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 .
Claim Status
1. Claims 1-9, 13, and 15-19 are pending and under examination to the extent of the elected species of SEQ ID NOs:9-10.
Claims 10-12 and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 13, 2026.
Restrictions/Elections
2. Applicant’s election of Group I, claims 1-9 and 13, and SEQ ID NOs:9-10 in the reply filed on May 13, 2026 is acknowledged. Newly added claims 15-19 will be examined herein with the elected claims of Group I. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). However, method claims may be rejoined in accordance with In re Ochiai when allowability is indicated.
The requirement is deemed proper and is made FINAL.
Priority
3. The instant Application is a 371 of Internation Application No. PCT/EP2022/086183 filed December 15, 2022. The Office acknowledges receipt of Applicant’s foreign priority document Application No. EP21216648.2 filed December 21, 2021.
Information Disclosure Statement
4. The Information Disclosure Statement (IDS) submitted on December 13, 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered to the extent of the English translations provided. A signed copy is attached.
Claim Objections
5. Claims 15-19 are objected to because claims 15-19 contain the same typographical error. In ln. 1 of each of the claims, the word “consists” is incorrectly spelled as “consistis”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
6. 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.
7. Claims 3-9 and 13 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.
Regarding claims 3-9 and 13, the word “suitably” renders the claims indefinite because it is unclear whether the limitations following “suitably” are claim limitations. Descriptions of examples and preferences is properly set forth in the specification rather than in a single claim. See MPEP 2173.05(c) and MPEP 2173.05(d).
Dependent claims are included. Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
8. 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.
Written Description
9. Claims 1-9, 13, and 15-19 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.
Claim 1 encompasses any and all nucleic acid sequences comprising any number of deletions, insertion, and/or substitutions in the original reference sequence as long as the resulting sequence retains at least 70% sequence identity with SEQ ID NO:9. Such a sequence encompasses deletions, insertion, and/or substitutions of up to 177 nucleotides and, thus, encompasses at least 1.65x1088 sequence variants.
Applicant describes the identification and expression patterns of 10 nicotinamidase gene sequences in Nicotiana tabacum (p. 70, Example 1) and that SEQ ID NOs:9 (NIC1AS-T/NIC3-S) and 11 (NIC1B-T/NIC3-T) are expressed in all plant tissues (p. 70, Example 2). Applicant further discloses that RNAi-based silencing of NIC3 activity (encoded by SEQ ID NOs:9 and 11) in Burley tobacco resulted in a 71% reduction in alkaloid content in NIC3-S and a 68% reduction in alkaloid content in NIC3-T compared to wildtype plants (pp. 70-71, Example 2). Applicant also discloses a 24% decrease in ammonia content and a 12% reduction in fresh leaf biomass in the NIC3 RNAi plants (p. 71, Example 2). Applicant further discloses the production of nic3-S and nic3-T null single mutants via EMS mutagenesis and the production of a double mutant via the crossing of the single mutants (p. 71, Example 3).
Applicant does not disclose functional sequences having only 70% sequence identity to SEQ ID NO:9. While the claims are drawn to any plant cell encompassing any nucleic acid sequence having at least 70% sequence identity to SEQ ID NO:9, the specification only describes functional sequences as comprising the full-lengths of SEQ ID NO:9 and SEQ ID NO:11. Thus, the specification does not describe species over the full scope of the encompassed nucleic acid sequences. Accordingly, sequences having only 70% sequence identity to SEQ ID NO:9 lack adequate written description. Applicant does not disclose plants or plant cells having increased expression or activity of any nicotinamidase enzyme. The recitation of “modulated expression or activity” encompasses both increased and decreased in expression and activity, however the specification describes only plant or plant cells having decreased expression or activity via the expression of RNAi constructs that inhibit expression of nicotinamidase enzymes. Thus, the specification does not describe species encompassing the full scope of changes in expression or activity as encompassed by the phrase “modulated expression or activity”.
The state of the art is well-developed with regard to the structure and function of nicotinamidase enzymes (French et al. Biochemistry. 2010 Nov 15;49(49):10421–10439 (U)). However, the art also teaches that protein chemistry is one of the most unpredictable areas of biotechnology. For example, substitution of Tyr-38 with Phe or Trp did not abolish protein activity while replacement of Tyr-38 with other amino acids severely reduced or abolished protein activity (Lazar et al., Molecular and Cellular Biology, 1989; 9(2):860-864 (V); Abstract; p. 860, “Detection and biological activity of yeast-secreted proteins of mutant TGF-a.”). Additionally, Nonaka (Human Molecular Genetics, 2009; 18(18):3353-3364 (W)) teaches that deletion of the N-terminus of TDP-43 results in the formation of abnormal protein inclusions (Abstract). Together, these examples teach that even a single amino acid change can unpredictably alter the function of polypeptide variants. Concordant with this reasoning, the art indicates opposing functions for the Arabidopsis NIC1 and NIC2 nicotinamidase genes. Schippers et al. (The Plant Cell. 2008; 20: 2909–2925 (X)) teaches that increased expression of the Arabidopsis NIC1 nicotinamidase gene is associated with increased levels of NAD, increased oxidative stress, and premature senescence (Abstract; p. 2914, right column, first full paragraph). Hunt et al. (The Plant Journal, 2007; 51: 341–351 (Y)) teaches that reduction of Arabidopsis NIC2 nicotinamidase gene activity in a nic2-1 loss-of-function mutant is associated with increased levels of NAD and delays the onset of germination (Abstract). Accordingly, even though the art teaches conserved residues in nicotinamidase enzymes, one of ordinary skill in the art cannot reasonably predict the functionality of an enzyme wherein up to 30% of the sequence of said enzyme is deleted or substituted with alternative amino acids, which ultimately encompasses at least 1.65x1088 sequence variants.
MPEP § 2163 states that the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. A “representative number of species” means that the species which are adequately described are representative of the entire genus. See, e.g., AbbVie Deutschland GMBH v. Janssen Biotech, 759 F.3d 1285, 111 USPQ2d 1780 (Fed. Cir. 2014). Thus, when there is substantial variation within genera, as here in which the recitations of nucleic acid sequences having 70% sequence identity with SEQ ID NOs:9 or 11 encompasses at least 1.65x1088 sequence variants, one must describe a sufficient variety of species to reflect the variation within the genera. Therefore, since only a few species are provided to represent these genera, the claims encompassing the same clearly fail the written description requirement. Accordingly, there is lack of adequate written description to inform a skilled artisan that Applicant was in possession of the claimed invention at the time of filing.
Enablement
10. Claims 1-9, 13, and 15-19 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 Solanaceae plants having reduced expression or activity of nicotinamidase enzymes, does not reasonably provide enablement for modulating the expression or activity of nicotinamidase enzymes in non-Solanaceae plants and does not reasonably provide enablement for increasing the expression or activity of nicotinamidase enzymes. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to produce the invention commensurate in scope with these claims.
When determining whether a claimed invention complies with the enablement requirement, factors to consider include: “(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.” Id.
The claimed invention is not enabled for the following reasons.
The breadth of the claims is found in claim 1 directed to a plant cell having modulated expression or activity of a nicotinamidase enzyme encoding by a polynucleotide having at least 70% sequence identity to SEQ ID NO:9. The phrase “modulated expression or activity” is broad and the claim encompasses plant cells having increased nicotinamidase expression or activity and plant cells having decreased or abolished nicotinamidase expression or activity.
The nature of the invention comprises reducing nicotine content in tobacco via reduced expression or activity of nicotinamidase enzymes.
The level of ordinary skill in the art is high.
The state of the art is well-developed with regard to the production of nicotine and the structure of nicotinamidase enzymes. However, the art teaches divergent functions among various nicotinamidase enzymes, especially among distinct plant species. For example, despite the ubiquity of nicotinamidases, nicotine has only been detected natively in Solanaceae species such as tobacco, eggplant, tomatoes, potatoes, and sweet peppers (p. 09, first full paragraph; Andersson C. Nicotine alkaloids in Solanaceous food plants. Nordic Council of Ministers; 2003. (Z)). The unique presence of nicotine in Solanaceae species indicates that the function and/or biological activity of nicotinamidases may vary among distinct species and/or genera. Concordant with this reasoning, Applicant’s working examples indicate that the even within tobacco, the native nicotinamidase have distinct functions regarding alkaloid biosynthesis. The tobacco NIC1 and NIC2 enzymes function primarily in global regulation of NAD, whereas NIC3 functions primarily in alkaloid production (Example 2). Similarly, the art indicates opposing functions for nicotinamidase genes even within a single species. Wang et al. (The Plant Journal, 2007; 49: 1020-1029 (UU)) teaches that decreased expression of the Arabidopsis NIC1 nicotinamidase gene is associated with decreased levels of NAD, hypersensitivity to abscisic acid and NaCl, and developmental defects (Summary). Sano et al. (Plant and Cell Physiology, 2016; 57(4): 660–674 (VV)) teaches that reduction of Arabidopsis NIC2 nicotinamidase gene activity in a nic2-1 loss-of-function mutant is associated with increased levels of NAD and delays the onset of germination (p. 664, first full paragraph). As discussed by both Wang and Sano, nicotinamidase mutants may have severe growth and/or developmental defects in contrast to the effects disclosed by Applicant’s suppression of the expression and/or activity of the nicotinamidase enzyme encoded by SEQ ID NO:9. Therefore, the function of any particular nicotinamidase enzyme, including those encoded by polynucleotides having at least 70% sequence identity to SEQ ID NO:9 or comprising SEQ ID NO:21, is not predictable in an untested plant host and one of ordinary skill in the art could not reasonably predict the activity of such an enzyme in any particular plant host absent the few Solanaceae species described by Applicant and the prior art without further guidance from Applicant’s disclosure.
However, Applicant describes the reduction of nicotinamidase activity or expression in only one plant species. Applicant’s working examples only describe decreasing the expression or activity of nicotinamidase enzymes in N. tabacum. Applicant does not disclose working examples describing the modulation of nicotinamidase expression or activity in any plant besides the Burley tobacco species discussed above. Applicant does not disclose working examples describing an increase in the expression or activity of a nicotinamidase enzyme in any plant or plant cell. Neither Applicant, nor the state of the art provide sufficient guidance as to how one could predict the activity of a nicotinamidase enzyme without engaging in extensive experimentation. Therefore, one of ordinary skill in the art could not predict the activity of any nicotinamidase enzyme in any plant species besides those disclosed by Applicant and the prior art without engaging in extensive and undue experimentation. Similarly, one of ordinary skill in the art could not predict the results of overexpressing or increasing the activity of any nicotinamidase enzyme in undisclosed plant species without further guidance from Applicant and the state of the art without engaging in extensive and undue experimentation; one of ordinary skill in the art could not predict the results of decreasing the expression or activity of any nicotinamidase enzyme in any species without further guidance from Applicant and the state of the art without engaging in extensive and undue experimentation.
Weighing all of the Wands factors based on the totality of the record as discussed above, the Office determines that it would require undue experimentation for a person of ordinary skill in the art to make and use the invention as claimed. Accordingly, claim 1 is not enabled.
Claims 2-4, 6-9, 13, and 15-19 do not address the deficiency regarding plant cells having increased nicotinamidase expression or activity nor do they address the deficiency regarding non-Solanaceae plant cells. Claim 5 does not address the deficiency regarding non-Solanaceae plant cells. Accordingly, claims 2-9, 13, and 15-19 are also not enabled.
Claim Rejections - 35 USC § 101
11. 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.
12. Claims 1-9, 13, and 15-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more.
Claims 1-7 and 15-19 are directed to plants, plant parts, and plant cells having modulated expression of a nicotinamidase enzyme encoded by SEQ ID NO:9. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims encompass a naturally-occurring N. tabacum plant. Applicant discloses that SEQ ID NO:9 was obtained from and therefore encodes a protein naturally-occurring in N. benthamiana (Example 1). The phrase “modulated expression or activity” is broad and encompasses any means of controlling, regulating, increasing, or decreasing expression or activity. Plants natively modulate the expression and activity of the nicotinamidase enzymes comprised within said plants; enzyme activities vary during development and in response to environmental stimuli. Accordingly, the claims encompass naturally-occurring tobacco plants. Naturally-occurring products, including plants, are not patent-eligible.
Claims 8-9 and 13 are directed to plant materials and tobacco products, however, Applicant does not provide a definition limiting the scope of plant materials or tobacco products. Therefore, the neither the claims nor the specification include additional elements that are sufficient to amount to significantly more than the judicial exception.
Accordingly, claims 1-9, 13, and 15-19 are not patent-eligible.
Claim Rejections - 35 USC § 103
13. 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
14. Claims 1-9, 13, and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Qin et al. (Plant Biotechnol J. 2021 Sep 23; 19(11):2150–2152 (UU)) in view of Sierro et al. (Nat Commun. 2014 May 8; 5:3833 (VV)) as evidenced by the attached STIC sequence search result, further in view of Schippers et al. (The Plant Cell. 2008; 20: 2909–2925 (X)), and further in view of Hunt et al. (The Plant Journal, 2007; 51: 341–351 (Y)).
Qin discloses nicotine as the predominant alkaloid and addictive substance in tobacco plants and cigarettes (p. 2150, first paragraph), discloses the NIC1 and NIC2 gene locuses as regulators of nicotine content in tobacco (p. 2150, second paragraph; p. 2152, left column, last paragraph), discloses that overexpression of NIC1 increases nicotine content and suggests that manipulation of nicotine biosynthesis genes can aid in the development of low-nicotine tobacco products (p. 2150, first paragraph).
Regarding claims 1-3 and 15-19, Qin teaches a Nicotiana tabacum plant cell having modulated expression or activity of nicotine biosynthesis genes NIC1 and NIC2 (Abstract; p. 2150, left column, first/second/third paragraph; p. 2152, left column, first full paragraph), said plant cell comprising: (a) a polynucleotide sequence comprising, consisting, or consisting essentially of a sequence encoding the nicotine biosynthesis genes; or (b) a polypeptide encoded by the polynucleotide set forth in (a); wherein said plant cell comprises at least one modification which modulates the expression or activity of the polynucleotide or polypeptide as compared to a control plant cell in which the expression or activity of the polynucleotide or polypeptide has not been modified (p. 2150, fifth paragraph; p. 2152, first full paragraph), wherein said polynucleotide comprises the NIC1 or NIC2 nicotine biosynthesis genes.
Qin is silent to a polynucleotide sequence having at least 70% sequence identity SEQ ID NO:9.
However, Sierro teaches a Nicotiana tabacum nicotinamidase polypeptide sequence having at least 99% sequence identity to SEQ ID NO:10 (Abstract; see attached STIC sequence search result). SEQ ID NO:10 is the polypeptide encoded by SEQ ID NO:9 (instant sequence listing). A polypeptide sequence is inherent to the sequence of the polynucleotide encoding the polypeptide. Thus, in teaching the sequence of SEQ ID NO:10, Sierro also teaches SEQ ID NO:9.
Additionally, Schippers teaches that increased expression of the Arabidopsis NIC1 nicotinamidase gene is associated with increased levels of NAD, increased oxidative stress, and premature senescence (Abstract; p. 2914, right column, first full paragraph).
Additionally, Hunt teaches that reduction of Arabidopsis NIC2 nicotinamidase gene activity in a nic2-1 loss-of-function mutant is associated with increased levels of NAD and delays the onset of germination (Abstract).
Regarding claims 1-3, and 15-19, the combination of Qin, Sierro, Schippers, and Hunt teaches, suggests, and provides motivation for one of ordinary skill in the art to develop a plant cell having modulated expression or activity of a nicotinamidase enzyme, said plant cell comprising: (a) a polynucleotide sequence comprising, consisting, or consisting essentially of a sequence encoding the nicotinamidase enzyme; or (b) a polypeptide encoded by the polynucleotide set forth in (a); wherein said plant cell comprises at least one modification which modulates the expression or activity of the polynucleotide or polypeptide as compared to a control plant cell in which the expression or activity of the polynucleotide or polypeptide has not been modified, wherein said polynucleotide (a) comprises: (i) a polynucleotide comprising, consisting, or consisting essentially of a sequence having at least 98% sequence identity to SEQ ID NO:9; and (ii) a construct, vector, or expression vector comprising the isolated polynucleotide set forth in SEQ ID NO:21.
The level of ordinary skill in the plant biotechnology art is high as evidenced by Qin, Sierro, Schippers, and Hunt. It would have been prima facie obvious for one of ordinary skill in the art to produce the claimed invention in view of the cited art. One of ordinary skill in the art would have been motivated by the teachings of Qin, Schippers, and Hunt to manipulate the expression of tobacco nicotinamidase genes to produce tobacco lines with precisely controlled levels of nicotine content. For example, Qin discloses nicotine as the primary addictive substance in tobacco products and suggests that manipulating nicotine biosynthesis genes and reducing nicotine content can aid in the develop of low-nicotine tobacco products. The combined teachings of Schipper and Hunt indicate that increasing or decreasing the activity of specific nicotinamidase enzymes can regulate both nicotine content and development in transgenic plants and that distinct nicotinamidases have distinct roles in NAD accumulation. One of ordinary skill would be motivated by the combined teachings of Schipper and Hunt to modulate, via overexpression, gene knockout, or gene repression techniques, the activity of specific nicotinamidase enzymes to regulate both nicotine content and development in transgenic tobacco plants. Given tobacco’s global importance as a crop plant, one of ordinary skill in the art would be highly motivated to affect the activity of genes and/or enzymes that impact both important aspects of crop growth (i.e., germination and senescence) and the production of nicotine and other alkaloids. Thus, one of ordinary skill in the art would be reasonably motivated to target the NIC1 gene sequence taught by Sierro, because Nicotiana tabacum is a common tobacco crop plant and model organism, and the sequence taught by Sierro is annotated as a nicotinamidase. Furthermore, one of ordinary skill in the art would be sufficiently motivated by the teachings of Qin, Schipper, and Hunt to manipulate the expression of any identified tobacco nicotinamidase to impact the nicotine content in a transgenic tobacco plant. Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention without any surprising or unexpected results.
Regarding claim 4, in addition to the teachings discussed above, Qin teaches wherein the at least one modification is a modification of the plant cell’s genome (p. 2150, fifth paragraph).
Regarding claim 5, in addition to the teachings discussed above, Qin teaches wherein the modification decreases the expression or activity of the polynucleotide as compared to a control plant cell (p. 2152, first full paragraph).
Regarding claim 6, the level of nicotine in the cured or dried leaf derived from a plant cell is the result of and therefore inherent to the level of nicotine in the aforementioned cell. Accordingly, this claim limitation merely recites an inherent trait and is rendered obvious by the combination of the cited art.
Regarding claim 7, in addition to the teachings discussed above, Qin also teaches a plant or part thereof comprising a plant cell (Abstract; p. 2150, fifth paragraph).
Regarding claim 8, in addition to the teachings discussed above, Qin also teaches a plant material derived from the plant (p. 2150, fifth paragraph). The recitation of a “plant material” is broad and Applicant places no limitations on the recitation in either the claims or specification. Accordingly, “plant material” is interpreted to encompass any material produced by and/or from a plant. Therefore, in reciting nicotine produced by the plant (p. 2150, fifth paragraph), Qin renders obvious this claim limitation.
Regarding claims 9 and 13, in addition to the teachings discussed above, Qin teaches a tobacco product wherein said product comprises a reduced nicotine content/level (Abstract; p. 2152, first full paragraph).
Accordingly, one of ordinary skill in the art would have been motivated to produce the claimed invention without any surprising or unexpected results.
Conclusion
15. No claim is allowed.
Examiner’s Contact Information
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEQUANTARIUS J SPEED whose telephone number is (703)756-4779. The examiner can normally be reached M-F; 9AM-5PM ET.
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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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/DEQUANTARIUS JAVON SPEED/Junior Examiner, Art Unit 1663 /Amjad Abraham/SPE, Art Unit 1663
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