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
Claims 1-24, 29-30, and 32-50 are pending.
Claims 1-20 and 32-48 are withdrawn from consideration.
Claims 21-24 and 29-30, and 49-50 are examined on the merits.
Claim Interpretation
It is interpreted that any separation from the place of production is considered “isolated.” This means that crude extracts from plants naturally expressing these constructs is within the scope of the claim. Additionally, note that Lycopersicon esculentum, Solanum lycopersicum, and Solanum esculentum are synonyms.
Response to Arguments - Indefiniteness
Applicant's amendments filed 16 June 2026 have overcome the rejections of record.
Response to Arguments - Claim Rejections - 35 USC § 101
Applicant's amendments filed 16 June 2026 have overcome the rejections of record.
Lack of Written Description
The following is a quotation 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.
Claims 21 remains 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 21 broadly drawn to any heterodimeric benzaldehyde synthase that comprises both BSα and BSβ subunits at least 50% identical to any BSα and BSβ subunits from species within the Arabidopsis, Petunia, Prunus, or Solanum genera and wherein the BSα and BSβ subunits are from different species.
The instant disclosure describes working examples from BSα and BSβ subunits from four different species (Arabidopsis thaliana, Prunus dulcis, Petunia hybrida, and Solanum lycopersicum). The only BSα and BSβ subunits combination that did not yield active was the Arabidopsis thaliana BSβ combined with Petunia hybrida or Solanum lycopersicum BSα subunits (Example 7). While this suggests that many combinations will form an active heterodimer, there is some indication that this may need to be determined empirically. It is of note that tomato and petunia are from the same family and the subunits likely share substantial identity to one another and thus would be more likely to form an active heterodimer.
These descriptions are insufficient, because they fail represent the broad scope of unlimited structures of BSα and BSβ subunits that could form an active heterodimer.
Given the broad scope of the claimed genus, the lack of working examples and the failure to describe the structures required to confer the claimed function, one of skill in the art would not have recognized that Applicant was in possession of the claimed genus at the time of filing.
Response to Arguments - Lack of Written Description
Applicant's arguments filed 16 June 2026 have been fully considered but they are not persuasive.
Applicant urges that the phylogenies in the figures helps support a finding of adequate written description for claim 21.
This argument is not persuasive, because claim 21 remains quite broad. The claims are not limited to require a BSα or BSβ subunit from one of the species listed in the phylogeny. Claim 21 encompasses any BSα or BSβ subunit that has at least 50% identity to any BSα or BSβ subunit from any Arabidopsis, Petunia, Prunus, or Solanum species. This is an immensely broad and ambiguous scope, as what species are within the Solanum genus is not an entirely settled manner. Weese and Bohs 2007 (Systematic Botany 32: 2, p. 445-463) discuss the notion of giant genera and it is unclear whether all these related species should be considered within the same genera or whether they are the product of taxonomic neglect. Moreover, the state that the Solanum genus is thought to encompass 1250-1700 species (left column, p. 445). Given that what species are even within the Solanum genus, a person of skill in the art would not have recognized that Applicant was in possession of a scope including any BSα or BSβ subunit that has at least 50% identity to any BSα or BSβ subunit from any Solanum species.
Claim Rejections - 35 USC § 102
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) 21-23 and 29-30 remain rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bravo et al (EP0262666A1).
Bravo et al disclose somatic hybrid plants regenerated made from protoplast fusions of L. esculentum (Solanum lycopersicum) and L. peruvianum (Solanum peruvianum). In Example 3, they indicate that they made cytoplasmic extracts. These comprised both BSα and BSβ subunits from both species, some of which would form heterodimers from both species and from a single species as well as in instant claim 25. Additionally, it is noted that SEQ ID NO:105 and 106 inherently are present in the extracts and SEQ ID NOs:105 and 106 are greater than 50% identical to SEQ ID NOs: 3 and 4, respectively. Accordingly, claims 21-23 and 29-30.
Response to Arguments - Claim Rejections - 35 USC § 102
Applicant's amendments filed 16 June 2026 have overcome the rejection over Boatright.
Applicant's arguments filed 16 June 2026 have been fully considered but they are not persuasive.
Applicant urges that The Office cannot satisfy anticipation merely by arguing that hybrid cells contain material from both parental species and therefore might for interspecific heterodimers in cytoplasmic extracts. Applicant posits that many conditions must occur for the subunits to co-assemble to for an active heterodimer. Additionally, Applicant questions where the evidence that Bravo made extracts of the hybrid cells is.
This argument is not persuasive. There is no reason to assume that the BSα and BSβ subunits are not all co-expressed. Moreover, even if homodimers are favored over heterodimers, that does not necessarily mean that no heterodimers are present and active. If the heterodimers are unable to co-assemble, then the claims are not broadly enabled. The Office questions whether Applicant is alleging lack of broad enablement of the claims?
Regarding question of whether a crude extract was ever made, the isoenzyme analysis in Table 2 of Example 3 could not have been conducted with making a protein extract.
See In re Best, 195 USPQ 430, 433 (CCPA 1977), which teaches that where the prior art product seems to be identical to the claimed product, except that the prior art is silent as to a particularly claimed characteristic or property, then the burden shifts to Applicant to provide evidence that the prior art would neither anticipate nor render obvious the claimed invention.
Claim Objections
Claims 24 and 49-50 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
No claims are 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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R KEOGH whose telephone number is (571)272-2960. The examiner can normally be reached M-Th 7-4:30, half day on Fridays.
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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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/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663
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