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 .
Applicant’s response filed 06/05/2026 has been entered. Claims 17-24 are amended. Claims 27 and 32 are cancelled. Therefore, claims 17-26 and 28-31 are pending.
Claims 17-26 and 28-31, pending in this application, are examined.
Withdrawn Objections and Rejections
The 101 rejection to claims 17-18 and 21-22 has been withdrawn in view of Applicant’s amendment to the claims. The written description rejection to the claims regarding the “90% identity” and modifications of “substituting and/deleting and/or adding one or plurality of amino acid residues” has been withdrawn.
Written Description Rejection, New Matter
Claims 17-26 and 28-31 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 claims are amended to recite progeny” in the lineage thereof” and “a conservative substitution of one of the amino acid residues of SEQ ID NO: 1 or SEQ ID NO: 7, wherein said modified maize plant or progeny in the lineage thereof comprises the recombinant nucleic acid located at a position other than maize chromosome 8, said modified plant being produced from a first maize plant that lacks said recombinant nucleic acid”. While the limitation “progeny” has basis in the original specification or original claims, the limitations “progeny in the lineage thereof” has no basis in the original specification or original claims. This is considered to be a New matter.
The limitation “the recombinant nucleic acid located at a position other than maize chromosome 8” is also considered a new matter because Applicant’s arguments on page 8 of the response filed 06/05/2026 against the non-statutory double patenting (NSDP) rejection states the following: “[t]he present invention encompasses cisgenic maize plants that comprise a gene construct located in a non-natural position in maize genome. A cisgenic plant is patentably distinct from a transgenic plant and not an obvious derivation thereof.” Therefore, considering Applicant’s arguments to the NSDP, the amendment to the claims introduces a new matter.
Double Patenting
Claims 17-26 and 28-31 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,077,769. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the application and the issued patent require the nucleic acid sequence of SEQ ID NO: 2, 3 or 6 or encoding SEQ ID NO: 1 or 7; and a method of enhancing resistance to gray leaf spot disease caused by Cercospora zeina in maize plants by introducing said nucleic acid sequences in a recombinant DNA to said plants. This rejection is repeated for the reasons of record as set forth in the last office action of 03/06/2026. Applicant’s arguments filed 06/05/2026 have been fully considered but are not deemed persuasive.
In the response filed 06/05/2026, Applicant argues that “[t]he present invention encompasses cisgenic maize plants that comprise a gene construct located in a non-natural position in maize genome. A cisgenic plant is patentably distinct from a transgenic plant and not an obvious derivation thereof.” This is not found persuasive because the claims of both the instant application and the issued patent require the plant to be modified with insertion of the nucleic acid sequence of SEQ ID NO: 6 encoding SEQ ID NO: 1 or 7 under the promoter of SEQ ID NO: 7, and methods of enhancing resistance to gray leaf spot disease by introducing said sequences into maize plants.
The claims of the instant application require the modified maize plant or progeny in the lineage thereof comprising the recombinant nucleic acid located at a position other than maize chromosome 8. The claims of the issued patent require introducing the recombinant nucleic acid into the maize plant. However, both the instant claims and the issued patent claims require the same recombinant nucleic acid sequence introduced into maize plants to provide resistance against gray leaf spot disease. As known to one of skill in the art, the standard transformation (genetic engineering) method deliver the recombinant nucleic acid directly into the cell, where it typically integrates into a random location on a chromosome. One can also deliver the recombinant nucleic acid to any target position using methods like Crispr gene editing known in the prior art as evidenced by Applicant’s own specification . Therefore, targeting the recombinant nucleic acid to a position other than chromosome 8 in maize does not constitute unexpected results. The rejection is maintained.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDINA AHMED IBRAHIM whose telephone number is (571)272-0797. The examiner can normally be reached Monday-Friday, 9:00 - 6:00.
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MEDINA AHMED. IBRAHIM
Primary Examiner
Art Unit 1662
/MEDINA A IBRAHIM/Primary Examiner, Art Unit 1662
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