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 .
Status of Claims
The amendments submitted on May 11, 2026 have been entered.
Claims 1-20 are pending in the application.
Claims 1-10 and 16-20 are withdrawn from consideration for being directed to non-elected invention(s).
Claims 11-15 are examined in this Office action.
The text of those sections of Title 35 U.S. Code, not included in this action, can be found in a prior Office action.
Withdrawn Objections:
The objections to the specification are withdrawn in light of Applicant’s amendments.
The objections to the claims are withdrawn in light of Applicant’s amendments, with the exception of the lack of proper capitalization and italics of Agrobacterium in claim 11 (see modified claim objection below).
New Rejections:
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 11-15 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. This is a new rejection necessitated by the claim amendments.
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 11 recites the broad recitation of a vector comprising an “expression cassette which comprises at least one developmental regulator DNA (DR DNA) sequence that encodes PLETHORA (PLT), WUSCHEL (WUS1), WOUND INDUCED DEDIFFERENTIATION1 (WIND1), and/or Baby-Boom-WUSCHEL (BBM-WUS)”, and the claim also recites “and wherein the at least one DR DNA sequence comprises a sequence encoding PLT5”, which is the narrower statement of the limitation.
It is unclear if the Applicant intends to limit claim 11 to PLT5, to recite that the PLT is PLT5, or state that PLT5 is one of the options for the DR DNA sequence. Thus, the claims 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.
In light of the claim amendments and the remarks filed May 11, 2026, the recitation of “…wherein the at least one DR DNA sequence comprises a sequence encoding PLT5” in claim 11 is taken to mean that the DR DNA sequence that encodes PLETHORA (PLT) is a sequence encoding specifically PLT5 for examination purposes.
Modified Rejections:
Claim Objections
Claim 11 is objected to for lacking proper capitalization and italics of Agrobacterium in line 16.
Claim Rejections - 35 USC § 102
Claims 11 and 13-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Scheres et al. (02/25/2021), “Genes for hormone-free plant regeneration,” US 20210054393 A1, (as cited in IDS filed 7/18/2024), as evidenced by Koornneef et al. and Clough et al.
This is a modified rejection necessitated by the claim amendments.
Claim 11 recites a method of transforming a plant to express at least one heterologous nucleic acid sequence, the method comprising delivering to the plant at least one Agrobacterium comprising a vector, the vector comprising, as operably linked components, a first expression cassette which comprises a nucleic acid sequence encoding at least one selectable marker, an optional second expression cassette which comprises a cloning site, a third expression cassette which comprises at least one developmental regulator DNA (DR DNA) sequence that encodes PLETHORA (PLT), WUSCHEL1 (WUS1), WOUND INDUCED DEDIFFERENTIATION 1 (WIND1) and/or Baby-Boom-WUSCHEL (BBM-WUS), and a fourth expression cassette comprising at least one transgene, wherein the delivering results in introduction of the at least one transgene into at least one plant cell of the plant such that the at least one transgene is stably integrated into a genome of said at least one plant cell, or optionally, wherein delivering to the plant at least one Agrobacterium comprises delivering two or more Agrobacteria, wherein an agrobacterium of the two or more Agrobacteria comprises a different vector comprising a different DR DNA sequence relative to another Agrobacterium of the two or more Agrobacteria; and wherein the at least one DR DNA sequence comprises a sequence encoding PLT5.
Claim 13 recites the method of claim 11, wherein the plant is a recalcitrant plant
Claim 14 recites the method of claim 11, wherein the Agrobacterium is suspended in an induction media.
Claim 15 recites the method of claim 14, wherein the induction media is selected from the group consisting of callus induction media, shoot induction media, or root induction media.
Regarding claim 11, Scheres discloses a method for regenerating a plant cell, preferably regenerating a shoot from a plant cell, by altering the expression levels of WOX5 and a PLT protein [Abstract]. The invention further pertains to a nucleic acid construct (used interchangeable with “vector” [¶74]) comprising at least one expression cassette and capable of containing optional expression cassettes comprising selectable markers, cloning sites, and the like [¶75]. This includes GFP reporter genes, a CaMV35S promoter, and s NPTII selectable marker (i.e., a nucleic acid sequence encoding at least one selectable marker; at least one heterologous sequence) [¶424], inter suitable for protein expression and the use of the protein combinations for regenerating a shoot from a plant cell [Abstract]. Scheres discloses that different proteins can be controlled by different types of inducible promoters which can be operably linked to one or more endogenous genes, wherein the endogenous gene encodes a protein [¶232]. Scheres discloses that the vector is introduced by Agrobacterium to deliver the transgene to the plant cell and stably integrated into the plant tissue (i.e., transforming a plant to express at least one heterologous nucleic acid sequence) [¶233]. Scheres teaches that constructs pKJ11051 and pKG11052 were introduced in tomato by Agrobacterium-mediated gene transfer following the method of Koornneef et al. (1986, 1987), and that Agrobacterium was used to transform A. thaliana plants by the floral dip method of Clough (1998) [¶426; ¶394]. As evidenced by the method of Koornneef, plasmid copies were found stably integrated into the tomato nuclear DNA1. Further as evidenced by the method of Clough, inoculated plants produced transformed progeny2. Thus, the method of Scheres [as evidenced by Koornneef et al. and Clough et al.] includes stable incorporation into the plant cell genome (i.e., at least one cell of a plant has at least one transgene stably integrated into a genome of said at least one plant cell).
For the induction of shoot regeneration from a plant cell, Scheres discloses using defined Arabidopsis transcription factors, including PLETHORA 5 (PLT5) (i.e. expression cassette comprising at least one DR DNA sequence that encodes PLT; wherein the at least one DR DNA sequence comprises a sequence encoding PLT5) [¶377]. Scheres further teaches that excision of the shoots reliably regenerated whole, seed-bearing plants without further induction [¶420]. Excised shoots were cultured on ½ GM until roots formed naturally. The regenerants could then be grown on soil, where they bear seeds.
The vector constructed for Arabidopsis plant transformation comprises, as operably linked components, a first expression cassette which comprises a nucleic acid sequence encoding at least one selectable marker (the Streptomyces hygroscopicus BASTA herbicide resistance marker (BAR), operably linked to the Agrobacterium tumefaciens nopaline synthase promoter (NOSp; SEQ ID NO:33) and the A. tumefaciens nopaline synthase terminator (NOST; SEQ ID NO: 34)); a third expression cassette which comprises at least one developmental regulator DNA, wherein the at least one DR DNA sequence comprises a sequence encoding PLT5 (the A. thaliana PLETHORA 5 coding sequence (AtPLT5; SEQ ID NO: 16) comprising the 3×FLAG C-tag (3×FLAG; SEQ ID NO: 45), operably linked to the UAS+35Sminipromoter (UAS; SEQ ID NO: 22) and the A. thaliana alcohol dehydrogenase terminator (AtADH; SEQID NO: 56). Scheres also teaches that other genes of interest, DR DNA sequences transgenically introduced (i.e., transgenes), are comprised within the vector, such as the A. thaliana WUSCHEL RELATED HOMEOBOX 5 coding sequence ((AtWOX5; SEQ ID NO: 11) comprising the V5 C-tag (SEQ ID NO: 49), operably linked to theUAS+35Smini promoter (UAS; SEQ ID NO: 22) and the Cauliflower mosaic virus 35S terminator (T35S; SEQ ID NO: 57)). As only one DR DNA sequence comprising a sequence encoding PLT5 was required by the instant claim 11, the transgenically introduced WOX5, or other transgene that is not PLT5, is taken to read on the fourth expression cassette comprising at least one undefined transgene.
Regarding claim 13, Scheres discloses that there is a need for recombinant DNA constructs that increase or induce the regenerative potential of recalcitrant plants upon introduction in the plant cell [¶8]. Scheres further discloses that, in some embodiments, the plant cell is a recalcitrant plant cell, i.e. a plant cell in which the regeneration efficiency fails or wherein the regeneration efficiency is poor, including pepper, soybean, cucumber, sugar beet, Arabidopsis, tomato, sweet pepper, and Brassica rapa [¶275 &276].
Regarding claims 14 and 15, Scheres discloses an example of tomato transformation using the transformation construct with a CaMV35S promoter and an erGFP fluorescent reporter gene electroporated to Agrobacterium tumefaciens strain GV2101 for plant transformation [¶424]. Tomato seeds were sterilized and germinated on ½MS10 medium for 11 days. Cotyledon explants from the seedlings were dissected and precultured for 24 h on MS20 medium supplemented with 40 μg.I-1 acetosyringone. The explants were submerged in a suspension of Agrobacterium tumefaciens GV3101 (i.e. Agrobacterium is suspended in an induction medium) [¶426]. The explants were blotted dry and cocultivated on MS20 medium with 40 μg.I-1 acetosyringone and 10 μM β-estradiol for stable transformation of the plant cell. Scheres teaches that the induction medium with estradiol for tomato explants transformed with the construct resulted in higher shoot formation than conventional shoot induction medium with plant growth regulators (NAA+BAP and zeatin) (i.e. wherein the induction medium is selected from the group consisting of callus, shoot, or root induction medium) [¶429].
Claim Rejections - 35 USC § 103
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Scheres as applied to claims 11 and 13-15 above, and further in view of Maher et al., “Plant gene editing through de novo induction of meristems”, Nature Biotechnology, 2020, 38:84-89 (as cited in IDS filed 07/18/2024).
This is a modified rejection necessitated by the claim amendments.
Claim 12 recites the method of claim 11, wherein the plant is an adult plant.
The method of claim 11 is anticipated by Scheres, as rejected above. Scheres does not explicitly teach the method of transforming a plant with a PLT5 construct wherein the plant is an adult plant. However, Maher teaches an exogenous morphogenic regulator-based in vivo transformation method on soil-grown plants which avoids tissue culture entirely. DRs from Arabidopsis thaliana, such as WUSHEL (WUS), BABY BOOM (BBM) and SHOOT MERISTEMLESS (STM) are delivered with Agrobacterium to somatic cells of whole plants to induce the formation of de novo meristems [pg. 1, col. 1, ¶1]. Maher teaches that the expression of DRs creates transgenic and gene-edited shoots through de novo meristem induction, which are able to produce flowers and seeds, ultimately transmitting transgenes and gene edits to the next generation (i.e., such that the at least one transgene is stably incorporated into a genome of said at least one plant cell) [pg. 1, col. 2, ¶1].
Maher teaches that the Agrobacterium cultures were grown overnight in growth medium and suspended in infiltration medium (10 mM MES, 150 μM acetosyringone, 10 mM MgCl2). N. benthamiana plants were grown to maturity (63-66 d) (i.e. adult plants), visible meristems were removed, and the plants immediately inoculated with A. tumefaciens cultures at the wound sites using syringes [pg. 90, col. 1, ¶6]. Potato, tomato, and grape plants were propagated asexually on growth medium before exiting meristems were removed and the wound inoculated as in N. benthamiana [pg. 90, col. 1, ¶2 & 3]. Maher teaches that transgenic shoots on tobacco, tomato, potato and grape can be developed in a fraction of the time required for traditional tissue culture methods [pg. 88, col. 2, ¶3]. Maher additionally teaches that the plant gene editing through de novo induction of meristems produces shoots with targeted DNA modifications and the gene edits are transmitted to the next generation (i.e., such that the at least one transgene is stably incorporated into a genome of said at least one plant cell) [Abstract;
Scheres teaches a method of transforming a plant with a PLT5 construct and teaches that PLT is one of several important developmental regulator proteins. Scheres teaches that PLT proteins accumulate in the quiescent center to form a gradient of auxin, the plant hormone important to the establishment of shoot and root apical meristems [¶97]. PLT proteins can regulate PIN gene family expression, a family that plays a significant role in auxin transport and distribution, suggesting a positive feedback loop to maintain high auxin and PLT levels in the stem cell niche (the region where stem cells are located and maintained) [¶97]. Based on the method of DR transformation into adult plants as taught by Maher, and the importance of PLT proteins to plant development, particularly to shoot and root meristematic growth, and the PLT construct taught by Scheres, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to modify the method of DR transformation into in vivo plants as taught by Maher with the introduction or increased expression of a PLT protein of Scheres to overexpress this developmental regulator gene to enhance meristematic growth. One would have been motivated to do so as Maher teaches that the method of in vivo injection of the Agrobacterium culture with the transgene is a much more efficient strategy than traditional tissue culture methods. The PLT5 protein would be an obvious protein to try as Maher already demonstrates the use of other developmental regulator proteins, such as WUS, BBM, and STM and Scheres teaches a construct including PLT5.
Response to Applicant’s Arguments:
The Applicant’s arguments in the response submitted on May 11, 2026 have been carefully considered but they were not found to be persuasive. Applicant contends that the anticipation rejection based on Scheres (US 20210054393) focuses on altering expression of endogenous genes for the purpose of regenerating a shoot from a plant cell and that the reference is limited to transient expression and does not disclose stable integration of a transgene in the genome of a plant cell nor teach the implementation of a “gene of interest”.
Applicant further contends that, in the obviousness rejection, the Scheres reference does not teach a method of transforming a plant with a PLT construct wherein the plant is an adult plant and that the Maher (“Plant gene editing through de novo induction of meristems”, Nature Biotechnology, 2020, 38:84-89 (as cited in IDS filed 07/18/2024)) reference does not teach a vector that includes PLT5, a vector containing the assembly of components as set forth in claim 11 (particularly a vector comprising an expression cassette for a DR DNA sequence in combination with both an expression cassette for a selectable marker and an expression cassette for at least one transgene, wherein the at least one transgene is stably integrated into the genome of the plant). Lastly Applicant points out that Maher merely teaches the production of meristems in soil-grown N. benthamiana plants by exposure to A. tumefaciens cultures without suggestion of expressing PLT5 to inoculate plants and generate shoots and contends that PLT5 in the instant application provided unexpectedly superior shoot generation.
The Examiner respectfully disagrees with Applicant’s characterization of the prior art vis-à-vis the instant claims. Initially, it is noted that these are currently modified rejections necessitated by the claim amendments.
Regarding the rejections under 35 USC § 102(a), Applicant states that the Scheres reference focuses mostly on altering expression of endogenous genes for the purpose of regenerating a shoot from a plant cell. Although Scheres does teach expression of endogenous genes, Scheres teaches the instantly claimed method of transforming a plant to express at least one heterologous nucleic acid sequence as the construct of Scheres includes a nucleic acid encoding for a selectable marker, which is heterologous to the plant tissue being transformed (see Non-Final Rejection dated 02/11/2026, middle of page 9). The instant claims do not require that the sequences are exogenous.
In response to Applicant's argument that Scheres teaches the invention for the purpose of regenerating a shoot from a plant cell, the instant claims do not recite a purpose for the claimed method and further, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant contends that Scheres is limited to transient expression in a plant cell, however, as noted in the previous Office Action, Scheres teaches that the plant cell is preferably stably transformed into the plant tissue with the expression construct [Scheres, ¶233]. Further, in the modified rejections necessitated by the claim amendments detailed above, it is noted that Scheres teaches that the constructs pKJ11051 and pKG11052 were introduced in tomato by Agrobacterium-mediated gene transfer following the method of Koornneef et al. (1986, 1987) [¶426], and that Agrobacterium was used to transform A. thaliana plants by the floral dip method of Clough (1998) [¶394]. The method of Koornneef specifies that plasmid copies were found stably integrated into the tomato nuclear DNA and the method of Clough teaches that inoculated plants produced transformed progeny [Abstract]. Thus, as evidenced by Koornneef and Clough, the method of Scheres includes stable incorporation into the plant cell genome (i.e., at least one cell of a plant has at least one transgene stably integrated into a genome of said at least one plant cell), absent evidence to the contrary.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the feature upon which applicant relies (i.e., the implementation of a “gene of interest”) was recited as optional in the previously filed claim set. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Regarding the rejections under 35 USC § 103, Applicant argues that Scheres individually does not teach a method of transformation in an adult plant and that Maher individually does not teach a vector that includes PLT5 or the vector containing the assembly of components set forth in claim 11. In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Scheres teaches the method of claim 11 of transforming a plant to express at least one heterologous nucleic acid sequence, the method comprising Agrobacterium-mediated transformation comprising a vector comprising, as operably linked components, the two required cassettes respectively comprising a nucleic acid sequence encoding at least one selectable marker and at least one DR DNA sequence encoding a PLT, WUS1, WIND1, and/or BBM-WUS gene, particularly a PLT5, which is stably incorporated into the genome of the plant cell (see Non-Final Rejection filed 02/11/2026, middle to end of page 9; and rationale detailed above regarding stable integration). Scheres teaches that PLT5, along with the other PLT genes, aid in forming the auxin gradient and thus alter shoot and root apical meristems (see Non-Final Rejection filed 02/11/2026, page 12, first paragraph). Scheres teaches that PLT5 within the constructed vector was capable of inducing shoot regeneration in both Arabidopsis and tomato (see Non-Final Rejection filed 02/11/2026, middle of page; and Scheres, Examples 1 and 2).
Scheres does not explicitly teach that this vector is delivered to an adult plant. However, Maher teaches Agrobacterium-mediated transformation using DR DNA from Arabidopsis thaliana on soil-grown plants. Maher teaches that the expression of the DR DNA created transgenic and gene-edited shoots through de novo meristem induction which can transmit transgenes and gene edits to the next generation (see, Non-Final Rejection filed 02/11/2026, page 11, start of 103 rejection), demonstrating stable integration into a genome of at least one plant cell.
These references combined render obvious the claimed invention. There would have been sufficient motivation and reasonable expectation of success because Scheres teaches the potential of the PLT5 gene for shoot regeneration in a vector comprised of the assembly of instant claim 11 and Maher teaches Agrobacterium-mediated transformation using similar DR DNA sequences. Maher additionally provides motivation for performing transformation on adult plants, citing that transgenic shoots can be developed in a fraction of the time required for traditional tissue culture methods. Examiner acknowledges Applicant’s point of distinction, stating that Maher’s treatment of adult plants is limited to production of meristems in soil-grown N. benthamiana. However, Maher teaches that, in addition to experiments in N. benthamiana, Maher generated transgenic shoots on tomato, potato and grape in a fraction of the time required for traditional tissue culture methods [pg. 88, col. 2, ¶3] and that other studies have had success delivering transgenes to existing meristems in wheat [pg. 89, col. 1, ¶1]. There are no limitations in the instant claims that transforming adult plants for the production of meristems in soil-grown plants does not fall within.
In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, Applicant contends that there is no suggestion anywhere in Maher that A. tumefaciens expressing PLT5 could be used to inoculate adult plants to generate shoots. As this is an obviousness rejection, the suggestion to use PLT5 originates from Scheres, teaching the potential of the PLT5 gene in shoot regeneration in tomato and Arabidopsis. It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to use the PLT5 gene and construct comprising said gene (as in instant claim 11) as taught by Scheres in combination with the Agrobacterium-mediated transformation method in adult plants as taught by Maher because Scheres teaches improved shoot regeneration with a construct comprising PLT5 and Maher teaches a more rapid and stable integration of DR DNA into adult plants. One would have been motivated to combine these methods to speed up the production of transgenic and gene edited germplasm, as suggested by Maher, and to use the PLT5 gene as an obvious variant to the demonstrated DR DNA sequences of Maher (WUS, BBM, and STM).
In response to applicant's argument that PLT5 provided an unexpected and superior effect of generating shoots when compared to the other DRs, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Therefore, for at least the reasons of record, and those reasons indicated above, the rejections are maintained.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY K. JOHNSON whose telephone number is (571)272-5761. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 pm.
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/EMILY K JOHNSON/Examiner, Art Unit 1662
/BRATISLAV STANKOVIC/Supervisory Patent Examiner, Art Units 1661 & 1662
1 Koornneef, M. et al. (1987, “Tomato protoplast DNA transformation: physical linkage and recombination of exogenous DNA sequences”, Plant Mol. Biol. 8:383-394) teaches tomato protoplasts transformed with plasmid DNA’s containing a chimeric kanamycin resistance gene and putative tomato origins of replication [Abstract].
2 Clough, S. et al. (1998, “Floral dip: a simplified method for Agrobacterium-mediated transformation ofArabidopsis thaliana”, The Plant Journal, 16: 735-743; as cited in IDS filed 07/18/2024) teaches that stable introduction of a DNA construct into the Arabidopsis genome is possible with floral dip [Abstract].
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