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 .
Claims
The preliminary amendments to the claims that was received on April 8, 2024, have been entered. Claims 1-15 are pending and are examined in this Office Action.
Specification
The disclosure is objected to because it contains embedded hyperlinks and/or other forms of browser-executable code on page 2. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or www. or other browser-executable code. See MPEP § 608.01. It is noted that on page 30 of the specification, applicant referred to a website while preventing having an embedded hyperlink.
Claim Objections
Claims 12 and 14 are objected to because of the following informalities:
In claim 12, the recitation of “plant or plant part, comprising mutating” is awkward because it sounds as if the plant or plant part is comprising a method step. Applicant is advised to replace “part, comprising” with - - part, said method comprising - - .
In claim 14, “one or more ALS inhibitor herbicide” should not be written as a singular since it allows for more than one. Applicant is advised to replace “herbicide” with - - herbicide(s) - - .
Appropriate correction is requested.
Claim Interpretation
Claim 9 is directed to a vector comprising the isolated polynucleic acid according to claim 7. The art accepted meaning for “vector” in the field of molecular biology is a DNA molecule that is used as a vehicle to carry a particular DNA segment into a host cell as part of a cloning or recombinant DNA technique. The only requirement for a “vector” is that it is a DNA molecule. The rest of the definition is all directed to intended use. For this reason, claim 9 is interpreted to be directed to a DNA molecule comprising the isolated polynucleic acid according to claim 7.
Claim 12 is directed to a method for “generating” a Beta vulgaris plant. This is interpreted to mean a method for producing a Beta vulgaris plant.
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 1-15 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. All dependent claims are included in these rejections unless they include a limitation that overcomes the deficiencies of the parent claim.
Claims 1, 5, 7-10, and 12 each recite “polynucleic acid”, and this is confusing. This terminology has no art accepted meaning. There is an art accepted meaning for “nucleic acid” and an art accepted meaning for “polynucleotide”, but the Examiner is unaware of any art accepted meaning for “polynucleic acid”.
Claims 1, 2, 5, 11, and 12 each recite a specific amino acid position (either 371 or 569). This position has no meaning without have a reference sequence to define the domain or motif in which the amino acid substitution is required. See, for example, Kolkman et al. ((2004) Theor. Appl. Genet.; Vol. 109; pp. 1147-1159)) who teach multiple acetohydroxyacid synthase (AHAS) proteins and show the numbering for the different amino acids differs between the different AHAS protein family members (Kolkman 1152 Fig. 2). AHAS is another name for acetolactate synthase (ALS). The instant specification acknowledges this by stating that W569L in beet corresponds to W574L in Arabidopsis (Spec 2). The Examiner cannot import this interpretation from the specification into the claims. The claims must be clear as stand-alone claims.
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 4 recites the broad recitation “(sulfon)amides”, and the claim also recites “such as sulfonylureas, sulfonylaminocarbonyltriazolinones, sulfonanilides, or triazolopyrimidines” which is the narrower statement of the range/limitation. The claim(s) 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.
Claims 4, 8, 10, and 14 each recite “preferably” and/or “more preferably” and/or “such as”. In each of these instances, it is unclear if the limitation following “preferably”, “more preferably”, or “such as” is required by the claim, or if it is merely optional.
Claim 4 is indefinite because the structure of the Markush Grouping is incorrect. After reciting “herbicide selected from”, the claim uses “or”, and also uses “preferably”. This renders it unclear what herbicide(s) are encompassed by the claim.
Claim 5 recites “comprising a polynucleic acid encoding a mutated endogenous acetolactate synthase (ALS) protein or comprising a mutated endogenous allele encoding an ALS protein comprising at position 569 an amino acid different than tryptophan (W).” It is unclear if the recited polynucleic acid is required to encode an ALS protein without a tryptophan at position 569, or if it is only required to encode a mutated ALS protein, with any amino acid change included by the claim.
Claim 10 recites “polynucleic acid specifically hybridizing with the polynucleic acid according to claim 7”. It is unclear what is meant by “specifically”.
Claim 11 recites “an ALS protein of an amino acid at position 371”, and it is unclear what this means. What is a protein “of” an amino acid?
Claim 12 includes a parenthetical recitation in the fourth line: “introducing in the genome (and expressing) of a plant or plant part a polynucleic acid”. It is unclear if the claim requires expressing the polynucleic acid, or if expressing it is optional.
Claim 12 recites “introducing in the genome (and expressing) of a plant or plant part a polynucleic acid encoding a mutated endogenous ALS protein”. This is confusing, because an endogenous protein is encoded by a nucleic acid that is already in the plant’s genome. It is unclear how an introduced nucleic acid can encode an endogenous protein. If it was introduced, then it would be an exogenous protein.
Claim 14 recites the limitation "seeds according to claim 1" in part a). There is insufficient antecedent basis for this limitation in the claim because there is no recitation of seeds in claim 1.
Lack of Scope of Enablement
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 14 and 15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a method for controlling unwanted vegetation by planting Beta vulgaris plants of claim 1 and applying an ALS inhibitor herbicide at a dosage sufficient for inhibiting the growth of the unwanted vegetation or a dosage sufficient for killing the unwanted vegetation, does not reasonably provide enablement for enablement for a method for controlling unwanted vegetation by planting Beta vulgaris plants of claim 1 and applying an ALS inhibitor herbicide at a dosage insufficient for inhibiting the growth of or killing the unwanted vegetation. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claims. All dependent claims are included in these rejections unless they include a limitation that overcomes the deficiencies of the parent claim.
A method claim must include the necessary materials and method steps to arrive at the intended outcome recited in the preamble of the claim. Because the step of applying the herbicide does not require the practitioner to apply the herbicide at a dosage sufficient for inhibiting growth of the unwanted vegetation, the required method steps do not necessarily arrive at the recited preamble of the claim.
Failure to Further Limit
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3, 6, and 13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 requires the plant of claim 1 to be tolerant to one or more ALS inhibitor herbicide. Claim 1 requires a specific amino acid change which is known to cause a tolerance to ALS inhibitor herbicides. For this reason, the limitation required by claim 3 does not exclude any embodiments that are encompassed by claim 1 (i.e. a plant that does not have tolerance to ALS inhibitor herbicides).
Claim 6 requires the plant to have an ALS that is either homozygous or heterozygous. Those are the only two options for the claimed polynucleic acid encoding a mutated ALS protein. For this reason, claim 6 does not exclude any embodiments that are encompassed by claim 1 and fails to limit the claim from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 7-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more. The claim(s) recite(s) an isolated polynucleic acid encoding a mutated endogenous ALS protein comprising at position 371 an amino acid different than aspartic acid (D). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the weed species, Raphanus raphanistrum (wild radish) is known to have evolved to have known ALS gene resistance mutations, including Asp-376-Glu, also denoted D376E (Li et al. (Pest Manag. Sci. (2013) Vol. 69; pp. 689-695; especially page 690)). As discussed, above, in the indefiniteness rejection, it is unclear what is required for an ALS protein to have an amino acid other than aspartic acid at position 371 due to the diversity of amino acid numbering across ALS family members. It appears that the D376E substitution in wild radish is the equivalent of the instant substitution at position 371. For this reason, the claimed polynucleic acid does not differ from a naturally occurring DNA molecule.
With regard to claim 8, a BLAST search with instant SEQ ID NO: 3 pulled up two partial sequences from Raphanus raphanistrum (wild radish). These two partial sequences had 83% and 82% identity with portions of instant SEQ ID NO: 3. The alignments are provided here:
acetohydroxyacid synthase, partial [Raphanus raphanistrum]
Sequence ID: AFP90854.1Length: 604Number of Matches: 1
Range 1: 19 to 604GenPeptGraphicsNext MatchPrevious Match
Alignment statistics for match #1
Score
Expect
Method
Identities
Positives
Gaps
1028 bits(2658)
0.0
Compositional matrix adjust.
487/590(83%)
537/590(91%)
4/590(0%)
Query 74 EDSSFVSRFGPDEPRKGSDVLVEALEREGVTNVFAYPGGASMEIHQALTRSKTIRNVLPR 133
++ +F+SR+ PDEPRKG+D+LVEALER+GV VFAYPGG SMEIHQALTRS TIRNVLPR
Sbjct 19 KNKTFISRYAPDEPRKGADILVEALERQGVETVFAYPGGYSMEIHQALTRSSTIRNVLPR 78
Query 134 HEQGGVFAAEGYARATGKVGVCIATSGPGATNLVSGLADALLDSVPLVAITGQVPRRMIG 193
HEQGGVFAAEGYAR++GK G+CIATSGPGATNLVSGLADA+LDSVPLVAITGQVPRRMIG
Sbjct 79 HEQGGVFAAEGYARSSGKPGICIATSGPGATNLVSGLADAMLDSVPLVAITGQVPRRMIG 138
Query 194 TDAFQETPIVEVTRSITKHNYLVLDVEDIPRIVKEAFFLANSGRPGPVLIDLPKDIQQQL 253
TDAFQETPIVEVTRSITKHNYLV+DV+DIPRIV+EAFFLA SGRPGPVL+D+PKDIQQQL
Sbjct 139 TDAFQETPIVEVTRSITKHNYLVMDVDDIPRIVQEAFFLATSGRPGPVLVDVPKDIQQQL 198
Query 254 VVPDWDRPFKLGGYMSRLPKSKFSTNEVGLLEQIVRLMSESKKPVLYVGGGCLNSSEELR 313
+P+WD+P +L GYMSRLP+ EV L QIVRL+SESK+PVLYVGGG LNSSEEL
Sbjct 199 AIPNWDQPMRLPGYMSRLPQPP----EVSQLRQIVRLISESKRPVLYVGGGSLNSSEELG 254
Query 314 RFVELTGIPVASTLMGLGSYPCNDELSLHMLGMHGTVYANYAVDKADLLLAFGVRFDERV 373
RFVELTGIPVASTLMGLGSYPCNDELSL MLGMHGTVYANY V+ +DLLLAFGVRFD+RV
Sbjct 255 RFVELTGIPVASTLMGLGSYPCNDELSLQMLGMHGTVYANYXVEHSDLLLAFGVRFDDRV 314
Query 374 TGKLEAFASRAKIVHIDIDSAEIGKNKQPHVSICADVKLALRGMNKILESRIGKLNLDFS 433
TGKLEAFASRAKIVHIDIDSAEIGKNK PHVS+C DVKLAL+GMN ILE+R +L LDF
Sbjct 315 TGKLEAFASRAKIVHIDIDSAEIGKNKTPHVSVCGDVKLALQGMNXILENRAEELKLDFG 374
Query 434 RWREELGEQKKEFPLSFKTFGDAIPPQYAIQVLDELTNGNAIISTGVGQHQMWAAQHYKY 493
WR EL EQK++FPLSFKTFG+AIPPQYAIQVLDELT+G AIISTGVGQHQMWAAQ YKY
Sbjct 375 VWRSELSEQKQKFPLSFKTFGEAIPPQYAIQVLDELTDGKAIISTGVGQHQMWAAQFYKY 434
Query 494 RNPRQWLTSGGLGAMGFGLPAAIGAAVARPDAVVVDIDGDGSFIMNVQELATIRVENLPV 553
R PRQWL+S GLGAMGFGLPAAIGA+VA PDA+VVDIDGDGSFIMNVQELATIRVENLPV
Sbjct 435 RKPRQWLSSSGLGAMGFGLPAAIGASVANPDAIVVDIDGDGSFIMNVQELATIRVENLPV 494
Query 554 KIMLLNNQHLGMVVQWEDRFYKANRAHTYLGNPSKSADIFPDMLKFAEACDIPSARVSNV 613
KI+LLNNQHLGMV+QWEDRFYKANRAHTYLG+P++ ++IFP+ML+FA AC IP+ARV+
Sbjct 495 KILLLNNQHLGMVMQWEDRFYKANRAHTYLGDPARESEIFPNMLQFAGACGIPAARVTKK 554
Query 614 ADLRAAIQTMLDTPGPYLLDVIVPHQEHVLPMIPSGAGFKDTITEGDGRT 663
+LR AIQTMLDTPGPYLLDVI PHQEHVLPMIPSG F D ITEGDG T
Sbjct 555 EELREAIQTMLDTPGPYLLDVICPHQEHVLPMIPSGGTFXDVITEGDGST 604
And
putative acetolactate synthase, partial [Raphanus raphanistrum]
Sequence ID: CAC86697.1Length: 409Number of Matches: 1
Range 1: 1 to 409GenPeptGraphicsNext MatchPrevious Match
Alignment statistics for match #1
Score
Expect
Method
Identities
Positives
Gaps
708 bits(1827)
0.0
Compositional matrix adjust.
337/413(82%)
369/413(89%)
4/413(0%)
Query 253 LVVPDWDRPFKLGGYMSRLPKSKFSTNEVGLLEQIVRLMSESKKPVLYVGGGCLNSSEEL 312
L +P WD+P +L GYMSRLP+ V L QIVRL+SESK+PVLYVGGG LNSSEEL
Sbjct 1 LAIPXWDQPMRLPGYMSRLPQPP----XVSQLRQIVRLISESKRPVLYVGGGSLNSSEEL 56
Query 313 RRFVELTGIPVASTLMGLGSYPCNDELSLHMLGMHGTVYANYAVDKADLLLAFGVRFDER 372
RFVELTGIPVASTLMGLGSYPCNDELSL MLGMHGTVYANYAV+ +DLLLAFGVRFD+R
Sbjct 57 GRFVELTGIPVASTLMGLGSYPCNDELSLQMLGMHGTVYANYAVEHSDLLLAFGVRFDDR 116
Query 373 VTGKLEAFASRAKIVHIDIDSAEIGKNKQPHVSICADVKLALRGMNKILESRIGKLNLDF 432
VTGKLEAFASRAKIVHIDIDSAEIGKNK PHVS+C DVKLAL+GMNKILE+R +L LDF
Sbjct 117 VTGKLEAFASRAKIVHIDIDSAEIGKNKTPHVSVCGDVKLALQGMNKILENRAEELKLDF 176
Query 433 SRWREELGEQKKEFPLSFKTFGDAIPPQYAIQVLDELTNGNAIISTGVGQHQMWAAQHYK 492
WR EL EQK++FPLSFKTFG+AIPPQYAIQVLDELT+G AIISTGVGQHQMWAAQ YK
Sbjct 177 GVWRSELKEQKQKFPLSFKTFGEAIPPQYAIQVLDELTDGKAIISTGVGQHQMWAAQFYK 236
Query 493 YRNPRQWLTSGGLGAMGFGLPAAIGAAVARPDAVVVDIDGDGSFIMNVQELATIRVENLP 552
YR PRQWL+S GLGAMGFGLPAAIGA+VA PDA+VVDIDGDGSFIMNVQELATIRVENLP
Sbjct 237 YRKPRQWLSSSGLGAMGFGLPAAIGASVANPDAIVVDIDGDGSFIMNVQELATIRVENLP 296
Query 553 VKIMLLNNQHLGMVVQWEDRFYKANRAHTYLGNPSKSADIFPDMLKFAEACDIPSARVSN 612
VKI+LLNNQHLGMV+QWEDRFYKANRAHTYLG+P++ ++IFP+ML+FA AC IP+ARV+
Sbjct 297 VKILLLNNQHLGMVMQWEDRFYKANRAHTYLGDPARESEIFPNMLQFAGACGIPAARVTK 356
Query 613 VADLRAAIQTMLDTPGPYLLDVIVPHQEHVLPMIPSGAGFKDTITEGDGRTSY 665
+LR AIQTMLDTPGPYLLDVI PHQEHVLPMIPSG FKD ITEGDGRT Y
Sbjct 357 KEELREAIQTMLDTPGPYLLDVICPHQEHVLPMIPSGGTFKDVITEGDGRTKY 409
Although the database did not have the complete sequence for wild radish, the preponderance of the evidence points to the wild radish protein being within 80% identity compared with the instant SEQ ID NO: 3. The Patent Office does not have laboratory facilities for the Examiner to complete the sequencing of the wild radish ALS, therefore, the burden shifts to the Applicant to show that the wild radish sequence is less than 80% identical compared with SEQ ID NO: 3.
With regard to claim 9, a vector comprising the polynucleic acid does not amount to “significantly more”. A vector is just a DNA molecule with a specific intended use. Vectors are routinely used in molecular biology, and the claim does not require any particular structures that amount to “significantly more” than the product of nature encompassed by the claim.
With regard to claim 10, the native wild radish gene would hybridize to the mutant gene, and therefore, claim 10 encompasses a product of nature.
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) 7-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Han et al. (Pest Manag. Sci (2012) Vol. 68; pp. 1164-1170).
The claims are directed to an isolated polynucleic acid encoding a mutated endogenous ALS protein comprising at position 371 an amino acid different than aspartic acid (D) (claim 7), including wherein the ALS protein is at least 80% identical to SEQ ID NO: 3 (claim 8), a vector comprising this polynucleic acid (claim 9), and a polynucleic acid hybridizing with this polynucleic acid or complement thereof (claim 10).
Han teaches that the weed species, Raphanus raphanistrum (wild radish) is known to have evolved to have known ALS gene resistance mutations, including changing aspartic acid 376 (D376) (Han 1164). As discussed, above, in the indefiniteness rejection, it is unclear what is required for an ALS protein to have an amino acid other than aspartic acid at position 371 due to the diversity of amino acid numbering across ALS family members. It appears that the D376E substitution in wild radish is the equivalent of the instant substitution at position 371.
With regard to claim 8, a BLAST search with instant SEQ ID NO: 3 pulled up two partial sequences from Raphanus raphanistrum (wild radish). These two partial sequences had 83% and 82% identity with portions of instant SEQ ID NO: 3, see alignments, above, in rejection under 35 USC 101. Although the database did not have the complete sequence for wild radish, the preponderance of the evidence points to the wild radish protein being within 80% identity compared with the instant SEQ ID NO: 3. The Patent Office does not have laboratory facilities for the Examiner to complete the sequencing of the wild radish ALS, therefore, the burden shifts to the Applicant to show that the wild radish sequence is less than 80% identical compared with SEQ ID NO: 3.
With regard to claim 9, a vector comprising the polynucleic acid is just a DNA molecule with a specific intended use. Li teaches extracting DNA from the wild radish plants, and the extracted DNA is a type of vector.
With regard to claim 10, Han teaches primers that hybridize to the wild radish ALS gene (Han 1165).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Penner et al (WO Publication 98/02527, published January 22, 1998), in view of Li et al. (Pest Manag. Sci. (2013) Vol. 69; pp. 689-695).
The claims are directed to a Beta vulgaris plant (beet plant), plant part, or plant population comprising, expressing, or capable of expressing a mutated endogenous acetolactate synthase (ALS) protein or a polynucleic acid encoding a mutated endogenous ALS protein comprising at position 371 an amino acid different than aspartic acid; and to a polynucleic acid encoding such an ALS protein; and to methods of identifying, producing, and using said beet plants.
Penner teaches beet plants with mutations in their endogenous ALS genes encoding both single amino acid substitutions (Sir-13 and Sur) and double amino acid substitutions (93R30B) (Penner abstract, page 3, and Figure 4) (claims 1, 2, 5, and 13). Penner teaches these mutants were resistant to Imazethapyr (Id. Figure 7), Flumetsulam (Id. Figure 8), and Chlorsulfuron (Id. Figure 10) (claim 3). Imazethapyr is an imidazolinone, flumetsulam is a trazolpurimidine, and chlorsulfuron is a sulfonylurea (claim 4). Penner teaches beet plant designated 93R30 is homozygous for the Sur allele (Id. 2) and 93R30B is heterozygous (Id. 13) (claim 6).
The genomic DNA of the beet plants taught by Penner contains a nucleic acid encoding the mutated ALS proteins (claims 7 and 8). A beet chromosome containing a mutant gene encoding one of the mutated ALS proteins is a vector because it can be used to introduce the mutant gene into another beet plant via cross-pollination (claim 9). Penner teaches southern blot analysis of their sugar beets (Id. 16), and this necessarily utilized a probe that will hybridize to the ALS gene (claim 10).
Penner teaches PCR amplification of two regions of the ALS gene, and comparison of the sequence data (Id. 16), and this is a method of screening for different codons within this gene (claim 11). Penner teaches breeding with elite sugar beet plant lines to produce commercially useful resistant sugar beet plants (Id. 4-5) and this involves introducing the mutated ALS gene via cross-pollination (claim 12). Penner teaches the use of the resistant beet plants along with the herbicides for weed control in sugar beets (Id. 5) and this necessarily involves planting the mutant seeds or plants and applying one of the ALS inhibitor herbicides (claim 14).
Penner does not teach a mutation causing a substitution for the aspartic acid at position 371 or a substitution for the tryptophan at position 569.
Li teaches amino acid substitutions Asp - 376 – Glu (D376E) and Trp – 574 – Leu (W574L) in ALS as causing herbicide tolerance (Li 691, Table 1). As discussed, above, in the indefiniteness rejection, it is unclear what is required for an ALS protein to have an amino acid other than aspartic acid at position 371 due to the diversity of amino acid numbering across ALS family members. It appears that the D376E substitution taught by Li is the equivalent of the instant substitution at position 371 and the W574L substitution taught by Li is the equivalent of the instant substitution at position 569.
At the time the instant application was filed, it would have been obvious and within the scope of one of ordinary skill in the art to substitute the mutations taught by Li for the mutations taught by Penner. This would have been a substitution of a known equivalent (mutation in ALS causing herbicide resistance). With regard to claim 5, specifically, one would have been motivated to generate a double mutant with two amino acid substitutions that are known to cause herbicide tolerance because Penner teaches that a double mutant had a synergistic effect causing a much higher level of herbicide resistance than either of the single mutations alone (Penner, Figure 4).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Penner et al (WO Publication 98/02527, published January 22, 1998), in view of Li et al. (Pest Manag. Sci. (2013) Vol. 69; pp. 689-695), as applied to claims 1-14, above, and further in vew of Cioni et al. (Sugar Tech. (2010) Vol. 12; pp. 243-255).
Claim 15 is directed to a method for controlling bolters, weed beets, or annual beets in Beta vulgaris growing areas by planting Beta vulgaris plants having an amino acid substitution for the aspartic acid at position 371 in ALS and applying an ALS inhibitor to the growing plants.
Penner in view of Li teach Beta vulgaris plants having an amino acid substitution for the aspartic acid at position 371 in ALS and methods of growing these plants and applying ALS inhibitor herbicides for weed control (see rejection of claim 1 for obviousness, above).
Penner in view of Li do not teach specifically controlling the weeds of bolters, weed beets, or annual beets.
Cioni teaches weed control in sugarbeet (Cioni, title). Cioni teaches that weed beets and bolters are undesirable because the compete with crop beets (Id. 246). Cioni teaches that weed beets can be controlled by selective herbicides (Id.) and Cioni suggests the use of herbicide tolerant sugar beets for improved weed control (Id. 253). One of ordinary skill in the art would have appreciated that using herbicide tolerant crop beets would allow for the use of selective herbicides to control these weed pests.
Summary
No claim is allowed.
Examiner’s Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHY KINGDON whose telephone number is (571)272-8784. The examiner can normally be reached M-F 9:00 - 5:30 EST.
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CATHY KINGDON
Primary Examiner
Art Unit 1662
/CATHY KINGDON/Primary Examiner, Art Unit 1662