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 1-8 and 16-17 in the reply filed on January 27, 2026 is acknowledged. Upon further consideration the restriction is withdrawn. Claims 1-19 are examined in the instant Application.
Claim Status
Claims 1-19 are pending. Claims 1-19 are examined in the instant application.
Priority
Acknowledgment is made of Applicant' s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. This application is claiming the benefit of Application No. JP2022-026111 filed February 22, 2022.
Information Disclosure Statement (IDS)
The IDS submitted on 11/20/2024, 10/27/2025 and 01/27/2026 have been considered. Signed copies are attached.
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 a tobacco plant comprising both mutants alleles in the endogenous Lycopene 2-Cyclase (LCY-e) genes. These genes are mutated, Nicotiana sylvestris (SEQ ID NO: 1) and Nicotiana tomentosiformis (SEQ ID NO: 2), to ensure the enzyme’s function is suppressed across the entire genome (see page 9 paragraphs [0028] and [0030]) resulting in “β-damascenone, β-damascone, and β-cyclocitral that were increased only in the double mutant” (p. 63-64, table 4, and fig.1).
Claims encompass polypeptides having as little as 95% sequence identity to SEQ ID NOs: 1 and 2.
The claimed invention lacks adequate written description for the following reasons. Claims 1-19 are directed to a tobacco plant that comprises SEQ ID NO: 1 (LCY-e-S protein) and SEQ ID NO: 2 (LCY-e-T protein) resulting in a decrease of expression and function of LCY-e activity compared to the wild-type plant.
The claims encompasses an amino acid sequence having at least 95% sequence identity to SEQ ID NOs: 1 and 2. The only LCY-e-S and LCY-e-T amino acids disclosed is from Nicotiana having SEQ ID NOs: 1 and 2 being mutated resulting in increased β-damascenone, β-damascone, and β-cyclocitral levels.
The specification does not describe a representative number of amino acid sequences from the genus of sequences with at least 95% identity to SEQ ID NO: 1 and 2. Therefore, one skilled in the art cannot identify the mutations in the structures that will suppress LCY-e activity. Furthermore, Applicant has not described a representative number of mutations in amino acid sequences having 95% or more identity to SEQ ID NO: 1 or that will suppress LCY-e activity
The specification fails to describe that variants with at least 95% sequence identity to SEQ ID NOs: 1 and 2 retain function across different tobacco plants. Consequently, it remains unknown whether a polypeptide having at least 95% sequence identity to SEQ ID NO: 1 and 2 has LCY-e-S or LCY-e-T functional activity so when it is mutated it loses function. This is because the specification does not describe functional domains or motifs such that one would have no idea if the variants possess the necessary structures to retain LCY-e functional activity.
A polypeptide with at least 95% identity to SEQ ID NOs:1 and 2 would have 26 amino acid substitutions relative to SEQ ID NOs: 1 and 2.
These polypeptides would encompass 1926 distinct protein variants for each sequence. In the absence of describing where in the sequence of SEQ ID NOs:1 and 2 such variations can be sustained, one of skill in the art would not be led to believe that Applicant possesses this vast genus of amino acid sequences that retain LCY-e function and may be suppressed.
The specification describes 3 tobacco lines having single point mutations that suppress gene activity: 2 lines having 78Th glutamine and 145th tryptophan of the LCY-e-S protein and 1 line at the 7th arginine of the LCY-e-T(spec. p. 53).
However, these are just 3 single point mutations and not a representative number of possible mutations across the whole polypeptide of that would suppress the LCY-e function/expression of SEQ ID NOs: 1 and 2. The Applicant does not describe mutations to sequences with 95% or more sequence identity with SEQ ID NOs: 1 and 2 that have suppressed function.
Applicant has described one structure/sequence which is not deemed to be a representative number of structures/sequences from the genus of sequences having 95% sequence identity to SEQ ID NOs: 1 and 2 that retain function and an in turn may be mutated to suppress activity.
Because of the lack of a description of a representative number of structures/sequences, the absence of information in the art on conserved regions required to generate mutants with suppressed expression of LCY-e-S and LCY-e-T, and the impact of 5% variation of SEQ ID NOs:1 and 2, one skilled in the art would not know the structures that confer the desired trait.
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 a double mutant tobacco plant comprising both mutations in SEQ ID NO: 1 SEQ ID NO: 2 to increase levels of β-damascenone, β-damascone, and β-cyclocitral as exemplified on page 53 of the instant specification, does not reasonably provide enablement for a polypeptide having as little as 95% sequence identity to SEQ ID NOs:1 and 2 having suppressive activity. 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 any tobacco plant comprising polypeptides having any structure within 95% sequence identity to SEQ ID NOs:1 and 2, provided that the function of said polypeptides has been suppressed. However, the specification has only taught mutating the specific sequences of SEQ ID NOs:1 and 2 in a tobacco plant increases β-damascenone, β-damascone, and β-cyclocitral.
(B) The nature of the invention.
The nature of the claimed invention is directed to any tobacco plant comprising polypeptides having at least 95% sequence identity to SEQ ID NOs: 1 and 2 which what mutated reduce LCY-e activity.
(C) The state of the prior art
The state of the prior art does not teach polypeptides having 95% sequence identity to SEQ ID NOs: 1 and 2 or the structures that confer function such that when these polypeptides are mutated functional activity is suppressed.
(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 tobacco plant that comprises mutations in SEQ ID NOs: 1 (LCY-e-S protein) and SEQ ID NO: 2 (LCY-e-T protein) resulting in a decrease of expression of LCY-e activity compared to the wild-type plant.
The claims encompass an amino acid sequence having at least 95% sequence identity to SEQ ID NOs: 1 and 2.
The only LCY-e-S and LCY-e-T taught is from Nicotiana being SEQ ID NOs: 1 and 2 and that when mutated increase β-damascenone, β-damascone, and β-cyclocitral levels. The specification does not teach the adequate amount of direction or guidance to arrive or identify the amino acid sequences from the genus of sequences with at least 95% identity to SEQ ID NO: 1 and 2. From the teachings of instant specification one skilled in the art cannot predict which mutations in the structures as broadly claimed will suppress LCY-e activity.
The specification teaches 3 tobacco lines having single point mutations that suppress gene activity: 2 lines having 78Th glutamine and 145th tryptophan of the LCY-e-S protein and 1 line at the 7th arginine of the LCY-e-T (spec. p. 53). While Applicant teaches that SEQ ID NOs:1 and 2 demonstrate specific instances where targeted mutations result in the suppression of gene activity, there is not enough clear guidance on the mutations to a sequence with having 95% sequence identity to SEQ ID NO: 1 and 2.
Applicant does not teach enough examples, besides 3 examples of single point mutations, for LCY-e-S and LCY-e-T shared by tobacco plants that would allow one skilled in the art to predict their structures which lead to a functional LCY-e-S or LCY-e-T polypeptide such that when they are mutated functional activity will be suppressed.
The specification fails to TEACH, or fails to provide GUIDANCE for making variants with at least 95% sequence identity to SEQ ID NOs: 1 and 2 retain functional activity across different tobacco plants. Consequently, it remains unknown whether mutation in a polypeptide having at least 95% sequence identity to SEQ ID NOs: 1 and 2 will reduce LCY-e activity. The lack or guidance and the lack of working examples means one skilled in the cannot make and use a polypeptide having as little as 95% sequence identity to SEQ ID NOs: 1 and 2.
A polypeptide with at least 95% identity to SEQ ID NOs: 1 and 2 would have 26 amino acid mutations each, which encompasses additions, deletions, substitutions and any combination thereof within the relative to SEQ ID NOs: 1 and 2. These polypeptides would encompass 1926 distinct protein variants, respectively. In the absence of guidance indicating where in the sequence of SEQ ID NOs: 1 and 2 such variations can be sustained, undue trial and error experimentation would be required to make the claimed polypeptide which would retain the activity of SEQ ID NO: 1 and 2 and can be subsequently mutated to suppress LCY-e activity.
Therefore, while the examples teach that mutating the specific sequences of SEQ ID NOs: 1 and 2 in a tobacco plant result in increased β-damascenone, β-damascone, and β-cyclocitral levels, the specification fails to teach enough mutations besides 3 examples that suppress activity/expression of SEQ ID NOs: 1 and 2. Applicant has not taught enough mutations in enough sequences found with those having 95% or more identity to SEQ ID NO: 1 or 2 that can be mutated to suppress LCY-e activity.
Because of the lack of working examples of sequences with at least 95% sequence identity having suppressed LCY-e activity, the lack of information on conserved regions required for desired suppression activity, and the impact of 5% variation of SEQ ID NOs: 1-2, there is not enough guidance to predictably make and/or use the claimed sequences to predictably produce mutated sequences having suppressed LCY-e activity.
Given the breadth of the claims, the lack of sufficient guidance, the absence of working examples regarding the structure of a mutated polypeptide having at least 95% sequence identity to SEQ ID NOs: 1 and 2 which confer functional activity, 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 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 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Shi et al. (“Molecular cloning and functional characterization of the lycopene ε-cyclase gene via virus-induced gene silencing and its expression pattern in Nicotiana tabacum.” International journal of molecular sciences vol. 15,8 14766-85. 22 Aug. 2014, doi:10.3390/ijms150814766 (U)) and in view of Senger et al., (WO 2020049155 A1 (N)).
a. In regard to claims 1, 3, 6-9, 11 and 14-17, Shi et al. teach “the sequence identity between Ntε-LCY1 and Ntε-LCY2 was up to 97%, so it was difficult to specifically silence one copy” suggesting that the sequence identity between ε-LCY genes are high (see page 14776 Discussion middle section). Additionally, Shi et al. teach the amino acid sequence of Ntε-LCY1 and Ntε-LCY2 having 99.6% and 99.2% sequence identity to Applicant SEQ ID NOs: 1 and 2, respectively (see alignment below of Ntε-LCY1 and Ntε-LCY2 from Shi et al. with SEQ ID NOs: 1 and 2 of the instant invention, respectively, and supp. 1).
Top of Form
GenCore version 6.5.2
Copyright (c) 1993 - 2026 Biocceleration Ltd.
OM protein - protein search, using sw model
Run on: March 2, 2026, 00:21:08 ; Search time 1 Seconds
(without alignments)
0.275 Million cell updates/sec
Title: US-18-810-602-1
Perfect score: 2723
Sequence: 1 MECIGARNFSTMAVFTCPRF..........IRHLLSDPTGATMIRTYLTF 524
Scoring table: BLOSUM62
Gapop 10.0 , Gapext 0.5
Searched: 1 seqs, 524 residues
Total number of hits satisfying chosen parameters: 1
Minimum DB seq length: 0
Maximum DB seq length: inf
Post-processing: Minimum Match 0%
Maximum Match 100%
Listing first 1 summaries
Database : AASEQ2_03022026_002105.pep:*
SUMMARIES
%
Result Query
No. Score Match Length DB ID Description
----------------------------------------------------------------------------
1 2713 99.6 524 1 AASEQ2_03022026_002105
ALIGNMENTS
RESULT 1
AASEQ2_03022026_002105
Query Match 99.6%; Score 2713; DB 1; Length 524;
Best Local Similarity 99.6%;
Matches 522; Conservative 1; Mismatches 1; Indels 0; Gaps 0;
Qy 1 MECIGARNFSTMAVFTCPRFKSLGRKRIMPRKKQPFWPIHMKVKCSGSDSCVVVKEDFAD 60
|:||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MDCIGARNFSTMAVFTCPRFKSLGRKRIMPRKKQPFWPIHMKVKCSGSDSCVVVKEDFAD 60
Qy 61 EEDYIKAGGSELVFVQMQQNKDMDLQSKLSDKLRQISSAGQTILDLVVIGCGPAGLALAA 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 EEDYIKAGGSELVFVQMQQNKDMDLQSKLSDKLRQISSAGQTILDLVVIGCGPAGLALAA 120
Qy 121 ESAKLGLNVGLVGPDLPFTNNYGVWEDEFKDLGLQACIEHVWSDTIVYLDDADPILIGRA 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 ESAKLGLNVGLVGPDLPFTNNYGVWEDEFKDLGLQACIEHVWSDTIVYLDDADPILIGRA 180
Qy 181 YGRVSRHLLHEELLKRCVEAGVLYLNSKVDRIVESTSGHSLVECEGDIVIPCRFVTVASG 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 YGRVSRHLLHEELLKRCVEAGVLYLNSKVDRIVESTSGHSLVECEGDIVIPCRFVTVASG 240
Qy 241 AASGKFLQYELGGPRVSVQTAYGVEVEVDNNPYDPSLMVFMDYRDYVRHDAQSLEAKYPT 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 AASGKFLQYELGGPRVSVQTAYGVEVEVDNNPYDPSLMVFMDYRDYVRHDAQSLEAKYPT 300
Qy 301 FLYAMPMTKTRVFFEETCLASKDAMPFDLLKKKLMLRLNTLGIKIKKIYEEEWSYIPVGG 360
|||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||
Db 301 FLYAMPMTKTGVFFEETCLASKDAMPFDLLKKKLMLRLNTLGIKIKKIYEEEWSYIPVGG 360
Qy 361 SLPNTEQKTLAFGAAASMVHPATGYSVVRSLSEAPKCASVLANILRQNHVKNMITSSSAT 420
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 361 SLPNTEQKTLAFGAAASMVHPATGYSVVRSLSEAPKCASVLANILRQNHVKNMITSSSAT 420
Qy 421 SISTQAWNTLWPQERKRQRSFFLFGLALILQLDIEGIRSFFRAFFRVPKWMWQGFLGSSL 480
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 421 SISTQAWNTLWPQERKRQRSFFLFGLALILQLDIEGIRSFFRAFFRVPKWMWQGFLGSSL 480
Qy 481 SSADLMLFAFYMFIIAPNDMRKGLIRHLLSDPTGATMIRTYLTF 524
||||||||||||||||||||||||||||||||||||||||||||
Db 481 SSADLMLFAFYMFIIAPNDMRKGLIRHLLSDPTGATMIRTYLTF 524
GenCore version 6.5.2
Copyright (c) 1993 - 2026 Biocceleration Ltd.
OM protein - protein search, using sw model
Run on: March 2, 2026, 00:25:37 ; Search time 1 Seconds
(without alignments)
0.275 Million cell updates/sec
Title: US-18-810-602-2
Perfect score: 2725
Sequence: 1 MDCIGARNFATMAVFTCPRF..........IRHLLSDPTGATMIRTYLTF 524
Scoring table: BLOSUM62
Gapop 10.0 , Gapext 0.5
Searched: 1 seqs, 524 residues
Total number of hits satisfying chosen parameters: 1
Minimum DB seq length: 0
Maximum DB seq length: inf
Post-processing: Minimum Match 0%
Maximum Match 100%
Listing first 1 summaries
Database : AASEQ2_03022026_002535.pep:*
SUMMARIES
%
Result Query
No. Score Match Length DB ID Description
----------------------------------------------------------------------------
1 2706 99.3 524 1 AASEQ2_03022026_002535
ALIGNMENTS
RESULT 1
AASEQ2_03022026_002535
Query Match 99.3%; Score 2706; DB 1; Length 524;
Best Local Similarity 99.2%;
Matches 520; Conservative 1; Mismatches 3; Indels 0; Gaps 0;
Qy 1 MDCIGARNFATMAVFTCPRFKSLGRRRIMPRKKQPIWPIHMQVKCSGNESCVVVKEDFAD 60
|:||||||||||||||||||||||||||||||||| ||||||||||||||||||||||||
Db 1 MECIGARNFATMAVFTCPRFKSLGRRRIMPRKKQPFWPIHMQVKCSGNESCVVVKEDFAD 60
Qy 61 EEDYIKAGGSELVFVQMQQNKDMDLQSKLSDKLRQISSAGQTILDLVVIGCGPAGLALAA 120
|||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||
Db 61 EEDYIKAGGSELVFVQMQQNKDMDLQSKLSDKLRQISSTGQTILDLVVIGCGPAGLALAA 120
Qy 121 ESAKLGLNVGLVGPDLPFTNNYGVWEDEFKDLGLQACIEHVWRDTIVYLDDADPILIGRA 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 ESAKLGLNVGLVGPDLPFTNNYGVWEDEFKDLGLQACIEHVWRDTIVYLDDADPILIGRA 180
Qy 181 YGRVSRHLLHEELLKRCVEAGVLYLNSKVDRIVESTSGHSLVECEGDIVIPCRFVTVASG 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 YGRVSRHLLHEELLKRCVEAGVLYLNSKVDRIVESTSGHSLVECEGDIVIPCRFVTVASG 240
Qy 241 AASGKFLQYELGGPRVSVQTAYGVEVEVDNNPYDPSLMVFMDYRDYVRHDAQSLEAKYPT 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 AASGKFLQYELGGPRVSVQTAYGVEVEVDNNPYDPSLMVFMDYRDYVRHDAQSLEAKYPT 300
Qy 301 FLYAMPMTKTRVFFEETCLASKDAMPFDLLKKKLMLRLNTLGVRIKQIYEEEWSYIPVGG 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 301 FLYAMPMTKTRVFFEETCLASKDAMPFDLLKKKLMLRLNTLGVRIKQIYEEEWSYIPVGG 360
Qy 361 SLPNTEQKTLAFGAAASMVHPATGYSVVRSLSEAPKCASVLANILRQNHVKNMLTSSSTT 420
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 361 SLPNTEQKTLAFGAAASMVHPATGYSVVRSLSEAPKCASVLANILRQNHVKNMLTSSSTT 420
Qy 421 SISTQAWNTLWPQERKRQRSFFLFGLALILQLDIEGIRSFFRAFFRVPKWMWQGFLGSSL 480
||||||||||||||||||||||||||||||||||||||||||||| ||||||||||||||
Db 421 SISTQAWNTLWPQERKRQRSFFLFGLALILQLDIEGIRSFFRAFFLVPKWMWQGFLGSSL 480
Qy 481 SSADLMLFAFYMFIIAPNDMRKGLIRHLLSDPTGATMIRTYLTF 524
||||||||||||||||||||||||||||||||||||||||||||
Db 481 SSADLMLFAFYMFIIAPNDMRKGLIRHLLSDPTGATMIRTYLTF 524
Search completed: March 2, 2026, 00:25:37
Job time : 1 secs
Shi et al. teach suppressing Ntε-LCY transcript levels (i.e. promotion of mRNA degradation, such as in claim 3 and 11) (p.14774 fig. 6). Shi et al. teach that “[a] conserved fragment of two Ntε-LCY cDNAs was selected as an RNAi effective element, and the silencing efficiency achieved up to 90%–95% reduction in transcript levels. As expected, β-branch carotenoid concentrations all increased in the leaves of TRV-ε-lcy plants and the lutein content decreased”, suggesting that that both Ntε-LCY1 and Ntε-LCY2 were silenced (i.e. suppression of a function of a first endogenous gene and a function of a second endogenous gene) (p.14777). Moreover, Shi et al. teach that “lower ε-LCY expression was beneficial for photosynthesis” and to “manipulate tobacco carotenoids” (p. 14778).
In regard to claims 2 and 10, Shi et al. teach “[v]irus-induced gene silencing (VIGS) has proven to be a powerful tool for the rapid analysis of gene function. It is possible to target most genes and downregulate the mRNA levels in a sequence-specific manner [27]” (p. 14768). This suggest that mRNA transcription levels are decreased (p.14777).
In regard to claims 4 and 12, since Shi et al. teach reducing transcription of said genes, the production of said polypeptides are also reduced.
In regard to claims 5 and 13, since Shi et al. teach reducing transcription of said gene the translation of the polypeptides encoded by said gene are also reduced.
In regard to claims 18 and 19, Shi et al. teach a freeze-dried tobacco leaf (i.e. cured leaf) comprising inhibited SEQ ID NOs: 1 and 2 (p. 14781 sec. 4.9). Additionally, Shi et al. teach flue-cured tobacco leaves and improving carotenoid content in mature tobacco leaves for the tobacco industry (i.e. a tobacco product) (p. 14767 and see image below). Since, Shi et al. provides motivation and suggestd to improve carotenoid content in tobacco products, one skilled in the art would be motivated to inhibit SEQ ID NOs:1 and 2 to modulate carotenoid content.
PNG
media_image1.png
139
1016
media_image1.png
Greyscale
Shi et al. teach silencing gene LCY-e activity but does not specifically teach mutations in the SEQ ID NOs: 1 and 2. Additionally, Shi et al. do not teach producing progeny seed via crossing.
In regard to claims 1, 3, 6-9, 11 and 14-17, Senger et al. teaches that “reducing the copy number of functional (e.g. expressed) genes, can for example be mediated e.g. by adding or expressing an antisense molecule, cosuppression molecule, an antibody, ribozyme, siRNA, microRNA, ta-siRNA, a cosuppression molecule, or RNAi, by mutation or deletion of a gene sequence, expressing or improving the activity of a negative expression element or by other methods known to the person skilled in the art or mentioned herein” (p.57-58). Suggesting that one skilled in the art would know to either mutate or silence because to overall outcome is to suppress activity regardless of the technique used.
Lastly, Senger et al., teach to produce “[s]eedling progeny of transgenic plants” (p. 65 line 6) by crossing plants with said mutation with another plant not comprising a mutation (p. 34 line 3).
Therefore, prior to the effective filing date, it would have been prima facie
obvious to one of ordinary skill in the art to modify the teachings of Shi et al. by instead substituting the mutagenesis method as taught by Senger et al. because RNAi and mutagenesis are functionally equivalent in the sense that they both inhibit the gene of interest.
One skilled in the art would have a reasonable expectation of success in this
approach because (1) Shi et al. actually shows inhibiting expression/activity of the SEQ ID NO: 1 and 2 using RNAi, and (2) mutagenesis techniques are well known in the art to suppress gene function as taught by Senger et al. so one would expect the same results that if one skilled in the art were to mutate SEQ ID NOs: 1 and 2 rather than use RNAi.
Furthermore, it would be obvious to one of ordinary skill in the art to make offspring or progeny comprising said mutations because doing so would save time, money, and resources by not having to mutate the plant again and would lead to plants with the desired phenotype (i.e. inhibition of LCY-e activity).
Conclusion
No claims are allowed.
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/C.J.O./Examiner, Art Unit 1663 /JASON DEVEAU ROSEN/Primary Examiner, Art Unit 1662