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 with traverse of Group I claims 24-31 and 33-34 in the reply filed on 05/29/2026 is acknowledged. Applicant primarily argues that “Groups I, IV-V, and VII-VIII are linked by a single general inventive concept, specifically increasing the isoorientin content in a plant (pg. 6).
This argument is unpersuasive. A method for breeding a plant variety with enhanced allelopathy or with enhanced resistance to weeds by original presentation was not linked to isoorientin and the claims were very broad that encompasses many different solutions to enhance allelopathy or weed resistance. For example, enhancing allelopathy and weeds resistance can be achieved through different compounds (i.e. different flavonoids). Therefore, the restriction is maintained.
Claim Status
Claims 24, 28-31, 33-34 and 40-43, are pending. Claims 40-43, are withdrawn. Claims 1-23, 25-27, 32 and 35-39, are canceled. Claims 24, 28-31 and 33-34 are examined in the instant application to the extent of Group I sec. (1) inhibiting growth of weed in rice fields.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. This application is claiming the benefit of Application No. CN202110942015.X filed August 17, 2021.
Information Disclosure Statement (IDS)
The IDS submitted on 02/14/2024 has been considered. Signed copy is attached.
Specification
The disclosure is objected to because of the following informalities:
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
For example, “Disclosed in the present invention” is considered legal phraseology.
Appropriate correction is required.
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 24, 28-31 and 33-34, 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.
In regard to claim 24, the recitation of “reducing the glycosylation reaction of isoorientin” and “reducing activity and/or expression level of a protein capable of catalyzing the conversion of isoorientin into other substances” is unclear. Is this intended to be a multi-step process? Or is it meant to be “and/or” relationship where it can be one or the other?
In regard to claim 24, the recitation of “the following steps” is unclear. This is because the sentences that follows “reducing activity and/or expression level of a protein capable of catalyzing the conversion of isoorientin into other substances” is a single step and not multiple. As the claim stands it seems as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01.
Claims 29-30, the recitation “relevant biomaterial” is unclear. The specification fails to properly define the term. What does relevant biomaterial mean? Also, the limitation “relevant” is subjective and may have different meanings.
Claim 30, recites the limitation "the Os02g0589400" in line 2. The metes and bounds of the claim are indefinite because this is not an art-recognized term and is defined by function rather than structure. Also, because accession numbers in public databases are subject to updates, changes, or deletions, the scope the claimed invention can change.
Claim 30, the recitation “nucleic acid molecule capable of expressing the Os02g0589400 protein” is unclear. Claim 29 states that “Os02g0589400” is the catalyzing protein and in claim 30 is directed to an expression cassette intended to increase the expression of Os02g0589400 protein. However, in claim 24 which claims 29 and 30 depends from states “reducing activity and/or expression level of a protein capable of catalyzing the conversion of isoorientin into other substances”, which seems contradictory to claim 30 which requires expression rather than a reduction..
In claim 31, the recitation “…80% or more homology…” is unclear.”. For example, Reeck, et al. (homology’ in proteins and nucleic acids: A terminology muddle and a way out of it. Cell, vol. 50, no. 5, Aug. 1987, p. 667, (U)), discloses “Homology” is a qualitative concept describing a relationship between two or more things, such as amino acid or nucleotide sequence, meaning they are or not homologous, without degrees or percentages of “homology” (see left column). The point is that it is unclear to one skilled in the art what is meant by “…80% or more homology” as recited in the claims which could mean either sequence identity or “possessing a common evolutionary origin” (see right column).
Claims 28 and 33-34, are rejected for depending upon a rejected base claim and for failing to remedy the issues of indefiniteness.
Applicant is advised to appropriately amend claims.
Claim Rejections - 35 USC § 112(a)(Written Description)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 24, 28-31 and 33-34, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The written description requirement may be satisfied through sufficient description of a representative number of species by disclosing relevant and identifying characteristics such as structural or other physical and/or chemical properties, by disclosing functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the invention as claimed. See Eli Lilly,119 F.3d at 1568, 43 USPQ2d at 1406.
Applicant’s disclosure is as follows.
The Applicant describes “isoorientin and isoorientin-2"-O-glucopyranoside were applied to Echinochloa crus-galli externally at a concentration of 500 mg/L, respectively” resulting in isoorientin reducing radicle length p-value= 1.539x10-3 (pg. 21 and fig.5). Applicant vaguely describes Os02g0589400 as catalyzing isoorientin to produce isoorientin-2" -O-glucopyranoside (as shown in Fig. 4).
Claims encompass any isoorientin catalyzing protein and all weeds.
The claimed invention lacks adequate written description for the following reasons. Claims 24, 28-31 and 33-34 are directed to a method of inhibiting growth of weeds in rice fields by increasing the content of isoorientin in a plant by reducing the breakdown (i.e. glycosylation or catalyzation) of isoorientin.
(1) claims 24, 28-30 and 33-34 encompasses reducing glycosylation of isoorientin or reducing expression of a protein that catalyzes the conversion of isoorientin; (2) claims 24, 28-31 and 33-34 encompass at least 80% homology to Applicant’s SEQ ID NO: 1; (3) Applicant does not adequately describes a plant with reducing glycosylation of isoorientin or reducing expression of a protein that catalyzes the conversion of isoorientin; and (4) Applicant does not adequately describe the catalyzing Os02g0589400 protein.
(1) Claims 24, 28-30 and 33-34 encompass any means for reducing glycosylation of isoorientin or reducing expression of a protein that catalyzes the conversion of isoorientin. Applicant vaguely describes Os02g0589400 as being derived from Oryza sativa L. ssp. japonica cv. Zhonghua 11 (ZH11) and catalyzing isoorientin to produce isoorientin-2" -O-glucopyranoside (Ex. 2 and Fig. 4). However, Applicant does not describe ways in which the glycosylation reaction is reduced or any other way to reduce activity/expression of the genus of proteins capable of catalyzing the conversion of isoorientin.
Applicant does not adequately describe decreasing expression of a representative number of glycosylating or catalyzing proteins that results in an increase of isoorientin to inhibit growth of all weeds.
Here, one skilled in the art would be unable to identify all possible glycosylating or catalyzing proteins that would be required to increase isoorientin levels and inhibit growth of all weeds, because the specification fails to describe reducing activity and/or expression a representative number of glycosylating or catalyzing proteins which encompass ad infinitum proteins that would be impossible to identify as having functional activity.
For example, Macías et al. “Allelopathy—a natural alternative for weed control”, 2007, Pest. Manag. Sci., 63: 327-348. (V). Macías et al. describes that “Important developments and applications can be expected in a short time from the results of mode-of-action studies with allelopathic compounds. However, for this type of work, development of more accurate and case-related bioassays is needed, as the allelopathy phenomenon is extremely specific in each situation.” (pg. 342 col.1 para. 1).
Macías et al. describes that allelopathic compounds are extremely specific in each situation suggesting that each allelopathic compound (i.e. isoorientin) comprises its own mode-of-action resulting in plant specificity. Therefore, one skilled in the art would find it hard to believe that isoorientin would inhibit all weeds.
As for claim 30, (1) the specification fails to describe reducing the glycosylation reaction and (2) reducing protein catalyzing conversion of isoorientin. For example, Gu et al. “Enhancing UDP-Rhamnose Supply for Rhamnosylation of Flavonoids in Escherichia coli by Regulating the Modular Pathway and Improving NADPH Availability”, 2020, Journal of Agricultural and Food Chemistry 68 (35), 9513-9523 (W), describes that in bacterium there is additional glycosylation routes to consider, such as “L-Rhamnose, which is different from glucose and galactose, is a type of 6 deoxyhexose that endows metabolites with special activity, selectivity, and pharmacological properties by glycosylation” (pg. 9513 col.1), specifically “novel and efficient dTDP-rhamnose biosynthesis pathway in Escherichia coli by coupling maltodextrin metabolism to glycosylation” (pg. 9513 col.2).
Gu et al. 2020 describes the other pathways of glycosylation, claim 30 encompasses recombinant bacterium yet the specification is absent on these types of other routes. Therefore, one skilled in the art would find it unpredictable as to what glycosylation route to inhibit activity and/or expression of a protein capable of catalyzing isoorientin into other substances when there is numerous options.
(2) Claims 24, 28-31 and 33-34 encompass at least 80% homology to Applicant’s SEQ ID NO: 1 (i.e. Os02g0589400). The specification, vaguely describes Os02g0589400 as being derived from Oryza sativa L. ssp. japonica cv. Zhonghua 11 (ZH11) and catalyzing isoorientin to produce isoorientin-2" -O-glucopyranoside (Ex. 2 and Fig. 4). However, the specification does not describe a structure function relationship and as such, one of skill in the art would not think the Applicant possesses the genus of homologous sequences as claimed.
As mentioned above Reeck et al. describes that “Homology” is a qualitative concept describing a relationship between two or more things, such as amino acid or nucleotide sequence, meaning they are or not homologous, without degrees or percentages of “homology” (see left column). Therefore, homology is interpreted as identity and the Applicant has not provided a representative number of sequences from the genus of homologous sequences.
Claims 24, 28-31 and 33-34 encompass a nucleic acid sequence encoding a Os02g0589400 polypeptide with at least 80-99% sequence identity to SEQ ID NO: 1. This requires the specification to describe nucleic acid sequences encoding such polypeptides.
However, the specification does not describe a polynucleotide encoding a Os02g0589400 polypeptide with at least 80-99% sequence identity to SEQ ID NO:1, which leads to a functional Os02g0589400 polypeptide. A polynucleotide encoding a polypeptide with at least 80-99% sequence identity to SEQ ID NO: 1 would have 5-83 amino acid substitutions relative to SEQ ID NO:1. These polypeptides would encompass 1983 distinct protein variants.
While one skilled in the art can generate a population of sequences having 80-99% sequence identity to SEQ ID NO: 1, it is unpredictable which species within the population would also have glycosylation or catalyzing activity. The disclosure of SEQ ID NO:1 is not representative of sequences having 80-99% sequence identity to SEQ ID NO:1 and having glycosylation or catalyzing activity. No common structure or motif is disclosed.
For example, a simple blast search describes sequences within the 80-99% sequence identity, but describes these proteins as hypothetical, unnamed, and “-like” suggesting that one skilled in the art would find it unpredictable to identify within the 80-99% sequence identity of SEQ ID NO:1 that retain the necessary function and are reduced will increase the content of isoorientin.
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(3) Applicant does not adequately describe a plant with inhibited glycosylating or catalyzing isoorientin protein. The specification fails to describe one example of a plant with reduced glycosylation reaction or reduced activity and/or expression level of a protein capable of catalyzing the conversion of isoorientin into other substances. Since reducing the glycosylation reaction and the catalyzing protein is not described it is unpredictable to identify which proteins would result in increasing isoorientin levels and inhibiting the growth of weeds in rice fields.
(4) Applicant does not adequately describe the catalyzing protein Os02g0589400. As mentioned above the specification does not adequately describe Os02g0589400 protein. The specification fails to describe conserved regions, motifs or sequences that would allow one skilled in the art to predictably possess the protein with the function as claimed. The lack of identifying characteristics, does not allow one skilled in the art to readily identify such proteins or structure with the same function and thus could not reduce their activity to increase isoorientin.
Because of the lack of a description of a representative number of structures/sequences, the absence of information in the art on any isoorientin glycosylating or catalyzing protein with at least 80% homology to SEQ ID NO: 1, and the specification fails to sufficiently describe the plant, the specific catalyzing protein Os02g0589400, and inhibition across various weed types, one skilled in the art would not know the structures that would be needed to inhibited to increase isoorientin levels and resulting in weed growth reduction.
Accordingly, there is lack of adequate description to inform a skilled artisan that Applicant was in possession of the claimed invention at the time of filing. See Written Description guidelines published in Federal Register/ Vol.66, No. 4/ Friday, January 5, 2001/ Notices; p. 1099-1111.
Claim Rejections - 35 USC § 112(a)(Enablement)
Claims 24, 28-31 and 33-34, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification is enabled for externally applying isoorientin to Echinochloa crus-galli at a concentration of 500 mg/L resulting in isoorientin reducing radicle length p-value= 1.539x10-3 (pg. 21 and fig.5). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
“The first paragraph of 35 U.S.C. § 112 requires, inter alia, that the specification of a patent enable any person skilled in the art to which it pertains to make and use the claimed invention. Although the statute does not say so, enablement requires that the specification teach those in the art to make and use the invention without ‘undue experimentation.’ In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
That some experimentation may be required is not fatal; the issue is whether the amount of experimentation required is ‘undue.’” In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991) (emphasis in original); see also In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993) (“[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’”) “Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations.” Wands, supra.
Some experimentation, even a considerable amount, is not “undue” if, e.g., it is merely routine, or if the specification provides a reasonable amount of guidance as to the direction in which the experimentation should proceed. Factors to consider include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. Id.
Applicant’s disclosure is as set forth above. The claimed invention is not enabled for the following reasons. To comply with 35 USC 112(a) enablement, one skilled in the art must be able to make and use the claimed invention.
(A) The breadth of the claims
The breadth of the claims encompasses a method for inhibiting growth of all weeds in rice fields by increasing the content of isoorientin in a plant via reducing the glycosylation reaction or the activity and/or expression level of any protein capable of catalyzing the conversion of isoorientin into other substances.
(B) The nature of the invention.
The nature of the claimed invention is directed to a method for inhibiting the growth of Echinochloa crus-galli’s radicle by externally treating with 500 mg/L of isoorientin (ex. 3).
(C) The state of the prior art
The state of the prior art teaches isoorientin being an allelopathic chemical that inhibits radicle growth. However, the prior art does not teach a method to target the glycosylation or activity of a protein capable of catalyzing the conversion of isoorientin into other substances, thus increasing the isoorientin content in a plant.
(D) The level of one of ordinary skill
The level of one of ordinary skill in the art is high.
(E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
The claimed invention lacks adequate enabling guidance for the following reasons. Claims 24, 28-31 and 33-34 are directed to a method of inhibiting growth of weeds in rice fields by increasing the content of isoorientin in a plant by reducing the breakdown (i.e. glycosylation or catalyzation) of isoorientin.
(1) claims 24, 28-30 and 33-34 encompasses reducing glycosylation of isoorientin or reducing expression of a protein that catalyzes the conversion of isoorientin; (2) claims 24, 28-31 and 33-34 encompass at least 80% homology to Applicant’s SEQ ID NO: 1; (3) Applicant does not teach a plant with reducing glycosylation of isoorientin or reducing expression of a protein that catalyzes the conversion of isoorientin; and (4) Applicant does not teach a structure function correlation for the catalyzing Os02g0589400 protein.
(1) Claims 24, 28-30 and 33-34 encompass any means of reducing glycosylation of isoorientin or reducing expression of a protein that catalyzes the conversion of isoorientin. Applicant vaguely teaches Os02g0589400 as being derived from Oryza sativa L. ssp. japonica cv. Zhonghua 11 (ZH11) and catalyzing isoorientin to produce isoorientin-2" -O-glucopyranoside (Ex. 2 and Fig. 4). However, Applicant does not teach inhibiting all the possible ways that can further breakdown or modify isoorientin.
Applicant does not provide working examples of glycosylating or catalyzing enzymes that predictably increase isoorientin and inhibit growth of all weeds.
Here, one skilled in the art would be unable make and use the plants as broadly claimed because the specification fails to teach or provide working examples for inhibiting activity of glycosylating or catalyzing protein’s which encompass ad infinitum proteins.
For example, Macías et al. “Allelopathy—a natural alternative for weed control”, 2007, Pest. Manag. Sci., 63: 327-348. (V). Macías et al. describes that “Important developments and applications can be expected in a short time from the results of mode-of-action studies with allelopathic compounds. However, for this type of work, development of more accurate and case-related bioassays is needed, as the allelopathy phenomenon is extremely specific in each situation.” (pg. 342 col.1 para. 1).
Macías et al. teaches that allelopathic compounds are extremely specific in each situation. Suggesting that each allelopathic compound (i.e. isoorientin) comprises its own mode-of-action resulting in plant specificity. Therefore using isoorientin to inhibit all weed types is unpredictable.
As for claim 30, the lack of teachings on (1) reducing glycosylation reaction and (2) reducing protein catalyzing conversion of isoorientin protein make producing the plant as claimed unpredictable. For example, Gu et al. “Enhancing UDP-Rhamnose Supply for Rhamnosylation of Flavonoids in Escherichia coli by Regulating the Modular Pathway and Improving NADPH Availability”, 2020, Journal of Agricultural and Food Chemistry 68 (35), 9513-9523 (W), teach that in bacterium there is additional glycosylation routes to consider, such as “L-Rhamnose, which is different from glucose and galactose, is a type of 6 deoxyhexose that endows metabolites with special activity, selectivity, and pharmacological properties by glycosylation” (pg. 9513 col.1), specifically “novel and efficient dTDP-rhamnose biosynthesis pathway in Escherichia coli by coupling maltodextrin metabolism to glycosylation” (pg. 9513 col.2).
Gu et al. 2020 teach the other routes of glycosylation, claim 30 encompasses recombinant bacterium yet the specification is absent on these types of other routes. Therefore, one skilled in the art would find it unpredictable as to what glycosylation route to inhibit or of a protein capable of catalyzing isoorientin into other substances when there is numerous options, which would require undue burden of experimentation.
(2) Claims 24, 28-31 and 33-34 encompass at least 80% homology to Applicant’s SEQ ID NO: 1. The Applicant, Applicant vaguely teaches Os02g0589400 as being derived from Oryza sativa L. ssp. japonica cv. Zhonghua 11 (ZH11) and catalyzing isoorientin to produce isoorientin-2" -O-glucopyranoside (Ex. 2 and Fig. 4). However, the Applicant does not provide any evidence, sequence alignment, conserved regions or motifs to allow one skilled in the art to adequately identify and inhibit these sequences having at least 80-99% sequence homology to SEQ ID NO: 1. As mentioned above Reeck et al. describes that “Homology” is a qualitative concept describing a relationship between two or more things, such as amino acid or nucleotide sequence, meaning they are or not homologous, without degrees or percentages of “homology” (see left column). Therefore, homology is interpreted as identity and the Applicant has not provided enough working examples of sequences from the genus of homologous sequences.
Claims 24, 28-31 and 33-34 encompass a nucleic acid sequence encoding a Os02g0589400 polypeptide with at least 80-99% sequence identity to SEQ ID NO: 1. This requires the specification to teach nucleic acid sequences encoding such polypeptides which in turn can be predictably reduced.
However, the specification does not enable a polynucleotide encoding a Os02g0589400 polypeptide with at least 80-99% sequence identity to SEQ ID NO:1, which leads to a functional Os02g0589400 polypeptide.
A polynucleotide encoding a polypeptide with at least 80-99% sequence identity to SEQ ID NO: 1 would have 5-83 amino acid substitutions relative to SEQ ID NO:1. These polypeptides would encompass 1983 distinct protein variants.
In the absence of guidance indicating where in the sequence of SEQ ID NO:1 such variations can be sustained, these proteins would not predictably have the required function that when reduced lead to increasing isoorientin content and inhibiting weed growth.
For example, a simple blast search shows sequences within the 80-99% sequence identity, but that these proteins are hypothetical, unnamed, and “-like” suggesting that the prior art and the instant application still does not fully understand SEQ ID NO: 1. Therefore, one skilled in the art would find it unpredictable to identify and inhibit activity of sequences within the 80-99% sequence identity of SEQ ID NO:1 without undue experimentation.
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(3) Applicant does not adequately enable a plant with inhibited glycosylating or catalyzing isoorientin protein. The specification fails to teach provide one working example of a plant with reduced glycosylation reaction or reduced activity and/or expression level of a protein capable of catalyzing the conversion of isoorientin into other substances. Since reducing the glycosylation reaction and the catalyzing protein is not enabled it is unpredictable to identify which proteins would result in increasing isoorientin levels and inhibiting the growth of weeds in rice fields without undue experimentation. The specification fails to provide guidance if increasing isoorientin in rice varieties would result in inhibiting growth of all weeds. Therefore, it is unpredictable for one skilled in the art to target the structures and the rice varieties that would result in said activity without undue experimentation.
(4) Applicant does not adequately describe the catalyzing Os02g0589400 protein. As mentioned above the specification does not adequately enable Os02g0589400 protein. The specification fails to teach conserved regions, motifs or sequences that would allow one skilled in the art to predictably identify similar proteins with similar activity. The specification does not provide enough working examples targeting other proteins within 80% sequence identity to SEQ ID NO: 1 (Os02g0589400 protein). The lack of identifying characteristics, does not allow one skilled in the art to readily identify and target such proteins or structures resulting in the same function. Therefore, one skilled in the art would find it unpredictable to identify and target such structures without undue experimentation.
The specification fails to TEACH, or fails to provide GUIDANCE for identifying and inhibiting the glycosylation or catalyzation protein that would increase isoorientin content as claimed and result in inhibiting weed growth. This requires the specification to teach the structures to allow one skilled in the art to identify such proteins.
Given the breadth of the claims, the lack of sufficient guidance, the absence of working examples regarding the structure of glycosylation or catalyzation proteins to target, types of weeds, which confer functional activity, the state of the prior art, and unpredictability in the art, one skilled in the art cannot make and use the claimed invention as commensurate in scope with the claims without excessive burden and undue experimentation.
For at least this reason, the Specification does not teach a person with skill in the art how to make and/or use the subject matter within the full scope of these Claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 24, 28 and 33-34, are rejected under 35 U.S.C. 103 as being unpatentable over Aslani et al. “Effects of Tinospora tuberculata leaf methanol extract on seedling growth of rice and associated weed species in hydroponic culture”, 2016, Journal of Integrative Agriculture, 15(7): 1521–1531 (X) in view of Casas et al. “Identification and Characterization of Maize salmon silks Genes Involved in Insecticidal Maysin Biosynthesis.” 2016, The Plant cell vol. 28,6: 1297-309 (Y).
In regard to claims 24, 28 and 33-34, Aslani et al. teach that isoorientin comprises growth inhibitory effects on the early growth of barnyard grass radicle and has better allelopathic activity than other compounds and reduces growth from 10-95% (Echinochloa crusgalli) (Abstract and Table 1; see p. 1526, col. 2, par. 2; p. 1528, col. 1, par. 1). Aslani et al. teach that these “bioactive compounds leads to allelopathy activity of T. tuberculata leaves which could be employable directly as a natural herbicide and its growth inhibitor compounds can be used as a template for producing new herbicides”(Abstract).
In regard to claims 24, 28 and 33-34, Aslani et al. does not teach reducing activity of a protein capable of converting isoorientin into other compounds.
In regard to claim 24, 28 and 33-34, Casas et al. teaches convergent “Sm2 encodes a rhamnosyl transferase (UGT91L1) that uses isoorientin and UDP-rhamnose as substrates and converts them to rhamnosylisoorientin” (Abstract). Specifically, Casas et al. teach that isoorientin is converted to maysin (fig. 1). Thus, a protein capable of catalyzing the conversion of isoorientin to another substance was known in the art.
Therefore, prior to the effective filing date of the instant invention it would have been prima facie obvious to one of ordinary skill in the art to increase the isoorientin content to inhibit early growth of barnyard grass radicle (Echinochloa crusgalli) (Abstract and Table 1) of Aslani et al. by targeting the rhamnosyl transferase (UGT91L1) responsible for converting isoorientin into maysin (fig. 1) as taught by Casas et al. because doing so would result in higher isoorientin content and herbicidal activity.
One of ordinary skill in the art would have a reasonable expectation of success in doing so because Casas et al. teaches that rhamnosyl transferase converts isoorientin to maysin. Thus, if rhamnosyl transferase is no longer converting isoorientin to maysin, then one would reasonably expect to have increased isoorientin content.
Subject matter free from the art
In regard to Claims 29-31, the closest prior art is Aslani et al. “Effects of Tinospora tuberculata leaf methanol extract on seedling growth of rice and associated weed species in hydroponic culture”, 2016, Journal of Integrative Agriculture, 15(7): 1521–1531 (X), which teach that isoorientin inhibits the growth of Echinochloa
crusgalli (table 1) and provides motivation to further study the compound because of its benefits (pg. 1529 col.1 and 2). However, Aslani et al. does not teach or suggest to specifically select for Os02g0589400 protein having SEQ ID NO: 1.
Conclusion
No claims are allowed.
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/C.J.O./Examiner, Art Unit 1663
/JASON DEVEAU ROSEN/Primary Examiner, Art Unit 1662
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