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 .
Claim Status
Claims 1-20 are pending. Claims 1-20 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. CN202210205170.8 filed March 02, 2022. However, there is no certified English translation. Applicant is advised to submit a certified English translation.
Information Disclosure Statement (IDS)
The IDS submitted on 10/28/2024, 04/22/2025 and 06/03/2025 have been considered. Signed copies are attached.
Specification
The disclosure is objected to because of the following informalities: the description for Fig. 2-2 and Fig. 2-3 appear to be incorrect as ¶ 0079 describes the actual drawing of Fig. 2-3 and not Fig. 2-2. In other words, ¶ 0079 is the description for Fig. 2-3 and ¶ 0080 is the description for Fig. 2-2.
Appropriate correction is required.
Claim Objections
Claim 11, is objected to because of the following informalities: the claim recites “wherein overexpresses” which is grammatically incorrect.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. The term inhibited-expressed is being interpreted as “inhibited or expressed”.
The claim(s) recite(s) “A tuber plant or part thereof, comprising a sequence encoding a polypeptide comprising a sequence having at least 92% sequence identity to SEQ ID NO: 2, wherein the polypeptide is inhibited-expressed, loss-function, or overexpressed, and the development of plant tuber is changed”, which is not markedly different from its naturally occurring counterpart because “expressed” is being interpreted as a naturally occurring biological process.
Additionally, Martín-Trillo et al. “Role of tomato BRANCHED1-like genes in the control of shoot branching”, 2011, The Plant Journal, 67: 701-714(U) discloses UniProt accession No. F6KB96 having 100% sequence identity to SEQ ID NO: 2 is a naturally occurring sequence.
Here, the claims are directed to the statutory category of a composition of matter. As described in MPEP § 2106, subsection III, Step 2A of the Office’s eligibility analysis is the first part of the Alice/Mayo test, i.e., the Supreme Court’s "framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217-18, 110 USPQ2d 1976, 1981 (2014) (citing Mayo, 566 U.S. at 77-78, 101 USPQ2d at 1967-68).
Step 2A requires determining whether the claims are directed to a law of nature, a natural phenomenon (product of nature), or an abstract idea? In this case the judicial exception is SEQ ID NO: 2 that regulates tuber development.
In regard to claims 1-7, the claims are directed to a tuber plant expressing SEQ ID NO: 2 (IT1 gene), which according to Martin-Trillo et al. is a naturally occurring protein that regulates tuber development and therefore a judicial exception.
The claims also are directed to a judicial exception that is a naturally occurring correlation between the gene and tuber development by said gene.
In regard to claim 8, the claims are directed to a potato plant. Martin-Trillo et al. discloses that SEQ ID NO: 2 is derived from potato.
In regard to claims 9-10, the claims are directed to a promoter having at least 90% sequence identity to SEQ ID NO:9 operably linked to SEQ ID NO:2 (IT1 gene). According to the specification SEQ ID NO: 9 is the promoter region of Identity of Tuber 1 (IT1) having the sequences of SEQ ID NO: 2 (pg. 4 para. [0021]). Therefore, SEQ ID NO: 9 is a naturally occurring promoter that regulates expression of IT1 (SEQ ID NO: 2).
The claim also are directed to a judicial exception that is a naturally occurring correlation between the gene and the promoter of IT1 gene.
Here, none of the claims recite additional elements that integrate the judicial exception into a practical application as the claims are merely drawn to spinach plants and seeds comprising the naturally occurring resistance gene.
Step 2B determines whether the claims recite additional elements that amount to significantly more that the judicial exception?
Here, the claims do not include any additional elements that are sufficient to amount to significantly more than the judicial exception because the claimed invention is directed to naturally-occurring nucleic acid(s) and protein(s) found in potato plants. Moreover, the claimed nucleic acids, proteins, and plant(s) have inherent properties that are recited in the claims.
Claim Rejections - 35 USC § 112
Claim 1-20, are 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.
In claims 1 and 9, the recitation “inhibited-expressed” is unclear. How is a gene inhibited/expressed? Did the Applicant mean to write “inhibited, expressed”?
In claims 1 and 9, the recitation “loss-function” is unclear. The specification does not adequately define the term. Did Applicant mean “loss-of-function”.
In claims 1-2, 4, 6 and 10, the recitation “~” is unclear. The symbol “~” signifies approximation, so does the Applicant mean approximately SEQ ID NO: 65 etc. or do the claims encompass SEQ ID NO: 40 through SEQ ID NO: 65?
In claims 13 and 16, the recitation of “recipient” is unclear. Did the Applicant mean control plant?
In claim 15, the techniques used are unclear. For example, how one can one overexpress “insertion of an intron”?
Claims 3, 5, 7, 8 and 11-20 are rejected for depending upon a rejected base claim and for failing to remedy the issues of indefiniteness.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 which depends from claim 1 further broadens the claim via SEQ ID NOs: 40-65, because claim 1 just requires SEQ ID NO: 2. However, not all of the recited sequences require 92% sequence identity to SEQ ID NO: 2 (e.g. SEQ ID NO: 58 has less than 92% sequence identity to SEQ ID NO: 2 – see search results).
Therefore, the additional sequences further broaden the scope of the claims. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim interpretation
The claims are being interpreted to mean that SEQ ID NO: 2 can be either inhibited, expressed, loss-of-function, or overexpressed resulting in a developmental change in plant tubers.
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 1-20 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 potato plant comprising a CRISPR knockout of SEQ ID NO: 2, resulting in abnormal growth and development of potato tubers (i.e. producing no tubers; see Example 2 and Fig 2-2). The specification describes sequence 1 (IT1 gene CDS) is represented by SEQ ID NO: 1, sequence 2 (protein) is represented by SEQ ID NO: 2, and sequence 3 (genomic) is represented by SEQ ID NO: 3 (pg. 19 para. [00105]).
Claims encompass polypeptides having as little as 92% sequence identity to SEQ ID NO: 2 and wherein SEQ ID NO: 2 is either inhibited, expressed, knocked out, or overexpressed resulting in any change to the tuber.
The claimed invention lacks adequate written description for the following reasons. Claims 1-20 are directed to a tuber plant or part thereof, comprising a sequence encoding a polypeptide comprising a sequence having at least 92% sequence identity to SEQ ID NO: 2, wherein the polypeptide is inhibited-expressed, loss-function, or overexpressed, and the development of plant tuber is changed.
(1) Applicant has not described a representative number of species from the genus of structures having at least 94%, 92%, and 91% sequence identity to SEQ ID NOs: 1-3, respectively (e.g., see sequence search results); (2) Applicant has not described the specific structural motifs within SEQ ID NOs: 1-3 that confer biological functionality; (3) Applicant has not adequately described all the possible developmental changes that can occur in tubers; and (4) the specification describes using CRISPR to knockout SEQ ID NO:2 results in no formation of tuber. However, Applicant has not described how overexpression of SEQ ID NO: 2 changes the tubers.
The claims encompasses nucleic acid sequences and amino acid sequences having at least 94%, 92%, and 91% sequence identity to SEQ ID NOs: 1-3, respectively. The only mutated sequence described by the Applicant is mutated is SEQ ID NO: 1 and 3, which contains a single base pair insertion (i.e. SEQ ID NO: 133) (fig.1), this mutation resulted in a knockout and no stolon’s being produced (fig.2-2).
The specification does not describe a representative number of nucleic acid and amino acid sequences from the genus of sequences having at least 94%, 92%, and 91% sequence identity to SEQ ID NOs: 1-3, respectively. The Applicant has not described a representative number of mutations in amino acid sequences having 92% or more identity to SEQ ID NO: 2 or that will suppress SEQ ID NO: 2 activity. Therefore, one skilled in the art cannot identify the mutations in the structures that will suppress or increase SEQ ID NO: 2 activity.
The specification fails to describe that variants with at least 94%, 92%, and 91% sequence identity to SEQ ID NOs: 1-3, respectively, retain function across different tuber plants or plants that produce tubers. Consequently, it remains unknown whether a polynucleotide or polypeptide having at least 94%, 92%, and 91% sequence identity to SEQ ID NOs: 1-3, respectively has functional activity so when it is mutated it loses function or when it is overexpressed does it have increased 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 SEQ ID NO: 2 functional activity.
Moreover, the specification has not provided a representative number of species from the broad genus of sequences with at least 94%, 92%, and 91% sequence identity to SEQ ID NOs: 1-3, respectively. Therefore, one skilled in the art would appreciate that Applicant does not possess the genus of structures as claimed and which retain functionality.
Furthermore, claims 1-6, 9 and 11 encompass a protein sequence having at least 91% and 94% sequence identity to SEQ ID NO: 1 and 3, or the amino acid sequence having at least 92% identity to SEQ ID NO: 2. This requires the specification to describe the nucleic acid sequences encoding such proteins.
However, the specification does not describe a coding sequence having at least 91% sequence identity to SEQ ID NO: 1, a genomic sequence with at least 94% sequence identity to SEQ ID NO: 3 or a polypeptide with at least 92% sequence identity to SEQ ID NO: 2, which leads to developmental tuber change.
A nucleic acid sequence having at least 91% and 94% sequence identity to SEQ ID NOs: 1 and 3 would have 96 and 110 nucleic acid substitutions relative to SEQ ID NOs: 1 and 3, respectively, while a polypeptide with at least 92% identity to SEQ ID NO: 2 would have 29 amino acid substitutions relative to SEQ ID NO: 2.
These polynucleotide and polypeptides would encompass 396 and 3110 and 1929 distinct gene and protein variants, respectively. In the absence of describing where in the sequence of SEQ ID NOs: 1 and 3 such variations can be sustained, one of skill in the art would not be led to believe that Applicant possesses this vast genus of nucleic and amino acid sequences that retain functional activity, or to the make the polypeptide which would retain the activity of SEQ ID NO: 2, and lead to the function of developmental tuber change.
The specification fails to provide an adequate description of the motifs, catalytic domains, etc. in these sequences that confers the developmental tuber change. Applicant has described one structure/sequence which is not a representative number of structures/sequences from the genus of sequences having 94%, 92%, and 91% sequence identity to SEQ ID NOs: 1-3, respectively, that can confer developmental tuber change.
Additionally, the claims encompass any form of developmental change in a broad genus of “tuber plant”. The Applicant has only described that when SEQ ID NO:2 has a 1 base pair insertion (i.e. SEQ ID NO: 133), results in a knock out and lack of tuber development. However, Applicant has not described the resulting developmental change arising from any other mutation, addition, insertion, overexpression of the protein.
Here, one skilled in the art would be unable to identify developmental changes because the specification fails to describe a representative number of developmental traits leading to ad infinitum changes that would be impossible to identify. Therefore, one of skill in the art would not be led to believe that Applicant possesses this vast genus of developmental changes.
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Furthermore, the specification describes SEQ ID NO: 2 as Identity of Tuber 1 gene as known as a TCP transcription factor. The specification describes that “TCP transcription factors: belong to a transcription family unique to higher plants, and they are named after the acronym of three isolated members: Teosinte branched 1 (TB1), Cycloidea (CYC) and Proliferating cell factors (PCFs)” (pg. 18 and para. [0091]).
Since the claims encompass a vast genus of structures, many of them will not specifically have IT1 functionality. For example, Wang, et al. “Multifaceted roles of TCP transcription factors in fate determination”, 2025, New Phytol, 245: 95-101.(V) describes that these TCP transcription factors have a variety of roles.
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 inhibited, expressed, loss-function, or overexpressed of SEQ ID NO: 2, and the impact of 9%, 8% and 6% variation of SEQ ID NOs:1-3, respectively, one skilled in the art would not know the structures that confer IT1 functionality and that predictably change the development of a tuber plant is broadly claimed.
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 1-20 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 making a potato plant comprising a CRISPR knockout of SEQ ID NO: 2, does not reasonably provide enablement for a polypeptide having as little as 92% sequence identity to SEQ ID NO: 2 having developmental tuber changes as broadly claimed. 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 tuber plant comprising polypeptides having as little as 92% sequence identity to SEQ ID NO: 2 and wherein SEQ ID NO: 2 is either inhibited, expressed, knocked out, or overexpressed resulting in any change to the tuber.
(B) The nature of the invention.
The nature of the claimed invention is directed to any tuber plant comprising polypeptides having at least 92% sequence identity to SEQ ID NO: 2 which is knocked out resulting in no tuber formation.
(C) The state of the prior art
The state of the prior art does not teach polypeptides having 94%, 92%, and 91% sequence identity to SEQ ID NOs: 1-3, respectively, that can confer developmental tuber change.
(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 1-20 are directed to a tuber plant or part thereof, comprising a sequence encoding a polypeptide comprising a sequence having at least 92% sequence identity to SEQ ID NO: 2, wherein the polypeptide is inhibited-expressed, loss-function, or overexpressed, and the development of plant tuber is changed.
(1) Applicant has not taught the specific structural motifs within SEQ ID NOs: 1-3 that confer biological functionality; (2) Applicant has not adequately taught all the possible developmental changes that can occur in tubers; and (3) the specification teaches using CRISPR to knockout SEQ ID NO:2 results in no formation of tuber, however Applicant has not teach how overexpression of SEQ ID NO: 2 changes the tubers.
The claims encompasses nucleic acid sequences and amino acid sequences having at least 94%, 92%, and 91% sequence identity to SEQ ID NOs: 1-3, respectively. The only mutated sequence taught by the Applicant is SEQ ID NO: 1 and 3, which contains a single base pair insertion as represented by SEQ ID NO: 133 and results in a knockout and no stolon’s being produced (see Fig. 1; see also Fig. 2-2).
The specification does not provide adequate direction or guidance or working examples to arrive at or identify the nucleic acid and amino acid sequences from the genus of sequences having at least 94%, 92%, and 91% sequence identity to SEQ ID NOs: 1-3, respectively, and which retain function in the array of tuber plants as claimed. Thus, one skilled in the art cannot predict which mutations in the structures as broadly claimed will suppress or increase SEQ ID NO: 2 activity.
This is because the specification does not teach functional domains or motifs such that one would have no idea if the variants possess the necessary structures to retain SEQ ID NO: 2 functional activity without engaging in undue experimentation.
The specification fails to TEACH, or fails to provide GUIDANCE for making variants with at least 91% and 94% sequence identity to SEQ ID NO: 1 and 3, or the amino acid sequence having at least 92% identity to SEQ ID NO: 2. This requires the specification to teach the nucleic acid sequences encoding such proteins.
However, the specification does not teach a coding sequence having at least 91% sequence identity to SEQ ID NO: 1, a genomic sequence with at least 94% sequence identity to SEQ ID NO: 3 or a polypeptide with at least 92% sequence identity to SEQ ID NO: 2, which leads to developmental tuber change.
A nucleic acid sequence having at least 91% and 94% sequence identity to SEQ ID NOs: 1 and 3 would have 96 and 110 nucleic acid substitutions relative to SEQ ID NOs: 1 and 3, respectively, while a polypeptide with at least 92% identity to SEQ ID NO: 2 would have 29 amino acid substitutions relative to SEQ ID NO: 2.
These polynucleotide and polypeptides would encompass 396 and 3110 and 1929 distinct gene and protein variants, respectively. In the absence of proper guidance where in the sequence of SEQ ID NOs: 1 and 3 such variations can be sustained, one of skill in the art would engage in undue trial and error experimentation would be required to make the claimed polypeptide which would retain the activity of SEQ ID NO: 2, and lead to the function of developmental tuber change.
The specification fails to provide an adequate guidance of the motifs, catalytic domains, etc. in these sequences that confers changes to the development of tuber as broadly claimed.
Additionally, the claims encompass any form of developmental change. The Applicant has only taught that when SEQ ID NO:2 has a 1 base pair insertion as represented by SEQ ID NO: 133 results in a knock out and lack of tuber development. However, Applicant has not taught other developmental changes resulting from any other mutation, addition, insertion, overexpression.
One skilled in the art would be unable to identify said developmental change as the specification fails to teach them, leading to ad infinitum changes that would be impossible to identify. Therefore, one of skill in the art would find it unpredictable to arrive to these unknown developmental tuber changes and require an enormous amount of undue trial and error.
Furthermore, the specification teaches SEQ ID NO: 2 as Identity of Tuber 1 gene as known as a TCP transcription factor. The specification teaches that “TCP transcription factors: belong to a transcription family unique to higher plants, and they are named after the acronym of three isolated members: Teosinte branched 1 (TB1), Cycloidea (CYC) and Proliferating cell factors (PCFs)” (pg. 18 and para. [0091]).
Since the claims encompass any form of modification of SEQ ID NO: 2 it also encompasses the roles associated with SEQ ID NO: 2 (i.e. TCP transcription factor). For example, Wang, et al. “Multifaceted roles of TCP transcription factors in fate determination”, 2025, New Phytol, 245: 95-101.(V) teaches that these TCP transcription factors have a variety of roles (see image below).
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Therefore, the claims encompass proteins having functions other than that of IT1. However, Applicant has not taught that proteins as encompass by the claims retain these functions to predictably change the development of a tuber plant as broadly claimed.
Because of the lack of working examples of sequences with at least 94%, 92%, and 91% sequence identity to SEQ ID NOs: 1-3, respectively, that can confer developmental tuber change, the lack of information on conserved regions required for desired suppression activity, and the impact of 9%, 8% and 6% variation of SEQ ID NOs:1-3, respectively, there is not enough guidance to predictably make and/or use the claimed sequences to predictably produce developmental tuber change.
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 94%, 92%, and 91% sequence identity to SEQ ID NOs: 1-3, respectively, 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 § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Martin-Trillo et al. (US 9040776 B2(A)).
In regard to claims 1-2 and 7-8, Martin-Trillo discloses “Generation of Transgenic Potato Plants (Solanum tuberosum, Desiree Variety) with Loss of Function of the Genes StBRC1L1 and StBRC1L2 Silenced by the RNAi Technique” (Ex. 4).
Importantly, these lines have a greater number of lateral branches, aerial stolons and under-ground stolons, and since each stolon normally gives rise to a tuber, the high number of branched stolons makes each plant generate a greater number of tubers than wild type plants (col. 26). Thus, the development of the plant tuber is changed as encompassed by claim 1.
Martin-Trillo et al. discloses “In the potato, StBRC1L1 and StBRC1L2 also control the formation of the stolons and their branching, and the sprouting of the tuber eye” (col. 3 lines 45-47). Lastly, Martin-Trillo et al. discloses that “the SEQ ID NO: 4, wherein the polypeptide coded by said nucleic acids have the activity and the structural characteristics of the protein StBRC1 L2” (col. 11 lines 9-11). Martin-Trillo et al SEQ ID NO: 4 has 99.4% sequence identity to Applicants SEQ ID NO: 2. (see alignment below).
In regard to claims 3-6, Martin-Trillo et al. discloses the coding sequence SEQ ID NO: 10 having 99.4% sequence identity to Applicants SEQ ID NO: 1 (see alignment below). Martin-Trillo et al. does not explicitly disclose the genomic sequence, however it is inherently present since the coding sequence is derived from the genomic sequence. Martin-Trillo et al. SEQ ID NO: 10 has 99.7% local similarity to Applicants SEQ ID NO: 3 (see alignment below).
Therefore, the claimed invention is anticipated by the prior art.
Subject matter free of prior art
Instant claims 9-20 appear to be free of the prior art. The closest prior art Martin-Trillo et al. (US 9040776 B2(A)) which the teaching are discloses above. Martin-Trillo et al. does not teach on SEQ ID NO: 9.
Conclusion
No claims are allowed.
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/C.J.O./Examiner, Art Unit 1663
/JASON DEVEAU ROSEN/Primary Examiner, Art Unit 1662
Attachment
Applicants SEQ ID NO: 2 and Martin-Trillo et al. SEQ ID NO: 4 sequence alignment.
RESULT 1
US-13-144-348-4
Sequence 4, US/13144348
Patent No. 9040776
GENERAL INFORMATION
APPLICANT: Martin Trillo, Mar
APPLICANT: Rodriguez Buey, Maria
APPLICANT: Cubas Dominguez, Pilar
TITLE OF INVENTION: GENES REGULATING PLANT BRANCHING, PROMOTERS, GENETIC CONSTRUCTS
TITLE OF INVENTION: CONTAINING SAME AND USES THEREOF
FILE REFERENCE: 60395.0064FPWO
CURRENT APPLICATION NUMBER: US/13/144,348
CURRENT FILING DATE: 2011-07-13
PRIOR APPLICATION NUMBER: PCT/ES2009/070538
PRIOR FILING DATE: 2009-11-27
PRIOR APPLICATION NUMBER: ES P200900088
PRIOR FILING DATE: 2009-01-13
NUMBER OF SEQ ID NOS: 52
SEQ ID NO 4
LENGTH: 364
TYPE: PRT
ORGANISM: Solanum tuberosum
FEATURE:
NAME/KEY: misc_feature
LOCATION: (28)..(28)
OTHER INFORMATION: Xaa can be any naturally occurring amino acid
Query Match 99.4%; Score 1920; Length 364;
Best Local Similarity 99.7%;
Matches 363; Conservative 0; Mismatches 1; Indels 0; Gaps 0;
Qy 1 MYPPSNNNCNYSPILSSFICQNIPSSPCMQYEHELYFQNFNHDDQYYFQLQQQVPLIDDL 60
||||||||||||||||||||||||||| ||||||||||||||||||||||||||||||||
Db 1 MYPPSNNNCNYSPILSSFICQNIPSSPXMQYEHELYFQNFNHDDQYYFQLQQQVPLIDDL 60
Qy 61 SPHVLADSCTETVTKPSNCNHVLEGMEEGRGGNKGDDVVMSSRISIISGRISKNNKRSSN 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 SPHVLADSCTETVTKPSNCNHVLEGMEEGRGGNKGDDVVMSSRISIISGRISKNNKRSSN 120
Qy 121 KDRHSKINTARGPRDRRMRLSLDAARKFFRLQDLLGFDKASKTVEWLLTQSDSAIEELVA 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 KDRHSKINTARGPRDRRMRLSLDAARKFFRLQDLLGFDKASKTVEWLLTQSDSAIEELVA 180
Qy 181 VKGNDAQVPQQTSCNTPTTTTGIGAICASNSISESCEVISGTDETSSNDKNKETTAKDEK 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 VKGNDAQVPQQTSCNTPTTTTGIGAICASNSISESCEVISGTDETSSNDKNKETTAKDEK 240
Qy 241 EKKKKPVNTARRPAFEPLTKESRNQARARARERTKTKKMSQVGKSKSPAHDLNPSGSRRP 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 EKKKKPVNTARRPAFEPLTKESRNQARARARERTKTKKMSQVGKSKSPAHDLNPSGSRRP 300
Qy 301 ANRTCEEPGTHEQHTFHHVDDSSFVVNGNWNPFTIFTSHEQYAGISNEHQLVTDLQFYGK 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 301 ANRTCEEPGTHEQHTFHHVDDSSFVVNGNWNPFTIFTSHEQYAGISNEHQLVTDLQFYGK 360
Qy 361 LWES 364
||||
Db 361 LWES 364
Applicants SEQ ID NO: 1 and Martin-Trillo et al. SEQ ID NO: 10 sequence alignment.
RESULT 1
US-13-144-348-10
Sequence 10, US/13144348
Patent No. 9040776
GENERAL INFORMATION
APPLICANT: Martin Trillo, Mar
APPLICANT: Rodriguez Buey, Maria
APPLICANT: Cubas Dominguez, Pilar
TITLE OF INVENTION: GENES REGULATING PLANT BRANCHING, PROMOTERS, GENETIC CONSTRUCTS
TITLE OF INVENTION: CONTAINING SAME AND USES THEREOF
FILE REFERENCE: 60395.0064FPWO
CURRENT APPLICATION NUMBER: US/13/144,348
CURRENT FILING DATE: 2011-07-13
PRIOR APPLICATION NUMBER: PCT/ES2009/070538
PRIOR FILING DATE: 2009-11-27
PRIOR APPLICATION NUMBER: ES P200900088
PRIOR FILING DATE: 2009-01-13
NUMBER OF SEQ ID NOS: 52
SEQ ID NO 10
LENGTH: 1092
TYPE: DNA
ORGANISM: Solanum tuberosum
Query Match 99.4%; Score 1088.4; Length 1092;
Best Local Similarity 99.7%;
Matches 1089; Conservative 1; Mismatches 2; Indels 0; Gaps 0;
Qy 1 ATGTATCCTCCAAGCAACAATAACTGCAACTACAGCCCAATTTTGTCTTCTTTCATATGC 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 ATGTATCCTCCAAGCAACAATAACTGCAACTACAGCCCAATTTTGTCTTCTTTCATATGC 60
Qy 61 CAAAATATTCCATCTTCTCCTTGTATGCAATACGAACACGAACTATACTTTCAAAACTTC 120
|||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||
Db 61 CAAAATATTCCATCTTCTCCTTGTATGCAATATGAACACGAACTATACTTTCAAAACTTC 120
Qy 121 AATCATGATGACCAATATTATTTTCAACTACAGCAACAAGTTCCCTTGATAGATGACTTG 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 AATCATGATGACCAATATTATTTTCAACTACAGCAACAAGTTCCCTTGATAGATGACTTG 180
Qy 181 AGTCCTCACGTCTTAGCTGACAGCTGCACTGAGACTGTTACTAAGCCTTCAAATTGCAAT 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 AGTCCTCACGTCTTAGCTGACAGCTGCACTGAGACTGTTACTAAGCCTTCAAATTGCAAT 240
Qy 241 CACGTACTAGAAGGAATGGAAGAAGGCCGAGGCGGAAACAAAGGAGATGATGTTGTTATG 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 CACGTACTAGAAGGAATGGAAGAAGGCCGAGGCGGAAACAAAGGAGATGATGTTGTTATG 300
Qy 301 AGTAGCAGAATTAGTATTATTAGTGGACGGATCTCGAAAAACAATAAGAGATCTTCCAAT 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 301 AGTAGCAGAATTAGTATTATTAGTGGACGGATCTCGAAAAACAATAAGAGATCTTCCAAT 360
Qy 361 AAGGATCGACACAGCAAGATCAACACGGCTCGTGGTCCAAGAGATCGAAGGATGAGACTT 420
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 361 AAGGATCGACACAGCAAGATCAACACGGCTCGTGGTCCAAGAGATCGAAGGATGAGACTT 420
Qy 421 TCACTTGATGCTGCTCGCAAGTTTTTCCGTTTGCAGGACTTATTGGGATTTGATAAGGCC 480
||||||||||||||||||||||||||||||||||||||||| ||||||||||||||||||
Db 421 TCACTTGATGCTGCTCGCAAGTTTTTCCGTTTGCAGGACTTGTTGGGATTTGATAAGGCC 480
Qy 481 AGCAAAACTGTAGAATGGTTGCTTACTCAATCGGATTCCGCAATTGAAGAGCTCGTCGCC 540
||||||||||||||||||||||||||||||||:|||||||||||||||||||||||||||
Db 481 AGCAAAACTGTAGAATGGTTGCTTACTCAATCRGATTCCGCAATTGAAGAGCTCGTCGCC 540
Qy 541 GTTAAAGGCAATGATGCTCAGGTTCCTCAGCAAACTAGCTGCAATACCCCCACTACTACT 600
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 541 GTTAAAGGCAATGATGCTCAGGTTCCTCAGCAAACTAGCTGCAATACCCCCACTACTACT 600
Qy 601 ACTGGAATTGGTGCAATTTGTGCATCTAATTCTATTTCTGAGTCATGTGAAGTTATATCA 660
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 601 ACTGGAATTGGTGCAATTTGTGCATCTAATTCTATTTCTGAGTCATGTGAAGTTATATCA 660
Qy 661 GGAACTGATGAAACTTCCTCTAATGACAAAAACAAGGAAACTACTGCTAAAGATGAGAAG 720
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 661 GGAACTGATGAAACTTCCTCTAATGACAAAAACAAGGAAACTACTGCTAAAGATGAGAAG 720
Qy 721 GAGAAAAAGAAGAAGCCGGTTAACACAGCTCGTAGACCTGCGTTTGAACCTCTTACAAAG 780
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 721 GAGAAAAAGAAGAAGCCGGTTAACACAGCTCGTAGACCTGCGTTTGAACCTCTTACAAAG 780
Qy 781 GAATCAAGGAATCAAGCAAGAGCCAGGGCTAGAGAGAGAACAAAAACAAAGAAAATGAGC 840
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 781 GAATCAAGGAATCAAGCAAGAGCCAGGGCTAGAGAGAGAACAAAAACAAAGAAAATGAGC 840
Qy 841 CAAGTTGGAAAATCCAAATCCCCAGCTCATGATTTGAACCCTTCAGGATCTCGGAGGCCG 900
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 841 CAAGTTGGAAAATCCAAATCCCCAGCTCATGATTTGAACCCTTCAGGATCTCGGAGGCCG 900
Qy 901 GCTAATAGAACTTGTGAAGAACCTGGAACACATGAACAACACACCTTCCATCATGTTGAT 960
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 901 GCTAATAGAACTTGTGAAGAACCTGGAACACATGAACAACACACCTTCCATCATGTTGAT 960
Qy 961 GACAGTAGTTTTGTGGTTAATGGAAATTGGAATCCATTTACAATCTTCACTTCTCATGAA 1020
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 961 GACAGTAGTTTTGTGGTTAATGGAAATTGGAATCCATTTACAATCTTCACTTCTCATGAA 1020
Qy 1021 CAATATGCTGGAATTTCCAATGAGCATCAATTAGTTACAGACTTGCAATTTTATGGAAAG 1080
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1021 CAATATGCTGGAATTTCCAATGAGCATCAATTAGTTACAGACTTGCAATTTTATGGAAAG 1080
Qy 1081 CTGTGGGAAAGC 1092
||||||||||||
Db 1081 CTGTGGGAAAGC 1092
Applicants SEQ ID NO: 3 and Martin-Trillo et al. SEQ ID NO: 10 sequence alignment.
RESULT 1
US-13-144-348-10
Sequence 10, US/13144348
Patent No. 9040776
GENERAL INFORMATION
APPLICANT: Martin Trillo, Mar
APPLICANT: Rodriguez Buey, Maria
APPLICANT: Cubas Dominguez, Pilar
TITLE OF INVENTION: GENES REGULATING PLANT BRANCHING, PROMOTERS, GENETIC CONSTRUCTS
TITLE OF INVENTION: CONTAINING SAME AND USES THEREOF
FILE REFERENCE: 60395.0064FPWO
CURRENT APPLICATION NUMBER: US/13/144,348
CURRENT FILING DATE: 2011-07-13
PRIOR APPLICATION NUMBER: PCT/ES2009/070538
PRIOR FILING DATE: 2009-11-27
PRIOR APPLICATION NUMBER: ES P200900088
PRIOR FILING DATE: 2009-01-13
NUMBER OF SEQ ID NOS: 52
SEQ ID NO 10
LENGTH: 1092
TYPE: DNA
ORGANISM: Solanum tuberosum
Query Match 57.0%; Score 1040.4; Length 1092;
Best Local Similarity 99.7%;
Matches 1041; Conservative 1; Mismatches 2; Indels 0; Gaps 0;
Qy 413 ATGTATCCTCCAAGCAACAATAACTGCAACTACAGCCCAATTTTGTCTTCTTTCATATGC 472
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 ATGTATCCTCCAAGCAACAATAACTGCAACTACAGCCCAATTTTGTCTTCTTTCATATGC 60
Qy 473 CAAAATATTCCATCTTCTCCTTGTATGCAATACGAACACGAACTATACTTTCAAAACTTC 532
|||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||
Db 61 CAAAATATTCCATCTTCTCCTTGTATGCAATATGAACACGAACTATACTTTCAAAACTTC 120
Qy 533 AATCATGATGACCAATATTATTTTCAACTACAGCAACAAGTTCCCTTGATAGATGACTTG 592
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 AATCATGATGACCAATATTATTTTCAACTACAGCAACAAGTTCCCTTGATAGATGACTTG 180
Qy 593 AGTCCTCACGTCTTAGCTGACAGCTGCACTGAGACTGTTACTAAGCCTTCAAATTGCAAT 652
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 AGTCCTCACGTCTTAGCTGACAGCTGCACTGAGACTGTTACTAAGCCTTCAAATTGCAAT 240
Qy 653 CACGTACTAGAAGGAATGGAAGAAGGCCGAGGCGGAAACAAAGGAGATGATGTTGTTATG 712
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 CACGTACTAGAAGGAATGGAAGAAGGCCGAGGCGGAAACAAAGGAGATGATGTTGTTATG 300
Qy 713 AGTAGCAGAATTAGTATTATTAGTGGACGGATCTCGAAAAACAATAAGAGATCTTCCAAT 772
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 301 AGTAGCAGAATTAGTATTATTAGTGGACGGATCTCGAAAAACAATAAGAGATCTTCCAAT 360
Qy 773 AAGGATCGACACAGCAAGATCAACACGGCTCGTGGTCCAAGAGATCGAAGGATGAGACTT 832
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 361 AAGGATCGACACAGCAAGATCAACACGGCTCGTGGTCCAAGAGATCGAAGGATGAGACTT 420
Qy 833 TCACTTGATGCTGCTCGCAAGTTTTTCCGTTTGCAGGACTTATTGGGATTTGATAAGGCC 892
||||||||||||||||||||||||||||||||||||||||| ||||||||||||||||||
Db 421 TCACTTGATGCTGCTCGCAAGTTTTTCCGTTTGCAGGACTTGTTGGGATTTGATAAGGCC 480
Qy 893 AGCAAAACTGTAGAATGGTTGCTTACTCAATCGGATTCCGCAATTGAAGAGCTCGTCGCC 952
||||||||||||||||||||||||||||||||:|||||||||||||||||||||||||||
Db 481 AGCAAAACTGTAGAATGGTTGCTTACTCAATCRGATTCCGCAATTGAAGAGCTCGTCGCC 540
Qy 953 GTTAAAGGCAATGATGCTCAGGTTCCTCAGCAAACTAGCTGCAATACCCCCACTACTACT 1012
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 541 GTTAAAGGCAATGATGCTCAGGTTCCTCAGCAAACTAGCTGCAATACCCCCACTACTACT 600
Qy 1013 ACTGGAATTGGTGCAATTTGTGCATCTAATTCTATTTCTGAGTCATGTGAAGTTATATCA 1072
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 601 ACTGGAATTGGTGCAATTTGTGCATCTAATTCTATTTCTGAGTCATGTGAAGTTATATCA 660
Qy 1073 GGAACTGATGAAACTTCCTCTAATGACAAAAACAAGGAAACTACTGCTAAAGATGAGAAG 1132
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 661 GGAACTGATGAAACTTCCTCTAATGACAAAAACAAGGAAACTACTGCTAAAGATGAGAAG 720
Qy 1133 GAGAAAAAGAAGAAGCCGGTTAACACAGCTCGTAGACCTGCGTTTGAACCTCTTACAAAG 1192
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 721 GAGAAAAAGAAGAAGCCGGTTAACACAGCTCGTAGACCTGCGTTTGAACCTCTTACAAAG 780
Qy 1193 GAATCAAGGAATCAAGCAAGAGCCAGGGCTAGAGAGAGAACAAAAACAAAGAAAATGAGC 1252
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 781 GAATCAAGGAATCAAGCAAGAGCCAGGGCTAGAGAGAGAACAAAAACAAAGAAAATGAGC 840
Qy 1253 CAAGTTGGAAAATCCAAATCCCCAGCTCATGATTTGAACCCTTCAGGATCTCGGAGGCCG 1312
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 841 CAAGTTGGAAAATCCAAATCCCCAGCTCATGATTTGAACCCTTCAGGATCTCGGAGGCCG 900
Qy 1313 GCTAATAGAACTTGTGAAGAACCTGGAACACATGAACAACACACCTTCCATCATGTTGAT 1372
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 901 GCTAATAGAACTTGTGAAGAACCTGGAACACATGAACAACACACCTTCCATCATGTTGAT 960
Qy 1373 GACAGTAGTTTTGTGGTTAATGGAAATTGGAATCCATTTACAATCTTCACTTCTCATGAA 1432
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 961 GACAGTAGTTTTGTGGTTAATGGAAATTGGAATCCATTTACAATCTTCACTTCTCATGAA 1020
Qy 1433 CAATATGCTGGAATTTCCAATGAG 1456
||||||||||||||||||||||||
Db 1021 CAATATGCTGGAATTTCCAATGAG 1044
Prosecution Insights