DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The finality of the Office action mailed 18 February 2026 is withdrawn. This Office action is NON-FINAL.
Petition under 37 CFR 1.102(c)(1)
The petition to make the present application special based on Applicant’s age is granted. The application is SPECIAL.
Status of the Claims
Claims 1, 3-15, 19, 24 and 26-27 are pending in the present application.
Claims 1, 3-13 and 15 are withdrawn as being drawn to a non-elected invention. Claims 14, 19, 24 and 26-27 are examined herein.
Nucleotide and/or Amino Acid Sequence Disclosures
REQUIREMENTS FOR PATENT APPLICATIONS CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCE DISCLOSURES
Items 1) and 2) provide general guidance related to requirements for sequence disclosures.
37 CFR 1.821(c) requires that patent applications which contain disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) must contain a "Sequence Listing," as a separate part of the disclosure, which presents the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of 37 CFR 1.821 - 1.825. This "Sequence Listing" part of the disclosure may be submitted:
In accordance with 37 CFR 1.821(c)(1) via the USPTO patent electronic filing system (see Section I.1 of the Legal Framework for Patent Electronic System (https://www.uspto.gov/PatentLegalFramework), hereinafter "Legal Framework") as an ASCII text file, together with an incorporation-by-reference of the material in the ASCII text file in a separate paragraph of the specification as required by 37 CFR 1.823(b)(1) identifying:
the name of the ASCII text file;
ii) the date of creation; and
iii) the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(1) on read-only optical disc(s) as permitted by 37 CFR 1.52(e)(1)(ii), labeled according to 37 CFR 1.52(e)(5), with an incorporation-by-reference of the material in the ASCII text file according to 37 CFR 1.52(e)(8) and 37 CFR 1.823(b)(1) in a separate paragraph of the specification identifying:
the name of the ASCII text file;
the date of creation; and
the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(2) via the USPTO patent electronic filing system as a PDF file (not recommended); or
In accordance with 37 CFR 1.821(c)(3) on physical sheets of paper (not recommended).
When a “Sequence Listing” has been submitted as a PDF file as in 1(c) above (37 CFR 1.821(c)(2)) or on physical sheets of paper as in 1(d) above (37 CFR 1.821(c)(3)), 37 CFR 1.821(e)(1) requires a computer readable form (CRF) of the “Sequence Listing” in accordance with the requirements of 37 CFR 1.824.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed via the USPTO patent electronic filing system as a PDF, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the PDF copy and the CRF copy (the ASCII text file copy) are identical.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed on paper or read-only optical disc, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the paper or read-only optical disc copy and the CRF are identical.
Specific deficiencies and the required response to this Office Action are as follows:
Specific deficiency - This application fails to comply with the requirements of 37 CFR 1.821 - 1.825 because it does not contain a "Sequence Listing" as a separate part of the disclosure or a CRF of the “Sequence Listing.”.
Required response - Applicant must provide:
A "Sequence Listing" part of the disclosure; together with
An amendment specifically directing its entry into the application in accordance with 37 CFR 1.825(a)(2);
A statement that the "Sequence Listing" includes no new matter as required by 37 CFR 1.821(a)(4); and
A statement that indicates support for the amendment in the application, as filed, as required by 37 CFR 1.825(a)(3).
If the "Sequence Listing" part of the disclosure is submitted according to item 1) a) or b) above, Applicant must also provide:
A substitute specification in compliance with 37 CFR 1.52, 1.121(b)(3) and 1.125 inserting the required incorporation-by-reference paragraph, consisting of:
A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
A copy of the amended specification without markings (clean version); and
A statement that the substitute specification contains no new matter.
If the "Sequence Listing" part of the disclosure is submitted according to item 1) c) or d) above, applicant must also provide:
A CRF in accordance with 37 CFR 1.821(e)(1) or 1.821(e)(2) as required by 1.825(a)(5); and
A statement according to item 2) a) or b) above.
Claim Rejections - 35 USC § 112
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 14, 19, 24 and 26-27 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.
Claims 14, 19, 24 and 26-27 recite one or more gene products selected from the group consisting of Solyc12g049170.2, Solyc12g049150.1, Solyc12g049070.1, Solyc09g075410.3, Solyc12g100110.1, Solyc12g100080.1, Solyc07g017570.2, Solyc08g068680.3, Solyc06g074390.3, Solyc01g067870.3, Solyc11fg007220.2, Solyc02g014300.2, Solyc02g082090.3, Solyc12g017870.2, Solyc01g009400.3, Solyc01g067860.3, Solyc05g055320.3, Solyc07g066330.3 and Solyc07g048070.3. The instant specification states that a gene product refers to products of genes, for example RNA (e.g., messenger RNA (mRNA)) or protein. However, the instant specification does not disclose the sequences of the gene products. The specification does not provide Seq. ID. Nos. for the gene products, and it is not known what sequences are being claimed or what protein corresponds to the gene ID. Therefore, it is not clear how to make and use the gene products being claimed.
Claims 14, 19, 24 and 26-27 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without the sequences of the gene products, which is/are critical or essential to the practice of the invention but not included in the claims. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). It is noted that the instant specification states that RNA was extracted from tomato plant seedlings and sequenced, followed by mapping to the reference genome. However, the specification does not provide the sequences of the extracted RNA, or the genome product being claimed.
Claim Rejections - 35 USC § 103
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 14, 24 and 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Orozco et al. (US 2005/0138691 A1) in view of Deshpande et al. (Plants, 2021).
Orozco et al. teach throughout an isolated nucleic acid fragment encoding an auxin transport protein; the construction of a chimeric gene encoding all or a substantial portion of the auxin transport protein, in sense or antisense orientation, wherein expression of the chimeric gene results in production of altered levels of the auxin transport protein in a transformed host cell; and methods using the auxin transport protein in modulating root development, and in discovering compounds with potential herbicidal activity.
Regarding instant claims 14, 24 and 26-27, Orozco et al. teach nucleic acid fragments that encode all or a substantial portion of the auxin transport protein, preferably a plant auxin transport polypeptide, as well as signal peptides (Abstract; [0002], [0015]-[0016], [0049], [0064]; Claim 16).
The instant specification states that the claimed gene products include auxin transporter-encoding genes, signal peptides, Aromatic amino acid decarboxylase 1A, Fatty acyl-CoA reductase, peroxidase gene, AP2/ERF, NAC, WRKY23 and/or defense protein genes ([0009]).
In the absence of evidence to the contrary, the nucleic acid fragments according to Orozco et al. are within the scope of the gene products instantly claimed, wherein the gene products encode for the same peptides.
Orozco et al. further teach measuring the level of the auxin transport polypeptide or enzyme activity in the host cell containing the isolated polynucleotide ([0014], [0031]). Orozco et al. do not explicitly disclose measuring upregulation of benzoic acid, succinic acid or salicylic acid, as instantly claimed.
Deshpande et al. teach that exogenous application of β-cyclocitral (βCC) primes plants against drought and develops resistance against insect herbivores (pg. 2). Deshpande et al. hypothesized that βCC plays a pivotal role in the regulation of multiple stress responses. To see how it orchestrates the multiple defense responses, we analyzed the transcriptome of βCC-treated tomato plants and compared it with the control plants (pg. 2, Section 2.1). Deshpande et al. teach that to understand the regulatory mechanism of upregulated genes in orchestrating defense response, 92 stress-responsive upregulated genes were subjected to co-functional analysis on TomatoNet. It was found that out of 92 stress-responsive genes, 40 queries were valid. Out of these valid queries, 33 queries were detected in the predefined network on TomatoNet. A total of 18 DEGs were co-functional with the coverage of 0.82. Functional annotations of the 18 genes revealed that all are related to defense response. The genes involved in this network are representating key transcription factors (TFs), namely DREB3 (Solyc04g072900.1), MYC2 (Solyc08g076930.1), MYB44 (Solyc04g078420.1), ERF3 (Solyc10g006130.1), ERF017 (Solyc12g009240.1), ERF1 (Solyc03g093610.1), and ERF 109-like (Solyc10g050970.1), that are involved in tuning abiotic and biotic stress responses in different plants (pg. 9, Section 2.7; pg. 10, Figure 7). Deshpande et al. further teach that plant hormones play a crucial role in plants’ growth, development, and defense responses. Plants produce a bouquet of hormones, namely auxins (AUX), gibberellins (GA), cytokinins (CK), abscisic acid (ABA), ethylene (ET), salicylic acid (SA), jasmonates (JA), brassinosteroids (BR), and strigolactones. Among these, ABA, SA, JA, and ET are the major ones that mediate plant defense response against abiotic stresses and biotic stresses (pg. 12).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to expose a plant to ERF017 (Solyc12g009240.1) and/or gibberellins to prime the plants against multiple stresses. A person of ordinary skill in the art would reasonably expect the application of ERF017 (Solyc12g009240.1) and/or gibberellins to mediate plant defense response against abiotic stresses and biotic stresses since Deshpande et al. teach that these compounds are involved in protecting the plant against abiotic and biotic stresses.
Deshpande et al. do not explicitly disclose measuring the upregulation of one or more biomarkers selected from benzoic acid, succinic acid, and salicylic acid.
However, Deshpande et al. teach that salicylic acid is also produced by plants to mediate plant defense response against abiotic stresses and biotic stresses (pg. 12).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to monitor the upregulation of plant hormones, including salicylic acid, in order to determine the effectiveness of exogenous application of ERF017 (Solyc12g009240.1) and/or gibberellins to prime the plants against abiotic and biotic stresses, as suggested by Deshpande et al.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Orozco et al. (US 2005/0138691 A1) in view of Deshpande et al. (Plants, 2021) as applied to claims 14, 24 and 26-27 above, further in view of further in view of Robinett et al. (US 5,772,723), Gaysin et al. (RU 2 608 226 C2), Liang et al. (CN 104892208 A) and Ru (CN 1986495 A).
Regarding claim 19, Orozco et al. and Deshpande et al. do not explicitly disclose exposing the plant to a composition comprising zinc, copper and acid wherein the ratio of copper to zinc is between 1:2 and 1:20.
Robinett et al. teach a plant micronutrient composition for application to agricultural crops comprising a divalent metal salt, citric acid and sodium citrate (Abstract; col. 1, ln. 5-10; col. 2, ln. 52-58; Claim 14). Robinett et al. teach that the divalent metal salts include copper sulfate, zinc sulfate and iron sulfate (Abstract; col. 3, ln. 7-10, 17-20, 48-50; col. 4, ln. 1-3; Examples I-III; Claims 15, 17-18). Robinett et al. further teach that the composition comprises divalent metal salt, citric acid, and sodium citrate in molar ratios of 3:1:1 (col. 3, ln. 46-50).
Gaysin et al. teach compositions for stimulating growth and development of plants includes a mixture of compounds of molybdenum, copper and zinc, citric acid and alkanolamine in molar ratio 1:(1-10):(1-25):(1-100):(4-100) and water in ratio (wt%): mixture of compounds of molybdenum, copper and zinc, citric acid and alkanolamine – 0.5–70.0, water – balance. As copper salts, copper sulfate (copper (II) sulfate pentahydrate) is used; as zinc compounds, zinc sulfate (zinc sulfate heptahydrate) is used (Abstract; pg. 2, para. 1-8; Tables 1-3; Claim 1). Gaysin et al. teach a composition comprising copper (II) sulfate and zinc sulfate in a weight ratio of 1:2.5, and 21 wt.% citric acid (Example 2; Table 1, #2). The composition can be used for foliage spraying of plants, as well as for presowing treatment of seeds and provides high crop yield (pg. 1, Effect; pg. 1, Description; Example 6; Tables 2-3). Gaysin et al. further teach compositions comprising 5.25, 10.5, 17.68, 21 or 22.1 wt.% citric acid (лимонная кислота) (Examples 1 and 3-5; Table 1).
Liang et al. teach a liquid composite trace element fertilizer comprising in weight percentage 0-1.0% citric acid, 0.46-38% iron sulfate heptahydrate, 0.18-3.3% copper sulfate pentahydrate, and 0.25-2.3% zinc sulfate monohydrate (Abstract; pg. 1; and Claim 1).
Ru teaches a clear liquid fertilizer composition comprising 40-100 kg/m3 (i.e., ~4-10% by weight) of a trace element and 80-200 kg/m3 (i.e., ~8-20% by weight) of a chelating agent, wherein the trace element comprises copper sulfate pentahydrate and zinc sulfate monohydrate in an elemental mass ratio of Cu to Zn of 0.1 to 2.0 : 0.2 to 5.0, and the chelating agent comprises citric acid (pg. 1-2; Claims 1-2). Ru teaches that the fertilizer compositions improve growth and development of the plant and also provide the ability to resist disease, drought, lodging, and hot and dry wind, i.e., plant priming (pg. 2).
Ru specifically teaches a composition comprising 10 wt.% citric acid, 0.5 wt.% copper sulfate pentahydrate, and 1.0 wt.% zinc sulfate monohydrate (weight ratio of copper sulfate pentahydrate to zinc sulfate monohydrate of 1:2) (Example 1).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date to expose plants or seeds to gene products as taught by Orozco et al. and Deshpande et al., and to further treat the seeds with a composition comprising copper, zinc and an acid to improve growth and development of the plant and also provide the ability to resist disease, drought, lodging, and hot and dry wind, i.e., plant priming, as reasonably suggested by Robinett et al., Gaysin et al., Liang et al. and Ru.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nathan W Schlientz whose telephone number is (571)272-9924. The examiner can normally be reached 10:00 AM to 6:00 PM, Monday through Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571) 272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/N.W.S/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
