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
Claims 1-20 are pending and being examined.
Claim Rejections - 35 USC § 112(a)
Written Description
Claim 13 is 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 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.
The Applicant describes wounding in-vitro grown cherry or blackberry explants using a blender either in presence or absence of agrobacterium suspension (page 36, last para, first 4 lines; and page 37, para 2, line 2-4; page 37, para 3, line 2-3), putting the mixture on to a solid media (page 37, para 2, line 3-4; page 37, para 3, line 4-5) and observed various parameters comprising browning of the cut tissue (page 37, para 3, last 4 lines). Browning of plant tissues does not necessarily indicate cell death, but occurs for various factors including enzymatic and non-enzymatic ones (Liu et al.(1), Study on browning mechanism of fresh-cut eggplant (Solanum melongena L.) based on metabolomics, enzymatic assays and gene expression, 2021, Scientific Reports,11:6937; page 1, para 2, last 2 lines), callus development, and subsequent transformation efficiency.
However, the Applicant does not describe death rate of the plant tissue or the cells (as recited in claim 13) in the plant tissue during any time of the process. The Applicant also does not provide any data showing reduced death rate of the plant tissue/cell compared to the death rate of plant tissue/cell prepared using blending in a blender as compared to a method that is devoid of blending (using a blender) of the same plant or plant part/tissue. The Applicant does not appear to have been in possession of the claimed genus at the time this application was filed.
Response to Applicant’s argument: The Applicant’s response dated 2/2/2026 is fully considered but not found persuasive.
The Applicant argues, “… one of ordinary skill in the art would readily understand, browning in plant tissue indicates necrosis (i.e., cell death) in the plant tissue. A reduced death rate is demonstrated in Example 2 of the application as filed” (response, page 5, para 6, line 7-9).
Applicant’s arguments have been fully considered but are not found persuasive. As described above, browning (as demonstrated in instant Example 2) of cut or exposed plant tissue due to oxidation of phenolic compounds present in the cut tissue by enzymes like polyphenol oxidase (PPO) is a well-known phenomenon. Browning results in reduced growth, lower rates of regeneration or recalcitrance, and can ultimately lead to cell/tissue/plant death (Jones et al., Inhibition of Phenylpropanoid Biosynthesis in Artemisia annua L.: A Novel Approach to Reduce Oxidative Browning in Plant Tissue Culture, 2013, PLOS ONE, 8: e76802; page 1, left column, para 1, line 2-3). The prevalence of browning varies among species, cultivars, and the physiological state of the plant/tissue but in many cases severely restricts our ability to manipulate plant growth and development (Jones et al., page 1, left column, para 1, line 3-7). However, browning does not immediately and/or invariably lead to cell death in tissues experiencing browning, but depends on several factors including type of explants, plant species (Liu et al. (3), Combating browning: mechanisms and management strategies in in-vitro culture of economic woody plants, 2024, Forestry Research, 4:e032; page 5, left column, para 2, line 7-9), external factors like media composition and culture conditions (Liu et al. (3), page 2, left column, last para), besides duration of exposure to oxidized phenolics/polyphenol.
Moreover, visual observation of browning is not a dependable criterion to access cell viability or cell death because it is prone to subjective biases and can be compromised by chlorophyll masking the brown pigments (Liu et al.(3) page 5, right column, para 2, line 2-4). The Applicant does not describe using any standardized assessment, as described by Liu et al. (e.g., Fluorescein diacetate (FDA) assay for analyzing cell viability), to evaluate cell death. Example 2 in the specification does not describe any cell death analysis or data. Example 2 merely mention browning of cut explants (page 37, para 2, line 5-9; para 3, last 2 lines).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-5, 8-9, and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gilbertson et al. (CA 3120571 A1, published 2020/04/09).
Gilbertson et al. describes that many plant species and/or varieties are difficult to transform, culture, and/or regenerate from an explant or plant material (page 1, para 0003, line 4-5). Gilbertson et al. teaches a method of transforming corn (callus) cells by introducing- i) TAT-Cre protein in wounded plant cells (page 36, Example 1, para 0073-0076) and ii) Cre protein in the wounded callus cells (page 39, Example 2, para 0077-0080) and regenerating plants from the transformed cells (page 38, para 0074, line 4-5; page 38, para 0075, line 1-3). The method comprises preparing plant tissues to regenerate (transgenic/mutant) plants from wounded recipient cells (abstract) from a callus (page 13, para 0027, line 3) (as recited in claim 3) that enable and/or enhance transfer of biomolecules. It describes that wounding of the plant tissues and the cells therein can be done by several methods including chopping or cutting of cells with a razor blade, knife or other sharp instrument (which reads on to a “single blade”, as recited in claims 1 and 5; and the single blade is a chopping blade, as recited in claim 5); and blending at high for 9-10 seconds (page 39, para 0077, line 2-5) imply use of a blender (as recited in claim 1). A standard home blender has the highest speed of 25,000 rpm , which translates into 416 Hz.
The Applicant describes using a Cuisinart blender model CPB-300P1 (page 36, last para, line 2-3). Neither the instant specification nor the Cuisinart blender model CPB-300P1 manual describes the speed range (either in terms of RPM or Hz) at different settings. A standard home blender has the highest speed of 25,000 rpm1, which translates into 416 Hz. The “high speed”, as described by Gilbertson et al., is interpreted to include 380 Hz (i.e. 22,800 rpm), as recited in claims 1.
Wounding the cells in a tissue disrupts or create openings or pores in the plant cell walls and/or plasma membrane which allow biomolecules present in the medium to enter into cytoplasm, cytosol, organelle, or nucleus (page 14, para 0027, line 6-9). Gilbertson et al. describes collecting (about 1.5 grams of) cultured callus cells (page 37, para 0073, line 12-13) as recited in claim 16, before wounding the tissues/cells.
Regarding claim 4; Gilbertson et al. teaches blending explant callus tissue at a high speed for more than 1 seconds (9-10 seconds) (page 39, para 0077, line 2-3). It is axiomatic that the blending process at a high speed would increase the amount of wounded tissue and wounded cells prepared within a specific time compared to the amount of wounded tissue prepared without blending using a blender in the same period of time for the same plant or plant part, as recited in claim 4.
Regarding claims 8-9, the method described by Gilbertson et al. discusses blending the plant tissue (i.e., plant part) at a high speed (page 39, para 0077, line 2-3) implying using a blender, as recited in claim 9, and is devoid of “hand manipulation” (as recited in claim 8) and without “cutting plant tissue by hand”, as defined by the Applicant (spec, page 32, last para, line 2-3).
Regarding claims 15 and 17, Gilbertson et al. describes plant (growth) medium 1074 comprising sucrose, MS basal salt, and plant hormones like IBA and NAA (page 37, Table 1); and medium 1796 comprising sucrose, MS basal salt, plant hormones (2, 4-D), vitamins, casamino acids, and proline; as recited in claim 15 (i.e., culturing the plant tissue in a growth media). The Applicant does not describe or define “growth media”. Medium 1074 and 1796, as described by Gilbertson et al., are interpreted as “growth medium”. The media, as described by Gilbertson et al., are made using water (Table 1 and Table 2), as recited in claim 17 (i.e., in the presence of water).
Response to Applicant’s argument: The Applicant argues, “Gilbertson never mentions a blender, let alone a blender that comprises a single blade as recited in Claim 1” (page 6, para 5, line 1-2). The Applicant continues to argue, “… Gilbertson fails to teach blending a plant or plant part in a blender as claimed at a speed from 1 Hz to 380 Hz for 1 second to 10 seconds as recited in Claim 1” (page 6, para 6, line 1-2).
Applicant’s arguments have been fully considered but are not found persuasive. Gilbertson et al. describes wounding the plant tissue by various methods including “blending” (page 16, para 0027, line 4; page 19, para 0032, line 3). Working example (Example 2) provided by Gilbertson et al. also describes blending the plant tissue (callus) at high speed for 9-10 seconds (page 41, para 0077, line 2-5). If the callus in Gilbertson et al. was wounded by another method, e.g. sonication or vortexting or shaking, Gilbertson would not have used the terms “blended” and “blending”. One skilled in the art would reasonably interpret the “blending” in Example 2 in Gilbertson et al. as being conducted in a blender.
The Applicant describes using a Cuisinart blender model CPB-300P1 (page 36, last para, line 2-3). Neither the instant specification nor the Cuisinart blender model CPB-300P1 manual describes the speed range (either in terms of RPM or Hz) at different settings. A standard home blender has the highest speed of 25,000 rpm1, which translates into 416 Hz. The “high speed”, as described by Gilbertson et al., is interpreted to include 380 Hz (i.e. 22,800 rpm).
Claim Rejections - 35 USC § 103
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 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.
Claims 2, 6-7, 10-13, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Gilbertson et al. as applied to claims 1, 3-5, 8-9 and 15-17 above, and further in view of Gurel et al. (Sand-Wounding of Shoot and Petiole Explants Enhances Transformation Efficiency in Sugar Beet (Beta vulgaris L.) by Agrobacterium-mediated Transformation, 2021, Sugar Tech., 23:415–427).
Claim 11 depends from claim 1, and is drawn to a method wherein the plant tissue has an increased transformation rate compared to a method of preparing the same plant tissue that is devoid of blending using a blender.
Gilbertson et al. describes a method of preparing a plant tissue for transformation and regeneration by wounding a plant tissue (callus) in a blender at a speed from 1 Hz to 380 HZ for 1 to 10 seconds, as discussed above. Gilbertson et al. also describes that the method allows effective introduction, transfer, or delivery of one or more protein(s), ribonucleoprotein(s), polynucleotide(s), DNA molecule(s), genetic material(s), or other biomolecule(s), or any combination thereof, to make a mutation, edit or other genetic change to the recipient or target cells (page 15, para 0030, line 8-11) in the plant tissue. Gilbertson et al. teaches culturing the wounded tissue, as recited in claim 20, (and the cells in the tissue) to regenerate plants (page 37, para 0073, last 2 lines; and page 38, para 0074, last 2 lines). The process of regeneration and/or transformation needs cells in a tissue, which can be present in specific tissue(s) (e.g. leaf, shoot, root, callus etc.) as well as in the whole plant comprising many such tissues, as recited in claim 2. The method described by Gilbertson et al. uses clumps of cells (page 15, para 0028, line 2-3) which reads on to “about 50 clumps”, as recited in claim 7.
The Applicant is reminded that differences in number of clumps or weight of the explant, blending frequency (speed of the blade), and blending duration (number of seconds) do not support patentability of the subject matter encompassed by the prior art unless there is evidence indicating such amount/duration/frequency is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.
However, Gilbertson et al. does not compare transformation rate between wounded vs non-wounded explants and does not explicitly describe increased transformation rate obtained via wounded explant.
Gurel et al. describes wounding of plant tissues (e.g. shoot and petiole) increases agrobacterium mediated transformation efficiency (title and abstract). It describes wounding the explant in presence of Agrobacterium (page 421, Fig. 3) (as recited in claim 18) and sand, wherein the sand is used to create wounds in the explant. The effect of wounding was more prominent when stable transformation efficiencies are compared- petiole explants achieving almost a 60% increase (1.38% vs. 2.16%) while shoot explants doubled (0.98% vs. 1.97%) their transformation efficiencies (Abstract, line 22-27). An ordinarily skilled artisan acknowledges that successful regeneration of stable transformants includes producing shoots and roots. Thus, increased transformation efficiency or transformation rate due to wounding imply increased number of shoots that are propagated in vitro, as recited in claim 12.
Before the effective filing date of the invention, it would have been obvious to an ordinarily skilled artisan to wounding the explant for preparing the plant tissue for transformation, as described by Gilbertson et al., with a realistic goal to increase transformation rate (or transformation efficiency), as described by Gurel et al. Successful wounding can be done in many different ways, as discussed by Gilbertson et al. (page 14, para 0027, line 2-4). Use of a blender to blend the explant for wounding is an experimental design choice of the artisan without changing the outcome of the invention/experiment. Similarly, using a genetic material which is a polynucleotide comprising DNA (that comprises plasmids including binary vectors), as described by Gilbertson et al., from a bacteria would have been introduced into the wounded plant cell, as recited in claim 19, remains an experimental design choice of an ordinarily skilled artisan. Disrupting the bacterial cells during blending process would have released its genetic materials (polynucleotides) from bacterial cells. The polynucleotides from the disrupted bacterial cells would have been introduced into the plant cells as they come into the contact of each other.
Before the effective filing date, it would have been obvious to an ordinarily skilled artisan to wound the explant, using a blender and once or more additional times (as recited in claim 6), to increase transformation efficiency.
Regarding claim 10, the Applicant describes tissue damage in the explants being blended in a blender in form of browning (page 37, para 2, line 5-10; page 37, para 3, last 4 lines). Blending in presence of Agrobacterium solution (submerged in the aqueous solution) does not show any browning, whereas there are tissue browning in hand-cut explants (not submerged in the aqueous solution) inoculated with the Agrobacterium solution. Browning of cut or exposed plant tissue due to oxidation of phenolic compounds present in the cut tissue by enzymes like polyphenol oxidase (PPO) is a well-known phenomenon1. Such oxidation is preventable by various means especially by covering the cut tissue (by, e.g., aqueous solution) from being exposed to air or oxygen. It is an inherent property of the blending process in presence of an aqueous solution using a blender to reduce tissue damage (caused by enzymatic browning) of the plant tissue as compared to a process of cutting the tissue (not submerged in a solution) by hands that does not involve blending.
Regarding claim 13, it is well known in the art that homogenization of plant tissue by different methods including blending using a blender result in breaking down of cell wall and cellular membranes and cause many plant cells to die. Naturally, death rate of cells in a plant tissue sample produced by any form of more abrasive mechanical force including blending using a blender would be higher compared to a plant tissue prepared with a method that is devoid of blending using a blender (e.g. hand-cut tissues) for the same plant or plant part.
Claims 14 is rejected under 35 U.S.C. 103 as being unpatentable over Gilbertson et al. as applied to claims 1, 3-6, 8-9 and 15-17 above, and further in view of Liu et al.(2) (Agrobacterium tumefaciens-mediated transformation of modern rose (Rosa hybrida) using leaf-derived embryogenic callus, 2021, Horticultural Plant Journal, 7: 359–366).
Gilbertson et al. describes a method of preparing a plant tissue for transformation and regeneration by wounding a plant tissue (callus) in a blender at a speed from 1 Hz to 380 HZ for 1 to 10 seconds, as discussed above, as discussed above.
However, Gilbertson et al. does not describe any Rubus plant or plant part.
Liu et al.(2) describes Agrobacterium tumefaciens-mediated transformation of modern rose (Rosa hybrida) (abstract), a plant belonging to the Rubus family.
Before the effective filing date of the invention, it would have been obvious to an ordinarily skilled artisan to wound an explant belonging to the Rubus family, as described by Liu et al.(2) for preparing the plant tissue for transformation, as described by Gilbertson et al., with a realistic goal to increase transformation rate in rose, which is a commercially important flower crop throughout the world, as described by Liu et al.(2) (page 359, left column, para 1, line 1-2).
Before the effective filing date, it would have been obvious to an ordinarily skilled artisan to wound a rose explant to increase transformation rate while using Agrobacterium mediated transformation.
Response to Applicant’s argument: Regarding the rejections under 35 U.S.C. 103, the Applicant argues, “Gilbertson fails to teach each and every element of Claim 1 in the manner claimed” (page 7, para 3, line 1-2) while “Gurel fails to correct the deficiencies of Gilbertson” (page 7, para 4, line 1) and “Liu fails to correct the deficiencies of Gilbertson” (page 8, para 2, line 1).
The Examiner respectfully disagrees. Gilbertson et al. fulfils all the claim limitations of claim 1, as discussed above while responding the Applicant’s arguments for rejections under 35 U.S.C. 102.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Communication
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Jay Chatterjee
Patent Examiner
Art Unit 1662
/Jay Chatterjee/Examiner, Art Unit 1662
/BRATISLAV STANKOVIC/Supervisory Patent Examiner, Art Units 1661 & 1662
1 Liu et al. (1) provides the evidence of browning of cut or exposed plant tissue due to oxidation of phenolic compounds present in the cut tissue by enzymes like polyphenol oxidase (PPO) (page 2, para 1, line 2-4)