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 June 5th, 2026 have been entered.
Claims 7-8, 10-15, 19-20, and 25-26 have been canceled.
New claims 31 and 32 are various method claims depending from withdrawn claim 16. These claims are not directed to the previously elected invention (of Group I, drawn to an engineered plant with increased NUDIX gene expression). Accordingly, they have been withdrawn for being directed to previously not-elected inventions.
Claims 1-6, 9, 16-18, 21-24, and 27-31 are pending in the application.
Claims 1-6, 9, and 21 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Withdrawn Objections and Rejections
The objections to the specification are withdrawn in light of amendments to the claims.
The objections to the claims are withdrawn in light of claim amendments.
The rejection of claims 1 and 21 under 35 USC § 101 is withdrawn in light of claim amendments.
The rejection of claims 2 and 4-6 under 35 USC § 112(a) written description are withdrawn amendments of the claims.
The rejection of claims 1-5 and 21 under 35 USC § 102(a)(1) are withdrawn in light of the claim amendments.
The objections and rejections of claims 7, 10 and 13 under 35 USC § 103 are moot in light of cancellation of the claims.
New Objections/Rejections
Claim Interpretation
Claim 1 recites that the promoter is “operably linked” to a polynucleotide encoding a fusion polypeptide of NUDIX13 and a reporter protein. The instant specification defines “operably linked” as regulatory and other sequences useful for expression, stabilization, replication, and the like of the coding and transcribed non-coding sequences of a nucleic acid that are placed in the nucleic acid molecule in the appropriate positions relative to the coding sequence so as to effect expression or other characteristic of the coding sequence or transcribed non-coding sequence. "Operatively linked" can also refer to an indirect attachment (i.e. not a direct fusion) of two or more polynucleotide sequences or polypeptides to each other via a linking molecule (also referred to herein as a linker). Thus, the CaMV promoter being operably linked to a polynucleotide is taken to mean a CaMV promoter placed appropriately relative to the sequence.
Claim Objections
Claims 2 and 6 are objected to for the misspelling of “Arabadopsis”. This should be amended to recite “Arabidopsis”.
Claim Rejections - 35 USC § 103
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.
Claims 1-6 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa, T. et al. (2009), Overexpression of an ADP-ribose pyrophosphatase, AtNUDX2, confers enhanced tolerance to oxidative stress in Arabidopsis plants,” The Plant Journal, 57:289–301 (as cited in IDS filed 7/19/2024) in view of Olejnik, K. et al. (2007), Cloning and characterization of AtNUDT13, a novel mitochondrial Arabidopsis thaliana Nudix hydrolase specific for long-chain diadenosine polyphosphates,” FEBS Journal, 274:4877-4885 (as cited in IDS filed 3/20/2025), nudix hydrolase homolog 13 [Arabidopsis thaliana]; NCBI Reference Sequence: NP_189303.1. PLN 02/14/2019, and Palmer, E. et al. (2004). “Investigation into the use of C- and N-terminal GFP fusion proteins for subcellular localization studies using reverse transfection microarrays.” Comparative and Functional Genomics. 5:342-353. This is a new rejection necessitated by amendments to the claims.
Claim 1 recites an engineered plant comprising:
a heterologous expression cassette stably integrated into the genome of the plant, the heterologous expression cassette comprising a Cauliflower Mosaic Virus (CaMV) 35Spromoter operably linked to a polynucleotide encoding a fusion polypeptide comprising a nucleoside diphosphate linked to some moiety, X hydrolase (NUDIX 13) polypeptide of SEQ ID NO: 40 fused at its C-terminus to a reporter protein; and wherein the engineered plant has
(a) increased NUDIX 13 gene expression as compared to a suitable control;
(b) increased amount of one or more NUDIX 13 gene products as compared to a suitable control;
(c) increased activity of one or more NUDIX 13 enzymes as compared to a suitable control; or
(d) any combination of (a) to (c).
Claim 2 recites the engineered plant of claim 1, wherein the engineered plant is Arabidopsis.
Claim 3 recites the engineered plant of claim 1, wherein the one or more NUDIX 13 gene products are NUDIX 13 mRNA, NUDIX13 polypeptide(s), or both.
Claim 4 recites the engineered plant of claim 1, wherein the reporter protein is a fluorescent protein.
Claim 5 recites the engineered plant of claim 4, wherein the fluorescent protein is a green fluorescent protein.
Claim 6 recites the engineered plant of claim 5, wherein the engineered plant is Arabidopsis.
Regarding claims 1 and 4, Ogawa explicitly discloses the effect of overexpression of AtNUDX2 on levels of ADP-ribose, NAD(H) and ATP, and PAR activity in Arabidopsis [pg. 290, col. 2, para 2]. Ogawa teaches that Nudix hydrolases, characterized by a conserved Nudix motif, GX5EX7REVXEEXGU, where U is usually Ile, Leu or Val [pg. 290, col. 1, ¶3]. Ogawa teaches that overexpression of AtNUDX2, encoding ADP-ribose pyrophosphatase, confers enhanced tolerance of oxidative stress on Arabidopsis plants, resulting from maintenance of NAD+ and ATP levels by nucleotide recycling from free ADP-ribose molecules under stress conditions [Abstract]. Ogawa teaches the generation of transgenic Arabidopsis plants overexpressing AtNUDX2 under the control of the CaMV 35S promoter (Pro35S:AtNUDX2) (i.e. engineered plant; a heterologous expression cassette stably integrated into the genome of the plant, comprising a CaMV 35S promoter operably linked to a polynucleotide) [pg. 291, col. 1, ¶1]. A. tumefaciens transformed by electroporation was used to infect Arabidopsis via the vacuum infiltration method and the seedlings grown on basic MS medium in petri dishes before being transferred to soil [pg. 298, col. 1, para 2]. A Western blot analysis showed an increase of AtNUDX2 protein in Pro35S:AtNUDX2 plants compared with control plants (i.e. increased amount of one or more NUDIX gene products as compared to a suitable control) [Figure 2a].
Ogawa does not explicitly teach that the NUDX polypeptide is a NUDIX13 polypeptide of SEQ ID NO: 40 with a reporter protein fused at its C-terminus. However, Olejnik teaches a cDNA corresponding to the At3g26690 gene, which encodes a Nudix protein (AtNUDT13) with predicted mitochondrial localization, was isolated from an Arabidopsis thaliana library [Abstract]. Olejnik teaches that AtNUDT13 protein, a novel member of the A. thaliana Nudix family of enzymes, specifically catalyzes the hydrolysis of long-chain diadenosine polyphosphates and is located in mitochondria [pg. 4881, col. 2, ¶4]. Olejnik teaches that the mitochondrial Nudix hexaphosphate hydrolase AtNUDT13 could be involved in the turnover of ATP and ADP (e.g. during stress) [pg. 4882, col. 1, ¶1] and that the study of plants in which the activities of the AtNUDT13 hydrolase have been altered by gene disruption or overexpression are in progress [pg. 4882, col. 2, ¶1].
Olejnik teaches expression of AtNUDT13 protein in E. coli cells [pg. 4878, col. 2, ¶1], transformation of Saccharomyces cerevisiae cells with an expression plasmid encoding the C-terminal fusion of AtNUDT13 to yeast-enhanced green fluorescent protein [pg. 4881, col. 1, ¶1], and transformation of Arabidopsis suspension cells with expression plasmid encoding the N-terminal fusion of AtNUDT13 to GFP (i.e., wherein the reporter protein is a fluorescent protein; wherein the fluorescent protein is a green fluorescent protein). Further, Olejnik teaches that GFP-targeting studies in Arabidopsis were carried out as described previously in Murcha, M., wherein the GFP was cloned in frame to the C-terminus of AtNUDT13 [pg. 4882, col. 1, ¶1]. Murcha, M. et al. (2007. “Characterization of the preprotein and amino acid transporter family in Arabidopsis.” Plant Physiol 143, 199–212), incorporated herein by reference, teaches in vitro protein uptake assays, in vivo green fluorescent protein tagging, and immunological analyses of selected proteins determined either mitochondrial or plastidic localization for 10 and six proteins, respectively [Abstract]. Murcha teaches fusion proteins [pg. 204, col. 1, ¶2] and GFP attaches to the C-terminal for mitochondria localization [Fig. 3, Fig. 5].
Additionally, the gene reported in Olejnik for NUDT13 is the same the enzyme for NUDIX13 of the instant application (At3g26690). A BLAST search revealed NCBI Reference Sequence: NP_189303.1 which is annotated as a Nudix hydrolase homolog 13 [Arabidopsis thaliana] and lists within its features the TAIR reference AT3G26690 (the same as Olejnik and the instant application). NP_189303.1 shares 100% sequence identity to SEQ ID NO: 40 of the instant application (See, alignment below). As Olejnik teaches use of the same gene of the instant application, which was previously known in the art, and suggests overexpression of AtNUDT13 hydrolase in plants, Olejnik has explicitly provided the suggestion to create an engineered plant comprising increased NUDIX 13 gene expression.
Score
Expect
Method
Identities
Positives
Gaps
414 bits(1064)
5e-146
Compositional matrix adjust.
202/202(100%)
202/202(100%)
0/202(0%)
Query 1 MSNLSARTGRDHQRYDNNFRLVSGCIPYRLVKDEEEDSTSVDFENKLQVLMISSPNRHDL 60
MSNLSARTGRDHQRYDNNFRLVSGCIPYRLVKDEEEDSTSVDFENKLQVLMISSPNRHDL
Sbjct 1 MSNLSARTGRDHQRYDNNFRLVSGCIPYRLVKDEEEDSTSVDFENKLQVLMISSPNRHDL 60
Query 61 VFPKGGWEDDETVLEAASREAMEEAGVKGILREDPLGVWEFRSKSSSVEADCCLGGGCKG 120
VFPKGGWEDDETVLEAASREAMEEAGVKGILREDPLGVWEFRSKSSSVEADCCLGGGCKG
Sbjct 61 VFPKGGWEDDETVLEAASREAMEEAGVKGILREDPLGVWEFRSKSSSVEADCCLGGGCKG 120
Query 121 YMFALEVKEELAIWPEQDDRERRWLNVKEALELCRYEWMQSALEEFLRVMAEEGSTKEDS 180
YMFALEVKEELAIWPEQDDRERRWLNVKEALELCRYEWMQSALEEFLRVMAEEGSTKEDS
Sbjct 121 YMFALEVKEELAIWPEQDDRERRWLNVKEALELCRYEWMQSALEEFLRVMAEEGSTKEDS 180
Query 181 LAISSISNRGERQIDPRYCFVV 202
LAISSISNRGERQIDPRYCFVV
Sbjct 181 LAISSISNRGERQIDPRYCFVV 202
Although Ogawa teaches an engineered plant comprising a heterologous expression cassette stably integrated into the genome of a plant comprising an operably linked CaMV 35S promoter and a NUDX gene and Olejnik teaches expression of AtNUDt13 in E. coli, S. cerevisiae, and Arabidopsis cells, particularly with C-terminal attachment of GFP, and suggests overexpression of NUDIX13 in engineered plants, Ogawa and Olejnik do not explicitly teach a NUDIX13 polypeptide with a reporter protein fused to its C-terminus. However, expression of a fusion polypeptide with a reporter protein fused to its C-terminus is well known in the art. Palmer teaches C-terminal GFP tagging is generally better in preserving the localization of the native protein and that all C-terminal fusion proteins localized to cellular compartments in accordance with previous studies in contrast with the less than half of N-terminal fusion proteins that were successful in localizing [Abstract]. Palmer specifically teaches that subcellular localization to the mitochondria was possible with the C-terminal tag [pg. 348, col. 2, ¶2], and was more likely to be correct than the N-terminal tag [pg. 351, col. 1, ¶1]. Additionally, there are numerous successful examples of transgenic Arabidopsis lines created with expression of a GFP fusion protein under the constitutive CaMV 35S promoter1.
Given that Ogawa teaches enhanced expression of AtNUDX2 gene in Arabidopsis plants under the control, or operably linked, to a CaMV promoter; given that Olejnik teaches characterization of the At3g26690 gene, which encodes AtNUDT13, teaches overexpression in E. coli cells, transformation of Saccharomyces cerevisiae cells with an expression plasmid encoding the C-terminal fusion of AtNUDT13 to yeast-enhanced green fluorescent protein, transformation of Arabidopsis suspension cells with expression plasmid encoding the N-terminal fusion of AtNUDT13 to GFP, and GFP cloned in frame to the C-terminus of AtNUDT13 in Arabidopsis suspension cells, and suggests overexpression of AtNUDT13 hydrolase in plants; given that the At3g26690 gene encodes a sequence with 100% identity to SEQ ID NO: 40 of the instant application according to BLAST ID: NP_189303.1; and lastly given that Palmer teaches the C-terminal fusion with GFP results in better cellular localization, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to combine the teachings of Ogawa, Olejnik, and Palmer to arrive at the claimed invention.
One would be motivated to modify the engineered plant as Olejnik teaches AtNUDT13 may be involved in the turnover of ATP and ADP during times of stress. It would be obvious to try to express NUDT13 in a plant, as Olejnik teaches that similar to the yeast protein, the AtNUDT13 enzyme hydrolyzes Ap6A and Ap5A asymmetrically, yielding predominantly ADP and p4A, and AMP and p4A, respectively and that AtNUDT13 may be activated during stress [pg. 4882, col. 1, ¶1]. AtNUDX2 is instead reported to hydrolyze ADP-ribose as a substrate, which demonstrates that it has the enzymatic capacity to accelerate maintenance of homeostasis and increase tolerance against stress when over expressed [Ogawa, pg. 297, col. 2, ¶1]. While these enzymes do not have the same substrate, Olejnik teaches that AtNUDT13 could be used for the turnover of ATP and ADP in the mitochondria during stress [pg. 4882, col. 1, ¶1]. This recycling is a piece of recovery that could aid in plant recovery after stress-induced damage.
One would have reasonable expectation of success in expression a fusion protein comprising SEQ ID NO: 40 fused at its C-terminus to a reporter protein under the control of a CaMV 35S promoter as Ogawa teaches successful expression of AtNUDT2 operably linked to a CaMV35S promoter. Although this is a putative cytosolic AtNUDX and AtNUDT13 is characterized as a mitochondrial NUDX gene, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to try to overexpress an AtNUDT13 gene that was previously characterized and the encoded protein sequence published, even with the different localization as it was one of a finite number of identified sequences. Olejnik teaches overexpression in E. coli cells and teaches Arabidopsis suspension cells that were transformed with an expression plasmid encoding the fusion of AtNUDT13 to GFP. As Arabidopsis transgenic plants expressing a GFP fusion protein under CaMV 35S are known to the art, C-terminal fusion of GFP allows for more successful localization specifically to the mitochondria, AtNUDX genes were already being used in overexpression constructs, the AtNUDT13 gene and protein sequence were known, and the suggestion to overexpress AtNUDT13 in transgenic plants were all present in the prior art at the time of filing, one would have been motivated to create the transgenic plant of claim one with reasonable expectation of success and without undue experimentation.
Regarding claims 2 and 6, Ogawa teaches expression of AtNUDX2 in Arabidopsis and Olejnik teaches the Arabidopsis gene encoding the polypeptide of SEQ ID NO: 40 (i.e., wherein the engineered plant is Arabidopsis).
Regarding claim 21, Ogawa explicitly discloses infecting Arabidopsis with the AtNUDX2 vector. T1 seedlings were selected on basic MS medium in Petri dishes before transfer to soil. T3 seeds were harvest from the plants and used to the experiments (i.e. growing, propagating, harvesting, and/or cultivating the plant of claim 1) [pg. 298, col. 1, ¶2]. It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to grow the transgenic plants per the rationale detailed above.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ogawa, Olejnik, NCBI Reference Sequence: NP_189303.1, and Palmer as applied to claims 1-6 and 21 above, and further in view of Lee, K. et al. (2019), “CRISPR/Cas9-mediated targeted T-DNA integration in rice,” Plant Molecular Biology, 99:317-328.
Claim 9 recites the engineered plant of claim 1, wherein the engineered plant comprises a CRISPR-Cas system or component(s) thereof.
As above, Ogawa teaches enhanced expression of AtNUDX2 gene in Arabidopsis plants under the control, or operably linked, to a CaMV promoter; Olejnik teaches characterization of the At3g26690 gene, which encodes AtNUDT13, teaches overexpression in E. coli cells, transformation of Saccharomyces cerevisiae cells with an expression plasmid encoding the C-terminal fusion of AtNUDT13 to yeast-enhanced green fluorescent protein, transformation of Arabidopsis suspension cells with expression plasmid encoding the N-terminal fusion of AtNUDT13 to GFP, and GFP cloned in frame to the C-terminus of AtNUDT13 in Arabidopsis suspension cells, and suggests overexpression of AtNUDT13 hydrolase in plants; the At3g26690 gene encodes a sequence with 100% identity to SEQ ID NO: 40 of the instant application according to BLAST ID: NP_189303.1; and Palmer teaches the C-terminal fusion with GFP results in better cellular localization. Thus, Ogawa, Olejnik, NCBI Reference Sequence: NP_189303.1, and Palmer teach the engineered plant of claim 1. The combined references do not explicitly teach the plant of claim 1, wherein the engineered plant comprises a CRISPR-Cas system or component thereof.
However, Lee teaches that T-DNA integration into the rice genome may be precisely targeted with a combined CRISPR/Cas9 system and Agrobacterium-mediated transformation. Lee teaches the use of a standard Agrobacterium binary vector to construct a T-DNA that contains a CRISPR/Cas9 system using SpCas9 and a gRNA targeting the exon of the rice AP2 domain-containing protein gene Os01g04020 to allow for efficiently generated targeted T-DNA insertions [Abstract]. Lee teaches that this system can be easily applied to other plants, ensuring optimal expression of transgenes without unwanted insertional mutagenesis [pg. 326, col. 1, ¶2; col. 2, ¶2].
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing that the T-DNA insertion upstream from the translation start point of a gene encoding AtNUDT13 could be used in tandem with CRISPR/Cas9. One would have been motivated to do so based on the higher accuracy and lack of unwanted insertional mutagenesis.
Response to Applicant’s Arguments
Rejection of claim 6:
Applicant's arguments filed March 5th, 2026, have been fully considered but they are not persuasive. Applicant contends that claim 6 depends from claim 1 and incorporates all limitations of claim 1 and that Ogawa does not disclose or teach or suggest the feature of a NUDIX 13 polypeptide and that Ugar fails to disclose any NUDIX proteins.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., SEQ ID NO: 40) which were not recited in the rejected claim(s). 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). Thus, the argument is moot in light of the new grounds of rejection.
Rejection of claim 9:
Applicant's arguments filed March 5th, 2026, have been fully considered but they are not persuasive. Similarly to the rejection of claim 6, Applicant argues that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., SEQ ID NO: 40) which were not recited in the rejected claim(s), but were added after the claim amendments.
In the new rejection necessitated by amendments to the claims, Olejnik teaches AtNUDT13 with the same gene as the instant application (At3g26690) which encodes a sequence with 100% identity to SEQ ID NO: 40 of the instant application according to BLAST ID: NP_189303.1, Ogawa teaches enhanced expression of AtNUDX2 gene in Arabidopsis plants under the control, or operably linked, to a CaMV promoter, and Lee teaches that the system can be easily applied to other plants, ensuring optimal expression of transgenes without unwanted insertional mutagenesis [pg. 326, col. 1, ¶2; col. 2, ¶2]. Thus, the newly added limitations are fully disclosed in the combined teachings.
Rejection of claims 10 and 13: (Applicant contends that the features previously recited in claim 10 have been incorporated into amended claim 1, and thus the arguments now apply to claim 1)
Applicant's arguments filed March 5th, 2026, have been fully considered but they are not persuasive. Examiner notes that canceled claim 10 did not recite all of the features incorporated into amended independent claim 1, namely the heterologous expression cassette stably integrated into the genome of the plant, the heterologous expression cassette comprising a CaMV 35S promoter operably linked to a polynucleotide encoding a fusion polypeptide comprising a polypeptide of SEQ ID NO: 40 fused at its C-terminus to a reporter protein. Canceled claim 10 merely provided the feature of the NUDIX gene being a NUDIX 13 gene. Thus, Applicant has argued that the references fail to show certain features of the invention which were not recited in the rejected claim(s) (i.e., a heterologous expression cassette stably integrated into the genome of the plant, SEQ ID NO: 40, fusion at the C-terminus etc.), but were added after the claim amendments [pg. 15, ¶26 – pg. 16, ¶2]. These features are addressed in the new rejection necessitated by amendments to the claims as detailed above.
Applicant argues that Olejnik does not teach or suggest any in planta phenotype, function, or outcome resulting from stable overexpression of NUDIX 13 in a plant. The instant claims are not limited to a function or outcome resulting from stable expression.
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, Olejnik teaches that AtNUDT13 could be involved in the turnover of ATP and ADP during stress and explicitly states that overexpression of AtNUDT13 in plants is in progress [pg. 4882, col. 1, ¶1 and col. 2, ¶1]. This, in combination with the references cited in the new rejection necessitated by the amendments to the claims, renders obvious the claimed invention.
The Applicant argues that there is no reasonable expectation of success in substituting a NUDIX 13 for the NUDIX enzyme of Ogawa because they are not interchangeable members of a functional class, they have diverging in vivo substrate preferences, the cited references provide no guidance on cassette design for stable overexpression of NUDIX 13 in a plant, and NUDIX 13 is mitochondrially localized.
Olejnik teaches that NUDIX 13 does have different functionality and substrate preferences. However, the NUDIX gene family is widely involved in biotic and abiotic stress responses. The instant claims do not require a particular phenotype specific to NUDIX 13, but as Olejnik teaches, AtNUDT13 may be involved in the turnover of ATP and ADP during times of stress and that similar to the yeast protein, the AtNUDT13 enzyme hydrolyzes Ap6A and Ap5A asymmetrically, yielding predominantly ADP and p4A, and AMP and p4A, respectively and that AtNUDT13 may be activated during stress [pg. 4882, col. 1, ¶1]. AtNUDX2 is instead reported to hydrolyze ADP-ribose as a substrate, which demonstrates that it has the enzymatic capacity to accelerate maintenance of homeostasis and increase tolerance against stress when over expressed [Ogawa, pg. 297, col. 2, ¶1]. While these enzymes do not have the same substrate, Olejnik teaches that AtNUDT13 could be used for the turnover of ATP and ADP in the mitochondria during stress [pg. 4882, col. 1, ¶1]. This recycling is a piece of recovery that could aid in plant recovery after stress-induced damage. Thus, there is reasonable teaching, suggestion and motivation that would have led one to modify the engineered plant to express NUDIX13.
Though the Applicant argues that the cited references provide no guidance on cassette design for stable overexpression of NUDIX13 in a plant, especially given that NUDIX13 is mitochondrially localized, the new rejection necessitated by the claim amendment teaches that subcellular localization to the mitochondria was possible with the C-terminal tag [see Palmer, pg. 348, col. 2, ¶2], and was more likely to be correct than the N-terminal tag [id. pg. 351, col. 1, ¶1]. Additionally, Olejnik teaches characterization of the At3g26690 gene, which encodes AtNUDT13, teaches overexpression in E. coli cells, transformation of Saccharomyces cerevisiae cells with an expression plasmid encoding the C-terminal fusion of AtNUDT13 to yeast-enhanced green fluorescent protein, and GFP cloned in frame to the C-terminus of AtNUDT13 in Arabidopsis suspension cells.
Given that the At3g26690 gene and polypeptide sequence was present in the art at the time of filing, as was the motivation of NUDT13 aiding in plant recovery to stress, the suggestion of engineering overexpression constructs in Arabidopsis, and the teachings surrounding targeting mitochondrial localized sequences, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to make an engineered plant comprising an overexpression cassette comprising the claimed elements. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Lastly, the Applicant argues that Olejnik’s statement that overexpression studies of NUDIX13 in plants were in progress is an admission that the outcome of such overexpression in a plant was unknown and required experimental determination. However, Olejnik is suggesting that this is the next logical step in experimentation and provides the gene of interest that was used in the instant application. Given that the gene was provided, other NUDIX genes have been overexpressed, mitochondrial localization can be enhanced by C-terminal tagging, and the invention as a whole was fully stated in the art prior to filing, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to make the invention as claimed.
Summary
Claims 1-6, 9 and 21 are rejected.
Applicants’ 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.
Contact Information
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 Martínez-Silva (2012. “Translation initiation factor AteIF(iso)4E is involved in selective mRNA translation in Arabidopsis thaliana seedlings.” PLoS One. 7(2):e31606. doi: 10.1371/journal.pone.0031606) teaches transgenic lines of Arabidopsis thaliana ecotype Columbia (Col-0) expressing a GFP fusion protein under the constitutive CaMV 35S [pg. 9, col. 2, ¶2].
Prosecution Insights