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 .
This Office action is directed to the preliminary amendment filed 19 December 2024, including the Substitute Specification.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code at pages 7, 24, 25 and 62. 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 other browser-executable code. See MPEP § 608.01.
Claim Rejections - 35 USC § 112
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 1, 4, 5, 8-11, 14-22 and 27-30 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.
Applicant claims a polypeptide comprising and amino acid sequence at least 90% or 95% identical to instant SEQ ID NO: 4 and a heterologous amino acid sequence, a nucleic acid molecule encoding said polypeptide, a DNA construct and vector comprising said nucleic acid molecule. Applicant claims a method of using said polypeptide and a plant transformed with said nucleic acid molecule.
Applicant describes a polypeptide comprising instant SEQ ID NO: 4 (Table 1 on page 5) and describes that a polypeptide comprising instant SEQ ID NO: 4 is toxic to corn rootworm in Table 3 on page 57, including corn rootworm resistant to Cry toxins in Table 6 on page 60.
Applicant does not describe any polypeptide at least 90% or 95% as evidences by Table 1 on page 5 of the Specification, nor does Applicant describe any specific structure that provides for the required pesticidal activity as evidenced by Table 2 on page 19 of the Specification.
Hence, it is unclear that Applicant was in possession of the invention as broadly claimed. See also, MPEP § 2163 which states that the claimed invention as a whole may not be adequately described where an invention is described solely in terms of a method of its making coupled with its function and there is no described or art-recognized correlation or relationship between the structure of the invention and its function. A biomolecule sequence described only by a functional characteristic, without any known or disclosed correlation between that function and the structure of the sequence, normally is not a sufficient identifying characteristic for written description purposes, even when accompanied by a method of obtaining the claimed sequence.
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) 1, 4, 5, 8-11, 14-22 and 27-30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abad et al (WO 2019/125651 A1, Pioneer Hi-Bred International INC.).
Abad et al discloses a polypeptide 95.7% identical to instant SEQ ID NO: 2 at SEQ ID NO: 268 which further comprises a heterologous amino acid sequence at claim 2 (instant claim 1). Abad et al discloses an agricultural composition comprising said polypeptide at claim 5 (instant claim 16 and 17). Abad et al discloses a recombinant polynucleotide encoding said polypeptide, a DNA construct and a transgenic host cell and plant comprising said recombinant polynucleotide at claims 8-13 (instant claims 4, 5, 8-11, 14, 15 and 19-22). Abad et al discloses a method of pest control by contacting an insect pest with said polypeptide at claims 14-15 (instant claim 18). Abad et al discloses methos of controlling pest infestation and increasing crop yield by expressing said polypeptide in a transgenic plant at claims 16 and 17 (instant claims 19-22 and 27--29). Abad et al discloses a method of protecting a plant from an insect pest having resistance to at least one Cry insecticidal protein by expressing said polypeptide in a transgenic plant at claim 18 (instant claim 30). Hence, Abad et al had previously disclosed the claimed invention.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID H KRUSE whose telephone number is (571) 272-0799. The examiner can normally be reached Monday-Friday 7AM-3:30PM.
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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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/David H Kruse/
Primary Examiner, Art Unit 1663