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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-19 in the reply filed on 04/10/2026 is acknowledged.
Claim Status
Claims 1-26 are pending. Claims 20-26, are withdrawn. Claims 1-19 are examined in the instant application.
Priority
This application is claiming the benefit of Provisional Application No.
63/530,816 filed August 04, 2023.
Information Disclosure Statement (IDS)
The IDS submitted on 11/15/2024 has been considered. Signed copy is attached.
Claim Objections
Claims 8, 14 and 18, are objected to because of the following informalities:
In regard to claims 8 and 18, the recitation of “ptxD” needs to be spelled out the first time using the acronym.
In regard to claims 12 and 13, the recitation of “Trebouxiophyte” and “Oocytis”, respectively, need to be italicize.
In regard to claim 14, the recitation of “RS” needs to be spelled out the first time using the acronym.
Appropriate correction is required.
Specification
The disclosure is objected to because of the following informalities:
Pg. 4, Para. [0014], Figure 2, description is missing description for components 212, 213, and 208.
Pg. 5, Para. [0015], Figure 3, description is missing description for component 312.
Appropriate correction is required.
Claim Rejections - 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 7 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 7 recites the limitation “the antibiotic”: there is insufficient antecedent basis for this claim limitation.
Claim Rejections - 35 USC § 112(a)(Written Description)
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-19, are 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 written description requirement may be satisfied through sufficient description of a representative number of species by disclosing relevant and identifying characteristics such as structural or other physical and/or chemical properties, by disclosing functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the invention as claimed. See Eli Lilly,119 F.3d at 1568, 43 USPQ2d at 1406.
Applicant’s disclosure is as follows.
The Applicant describes introducing both nuclear (SEQ ID NO: 10) or chloroplast targeted selectable marker (chloroplast integration vector NAS30505), which comprises the erythromycin resistance transgene ereB (SEQ ID NO: 1) (para. [0043]), with CRISPR editing system (T161 nuclear Cas9 target (SEQ ID NO 11), into the same cell (ex. 4). The nuclear selection marker yielded a statistically significant, 5.33-fold higher Cas9 editing efficiency (32.18%) than a chloroplast marker (6.25%) (para. [0050]). The Applicant determined that delivering both the CRISPR ribonucleoprotein (RNP) complex and the selection marker to the same organelle increases editing efficiency.
Claims encompass any RNP and selectable marker. Additionally, any level of selection efficiency can be seen.
The claimed invention lacks adequate written description for the following reasons. Claims 1-19 are directed to a method of selecting for genetic modification to genome in the nucleus of a photosynthetic cell, which comprises a RNP and a chloroplast selectable marker.
(1) Claim 1 encompasses any genetic modification. However, the specification only describe inserting CRISPR Cas9 RNP’s. The specification fails to describe other modifications such as deletions, substitutions, truncations, etc. The lack of representative number of modifications capable of being used with the selection method makes it unpredictable to identify which would result in editing efficiency. Therefore, the claims lack adequately description of the genetic modifications that would produce a viable method of selection.
Moreover, while one skilled in the art can readily introduce a chloroplast selectable marker, one skilled in the art cannot predictably identify which marker to be used along with the RNP or the target sites in the plastid. For example, Esland et al. “Selectable Markers and Reporter Genes for Engineering the Chloroplast of Chlamydomonas reinhardtii”, 2018 Biology vol. 7,4 46, (U), describe that “The application of this [i.e. chloroplast selectable markers] technology to the C. reinhardtii chloroplast therefore requires consideration of recombinases for which the plastome lacks possible cryptic target sites, and the use of recessive endogenous markers such as ARG7 for the nuclear engineering step” (pg. 16). Esland et al. suggest that introducing selectable markers into the chloroplast requires specific, recombinases for “cryptic target sites” and specific endogenous markers. Therefore, the claims encompass ad infinitum amount chloroplast selectable markers, however the specification only describes one and the art requires specific markers with specific target sites.
Because of the lack of a description of a representative number of structures/sequences, the absence of information in the art on co-expressing RNP’s with chloroplast selection markers, one skilled in the art would not know the structures that aid in selection and that predictably increase editing efficiency.
Accordingly, there is lack of adequate description to inform a skilled artisan that Applicant was in possession of the claimed invention at the time of filing. See Written Description guidelines published in Federal Register/ Vol.66, No. 4/ Friday, January 5, 2001/ Notices; p. 1099-1111.
Claim Rejections - 35 USC § 112(a)(Enablement)
Claims 1-19, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for introducing both nuclear (SEQ ID NO: 10) or chloroplast targeted selectable marker (chloroplast integration vector NAS30505), which comprises the erythromycin resistance transgene ereB (SEQ ID NO: 1) (para. [0043]), with CRISPR editing system (T161 nuclear Cas9 target (SEQ ID NO 11), into the same cell (ex. 4). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
“The first paragraph of 35 U.S.C. § 112 requires, inter alia, that the specification of a patent enable any person skilled in the art to which it pertains to make and use the claimed invention. Although the statute does not say so, enablement requires that the specification teach those in the art to make and use the invention without ‘undue experimentation.’ In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
That some experimentation may be required is not fatal; the issue is whether the amount of experimentation required is ‘undue.’” In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991) (emphasis in original); see also In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993) (“[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’”) “Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations.” Wands, supra.
Some experimentation, even a considerable amount, is not “undue” if, e.g., it is merely routine, or if the specification provides a reasonable amount of guidance as to the direction in which the experimentation should proceed. Factors to consider include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. Id.
Applicant’s disclosure is as set forth above. The claimed invention is not enabled for the following reasons. To comply with 35 USC 112(a) enablement, one skilled in the art must be able to make and use the claimed invention.
(A) The breadth of the claims
The breadth of the claims encompasses a method of selection for any type of genetic modifications of a photosynthetic cell, comprising any ribonucleoprotein complex and any selectable marker into the plastid of the photosynthetic cell.
(B) The nature of the invention.
The nature of the claimed invention is directed to a method of selection for genetic modifications of a photosynthetic cell, comprising ribonucleoprotein complex (SEQ ID NO: 11) or chloroplast targeted selectable marker (chloroplast integration vector NAS30505), which comprises the erythromycin resistance transgene ereB (SEQ ID NO: 1) (para. [0043]), into the same cell (ex. 4).
(C) The state of the prior art
The state of the prior art teaches introducing RNP’s or chloroplast selectable markers to modify the nuclear genome. However, the prior art does not teach strategy where the selectable marker specifically targets the chloroplast while the RNP independently targets the nuclear genome.
(D) The level of one of ordinary skill
The level of one of ordinary skill in the art is high.
(E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
The claimed invention lacks adequate enabling guidance for the following reasons. Claims 1-19 are directed to a method of selecting for genetic modification to genome in the nucleus of a photosynthetic cell, which comprises a RNP and a chloroplast selectable marker.0
(1) Claim 1 encompasses any genetic modification. However, the specification only teach inserting CRISPR Cas9 RNP’s. The specification fails to teach or provide enabling guidance of other modifications such as deletions, substitutions, truncations, etc. The lack of enough working examples that encompass the vast number of modifications would not allow one skilled in the art to make and use said method of selection. Therefore, the claims lack adequately enabling guidance of the genetic modifications that would produce a viable method of selection and would result in undue burden of experimentation.
Moreover, while one skilled in the art can readily introduce a chloroplast selectable marker, one skilled in the art cannot predictably make and use which marker to be used along with the RNP or the target sites in the plastid. For example, Esland et al. “Selectable Markers and Reporter Genes for Engineering the Chloroplast of Chlamydomonas reinhardtii”, 2018 Biology vol. 7,4 46, (U), teach that “The application of this [i.e. chloroplast selectable markers] technology to the C. reinhardtii chloroplast therefore requires consideration of recombinases for which the plastome lacks possible cryptic target sites, and the use of recessive endogenous markers such as ARG7 for the nuclear engineering step” (pg. 16). Esland et al. suggest that introducing selectable markers into the chloroplast requires specific, recombinases for “cryptic target sites” and specific endogenous markers. Therefore, the claims encompass ad infinitum amount chloroplast selectable markers, however the specification only teaches one marker and the art requires specific markers with specific target sites.
The specification fails to TEACH, or fails to provide GUIDANCE for identifying the genetic modification and site of modification that would result in a method for selection. This requires the specification to teach the structures and target points to allow one skilled in the art to identify such RNP’s and selectable markers.
Given the breadth of the claims, the lack of sufficient guidance, the absence of working examples regarding the types of genetic modifications and site of modification, which confer functional activity/100% selection efficiency, the state of the prior art, and unpredictability in the art, one skilled in the art cannot make and use the claimed invention as commensurate in scope with the claims without excessive burden and undue experimentation.
For at least this reason, the Specification does not teach a person with skill in the art how to make and/or use the subject matter within the full scope of these Claims.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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 1-7, 9-17 and 19, are rejected under 35 U.S.C. 103 as being unpatentable over Elghabi et al. “Biolistic co-transformation of the nuclear and plastid genomes”, 2011, The Plant journal : for cell and molecular biology vol. 67,5 : 941-8. (V)) and in further in view of Verruto et al. (U.S. 20210017530 A1(A)).
In regard to claims 1-3, 5, and 11-12, Elghabi et al. teach a method of co-transformation experiments with vectors targeted to two different cellular compartments, the nucleus and the plastids (chloroplasts) (Abstract). Elghabi et al. teach that “Employing a co-transformation strategy, in which the selection marker is placed into the plastid genome, provides an elegant method to generate clean marker-free nuclear-transgenic plants that do not even carry a footprint of the removed selection marker (e.g., a loxP copy remaining in the genome after CRE-mediated recombinational marker excision)” (pg. 947 col.1 para. 1).
Moreover, Elghabi et al. teach that this method “provide a fast method for the one-step co-transformation of two different genomes in the plant cell (by direct selection for co-transformation)” (pg. 947 col.1 para. 3).
In regard to claim 4, Elghabi et al. teach utilizing primers and western blotting, and PCR to detect the gene of interest (pg. 947 col.2 para. 2). Substituting PCR or sequencing a method of confirming gene integration is an experimental design choice well within the means of one skilled in the art without any surprising or unexpected results.
MPEP 2143 (b) states that “Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious." Id. at 301, 213 USPQ at 536” and “It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007)”
In regard to claims 6-7, 9 and 17, Elghabi et al. teach that the selection markers were inserted in the plastome and cells were grown on an antibiotic selection agar media, such spectinomycin (fig. 1).
In regard to claims 14 and 16, Elghabi et al. teach that the chloroplast selectable marker comprises a promoter and a terminator (fig. 1 sec. a). Therefore, since the plasmids comprises a promoter and terminator to express the selection marker then the selection marker would comprise an RS-up and RS-down arms.
In regard to claim 15, Elghabi et al. teach utilizing PCR to amplify the DNA construct (pg. 947 col.2 para. 2).
In regard to claim 19, Elghabi et al. teach utilizing biolistic gun for transformation (Title).
In regard to claims 1-3, 5, and 10-13, Elghabi et al. does not teach the use of CRISPR/Cas9 or the alga organism Trebouxiophyte or Oocytis.
In regard to claims 1-3, 5, and 10-13, Verruto et al. teach utilizing CRISPR Cas9 editing systems (i.e. ribonucleoproteins) to genetically modify algal organisms in the Trebouxiophyceae class and Oocytis genus (claims 1-2, paras. [0135] and [0140]).
Therefore, prior to the effective filing date of the instant invention it would have been prima facie obvious to one of ordinary skill in the art to modify the plastid-nuclear co-transformation method as taught by Elghabi et al. to use the CRISPR Cas9 editing system as taught by Verruto et al. because a gene of interest could be mutated in an elegant method to generate clean marker-free nuclear-transgenic plants.
One would have a reasonable expectation of success in doing so because Verruto et al. teach introducing “highly efficient” (para.[0005]) CRISPR Cas9 editing systems in algae (claims 1-2, paras.[0135] and [0140]).
Furthermore, one would be motivated to utilize the species Oocytis (i.e.Trebouxiophyte), because it is a well-known practice to genetically modify algae organisms as taught by Verruto et al.
Therefore, the claimed invention is obvious over the prior art.
Claims 8 and 18, are rejected under 35 U.S.C. 103 as being unpatentable over Elghabi et al. “Biolistic co-transformation of the nuclear and plastid genomes”, 2011, The Plant journal : for cell and molecular biology vol. 67,5 : 941-8. (V)) and in view of Verruto et al. (U.S. 20210017530 A1(A)) as applied to claims 1 and 16 above, and further in view of Dormatey et al. “ptxD/Phi as alternative selectable marker system for genetic transformation for bio-safety concerns: a review”, 2021, PeerJ 9:e11809 (W).
The teachings of Elghabi et al. and Verruto et al. are addressed above with respect to claims 1 and 16.
In regard to claims 8 and 18, Elghabi et al. and Verruto et al. do not teach the use of phosphite oxidoreductase (PTXD) gene as a selectable marker.
In regard to claims 8 and 18, Dormatey et al. teach that ptxd gene is “effective and efficient system for selecting transformed cells. The selection system adds nutrients to transgenic plants without potential risks to the environment. The ptxD/Phi system has been shown to be a promising transgenic selection system with several advantages in cost and safety compared to other antibiotic-based selection systems” (Abstract).
Therefore, prior to the effective filing date of the instant invention it would have been prima facie obvious to one of ordinary skill in the art to modify the teachings of Elghabi et al. and Verruto et al. by utilizing a PTXD gene as a selection marker in algae, because algas’ inability to use phosphite as taught by Dormatey et al. and would lead to a mutated gene of interest in an elegant method to generate clean marker-free nuclear-transgenic plants.
One would be motivated to do so and with a reasonable expectation of success in doing so because Dormatey et al. teach that it is an efficient and effective system, low potential risk, and high reward selection system (Abstract).
Therefore, the claimed invention is obvious over the prior art.
Conclusion
No claims are allowed.
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/C.J.O./Examiner, Art Unit 1663
/JASON DEVEAU ROSEN/Primary Examiner, Art Unit 1662
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