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, 6-10, 12-13, 15, 17, 21, 25-27, 29 and 32-34 are pending.
Claims 6-10, 12-13, 15 and 17 are withdrawn from the examination as being part of non-elected group.
Claim 5 is cancelled by the Applicant.
Claims 1, 21, 25-27, 29 and 32-34 are being examined.
All the previous objections and rejections not set forth below are withdrawn.
Examiner’s Note
It is noted by the Examiner that many parts of the claim are not clearly legible. The Applicant is requested to follow the patent filing rule that states to file using only "black font", instead of filing using a "dark grey" font or colored font in any future submission, as deemed necessary.
However, as a courtesy to the Applicant and in an effort to provide better customer service, the Examiner continued examining the application.
Claim Rejections - 35 USC § 103
Claims 1, 21, 25-27, 29 and 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Martinell et al. (US 20210246459Al) in view of Paz et al. (Improved cotyledonary node method using an alternative explant derived from mature seed for efficient Agrobacterium-mediated soybean transformation, 2006, Plant Cell Rep., 25:206–213) and O Mercado et al. (Solid Matrix Priming of Soybean Seeds, 2002, Philippine Journal of Crop Science, 27:27-35). This is a new rejection necessitated by claim amendments.
Martinell et al. describe a method to prepare the explant and then transform soybean meristematic explants derived from (dry) soybean seeds (abstract; page 10, para 0077-0078; page 16, Example 5). Dry and viable soybean seeds (properly stored quality soybean seed has approximately 10 to 12% internal moisture content) were rinsed with sterile water or an aqueous solution for 3 to 20 minutes which raises the internal moisture content to approximately 16% (page 16, Example 5, para 0104, line 1-8). Increasing the moisture content of the dry soybean seeds from 10-12% to 16% reads on to pre-hydration, as recited in claim 1.
Martinell et al. describes an explant prepared in accordance with the invention is defined as having an internal moisture of about 4-25% of the seeds from which explants are to be prepared and harvested at a predetermined internal moisture suitable for isolating transformable material (explant) (p.4, para 0041, line 1-9).
Martinell et al. describes another example (p. 23, Example 14) of production of transgenic soybean plants using explants derived from dry soybean seeds. Dry soybean seeds are rinsed with sterile water or a solution of Sodium hypochlorite for 3 to 20 minutes (p. 23, para 0144, line 1-6). This step would increase internal moisture content relative to the dry seeds to about 16% (p. 23, para 0144, line 6-8) and then stored. Following desired storage, the pre-hydrated seeds are rehydrated (reads on to “soaking”) in a liquid hydration medium, which is an aqueous solution, for up to 24 hrs (page 23, para 0145, line 20-28). Soaking the seeds for about 24 hours would make the soybean seeds fully hydrated, as recited in claim 1. After rehydration the explants (i.e., the fully hydrated seeds) are transformed via Agrobacterium (p. 23, para 0146, line 1-4) containing a polynucleotide construct pMON96999 (p. 23, para 0147, line 2-3).
The Applicant does not define the term “donor DNA template”, as recited in claim 21. The term is interpreted as any (including heterologous) DNA sequence that provides the template of the transgene to be introduced into a host plant. Moreover, claim 1 recites, “…. introducing a polynucleotide...” (last line). Martinell et al. describe transforming (reads on to “introducing a polynucleotide”) (as recited in claim 1) the meristematic explants isolated from the (pre- and/or re-) hydrated soybean seeds with many donor DNA templates (as recited in claim 21) encoding various genes comprising a GUS, an aadA gene conferring resistance to spectinomycin, CP4 EPSPS conferring tolerance to glyphosate, GFP, a DMO gene conferring tolerance to dicamba (page 11, para 0083, line 3-9) using Agrobacteria mediated (reads on to “bacterial-mediated”) (page 10, para 0081-0083) and particle mediated transformation methods (spec, p. 10, para 0078, line 6-7) (reads on to “biolistic-mediated”), as recited in claim 27. Martinell et al. describe using the elite soybean variety (as recited in claim 29) A3525, which is a commercially available soybean variety (page 10, para 0078, like 2). Martinell et al. also describe using elite transgenic Round-Up Ready™ germplasms (page 20, para 0130, line 1-2) or cultivars.
Regenerating transformed soybean plants, as recited in claim 25, is a routine and standard process in the art and also described by Martinell et al. (page 4, para 0030, line 11-14; page 9, para 0070, line 12-16; page 19, para 0118, line 18-20’ page 20, 0127, line 10-13).
However, Martinell et al. does not explicitly describe isolating explants from the fully hydrated soybean seeds.
Paz et al. describes a method to use a half-seed soybean explant for agrobacterium mediated transformation (abstract). The method comprises disinfected seeds being soaked in sterile distilled water overnight for about 16 hr followed by a longitudinal cut along the hilum was made to separate the cotyledons, the seed coat was removed, and the embryonic axis found at the junctions of the hypocotyl and the cotyledon was excised to obtain the half-seed explant. (p. 207, right column, para 3, line 1-7). The herbicide phosphinothricin resistance bar gene is then introduced into the cells of the half-seed explants isolated from fully hydrated soybean seeds (P. 207, left column, para 7, line 12-16; p. 208, right column, para 1, line 1-3). Paz et al. teaches that more consistent transgenic plant recovery was obtained using the half-seed protocol and fewer escapes (false positive) among putative transformants derived from half-seed explants compared to other explants like cotyledonary node explants (p. 212, left column, para 1, line 3-6).
O Mercado et al. describes the well-known and routine method known as “solid matrix priming (SMP)” using semi-solid media to increase moisture content in seeds including soybean seeds (p.28, left column, para 2, line 1-7). O Mercado discusses that soaking injury can occur due to rapid liquid uptake into cotyledons, causing cell death (p. 28, left col., para 1, lines 2-6). O Mercado et al. teaches that, unlike liquid priming, SMP makes use of a small amount of liquid per unit of seed and solid particles while water is slowly imbibed into the seeds and, thus, slow or controlled imbibition allowing repair mechanism to operate (p.28, left column, para 2, line 10-16) which produces healthier explants obtained from such seeds.
It would have been obvious to an ordinarily skilled artisan to prepare a soybean explant, comprising pre-hydrating dry soybean seeds to obtain partially hydrated soybean seeds (as described by Martinell et al.) and then soaking the partially hydrated soybean seeds to obtain fully hydrated soybean seeds to isolate (half-seed) explants (as described by Paz et al.) to introduce a polynucleotide into at least one cell of the explant, as described by Martinell et al. and Paz et al. It would have been obvious for the artisan to use SMP process for pre-hydration using a semi-solid media (as a standard routine process used in the art) to increase the moisture content of the soybean seeds in a controlled manner, as described by O Mercado et al.
The instant description of the invention does not differentiate “pre-hydrating” and “soaking”, and both the steps are done to increase the moisture content of the (dry) seeds, as discussed above. Using semi-solid media (or moist solid media), generally known as “solid matrix priming (SMP)”, to increase moisture content in seeds including soybean seeds in a well-known and routine process in the art, as described by O Mercado et al. (p.28, left column, para 2, line 1-7) to enable the seeds to repair any internal injury it might be having, which would increase transformation efficiency of the (healthier) explants obtained thereof.
The ordinarily skilled artisan would have been motivated to isolate soybean-half seed explants (i.e., cotyledons) from fully imbibed soybean seeds and transform the explant by introducing a polynucleotide of interest (e.g. herbicide resistant bar gene) to get more consistent transgenic plant recovery and fewer escapes (false positive) among putative transformants, as taught by Paz et al.
Regarding claim 26, The applicant does not define the term “transformation efficiency”. Typically, the term “transformation efficiency” is defined in the art as the number of transformants produced per unit of vector DNA containing the transgene, which takes into account of regeneration of the transgenic plants besides the ability of the host cells to take up the foreign DNA introduced into the host cells. Meristematic tissues like the embryos obtained from the hydrated seeds are known in the art to increase transformation regeneration efficiency. Martinell et al. describe that the soybean explant needs to contain at least some of the meristematic region of the embryo such that typically the explant can produce a shoot within 12 weeks of the onset of tissue culture growth conditions (page 5, para 0044, line 6-9). Suitable (meristematic) explants need to be recovered via different methods comprising hydration of seeds from dry seeds (Martinell et al., page 5, para 0045, line 1-4).
Moreover, the “wherein” clause (line 2) in claim 26 only recites the intended result (increased introduction efficiency, the genomic DNA modification efficiency, and/or the transformation efficiency) of the active (manipulative) steps recited in claim 1 without further limiting those steps, and are not given weight. See MPEP §2111.04 (I).
Regarding claims 32-33, recovering or harvesting seeds from a transgenic soybean plant (as recited in claim 32) and growing a progeny soybean plant (as recited in claim 33) are routine standard processes in the art and the seeds always contain the genomic modification introduced via agrobacterium mediated transformation, as also described by Martinell et al. (page 9, para 0073 in entirety and especially the last 2 lines).
Claim 34 remain rejected under 35 U.S.C. 103 as being unpatentable over Martinell et al. in view of Paz et al. and O Mercado et al., as applied to claims 1, 21, 25-27, 29 and 32-33 above, and further in view of Banakar et al. (Efficiency, Specificity and Temperature Sensitivity of Cas9 and Cas12a RNPs for DNA-free Genome Editing in Plants, 2022, Front. Genome Ed. 3:760820; published on 12 January 2022).
Martinell et al. in view of Paz et al. and O Mercado et al. describe a method of preparing a soybean explant by pre-hydrating a plurality of dry soybean seeds to obtain partially hydrated soybean seeds wherein moisture content is increased relative to the dry soybean seeds, soaking the partially hydrated soybean in an aqueous solution, isolating explants from the fully hydrated soybean seeds, and introducing a polynucleotide into at least one cell of the explant, as discussed above.
However, Martinell et al. in view of Paz et al. and O Mercado et al. do not describe any guide RNA or a RNA-guided nuclease.
Banakar et al. describes a method for genome editing using CRISPR/Cas ribonucleo-proteins (RNPs) which offers several advantages over plasmid DNA-based delivery methods (as used in agrobacterium mediated transformation and as described by Martinell et al.), which includes reduced off-target editing effects, mitigation of random integration of nonnative DNA fragments, independence of vector constructions, and less regulatory restrictions (abstract, line 1-5). The RNP delivery method is applicable to soybean as well (abstract, line 16-17) and tested in an elite soyabean cultivar Williams 82 (page 3, left column, para 4, line 1). Banakar et al. teach that the RNPs typically comprise two components: the Cas nuclease protein and a CRISPR guide RNA (gRNA) (page 2, left column, para 1, line 4-6). There are typically two methos to introduce the RNPs into the host cells. One method is transfection where isolated protoplasts from the target plant are mixed with the in-vitro produced RNP complex in a suitable solution (page 3, left column, para 6, line 1-3). The other method describes the CRISPR-Cas RNPs being delivered using the biolistic approach in the host plant (explant) (page 9, right column, para 1, line 3-4). The second method is preferred in plants that are not amenable for protoplast regeneration (page 9, right column, para 1, line 4-5) and/or the ordinarily skilled artisan prefers to bypass the time-consuming and expansive protoplast isolation and protoplast regeneration process.
Before the effective filing date of the invention, it would have been obvious to one with ordinary skill in the art to modify the method described by Martinell et al. in view of Paz et al. by using transfection or biolistic approach to introduce a ribonucleoprotein (RNP) complex comprising a Cas endonuclease and gRNA(s), as described by Banakar et al., into the meristematic explants isolated from the soybean seeds, as described by Martinell et al. in view of Paz et al.
The ordinarily skilled artisan would have been motivated to do so to avail the advantages of introducing Cas endonuclease based RNPs via transfection (after isolating protoplasts for the hydrated soybean seeds) or biolistic approach of genome editing (over plasmid DNA-based delivery methods). Such advantages include reduced off-target editing effects, mitigation of random integration of non-native DNA fragments, independence of vector constructions, and less regulatory restrictions in an elite soybean variety.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 34 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 11518999B1 (hereafter referred as ‘999B) in view of Martinell et al., Paz et al. and O Mercado et al., as discussed above for claims 1, 21, 25-27, 29 and 32-33, and further in view of Banakar et al.
Claim 16 of ‘999B in view of Martinell et al., Paz et al. and O Mercado et al. describe a method of preparing a wheat explant by pre-hydrating a plurality of dry wheat seeds using semi-solid media to obtain partially hydrated wheat seeds wherein moisture content is increased relative to the dry wheat seeds, soaking the partially hydrated wheat in an aqueous solution, isolating explants from the fully hydrated wheat seeds, and introducing a polynucleotide into at least one cell of the explant, as discussed above.
However, claim 16 of ‘999B in view of Martinell et al., Paz et al. and O Mercado et al. do not describe any guide RNA or a RNA-guided nuclease.
Banakar et al. describes a method for genome editing using CRISPR/Cas ribonucleoproteins (RNPs) which offers several advantages over plasmid DNA-based delivery methods (as used in agrobacterium mediated transformation and as described by Martinell et al.), which includes reduced off-target editing effects, mitigation of random integration of nonnative DNA fragments, independence of vector constructions, and less regulatory restrictions (abstract, line 1-5). The RNP delivery method is applicable to soybean as well (abstract, line 16-17) and tested in an elite soyabean cultivar Williams 82 (page 3, left column, para 4, line 1). Banakar et al. teach that the RNPs typically comprise two components: the Cas nuclease protein and a CRISPR guide RNA (gRNA) (page 2, left column, para 1, line 4-6). There are typically two methos to introduce the RNPs into the host cells. One method is transfection where isolated protoplasts from the target plant are mixed with the in-vitro produced RNP complex in a suitable solution (page 3, left column, para 6, line 1-3). The other method describes the CRISPR-Cas RNPs being delivered using the biolistic approach in the host plant (explant) (page 9, right column, para 1, line 3-4). The second method is preferred in plants that are not amenable for protoplast regeneration (page 9, right column, para 1, line 4-5) and/or the ordinarily skilled artisan prefers to bypass the time-consuming and expansive protoplast isolation and protoplast regeneration process.
Before the effective filing date of the invention, it would have been obvious to one with ordinary skill in the art to modify the method described by claim 16 of ‘999B in view of Martinell et al. and Paz et al. by using transfection or biolistic approach to introduce a ribonucleoprotein (RNP) complex comprising a Cas endonuclease and gRNA(s), as described by Banakar et al., into the meristematic explants isolated from the wheat seeds, as described by claim 16 of ‘999B in view of Martinell et al., Paz et al. and O Mercado et al.
The ordinarily skilled artisan would have been motivated to do so to avail the advantages of introducing Cas endonuclease based RNPs via transfection (after isolating protoplasts for the hydrated soybean seeds) or biolistic approach of genome editing (over plasmid DNA-based delivery methods). Such advantages include reduced off-target editing effects, mitigation of random integration of non-native DNA fragments, independence of vector constructions, and less regulatory restrictions in an elite soybean variety.
This is a provisional nonstatutory double patenting rejection.
Response to Applicant’s Arguments
Applicant arguments submitted on 7/13/2026 were considered insofar as they may apply to the new rejection under 35 U.S.C. 103 above, but was not found persuasive.
The Applicant argues, “Martinell does not disclose subjecting the seeds to a
second hydration step prior to isolation of the explant. Although the Office Action notes that
Martinell rehydrates explants after storage, that rehydration occurs only after the explant has
already been isolated from the seed. The present claims, however, require both hydration steps to
be performed on the soybean seeds before the explant is isolated. Accordingly, Martinell does
not disclose the claimed two-step hydration process” (response, p.7, para 1, line 5-10).
The Examiner disagrees. Martinell et al. describes that after rehydration the explants (i.e., the fully hydrated seeds) are transformed via Agrobacterium (p. 23, para 0146, line 1-4). Martinell in paragraph [0144] teaches soybean seeds were rinsed in water or sodium hypochlorite which raised internal moisture content to approximately 16% (pre-hydration); and then paragraph [0145] teaches that following storage, “explants” were rehydrated. No step is explicitly recited indicating that an explant within the seed was first isolated before the rehydration, and therefore the “explant” recited in paragraph [0145] appears to refer seed.
However, regardless of what is referred to by “explant” in paragraph [0145] of Martinell, Paz et al. teaches fully hydrating seeds, as discussed in the rejection above. The limitation of fully soaking seeds and isolating explants is taught by the prior-art reference Paz et al., wherein the cotyledonary explants were isolated from fully soaked seeds, as described above, to satisfy the claim limitation.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY CHATTERJEE whose telephone number is (703)756-1329. The examiner can normally be reached (Mon - Fri) 8.30 am to 5.30 pm..
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/Jay Chatterjee/Examiner, Art Unit 1662
/BRATISLAV STANKOVIC/Supervisory Patent Examiner, Art Units 1661 & 1662
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