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 .
Nucleotide and/or Amino Acid Sequence Disclosures
This application contains sequence disclosures that are encompassed by the definitions for nucleotide and/or amino acid sequences set forth in 37 CFR 1.821(a)(1) and (a)(2). However, this application fails to comply with the requirements of 37 CFR 1.821 through 1.825.
The incorporation of sequence listing (paragraph [001]) provides the size of the file in KB, but the size of the file in bytes is required. See 37 CFR 1.823(b)(1).
Full compliance with the sequence rules is required in response to this Office action. A complete response to this Office action must include both compliance with the sequence rules and a response to the issues set forth herein. Failure to fully comply with both of these requirements in the time period set forth in this Office action will be held to be non-responsive.
Claim Interpretation
The instant specification defines “about” as encompassing variations up to +/- 10% from the stated value or percentage (paragraph [00117]). Claim 9 has been examined under Applicant’s provided definition for “about”.
Claim Objections
Claims 14 & 19-20 are objected to because of the following informalities:
Claim 14 (line 3) recites the acronyms DKW and AB without defining what the acronyms mean. Acronyms should be written in full in their first appearance in a set of claims or each independent claim.
Claim 14 (lines 3-4): “and combinations thereof” should read --or combinations thereof--.
Claim 19 (line 3): "an shoot" should read --a shoot--.
Claim 20 (line 3): “(mg)/L” should read --mg/L--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Indefiniteness
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 13-14 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.
The term “threshold period of time” in claim 13 (lines 3-4) is a relative term which renders the claim indefinite. The term “threshold” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The instant specification describes that 1-4 days of co-cultivation can be sufficient for successful transformation, but longer periods can also be used for recalcitrant genotypes for increased transformation efficiency (paragraph [0076]). Claim 13 and the specification do not make clear whether there is a required level of transformation efficiency for a period of time to be considered to meet the threshold or if any successful transformation event with a period of time would be sufficient. There are no criteria provided to determine what period(s) of time would be “threshold” periods of time. Thus, the length of time that can be considered “threshold” is undefined in the instant specification and one of ordinary skill in the art would not reasonably understand what periods of time for co-culturing are encompassed and which are excluded by the limitation of claim 13. Dependent claim 14 is also indefinite.
Claim 14 contains the trademark/trade names “Tween” and “Silwet L-77”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe surfactants and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-2 & 10-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Petersen et al (US 2021/0071186 A1, published 3/11/2021, hereafter Petersen).
Petersen discloses a method for preparing an explant from meristematic tissue of a seed comprising drying, sterilizing, and imbibing the seed until sufficiently hydrated, then excising meristematic tissue from the hydrated seed to generate an explant (paragraph [0116]). Specifically, Petersen discloses a method for Cannabis meristem explant transformation wherein seeds were imbibed overnight with WCIC Bean Germination media, which reads on imbibing a Cannabaceae seed in a hydration solution (paragraphs [0201-0202]). Meristem explants were excised from the seed (paragraph [0203]), which reads on excising a subset of embryonic tissue from the imbibed seed to extract a meristematic region. Finally, the explants were inoculated with Agrobacterium harboring a DICOTBINARY-19 binary plasmid and co-cultured in WCIC INO media (paragraph [0203]), which reads on exposing the Cannabaceae meristematic region to a heterologous nucleotide sequence to transform cells of the meristematic region. This example of Petersen clearly anticipates instant claim 1. Petersen’s method also anticipates instant claim 11, which requires that exposing the meristematic region to the heterologous nucleotide sequence comprises contacting the Cannabaceae meristematic region with a bacterium strain that carries the sequence, as well as instant claim 12, requiring exposing the Cannabaceae meristematic region to an infection medium comprising the bacterium strain that is transformed to carry the heterologous nucleotide sequence (Petersen discloses this as co-culture in a WCIC INO media, paragraph [0203]).
The method of Petersen example 1 additionally discloses the co-culturing media as comprising 100 uM acetosyringone, 50 mg/L nystatin, 10 mg/L TBZ, and 95 uM lipoic acid and thidiazuron (TDZ) in some treatments at 1 mg/L, and the co-culturing lasting for 4 days at 23 C 16/8 photoperiod (paragraph [0203], table 2). Petersen discloses that after 4 days of co-culture, explants are transferred to 10 mg/L spectinomycin or 150 mg/L spectinomycin WCIC Gamborg B5 medium for selection (paragraph [0204]), which reads on screening the transformed cells for expression of the heterologous nucleotide sequence using a selection agent that is spectinomycin (instant claim 10).
The transfer of explants to WCIC Gamborg B5 medium from the WCIC INO medium reads on removing the infection medium (claim 13, line 2) and the 4 days of co-culture reads on co-culturing for a “threshold period of time” because it falls within the example period of time provided by the instant specification (paragraph [0076]). Alternatively, if “threshold period of time” is interpreted to mean a period of time sufficient for transformation to occur, the 4 days of coculture in Petersen still meets this limitation, because transformation occurred. Thus, the method disclosed by Petersen comprises co-culturing the region for a threshold period of time, removing the infection medium, and culturing the region in a selection medium to select transformed meristematic region, which anticipates instant claim 13. The method also anticipates instant claim 14, because the infection medium comprises acetosyringone, Gamborg’s B5 vitamins, glucose, and/or TDZ.
Petersen discloses a plantlet stably expressing GUS derived from this experiment and transferred to non-selective BRM (paragraph [0206], figure 16, BRM medium provided in table 19).
Petersen discloses an example wherein the meristem explant for transformation has cotyledonary tissue intact as well as an example wherein the meristem explant has cotyledonary tissue removed (figure 79, stage 2, left and right respectively; paragraph [0102]). Leaf primordia are visible on the explant with the removed cotyledons. This first depicted explant anticipates instant claim 2, wherein excising the subset of embryonic tissue comprises removing a seed coat without removing either of the cotyledons.
Thus, Petersen anticipates claims 1-2 & 10-14.
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.
Claim(s) 1-2, 7-14, & 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Petersen et al (US 2021/0071186 A1, published 3/11/2021, hereafter Petersen) in view of Lata et al (2009) In Vitro Cell. Dev. Biol.-Plant. 45:12–19 (published 11/27/2009, hereafter Lata) and taken with the evidence of the PubChem entry for thidiazuron (created 3/27/2005, last updated 9/27/2025).
Claims 1-2 & 10-14 are drawn to a method comprising imbibing a Cannabaceae seed in a hydration solution, excising a subset of embryonic tissue, and exposing the Cannabaceae meristematic region or EA to a heterologous nucleotide sequence to transform the cells. Claims 7-9 & 16-20 are drawn to a method comprising regenerating tissue from transformed Cannabaceae cells using a culture medium comprising thidiazuron (TDZ).
The teachings of Petersen are presented above. Additionally, Petersen teaches an MS-based medium for regeneration of transformed meristem explants comprising meta-topolin but also teaches that meta-topolin may be unnecessary when TDZ is used in co-culture with Agrobacterium (paragraph [0214], table 9). Petersen discloses additional transformation experiments on Cannabis meristem explants that yield chimeric plantlets that did not root on streptomycin media but were transferred to selection free BRM (paragraph [0254]). Petersen teaches methods of explant transformation that require a co-culture step followed by culturing on selection medium, a 2nd medium, a 3rd medium, and a transfer to a non-selective medium.
In addition, Petersen suggests that following transformation, transformed tissue is regenerated using regeneration medium that supports growth and survival of the positively transformed tissues or explants (paragraph [0134]). Petersen suggests a culture medium that supports growth and survival for the hypocotyl explants for 4 days (paragraph [0196]). After culture on the culture medium, the explants are transferred to a second culture medium which may include selection agent (paragraph [0196]).
Petersen does not teach regeneration of tissue from transformed Cannabaceae cells using a culture medium comprising TDZ at a concentration between 1 mg/L and 20 mg/L of TDZ. Petersen does not teach culturing in a regeneration medium comprising 0.1-10mg/L TDZ prior to transferring to a shoot induction medium.
Lata teaches a method of shoot organogenesis in Cannabis sativa, comprising culture on a medium comprising TDZ for shoot induction, culture on a different medium comprising TDZ for shoot elongation, and culture on a different medium for rooting before transfer to soil and hardening (figure 2). This method led to regeneration of plantlets and full plants (figure 1). Lata teaches a motivation to use TDZ for shoot proliferation and multiplication because TDZ was the most effective cytokinin tested for shoot proliferation (page 15, right column, paragraph 2).
Lata teaches media for regeneration with concentrations of TDZ ranging from 0.5 μM to 5.0 μM (table 2) and teaches a method wherein the shoot induction and shoot elongation media comprise 0.5 μM TDZ (figure 2).
The PubChem entry for thidiazuron provides evidence that TDZ has a molecular weight of 220.25g/mol. Thus, medium comprising 0.5 μM TDZ would be equivalent to (0.5 μM * 10-6 mol/L * 220.25g/mol * 103 mg/g =) 0.11 mg/L and 5.0 μM TDZ would be equivalent to (5.0 μM * 10-6 mol/L * 220.25g/mol * 103 mg/g =) 1.1 mg/L.
Before the filing date of the instant application, it would have been obvious to one of ordinary skill in the art to modify the method of Petersen to substitute the step of regenerating tissue on medium comprising meta-topolin with a medium comprising TDZ as taught by Lata. One of ordinary skill in the art would have been motivated to use TDZ in the medium for regenerating tissue from transformed Cannabaceae cells because Lata teaches that TDZ is the most effective cytokinin for shoot proliferation. One of ordinary skill would have had reasonable expectation of success, because both methods involve regenerating tissues from Cannabaceae.
Before the filing of the instant application, it would also have been obvious to one of ordinary skill in the art to include the step suggested by Petersen wherein the transformed tissue is transferred to culture medium, which reads on a regeneration medium, to support growth and survival prior to transfer to medium with selection agent or subsequent media, which reads on a shoot induction medium. One of ordinary skill would have been motivated to include TDZ in this medium, because TDZ promotes shoot proliferation. One of ordinary skill in the art would have had reasonable expectation of success using a concentration of TDZ between about 0.1 mg/L and about 10 mg/L, because TDZ can be found in both the inoculation medium (at 1 mg/L) and subsequent regeneration media (between 0.11 and 1.1 mg/L), so a concentration of 1mg/L would be reasonably expected to be effective.
Claims 1-2 & 10-14 have been mapped to the teachings of Petersen above. Thus, the method of Petersen modified by Lata would make obvious the method of instant claims 7, 8 & 16, wherein tissue is regenerated from Cannabaceae cells exposed to a heterologous nucleotide sequence, including formation of shoots, using a culture medium comprising TDZ. The method also reads on instant claim 18, because Petersen teaches transforming the Cannabaceae cells by co-culture in a medium (reads on an infection medium) comprising the bacterium strain carrying the heterologous nucleotide sequence and comprising 1 mg/L TDZ, which is between 0.1 mg/L and 2 mg/L.
Because Lata teaches a method comprising Cannabis tissue regeneration on medium comprising 5.0 μM TDZ, which is equivalent to about 1 mg/L TDZ (see math above), a method wherein the culture medium for regeneration of tissue comprises between 1 mg/L and 20 mg/L of TDZ (instant claims 9 & 17) are also obvious.
The method of Lata for regenerating tissue from Cannabis explants explicitly comprises transferring and culturing Cannabaceae explants in shoot inducing medium comprising TDZ followed by transferring and culturing explants in a distinct shoot elongation medium, so the modified method of Petersen/Lata reads on instant claim 19. Additionally, as explained above, culturing the explants exposed to the heterologous nucleotide sequence in a medium comprising 1mg/L TDZ prior to selection and transferring to a SIM medium comprising 1mg/L TDZ (instant claim 20) would be obvious over Petersen and Lata.
Claim(s) 1-6 & 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Petersen et al (US 2021/0071186 A1, published 3/11/2021, hereafter Petersen) in view of Galan-Avila et al (2020) Front. Plant Sci. Sec. Plant Breeding. 11. (published 5/26/2020, hereafter Galan-Avila).
Claims 3-6 are drawn to a method wherein excising the subset of embryonic tissue comprises removing different parts of the seed.
The teachings of Petersen are presented above. Petersen envisions Cannabis explants including leaf, node, internode, petiole, hypocotyl, or bud explants (paragraph [0019], Petersen claim 24).
Although Petersen teaches excising the embryonic tissue comprising removing the seed coat and both cotyledons, Petersen does not specifically teach excising comprising removing only one of the cotyledons, or both cotyledons and leaf primordia, or one of the cotyledons and leaf primordia or cutting a radicle.
Galan-Avila teaches a method of shoot regeneration of Cannabis sativa from various explant sources including cotyledons, hypocotyls, and true leaves, although cotyledons and hypocotyls produced more shoots than leaf explants (page 4, left column, paragraph 3-right column, paragraph 1). The cotyledon explants comprised singular cotyledons, with all other seed or seedling tissue removed (figure 2). The hypocotyl explants comprised hypocotyl, with all other seed or seedling tissue removed (figure 3).
Before the filing date of the instant application, it would have been obvious to one of ordinary skill in the art to modify the method of Petersen to use a cotyledon or hypocotyl explant as taught by Galan-Avila. One of ordinary skill would have been motivated to do so because cotyledon and hypocotyl explants had higher shoot regeneration than explants from leaves. One of ordinary skill in the art would have had reasonable expectation of success, because both methods successfully regenerate shoots from Cannabis explants.
Claims 1-2 & 10-14 have been mapped to the teachings of Petersen above. Galan-Avila’s cotyledon explants require the removal of all tissues except for one cotyledon, and therefore the method of excising a cotyledon explant reads on removing a seed coat and one of the cotyledons (instant claim 3) and removing a seed coat, one cotyledon, and leaf primordia (instant claim 6). Galan-Avila’s hypocotyl explants require the removal of all tissues except for the hypocotyl, and therefore the method of excising a hypocotyl explant reads on removing a seed coat, both cotyledons, and leaf primordia (instant claim 5) as well as removing the seed coat and cutting the radicle from the hypocotyl (instant claim 4).
Therefore, a modified method of Petersen using explants excised from seed comprising cotyledon or hypocotyl tissues as taught by Galan-Avila makes obvious instant claims 1-6 & 10-14.
Claim(s) 1-2 & 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Petersen et al (US 2021/0071186 A1, published 3/11/2021, hereafter Petersen) in view of Stoddard et al (US 2016/0222395 A1, published 8/4/2016, hereafter Stoddard).
Claim 15 is drawn to a method comprising exposing a Cannabaceae meristematic region to a heterologous nucleotide sequence wherein the heterologous nucleotide sequence encodes a rare-cutting endonuclease operably connected to a promoter.
The teachings of Petersen are presented above. Petersen teaches an example wherein the Cannabis explant is transformed with a nucleic acid encoding a nuclease and a guide RNA targeting a THCA synthase gene, CBDA synthase gene, or EPSP (claim 33, paragraph [0283], paragraph [0156]). Petersen teaches a motivation to knockout or silence a THCA synthase gene to grow a Cannabis plant with a low or THC free phenotype (paragraph [0136]).
Petersen does not teach the heterologous nucleotide sequence encoding a rare-cutting endonuclease.
Stoddard teaches that Agrobacterium introduce DNA to a plant genome via plasmids comprising virulence genes and transfer DNA, but expression of a nuclease by T-DNA without T-DNA integration can enable engineering of the plant without subsequent backcrossing to remove foreign DNA, increasing speed to market (paragraph [0003-0004]).
Stoddard teaches that a T-DNA plasmid that has been modified by the removal or inactivation of at least one T-DNA border will reduce integration of the T-DNA and lead to transient expression instead. Further, Stoddard teaches that the removal or inactivation of the right border of the T-DNA plasmid can be accomplished by a rare-cutting endonuclease encoded by a sequence within the T-DNA sequence (paragraph [0005]). Stoddard teaches an example in Nicotiana benthamiana to inactivate the ALS2 gene using TALE nucleases specific to the ALS2 genes (paragraph [0071]). A plasmid with inhibited T-DNA integration was constructed that comprised a cassette encoding TALE nuclease subunits, a restriction target site for the TALE nuclease, and a YFP gene, and this plasmid was transformed into Agrobacterium tumefaciens before Agrobacterium was infiltrated into N. benthamiana leaves (paragraphs [0073-0075 & 0078], figures 3 & 6). The plasmid with inhibited integration demonstrated successful mutation of the ALS gene (paragraph [0075]).
Before the filing of the instant application, it would have been obvious to one of ordinary skill in the art to modify the method of Petersen to transform Cannabaceae with a heterologous nucleotide sequence encoding a rare-cutting endonuclease, as demonstrated by Stoddard. One of ordinary skill in the art would have been motivated to use an Agrobacterium vector for transformation encoding a TALE rare-cutting endonuclease in order to engineer a low or no THC Cannabis plant without requiring subsequent backcrossing to remove foreign DNA and bring the plant to market. One of ordinary skill in the art would have had reasonable expectation of success, because both methods rely on Agrobacterium transformation.
Claims 1-2 & 10-14 have been mapped to the teachings of Petersen above. Thus, claims 1-2 & 10-15 are obvious over Petersen and Stoddard.
Conclusion
No claims are allowed.
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/VICTORIA L DELEO/Examiner, Art Unit 1662
/SHUBO ZHOU/
/SHUBO ZHOU/Supervisory Patent Examiner, Art Units 1661 and 1662