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 are pending and under examination on the merits.
Response to Arguments – Objections to the Specification
2. Applicant’s remarks and amendments dated April 07, 2026 have overcome the objections of record. However, said amendments have necessitated new grounds of objection.
Objections to the Specification
3. The specification is objected to because of the following:
In paragraph [0004], ln. 17, and all subsequent recitations wherein the term “the ZmARGOS1” refers to a gene, the term “gene” should be inserted after “the ZmARGOS1” for the purpose of grammatical correctness. See also, “the ZmARGOS8” in [0004], ln. 19. See also, [0005], lns. 5-6.
Correction and/or clarification is required.
Response to Arguments – Claim Objections
4. Applicant’s remarks and amendments dated April 07, 2026 have overcome the objections of record. However, said amendments have highlighted new grounds of objection because claim 2 contains a typographical and/or grammatical error (see below).
Claim Objections
5. Claim 2 is objected to because ln. 2 contains a grammatical and/or typographical error. The recitation “transforming of any one of” should be amended to “transforming any one of”.
Appropriate correction is required.
Response to Arguments – Claim Rejections - 35 USC § 112(b)
6. Applicant’s remarks and amendments dated April 07, 2026 have overcome the rejections of record.
Response to Arguments – Claim Rejections - 35 USC § 101
7. Applicant’s remarks and amendments dated April 07, 2026 have overcome the rejections of record.
Response to Arguments – Claim Rejections - 35 USC § 112(a)
8. Applicant’s remarks and amendments dated April 07, 2026 have overcome the rejections of record.
Response to Arguments – Claim Rejections - 35 USC § 102
9. Applicant’s remarks and amendments dated April 07, 2026 have been carefully considered but are not persuasive and do not overcome the rejections of record.
Applicant argues primarily that: 1) Guo does not expressly disclose the presently claimed method and merely discloses ARGOS-related polynucleotides, expression cassettes, and transformed materials (p. 14, first paragraph); and 2) the ARGOS gene disclosed by Guo is distinct from the ARGOS9 gene of the instant application (p. 14, second paragraph).
Applicant’s argument that the ARGOS gene disclosed by Guo is distinct from the ARGOS9 gene of the instant application is not persuasive. Applicant’s assertion that the Examiner incorrectly mapped Guo’s SEQ ID NO:12 to the instant SEQ ID NO:3 and incorrectly mapped Guo’s SEQ ID NO:45 to the instant SEQ ID NO:2 is incorrect. Applicant’s specification discloses that SEQ ID NO:3 is encoded by the maize ZmARGOS9 gene and ZmARGOS9 mRNA complementary to SEQ ID NO:2[0056-0088]. Guo’s SEQ ID NO:12 is a 126 residue-long Zea mays (i.e., maize) amino acid sequence that has 100% sequence identity to the 126 residue-long amino acid sequence of the instant SEQ ID NO:3 (see: Guo sequence listing SEQ ID NO:12; STIC sequence search results submitted with the Non-Final Rejection dated 02/19/2026). Guo’s SEQ ID NO:45 is a 381 nucleotides-long Zea mays nucleic acid sequence that has 100% sequence identity to the 381 nucleotides-long nucleic acid sequence of SEQ ID NO:2 (see: Guo sequence listing SEQ ID NO:45; STIC sequence search results submitted with the Non-Final Rejection dated 02/19/2026). Guo’s SEQ ID NO:12 and SEQ ID NO:45 share 100% sequence identity to the instant SEQ ID NO:3 and SEQ ID NO:2, respectively. The Office also disagrees with Applicant’s assertion that there are “no details given in the attached STIC search results” because the previously attached search results clearly indicate the sequence of Guo’s SEQ ID NO:12 and SEQ ID NO:45 and their 100% sequence identity to the instant SEQ ID NO:3 and SEQ ID NO:2, respectively.
Furthermore, Applicant’s argument that Guo does not expressly disclose the presently claimed method due to the subject matter of Guo’s claims 1 and 13 is not persuasive because said argument improperly limits the scope of Guo’s teachings to only claims 1 and 13 and misrepresents the teachings of Guo’s claims 1 and 13. Guo’s claims 1 and 2 teach an expression cassette comprising a polynucleotide that is identical to the instant SEQ ID NO:2 (i.e., Guo SEQ ID NO:45) and/or encodes a polypeptide that is identical to the instant SEQ ID NO:3 (i.e., Guo SEQ ID NO:12). Guo’s claims 4 and 7 further teach a transgenic plant comprising said expression cassette; producing a transgenic plant inherently requires transforming a plant and/or “implementing” a gene for use in said plant. Furthermore, Guo’s claims 9 and 11 teach introducing the polynucleotide that is identical to the instant SEQ ID NO:2 (i.e., Guo SEQ ID NO:45) and/or encodes a polypeptide that is identical to the instant SEQ ID NO:3 (i.e., Guo SEQ ID NO:12) into a plant cell to modulate the growth/development of the plant wherein the plant cell includes maize (Guo claims 10/12). Additionally, Guo’s claim 13 teaches transforming a plant cell with an expression cassette comprising and expressing Guo’s SEQ ID NO:45, which is identical to the instant SEQ ID NO:2, and modulating the growth of the transformed plant wherein the plant includes maize (Guo claim 16). Therefore, Guo teaches transforming a protein (Guo SEQ ID NO:45) into maize wherein the protein is identical to the amino acid sequence shown in the instant SEQ ID NO:3 and/or transforming a ZmARGOS9 gene into maize, wherein the ZmARGOS9 gene is identical to the nucleic acid sequence shown in the instant SEQ ID NO:2.
The Office also disagrees with Applicant’s assertion that Guo is silent to the effects of the recited ARGOS9 gene on methods of improving drought resistance, yield, or shortening growth period (p. 14, first paragraph), because Guo teaches enhanced vegetative growth and reproductive yield in plants over-expressing ZmARGOS genes (see: Guo Example 6[0235-0244]). Regardless, even if Guo had been silent to the effects of the SEQ ID NOs:2-3, "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 composition patentably new to the discoverer" (see: MPEP § 2112).
Accordingly, the claimed invention is anticipated by the teachings of Guo and the rejection under 35 U.S.C 102(a)(1) is maintained. Any modifications to the language of the rejection are necessitated by Applicant’s amendments.
Claim Rejections - 35 USC § 102
10. 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.
11. Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guo et al. (US-2007/0234443-A1, published 10/04/2007 (Applicant’s IDS)).
Guo discloses: (i) a protein, wherein the protein has the amino acid sequence shown in instant SEQ ID NO:3 (claim 1; Guo sequence listing SEQ ID NO:12; see STIC search results submitted with the Non-Final Rejected dated 02/19/2026); (ii) a ZmARGOS9 gene, wherein the ZmARGOS9 gene comprises the nucleotide sequence shown in SEQ ID NO:2 (claims 1 and 13; Guo sequence listing SEQ ID NO:45; see STIC search results submitted with the Non-Final Rejected dated 02/19/2026); (iii) a recombinant expression plasmid comprising the ZmARGOS9 gene (claims 2, 4-5, 7-8, 9-16) and a drought-inducible promoter[0217]; (iv) a recombinant microbial strain comprising the recombinant plasmid[0097-0105], [0106-0112] (claim 3); and (v) a method for enhancing maize yield comprising introducing into a plant cell a recombinant expression cassette comprising the ZmARGOS9 gene operably linked to a promoter (claims 9-18; Example 6[0235-0244]).
Regarding claim 1, Guo teaches a method for improving drought resistance of maize by transforming any one of the following substances: (i) a protein, wherein the protein has the amino acid sequence shown in instant SEQ ID NO:3 (claim 1; Guo sequence listing SEQ ID NO:12; see STIC search results submitted with the Non-Final Rejected dated 02/19/2026); (ii) a ZmARGOS9 gene, wherein the ZmARGOS9 gene comprises the nucleotide sequence shown in SEQ ID NO:2 (claims 1 and 13; Guo sequence listing SEQ ID NO:45; see STIC search results submitted with the Non-Final Rejected dated 02/19/2026); (iii) a recombinant plasmid comprising the ZmARGOS9 gene (claims 2, 4-5, 7-8, 9 and 13) and a drought-inducible promoter[0217]; and (iv) a method for enhancing maize yield comprising introducing into a plant cell a recombinant expression cassette comprising the ZmARGOS9 gene operably linked to a promoter (claims 9-18; Example 6[0235-0244]).
Regarding claim 2, Guo teaches a method for improving maize yield by implementing any one of the following substances: (i) a protein, wherein the protein has the amino acid sequence shown in instant SEQ ID NO:3 (claim 1; Guo sequence listing SEQ ID NO:12; see STIC search results submitted with the Non-Final Rejected dated 02/19/2026); (ii) a ZmARGOS9 gene, wherein the ZmARGOS9 gene comprises the nucleotide sequence shown in SEQ ID NO:2 (claims 1 and 13; Guo sequence listing SEQ ID NO:45; see STIC search results submitted with the Non-Final Rejected dated 02/19/2026); (iii) a recombinant plasmid comprising the ZmARGOS9 gene (claims 2, 4-5, 7-8, 9 and 13) and a drought-inducible promoter[0217]; and (iv) a method for enhancing maize yield comprising introducing into a plant cell a recombinant expression cassette comprising the ZmARGOS9 gene operably linked to a promoter (claims 9-18; Example 6[0235-0244]).
Regarding claim 3, Guo teaches a method for shortening a growth period of maize by implementing any one of the following substances: (i) a protein, wherein the protein has the amino acid sequence shown in instant SEQ ID NO:3 (claim 1; Guo sequence listing SEQ ID NO:12; see STIC search results submitted with the Non-Final Rejected dated 02/19/2026); (ii) a ZmARGOS9 gene, wherein the ZmARGOS9 gene comprises the nucleotide sequence shown in SEQ ID NO:2 (claims 1 and 13; Guo sequence listing SEQ ID NO:45; see STIC search results submitted with the Non-Final Rejected dated 02/19/2026); (iii) a recombinant plasmid comprising the ZmARGOS9 gene (claims 2, 4-5, 7-8, 9 and 13) and a drought-inducible promoter[0217]; and (iv) a method for enhancing maize yield comprising introducing into a plant cell a recombinant expression cassette comprising the ZmARGOS9 gene operably linked to a promoter (claims 9-18; Example 6[0235-0244]).
The function and/or activity of a polypeptide is inherent to its sequence. Therefore, the SEQ ID NO:12 disclosed by Guo, which is identical to the instant SEQ ID NO:3, has the same function and/or activity of the instant SEQ ID NO:3. Thus, Guo’s SEQ ID NO:12 and SEQ ID NO:45 have the same function of improving drought-tolerance, organ size, and crop yield as the instant SEQ ID NO:3 and SEQ ID NO:2, respectively, when expressed in maize.
As discussed in MPEP § 2112, "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 composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id. Thus, even if Guo had been silent to the role of function of SEQ ID NO:12 and/or SEQ ID NO:45 in improving drought resistance, yield, or shortening growth period said effects are inherent to the sequences and, therefore, methods employing said sequences taught by Guo.
Therefore, in teaching a method for improving maize yield by transforming any one of the following substances: (i) a protein, wherein the protein has the amino acid sequence shown in instant SEQ ID NO:3; (ii) a ZmARGOS9 gene, wherein the ZmARGOS9 gene comprises the nucleotide sequence shown in SEQ ID NO:2; (iii) a recombinant plasmid comprising the ZmARGOS9 gene; and (iv) transforming and expressing said gene in maize, Guo inherently teaches a method for improving drought resistance and yield and for shortening growth period of maize.
Accordingly, the claimed invention is anticipated by the prior art.
Conclusion
12. 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
13. 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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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
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