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
Applicant’s election without traverse of claims 1 – 4, 8 – 9, 11 – 12, 14 – 15, 19 – 20, 22 – 23, 39, 43 – 44, 48 – 49 and 53 in the reply filed on July 28, 2026, is acknowledged.
Claims 5 – 7, 10, 13, 16 – 18, 21, 24 – 38, 40 – 42, 45 – 47, 50 – 52 and 54 – 63 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 28, 2026.
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.
Claims 1 – 4, 8 – 9 and 53 are rejected under 35 U.S.C. 103 as being unpatentable over Thapa et al. Genetic and Biochemical Reconstitution of Bromoform Biosynthesis in Asparagopsis Lends Insights into Seaweed Reactive Oxygen Species Enzymology. ACS Chem Biol. 2020 Jun 19;15(6):1662-1670; cited on IDS, hereinafter Thapa). in view of Steiner et al. (U.S. Patent No. 7,361,813 B2; hereinafter Steiner).
Regarding claims 1 – 2 , 4 and 53, Thapa discloses a vanadium-dependent iodoperoxidase 1 HPO protein that is 100% match to SEQ ID NO: 2 of instant claim 4 (ABSS Search-08/14/2026 data, SEQ ID NO: 2, UNIPROT: Result 1) derived from Asapragopsis taxiformis, red macroalga, a prolific producer of the ozone depleting molecule bromoform (Abstract). Thapa further discloses that red macroalga seaweed is receiving increasing attention as a feed additive to reduce methane production by dairy cattle (p. 1663, 2nd column, 1st para.).
Regarding claims 3, 8 and 9, Thapa teaches all of the elements of the current invention as stated above except a whole-plant constitutive promoter. However, Steiner discloses (Abstract) an invention related to DNA sequences of the recombinant constructs inserted into the corn (monocot) genome and of genomic sequences flanking the insertion site that resulted novel transgenic corn event, MIR604, a whole-plant constitutive promoter (SEQ ID NO: 61, Col. 6, line 19 – 30) that is 100% match to SEQ ID NO: 20 of instant claim 9 (ABSS Search-08/10/2026, SEQ ID NO: 20, Published_Applications_NA_Main: Result 1).
Steiner further discloses/provides that a motivation for creating transgenic plants was for pest control (Col. 1, line 26 – 50). However, it would have been obvious to use the motivation from Thapa as well to engineer feed that reduces methane production.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the corn plant of Steiner with the transgene (HPO) of Thapa. Doing so would engineer an insect resistant, bromoform-producing feed that reduces methane production by dairy cows.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Thapa and Sugihara et al. (U.S. Patent Application Publication No. 2017/0044580 A1; hereinafter Sugihara).
Regarding claims 11 – 12, Sugihara discloses a Brassica napus Napin promoter (SEQ ID NO: 78, Para. [0199]) that is 95.4% identity match to SEQ ID NO: 24 of instant claim 12 (ABSS Search-08/11/2026, SEQ ID NO: 24, Issued_Patents_AA: Result 1).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the endosperm-specific promoter of Sugihara with the HPO gene of Thapa. The endosperm is the primary storge tissue in seeds, making it an ideal site for producing recombinant proteins or bioactive compounds.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Thapa and Patton et al. (U.S. Patent No. 6,300,091 B1; hereinafter Patton).
Regarding claims 14 – 15, Patton discloses an AACT2 gene (16713 gene, Col. 2, line 23 – 26) with an amino acid sequence (SEQ ID NO: 8, Col. 15, line 46) that is 100% identity match to SEQ ID NO: 11 of instant claim 15 (ABSS Search-08/11/2026, SEQ ID NO: 11, Issued_Patents_AA: Result 1).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the AACT2 gene of Patton with the HPO gene of Thapa. AACT2 is vital to plants because it is the primary source of acetoacetyl-CoA for isoprenoid biosynthesis in plants, and its loss is incompatible with life.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Thapa and Steiner as applied to claims 3, 8 and 9 above, and further in view of Patton.
Regarding claims 19 – 20, Thapa and Steiner teach all of the elements of the current invention as stated above except an AACT2 gene being expressed under the whole plant constitutive promoter (SEQ ID NO: 20).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to generate the plant of Thapa and Steiner with the essential AACT2 gene of Patton. Doing so is vital to the life of the plant.
Claims 22 – 23 are rejected under 35 U.S.C. 103 as being unpatentable over Thapa and Patton as applied to claims 14 and 15 above, and in further view of Vainstein et al. (U.S. Patent No. 8,791,324 B2; hereinafter Vainstein).
Regarding claims 22 – 23, Thapa and Patton teach all of the elements of the current invention as stated above except a self-cleaving peptide. Vainstein discloses a self-cleaving peptide gene sequence (SEQ ID NO: 41, 2A-like protein, Col. 44, line 6 – 25) that is 100% identity match to SEQ ID NO: 36 (ABSS Search-08/10/2026, SEQ ID NO: 36, Issued_Patents_AA: Result 1;US-12-988-636A) and the motivation for utilizing a self-cleaving peptide is due to its ability to mediate an efficient co-translational cleavage event resulting in the release of each individual protein. Vainstein further discloses that this protein is able to cleave itself at the C termini (Col. 44, line 6 – 25).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the self-cleaving peptide of Vainstein with the HPO of Thapa and the AACT2 of Patton. Doing so would allow for the co-expression of both proteins from one promoter.
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Thapa and Patton as applied to claims 14 and 15 above, and in further view of Vreeland et al. (U.S. Patent No. 6,232,457 B1; hereinafter Vreeland).
Regarding claim 39, Thapa and Patton teach all of the elements of the current invention as stated above except a nonspecific VHPO gene sequence. Vreeland discloses a recombinant vanadium haloperoxidase (SEQ ID NO. 2, Col. 2, line 50 – 59) that is 100% identity match to SEQ ID NO: 82 of instant claim 39 (ABSS Search-08/11/2026, SEQ ID NO: 82, Issued_Patents_AA: Result 1, US-09-151-189).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the HPO of Thapa with the nonspecific VHPO sequence of Vreeland. Doing so would allow for a non-specific option that offers the flexibility, broad reactivity, and structural plasticity needed to study and engineer the construct.
Claims 43 and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Thapa and Patton as applied to claims 14 and 15 above, and in further view of Benning et al. (U.S. Patent No. 7,230,160 B2; hereinafter Benning).
Regarding claims 43 – 44, Thapa and Patton teach all of the elements of the current invention as stated above except a Wrinkled 1 gene. However, Benning discloses, in an invention directed to nucleic acid and amino acid sequences associated with the metabolism of seed storage compounds in plants, a Wrinkled 1 gene sequence (SEQ ID NO: 6, Col. 3, line 30 – 35; Col. 47-Sequence) that is 100% identity match to SEQ ID NO: 16 of instant claim 44 (ABSS Search-08/10/2026, SEQ ID NO: 16, Issued_Patents_AA: Result 1, US-10-094-458A). Benning further provides the motivation for incorporating the Wrinkled 1 gene is its role as a lipid metabolism regulator (Col. 1, line 20 – 60) and its ability to increase or alter seed oil in plants (Col. 2, line 59 – 62).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the Wrinkled 1 gene of Benning in the construct of Thapa and Patton. Doing so would help increase or alter the plant’s seed oil production, according to Benning.
Claims 48 and 49 are rejected under 35 U.S.C. 103 as being unpatentable over Thapa, Patton, and Benning as applied to claims 43 and 44 above, and in further view of Vainstein.
Regarding claims 48 – 49, Thapa, Patton, and Benning teach all of the elements of the current invention as stated above except a self-cleaving peptide gene sequence. Vainstein discloses a self-cleaving peptide that is 100% identity match to SEQ ID NO: 36.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the self-cleaving peptide of Vainstein with the HPO of Thapa and the Wrinkled 1 of Benning. Doing so would allow for the co-expression of both proteins from one promoter as stated in the rejection of instant claims 22 – 23.
Allowable Subject Matter
Regarding claim 4, a sequence search of the elected species for claim 4 (SEQ ID NO: 44; ABSS Search-08/10/2026 file) did not return any viable candidates that match 90 – 99% identity, except for a UniProt Result No. 1, Q4LDE6_9PHAE (Vanadium-dependent iodoperoxidase 1) that is 100% match to SEQ ID NO: 44. However, the disclosure of the reference alone or in combination is not enough to reject the instant claims for the elected species (SEQ ID NO: 44).
Regarding claim 12, A sequence search of the elected species for claim 12 (SEQ ID NO: 94; ABSS Search-08/10/2026 file) did not return any viable candidates that match 90 – 99% identity, except for US8,703,439 B1, which includes an iodine binding protein that is 100% match to SEQ ID NO: 94. However, the disclosure of the reference alone or in combination is not enough to reject the instant claims for the elected species (SEQ ID NO: 94).
Regarding claim 39, A sequence search of the elected species for claim 39 (SEQ ID NO: 80; ABSS Search-08/10/2026 file) did not return any viable candidates that match 90 – 99% identity.
The elected species are free of the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WALTER JACKSON III whose telephone number is (571)272-0247. The examiner can normally be reached M-F 9:00A - 5:00P.
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/WALTER JACKSON III/Examiner, Art Unit 1638
/Tracy Vivlemore/Supervisory Primary Examiner, Art Unit 1638
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