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 the claims
Claims 1-32 are currently pending. Claims 2- 3, 5, 7- 8, 12-13, 17-18 22, and 24-27 have been amended. This application was subject to restriction. Applicant’s election without traverse of Group I in the reply filed on 3/9/2026 is acknowledged. Claims 1-9, 24-28 and 31-32 have been elected and subject to examination. Claims 10-23 and 29-30 are withdrawn from further consideration as drawn to a non-elected invention.
This action acknowledges applicant’s statement expressly reserving the right to request rejoinder as asserted in the remarks of 3/9/2026. As noted by applicants, MPEP 821.04(a) states:
Where restriction was required between independent or distinct products, or between independent or distinct processes, and all claims directed to an elected invention are allowable, the examiner should withdraw any restriction requirement between the elected invention and any nonelected invention that depends from or otherwise requires all the limitations of an allowable claim.
…
Claims that do not require all the limitations of an allowable claim remain withdrawn from consideration. However, in view of the withdrawal of the restriction requirement, if any claim presented in a divisional application includes all the limitations of a claim that is allowable in the parent application, such claim may be subject to a double patenting rejection over the claims of the parent application. Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01. Additionally, a patentably indistinct claim in a child application would be subject to a double patenting rejection over the claims of the parent application when the child application is a continuation or continuation-in-part application or is a divisional application without consonance. The prohibition against double patenting rejections under 35 U.S.C. 121 is limited to divisional applications with consonance. See MPEP § 804.01
[Emphasis added].
Accordingly, in the event that the non-elected claims require all the limitation of an allowed claim rejoinder will be considered as required by the MPEP.
Rejection under 35 USC 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 is 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.
Under BRI, claim 4 is read as identifying the native phosphorylatable residues and not the identity of the residues that are substitute therein. There is an internal inconsistency between claim 1 and 4 because claim 1 recites a modified SYMRK polypeptide comprising phosphorylatable residues at S877, S885, S889, S893 which are substituted with a phosphomimetic amino acid residue, and/or phosphorylatable residues at S724, S731, S742, S751, S754 are substituted with a non-phosphorylatable amino acid residue. Because the phosphomimetic alternatives in claim 1 are replacement residues and those in claim 4 are phosphorylatable residues the limitation of claim 4 are not consistent with that of claim 1. Accordingly claim 4 fails to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 5 is 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.
Claim 5 recites:
“… the plant SYMRK polypeptide comprises a polypeptide with at least 70% identity, at least 80% identity, at least 90% identity, at least 95% identity, or at least 99% identity to a protein selected from the group consisting of SEQ ID NO: 1, SEQ ID NO: 2, SEQ ID NO: 3, SEQ ID NO: 4, SEQ ID NO: 5, SEQ ID NO: 6, SEQ ID NO: 7, and SEQ ID NO: 8 or a functional fragment or conserved domain thereof.” [Emphasis added].
The breath and scope of the identity limitations cannot be reasonably determined (see Nautilus, Inc. v. Biosig Instruments, Inc.; MPEP § 2173). It is unclear whether the listed sequence-identity thresholds apply only to the full-length proteins identified by SEQ ID NOs 1–8, or also to the “functional fragment or conserved domain thereof” alternative. The phrase “functional fragment or conserved domain thereof” creates ambiguity as to the reference subject for the identity comparison and leaves the metes and bounds of the claim uncertain.
To determine the BRI of a claim we first look to the disclosure which set forth the full-length SYMRK sequences, but then states that homologues may include a “functional fragment or conserved domain thereof.” The disclosure, however, fails to clearly define how identity is to be measured for the fragment/domain alternative, nor does it clearly limit the scope in a way that resolves the ambiguity in claim 5. Accordingly, claim 5 is 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.
35 USC 112(a)
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.
Claim 5 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(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.
The specification lists eight full-length SYMRK sequences and states that homology/identity can range broadly, but it does not identify representative structures and common features sufficient to show possession of all polypeptides meeting the claimed 70%–99% identity range, especially functional fragments or conserved domains across the listed species. To support such a broad genus requires more than simply a claim to that genus as the disclosure must show possession of the claimed scope. Furthermore, a broad genus claim that is based on functional results, such as that in claim 5, fails to adequately show possession of the claimed invention and thus must fail written description of 35 USC 112(a). For a sequence of 923 amino acids that claims at least 70% identity encompasses variation in approximately 276 non-continuous/continuous residues. Given that there are 20 standard amino acids in which 70% must remain those of Seq ID No. 2, the variation of sequences encompasses 2.43 x10360
and as such fails to demonstrate possession of the scope of the claimed invention encompassed by claim 5. Furthermore, the modified plant SYMRK of claim 5 depend from claim 1 which references Seq ID NO:2. Accordingly a plant SYMRK polypeptide that comprises a polypeptide with at least 70% identity must be reflected in the sequence.
Seq ID No: 2 is 923 residues long. A sequence that has 70% identity must to 923 residues must have ~646 identity to Seq ID NO 2. The alignment of SEQ ID NO 2 and SEQ ID NO 1 is shown below.
Query Match 32.3%; Score 1537.5; DB 1; Length 579;
Best Local Similarity 53.7%;
Matches 318; Conservative 82; Mismatches 141; Indels 51; Gaps 9;
Qy 338 LLNAYEILQVRPWIEETNQTDVGVIQKMREELLLQNSGNRALESWS--GDPCILLPWKGI 395
|| | :| : | | ::::| | :| |: |:||: |||| |:|
Db 7 LLYALLLLALATAAPSHGLTQADVAKRLKEVLSERNRGHEMLDSWNGDGDPCSPSTWEGF 66
Qy 396 ACDGSNGSSVITKLDLSSSNLKGLIPSSIAEMTNLETLNISHNSFDGSVPSFPLSSLLIS 455
:|: :|: |: ||: || |:| ||: || :| | ::: :|:| | :|:
Db 67 SCEPKDGAQVVVKLNFSSKKLQGPIPAEIANLTELNEIHLQYNNFTGFIPA--------- 117
Qy 456 VDLSYNDLMGKLPESIVKLPHLKSLYFGCNEHMSPEDPANMNSSLINTDYGRCKGKESRF 515
| || | || :: : | :| :| || | :|
Db 118 --------------SFSAFRHLLKLSVICNPLLNNKQPDGFSSG-VNFSYGGCATQEYYS 162
Qy 516 G--------------QVIVIGAITCGSLLITLAFGVLFVC-RYRQKLIPWEGFAGKKYPM 560
:| ||| : ||| |:| | ||| |:: | |
Db 163 SPAEEYQSPPAVASQKVYVIGGVAGGSLACTVALGSFFVCFNKRERRSP-----KKDCSS 217
Qy 561 ETNIIFSLPSKDDFFIKSVSIQAFTLEYIEVATERYKTLIGEGGFGSVYRGTLNDGQEVA 620
|| :| | : : ::| :|: |: || |||:|||||||:|||| | :|||||
Db 218 TTNPVFQECSIHN--TTNPAVQQLSLKAIQTATSNYKTMIGEGGFGAVYRGALANGQEVA 275
Qy 621 VKVRSATSTQGTREFDNELNLLSAIQHENLVPLLGYCNESDQQILVYPFMSNGSLQDRLY 680
|||||::||||||||:||| ||||: |||||||:||| | ||||||||||||||||||||
Db 276 VKVRSSSSTQGTREFNNELRLLSAVWHENLVPLIGYCCEKDQQILVYPFMSNGSLQDRLY 335
Qy 681 GEPAKRKILDWPTRLSIALGAARGLAYLHTFPGRSVIHRDIKSSNILLDHSMCAKVADFG 740
|| :|||:||||||||: :|||||| ||| | || :||||||||||||||||| ||||||
Db 336 GEASKRKVLDWPTRLSVCIGAARGLVYLHNFAGRCIIHRDIKSSNILLDHSMCGKVADFG 395
Qy 741 FSKYAPQEGDSYVSLEVRGTAGYLDPEYYKTQQLSEKSDVFSFGVVLLEIVSGREPLNIK 800
||||||||||| |:|||||||||||||| || || :||||||||||||||:|||||::|
Db 396 FSKYAPQEGDSNPSMEVRGTAGYLDPEYYSTQVLSTRSDVFSFGVVLLEIVTGREPLDVK 455
Qy 801 RPRTEWSLVEWATPYIRGSKVDEIVDPGIKGGYHAEAMWRVVEVALQCLEPFSTYRPSMV 860
||| |||||||| |||| |::|:||||||| | :||||||:||| | |||||:||:|
Db 456 RPRHEWSLVEWAKPYIREYKIEEMVDPGIKGQYCSEAMWRVLEVASVCTEPFSTFRPTME 515
Qy 861 AIVRELEDALIIENNASEYMKSIDSLG--GSNRYSIVIEKRVLPSTTSTAES 910
::|||||||||||||||||:||:| | ||||| : |:::: | :: ||
Db 516 DVLRELEDALIIENNASEYMRSIESTGTLGSNRY-LSIDRKMFASGSARIES 566
As can be seen the alignment shows a 32% identity. A similar alignment of Seq ID NO. 2 with SEQ ID’s 3-8 is listed below
Sequence identity comparisons
% identity
SEQ ID NO. 2 vs. SEQ ID NO. 3
49.8
SEQ ID NO. 2 vs. SEQ ID NO. 4
81.2
SEQ ID NO. 2 vs. SEQ ID NO. 5
58.4
SEQ ID NO. 2 vs. SEQ ID NO. 6
32.6
SEQ ID NO. 2 vs. SEQ ID NO. 7
29.7
SEQ ID NO. 2 vs. SEQ ID NO. 8
24.6
From these alignments only Seq ID No. 4 meets the 70 to 80% identity requirement but does not satisfy any greater % alignments.
Claim 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Given the breath of the species encompassed within the limitations of claim 5, undue experimentation would be required to practice the full breadth of the claimed genus, especially the broad sequence-identity range and “functional fragment or conserved domain” alternatives across multiple species. Consider the In re Wands factors, which include the claim breadth- which is substantial; the number of potential variants, which is extremely large; the disclosure, which contains limited representative examples outside the specifically tested variants; and the requirement that ensues therefrom to determine which additional homologs and fragments retain the claimed characteristics would require substantial screening and testing. MPEP § 2164. The specification gives examples of specific SYMRK protein, and a generalized statement of homology, but provide limited and technical insufficient guidance to identify all variants and fragments and domains that satisfy the claim and still retain the recited functional relationship. The number of possible species and fragment permutations is large and unsupported. Accordingly, claim 5 fails to provide adequate support under 112(a) enablement.
Prior Art
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art of Markmann et al. teaches that SYMRK is a conserved symbiosis receptor kinase that can be found across plant lineages and that SYMRK versions from different species exhibit functional conservation and differences in symbiotic capability. Yoshida et al. teaches that SYMRK is an active kinase whose function is regulated by phosphorylation, including phosphorylation-dependent changes in kinase activity. Perry et al. teaches that alterations in conserved SYMRK kinase-domain residues are associated with loss of symbiotic function and non-nodulating phenotypes. In view of these teachings, it would appear to be obvious to modify residues of SYMRK by changing aa resides by substitution of one or more of the phosphorylatable amino acid residues. However, none of the prior art disclose or suggest the modification of specific amino acid residues of SYMRK at phosphorylatable or otherwise functionally important residues using routine phosphomimetic or non-phosphorylatable substitutions in order to alter SYMRK activity and symbiotic function.
Conclusion
Claims 1-3, 6-28 and 31-32 are allowed.
` Any inquiry concerning this communication or earlier communications from the examiner should be directed to SPE Gary Benzion whose telephone number is (571)272-0782. The examiner can normally be reached M-F, 8 am to 5pm.
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/GARY BENZION Ph.D.
Supervisory Patent Examiner
Art Unit 1681
/GARY BENZION/ Supervisory Patent Examiner, Art Unit 1681
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