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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/10/2026 has been entered.
Applicant’s amendments to claims 1 and 5 in the reply filed on 6/10/2026 are acknowledged.
Claims 1-18 and SEQ ID NO:17 and 18 are examined on the merits.
2. The rejections and objections not recited in this action are withdrawn.
Claim Rejections - 35 USC § 102
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.
3. Claim(s) 1-11, 14-16 remain rejected under 35 U.S.C. 102(a)1) as being anticipated by Hieber et al (2004, Plant Cell Physiol 45(1): 92-102 in IDS) in evidence of Genbank Accession No. OAP16209 (2016).
. The claims are drawn to a genetically altered plant comprising a first nucleotide sequence encoding Photosystem II Subunit S (PsbS) protein operably linked to a heterologous promoter, wherein the genetically altered plant is produced by i) introducing the genetic alteration into a plant cell; ii) regenerating the plant cell into a genetically altered plantlet; iii) growing the genetically altered plantlet into a plant; and iv) selecting the genetically altered plant for increased water use efficiency and biomass, and reduced stomata conductance as compared to the WT grown under the same conditions and wherein the genetical alteration increase activity of PsbS and the genetically altered plant shows increased water use efficiency and biomass, and reduced stomata conductance as compared to the WT grown under the same conditions ; wherein the condition is lower irrigation conditions than standard irrigation condition; or wherein increased PsbS activity provides the genetically altered plant with higher yield; or wherein there is no increase in VDE protein, and there is not reduced KEA3 as compared to a wild type plant; or wherein the increased activity is increased expression; or wherein the increased expression is due to expression of a heterologous PsbS protein;or wherein the net CO2 assimilation of the genetically alter palt is not statistically significantly different from that of a WT plant or wherein the nucleic acid sequence encoding the PsbS protein is operably linked to a promoter such as CaMV35S promoter and stably integrated into the genome of the plant; or the heterologous PsbS protein comprises a protein with at least 70% identity to SEQ ID NO:17 or 18; or wherein the heterologous PsbS protein comprises a glutamate at positions 149 and 255 of SEQ ID NO:21; or wherein the PsbS protein is localized to a thylakoid membrane of a chloroplast.
Hieber et al teach a method comprising transforming a tobacco plant with a Arabidopsis PsbS coding sequence operably linked to a 35S promoter, wherein there is not an increase in VDE protein (page 94, Fig. 2). Hieber et al teach no significant difference between PsbS overexpressing plant and wild type (page 95, Table 1) for photochemical parameters. Arabidopsis PsbS protein is at least 71% identical to instant SEQ ID NO:17(see alignment below). The stable transgenic plant of Hieber et al. would inherently comprise Arabidopsis PsbS coding sequence operably linked to a 35S promoter integrated into the genome. The Arabidopsis PsbS protein also contains a glutamate at positions 149 and 255 of SEQ ID NO:21.
Although Hieber et al do not teach increased water use efficiency and biomass, and reduced stomata conductance or the condition is lower irrigation conditions than standard irrigation condition in the plant such feature would have been inherently exhibited by the transgenic tobacco plant of Hieber et al given the genetically altered plant of Hieber comprising the same structure required by the instant claim. Although Hieber et al do not teach the PsbS protein is localized to a thylakoid membrane of a chloroplast, those features would have been inherently exhibited by the heterologous expressed Arabidopsis PsbS protein of Hieber et al.
Further although the reference does not teach the step iv) selecting the genetically altered plant for increased water use efficiency and biomass, and reduced stomata conductance as compared to the WT grown under the same conditions, such step is not given patentable weight as genetically altered plant can be selected by other method as long as it comprises the same structure as instant plant, which is a plant comprising a first nucleotide sequence encoding Photosystem II Subunit S (PsbS) protein operably linked to a heterologous promoter.
Genbank Accession No. OAP16209 vs. SEQ ID NO:17
Sequence ID: Query_2695945Length: 274Number of Matches: 1
Range 1: 1 to 274GraphicsNext MatchPrevious Match
Alignment statistics for match #1
Score
Expect
Method
Identities
Positives
Gaps
307 bits(787)
2e-110
Compositional matrix adjust.
197/276(71%)
214/276(77%)
14/276(5%)
Query 1 MAQTMLLTSGVTAGHFLRNKSPLAQ---PKVHHLFLSGNSPVALPSRRQSFVP------L 51
MAQTMLLT+ LRNK PL + PK F + P+ PS S +
Sbjct 1 MAQTMLLTANAKVD--LRNKEPLVERLKPKPLSSFFLPSLPLKYPSASSSSSSHFTSTTV 58
Query 52 ALFKPKTKAAPKKVEKPKSKVE-DGIFGTSGGIGFTKANELFVGRVAMIGFAASLLGEAL 110
ALFK K KA KKV + DGIFGTSGGIGFTK NELFVGRVAMIGFAASLLGEA+
Sbjct 59 ALFKSKAKAPAKKVVPKPKEKVEDGIFGTSGGIGFTKQNELFVGRVAMIGFAASLLGEAI 118
Query 111 TGKGILAQLNLETGIPIYEAEPLLLFFILFTLLGAIGALGDRGKFVDD--PPTGLEKAVI 168
TGKGILAQLNLETGIPIYEAEPLLLFFILF LLGAIGALGDRGKF+DD P TGL+KAVI
Sbjct 119 TGKGILAQLNLETGIPIYEAEPLLLFFILFNLLGAIGALGDRGKFIDDPVPATGLDKAVI 178
Query 169 PPGKNVRSALGLKEQGPLFGFTKANELFVGRLAQLGIAFSLIGEIITGKGALAQLNIETG 228
PPGK +SALGL E GPLFGFTKANELFVGRLAQLGIAFS+IGEIITGKGALAQLN ETG
Sbjct 179 PPGKGFKSALGLSEGGPLFGFTKANELFVGRLAQLGIAFSIIGEIITGKGALAQLNFETG 238
Query 229 IPIQDIEPLVLLNVAFFFFAAINPGNGKFITDDGEE 264
+PI +IEPL+L N+ FFF AAINPG GKF+TD+ EE
Sbjct 239 VPINEIEPLLLFNIVFFFVAAINPGTGKFVTDEEEE 274
Applicants traverse in the paper filed 6/10/2026. Applicants’ arguments have been fully considered but were not found persuasive.
Applicants argue that Hieber does not explicitly or inherently disclose selection for increased biomass, reduced stomatal conductance or increased water use efficiency (response, pages 23-26). Applicants argue that instant specification demonstrates that increased PsbS activity does not always result in increased biomass (response, page 25).
The Office contends that the plant of Hieber comprises the same genetical structure as that claimed, therefore without additional unrecited limitations to further define the claimed plant, the plant of Hieber would inherently exhibit the features such as increased biomass, reduced stomatal conductance or increased water use efficiency possessed by instant claims. Applicants further remind that should additional structural limitations required for increased biomass, reduced stomatal conductance or increased water use, those limitations should be included in the claims. The Office contends that there is no requirement that the plants of Hieber need to exhibit increased biomass 100%. There is no evidence that the plants of Hieber would not inherently exhibits claimed features given they share the same structural limitation as the plant as claimed.
Applicants argue that claim 1 specifically recite a selection step for a plant with increased biomass, reduced stomatal conductance or increased water use efficiency, which is not disclosed by the reference (response, page 28).
The Office contends that Hieber are not required to use the same method to produce the modified plant as claimed as long as they share the same genetical structure as the plant of Hieber would inherently exhibit the features such as increased water use efficiency and increased biomass possessed by instant claims. Applicants are reminded that instant claims are directed to product rather than a method.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-18 remain rejected under 35 U.S.C. 103 as being unpatentable over Hieber et al (Plant Cell Physiol 45(1): 92-102 in IDS) as applied for claims 1-11 and 14-16 further in view of Genbank Accession No. OAP16209 (2016).
Claims 1-11 and 14-16 are discussed above.
The claims 12-13 and 17-18 further contain limitations that wherein increased expression is due to overexpression of an endogenous PsbS protein; or wherein the plant part is a leaf; or the plant is not a tobacco plant; or the tissue culture produced from the protoplast or cells from the genetically altered plant wherein the protoplast or cell are produced from a plant part such as leaf and wherein the genetically altered tissue culture includes the genetic alteration; or wherein the overexpression is achieved by gene editing technique such as CRISPR/Cas.
The teachings of Hieber et al. are discussed above.
Hieber et al do not teach that wherein increased expression is due to overexpression of an endogenous PsbS protein; or wherein overexpression of the endogenous PsbS protein was achieved using a gene editing technique such as CRISPR/Cas to introduce more or more genetic alteration that increase the activity; or wherein the plant part is a leaf; or the plant is not a tobacco plant; or the tissue culture produced from the protoplast or cells from the genetically altered plant wherein the protoplast or cell are produced from a plant part such as leaf and wherein the genetically altered tissue culture includes the genetic alteration.
Although Hieber et al do not teach tissue culture per se, such tissue culture would be obviously produced from the transgenic plant cell such as leaf of Hieber et al. for further transformation application. The regenerated plant would also have been obvious produced from the tissue culture to obtain transgenic plant with additional transgene.
Given the recognition of those of ordinary skill in the art of the value of transforming a tobacco plant with a PsbS coding sequence, it would have been obvious to transform other plant species such as Arabidoposis. to confirm the result of Hieber et al. The modified method would result in a transgenic Arabidopsis plant overexpression it endogenous PsbS gene. Although Hieber et al do not teach overexpression of the endogenous PsbS protein was achieved using a gene editing technique such as CRISPR/Cas to introduce more or more genetic alteration that increase the activity, as gene modification method is well known in the art and thus is merely regarded as an obvious design choice. Thus, the claimed invention would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art, especially in the absence of evidence to the contrary.
Applicants traverse in the paper filed 6/10/2026. Applicants’ arguments have been fully considered but were not found persuasive.
Applicants argue that the Office fails to establish a prima facie case of obviousness (response, pages 29-30).
The Office contends that Applicants presented similar argument as discussed above, therefore for the same reason the rejection is maintained.
Applicants further argue that the enhanced water use efficiency is particularly surprising in light of the canonical role of PsbS in non-photochemical quenching (response, page 31).
The Office contends that regardless it is unexpected result or not. As discussed in previous rejection, the enhanced water use efficiency is an inherent feature for a plant with increased PsbS activity which does not rely on additional limitation from claims 12-13 and 17-18.
RESULT 1
AZO31782
(NOTE: this sequence has 4 duplicates in the database searched.
See complete list at the end of this report)
ID AZO31782 standard; protein; 277 AA.
XX
AC AZO31782;
XX
DT 08-DEC-2011 (first entry)
XX
DE Agronomic trait enhancing protein homolog SEQ:11689.
XX
KW agriculture; cold tolerance; crop improvement; plant; plant breeding;
KW transgenic plant; BOND_PC; chloroplast photosystem II 22 kDa component;
KW GO9765; GO16020.
XX
OS Nicotiana benthamiana.
OS xx.
XX
CC PN US2011252501-A1.
XX
CC PD 13-OCT-2011.
XX
CC PF 17-AUG-2007; 2007US-00893915.
XX
PR 17-AUG-2006; 2006US-0838415P.
XX
CC PA (MONS ) MONSANTO TECHNOLOGY LLC.
XX
CC PI Abad M, Deng M, Duff S, Fernandes M, Gabbert KK, Alvarez JA;
CC PI Bennett KA, Castiglioni P, Deikman J, Fenner J, Ke D, Goldman BS;
CC PI Qi Q, Ruff TG, Thompason-Mize RL, Wu J, Adams TR, Bensen R;
CC PI Heard JE, Nelson DE, Bell E, Cerny RE, Chittoor-Vijayanath JM;
CC PI Fabbri BJ, Karunanandaa B, Ledeaux JR, Chen X, Galligan-Donnarummo M;
CC PI Hawkins DJ, Lee GJ, Patty O, Sanders RA, Savidge B, Val DL;
CC PI Zheng W, Savage TJ, Somaiah RM, Suma S, Sun J, Venkatesh T, Xu N;
CC PI Anuradha M, Augustine AC, Deeba F, Dhanalakshmi R, Madappa S;
CC PI Pranesh BS, Rajani MS, Ramamohan G, Sangeetha S, Shobha C;
CC PI Sudarshana P, Vidva KR, Venkatachalayya S;
XX
DR WPI; 2011-M86186/69.
DR PC:NCBI; gi84620804.
XX
CC PT New plant cell nucleus with stably integrated, recombinant DNA, useful
CC PT for developing transgenic plants with enhanced traits, e.g. enhanced cold
CC PT and heat tolerance, enhanced resistance to salt exposure, and enhanced
CC PT shade tolerance.
XX
CC PS Example 6; SEQ ID NO 11689; 70pp; English.
XX
CC The present invention relates to transgenic plant cells with recombinant
CC DNA for expression of proteins that are useful for imparting enhanced
CC agronomic trait(s) to transgenic crop plants and seeds. The recombinant
CC DNA comprises a promoter which is operably linked to a DNA encoding a
CC protein which comprises a Pfam domain module. The enhanced agronomic
CC trait of the transgenic crop plants are selected from: enhanced water use
CC efficiency, enhanced cold tolerance, increased yield, enhanced nitrogen
CC use efficiency, enhanced seed protein and enhanced seed oil. The present
CC sequence represents a recombinant DNA encoding protein homolog used for
CC production of transgenic plants with enhanced agronomic trait as
CC described in the invention.
CC
CC Revised record issued on 29-NOV-2011 : Enhanced with precomputed
CC information from BOND.
XX
SQ Sequence 277 AA;
Query Match 100.0%; Score 1380; Length 277;
Best Local Similarity 100.0%;
Matches 277; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MAQTMLLTANAKVDLRSKESLVERLKPKPLSSFFLPSLSLKYPSASSSSSSSSSHFTSTT 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MAQTMLLTANAKVDLRSKESLVERLKPKPLSSFFLPSLSLKYPSASSSSSSSSSHFTSTT 60
Qy 61 VALFKSKAKAPAKKVVPKPKEKVEDGIFGTSGGIGFTKQNELFVGRVAMIGFAASLLGEA 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 VALFKSKAKAPAKKVVPKPKEKVEDGIFGTSGGIGFTKQNELFVGRVAMIGFAASLLGEA 120
Qy 121 ITGKGILAQLNLETGIPIYEAEPLLLFFILFNLLGAIGALGDRGKFIDDPTPPTGLDKAV 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 ITGKGILAQLNLETGIPIYEAEPLLLFFILFNLLGAIGALGDRGKFIDDPTPPTGLDKAV 180
Qy 181 IPPGKGFKSALGLSEGGPLFGFTKANELFVGRLAQLGIAFSIIGEIITGKGALAQLNFET 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 IPPGKGFKSALGLSEGGPLFGFTKANELFVGRLAQLGIAFSIIGEIITGKGALAQLNFET 240
Qy 241 GVPINEIEPLLLFNIVFFFVAAINPGTGKFVTDEEEE 277
|||||||||||||||||||||||||||||||||||||
Db 241 GVPINEIEPLLLFNIVFFFVAAINPGTGKFVTDEEEE 277
Summary
Claims 1-18 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LI ZHENG whose telephone number is (571)272-8031. The examiner can normally be reached Monday-Friday (9-5).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRATISLAV STANKOVIC can be reached on 571-270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LI ZHENG/Primary Examiner, Art Unit 1662
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