, as set forth in the rejection below.
Regarding claim 24, Koubaa teaches LEA proteins that are known for protection of plants from various abiotic and biotic stresses, including freezing and low temperatures (Koubaa p. 396 para. 1-2; p. 397 col. 1). Koubaa teaches that expression of group 3 LEA proteins in plants confers resistance to infections caused by fungal pathogens, i.e. organisms which contain chitin (Koubaa p. 403 Section 3.6; Fig. 8). Koubaa teaches that the fungal pathogens include Fusarium graminearum, Botrytis cinerea and Aspergillus niger (Koubaa Abstract; p. 403 Section 3.6).
It would have been obvious for a skilled artisan to utilize the method of Ramlov and Honjoh for protecting plants from pests containing chitin, such as Fusarium fungi, in view of the teachings of Koubaa. The anti-frost protein taught by Honjoh is a group 3 LEA protein, as discussed above. Koubaa teaches that group 3 LEA proteins protect plants from a number of abiotic and biotic stresses including low temperature stress, and demonstrates that LEA proteins provide resistance to fungal pathogens when expressed by a plant.
Thus, a skilled artisan would have been motivated to apply the anti-frost protein of Honjoh to a plant for the purpose of protecting the plant from a pest which contains chitin, such as a fungus. As LEA proteins including hiC12 are known for cryoprotective properties, and proteins in this group have also been shown to provide a plant resistance to fungal pathogens, a skilled artisan would have been motivated to additionally use the protein to provide protection from fungal pests.
A person of ordinary skill in the art would have had a reasonable expectation of success in utilizing the method of Ramlov and Honjoh involving applying a group 3 LEA protein for protection against a fungal pest, given the demonstrated function of LEA proteins in not only cryoprotection of plants but also in plant resistance to fungi.
Conclusion
Claims 17-19, 21, 24, and 27 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY F EIX whose telephone number is (571)270-0808. The examiner can normally be reached M-F 8am-5pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila Landau can be reached at (571)272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMILY F EIX/Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653
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