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 .
Status of Claims
The amendments submitted on August 18th, 2026 have been entered.
Claim 32 has been canceled.
Claims 1, 3, 5, 7-8, 10-13, 16, 18-19, 21-23, 27-29, and 31 are pending in the application.
Claims 1, 3, 5, 23, 27-29, and 31 are withdrawn under the restriction requirement.
Claims 7-8, 10-13, 16, 18-19, and 21-22 are examined in this Office action.
The text of those sections of Title 35 U.S. Code, not included in this action, can be found in a prior Office action.
Specification Objections
Applicant has not replied to Examiner’s objections to the specification (see top of page 3 of the Office Action mailed 05/18/2026).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Objections
The objections to claims 7-8, 10-13, 16, 18-19, and 21-22 are withdrawn in light of Applicant’s amendments to the claims.
The objections to claim 32 are moot in light of the cancellation of claim 32.
The amendment to the claims filed on August 18th, 2026, does not comply with the requirements of 37 CFR 1.121(c) because changes in the amended claims were not marked with respect to the previously presented claims, filed on March 30th, 2026. For example, the amendments to amended claim 7 lack proper underlining of amendments, such as newly added a) and b), and strike through of deleted phrases, such as “modulate”. Amendments to the claims must comply with 37 CFR 1.121(c) which states:
(c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
Any further claim amendments must comply with 37 CFR 1.121(c) or they may not be entered.
Claim Interpretation
The term “DPH3 Homolog-related peptide” is recited in claim 7 (and claims 8, 10-13, 16, 18-19, and 21-22 depending therefrom). The instant specification states that the terms "DPH type domain containing protein" and "DPH3 Homolog-related peptide" or "DPH3 Homolog-related protein" are used interchangeably herein and that an illustrative sequence of a DPH type domain containing protein or DPH3 Homolog-related peptide from tobacco is shown in SEQ ID NO: 3 [pg. 10, lns. 30-35]. Thus, a sequence with high identity to SEQ ID NO: 3 is taken to be a DPH3 homolog-related peptide. The recitation of “homolog-related peptide” under the broadest reasonable interpretation is taken to mean a large range of evolutionarily related short sequences of amino acids sharing a common ancestor and exhibiting similarity in sequence, structure, or function1. The art suggests that this is a dipthamide biosynthesis peptide2, but there is no defined source or definition for the peptide in the instant disclosure. Thus, this is taken to mean a sequence sharing similar structure and/or function to the disclosed sequences.
The term "modifying" or "modified" recited in claim 7 (and claims 8, 10-13, 16, 18-19, and 21-22 depending therefrom) as used herein means a plant (e.g. a tobacco plant) or nucleic acid sequence that has been altered or changed by any means, including naturally, as defined in the instant disclosure [pg. 10, lns. 8-10].
The term “unmodified plant” as recited in claim 7 (and claims 8, 10-13, 16, 18-19, and 21-22 depending therefrom) is defined as a plant which has not been modified according to the present invention in which all relevant features are the same, as defined in the instant disclosure [pg. 11, lns. 10-14].
The term “plant propagation material” as recited in claim 8, 16, and 18 is taken to mean any plant matter taken from a plant from which further plants may be produced. This may be a seed, plant calli or plant clumps, as defined in the specification [pg. 44, lns. 25-29].
The phrase “tobacco plant or part thereof” is taken to mean any part of a tobacco plant, which may include a seed that has been pollinated by another plant. A part of a plant was not defined in the instant specification and thus is interpreted as comprising a seed that would include around half the genetic material of another parent plant.
Claim Rejections Under 35 USC § 112(a)
Written Description
Claims 7-8, 10-13, 16, 18-19, and 21-22 are rejected under 35 USC § 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. This rejection is modified in light of the claim amendments.
The claims are broadly drawn to a tobacco plant or any part thereof having been modified in any way to modulate or decrease the activity or expression of a DPH3 Homolog-related peptide and comprising decreased alkaloid and/or TSNA precursor content as compared to an unmodified plant.
Applicant describes:
Virus-induced gene silencing (VIGS) of Nitab4.5_0002165g0050.2 (which has the genomic sequence of SEQ ID NO: 1, the coding sequence of SEQ ID NO: 2, and the amino acid sequence of SEQ ID NO: 3), using a 300-nucleotide cDNA fragment of Nitab4.5_0005997g0050.2 (SEQ ID NO: 21). The TRV VIGS vector comprised both TRV RNA1 (SEQ ID NO: 22) and TRV RNA2 propagated into A. tumefaciens [Example 1].
VIGS of Nitab4.5_0002165g0050.2 causing a significant reduction in nicotine within a Nicotiana plant as compared to an unmodified control plant [Example 1].
Applicant does not describe:
Modulation of any alkaloids or TSNA precursors other than nicotine.
Modification of the activity or expression of a DPH3 homolog-related peptide with at least 80% identity to SEQ ID NO: 1-3 other than SEQ ID NOs: 1-3.
If alkaloid content can be increased and TSNA precursors maintained or reduced (i.e., the plant comprising decreased alkaloid and/or TSNA precursor content).
Modification of any kind to modulate or decrease the activity or expression of a DPH3 homolog-related peptide, other than VIGS.
Any plant propagation material obtained from the tobacco plant comprising modulated or decreased activity or expression of a DPH3 homolog-related peptide from the heritable modification.
Any plant part with modulated DPH3 homolog-related peptide activity or expression and decreased alkaloid and/or TSNA precursor content, other than tobacco leaves.
Alkaloids are a vast genus of molecules found primarily as secondary metabolites in plants. However, several other types of alkaloids are known to be produced by other organisms, such as animals, fungi and bacteria, and some alkaloids are specific to certain plants. For example, Papaver somniferum (opium poppy) is known for producing unique benzylisoquinoline alkaloids, mainly morphine, codeine, and thebaine, which are not produced by tobacco plants (Beaudoin, G. et al., 2014, “Benzylisoquinoline alkaloid biosynthesis in opium poppy”, Planta, 240(1):19-32, doi: 10.1007/s00425-014-2056-8).
The instant claims recite decreased alkaloid and/or TSNA precursor content in comparison to an unmodified plant (which is taken to mean a control tobacco plant under the same conditions as the modified plant, see claim interpretation). With the VIGS modification of Example 1, the instant disclosure describes silencing of Nitab4.5_002165g0050.2. The results of the relative content of pyridine alkaloids were determined by LC-MS/MS, for analytes nicotine, nicotine d4, anabasine, anatabine, nornicotine, nornicotine d4, PON, and PON d4 [pg. 70]. Alkaloid content of 5-week-old tobacco leaves silenced for Nitab4.5_002165g0050.2 is shown in Fig. 1. Although the Applicant claims that VIGS of Nitab4.5_002165g0050.2 leads to a decrease in alkaloid content in leaves, in particular a decrease in nicotine, anabasine, and PON, Fig.1 shows that only the reduction in nicotine content was statistically significant.
No alkaloids besides the three in Figure 1 appear to have been tested, and of those three, only nicotine is shown to be statistically lower in alkaloid content than the unmodified control (see Fig. 1 below).
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Given the limited description in the instant specification of only Nicotiana plants and the broad scope of alkaloids present in tobacco (or in any plant, as the scope of the claims does not limit the alkaloid to a tobacco-specific alkaloid), a skilled artisan would not have reasonably recognized Applicant to be in possession of the full metes and bounds of the claims at the time the application was filed.
Modifications, including mutations, insertions, deletions, and/or substitutions, can have varying
effects on gene expression. Ge, F. et al. (2024, “Review of Computational Methods and Database Sources
for Predicting the Effects of Coding Frameshift Small Insertion and Deletion Variations,” ACS
Publications, 9:2032-2047) teaches, for example, silent mutations may not change the protein structure and thus do not result in increased gene expression, while others, such as frameshift mutations, can cause
a premature stop codon resulting in a truncated protein that is not functional [pg. 2032, col. 1, ¶1]. Aboud, M. et al. (Genetics, Epigenetic Mechanism. [Updated 2023 Aug 14]. In: StatPearls [Internet]. Treasure Island (FL): StatPearls Publishing; 2026 Jan-. Available from: https://www.ncbi.nlm.nih.gov/ books/NBK532999/) teaches that modifications to alter gene expression or activity includes epigenetic changes through alterations in the chromosome, rather than the DNA sequence, regulating gene expression through chemical modifications [pg. 1, ¶1-2].
Modification may refer to the alteration of the peptide or gene encoding the peptide by any means, including merely natural modifications, such as a reaction to abiotic or biotic stress. Such modifications may or may not result in an increase or decrease in activity or expression of a DPH3 homolog-related peptide, however, there is not sufficient structure to indicate that any modification would result in the function of decreasing activity or expression of a DPH3 homolog-related peptide in a reliable and predictable manner.
As the Applicant only provides the one, specific example of the VIGS technique, which is a small species in the large genus of “modification”, any methodology of modification is not reduced to practice. Undue experimentation would be required to be required to confirm that the structure of the mutation or modification performs the function of decreasing expression and/or activity of a DPH3 homolog-related peptide resulting in decreased alkaloid and/or TSNA content. The instant disclosure lacks sufficient variety of species to reflect the variance within the genus of modification.
VIGS can serve as an alternative to mutant collections or stable transgenic plants to allow the characterization of gene functions in a wide range of angiosperm species, but is a transient method of genetic transformation (Lange, M, et al. 2013, “Virus-Induced Gene Silencing (VIGS) in Plants: An Overview of Target Species and the Virus-Derived Vector Systems”, In: Becker, A. (eds) Virus-Induced Gene Silencing. Methods in Molecular Biology, vol 975. Humana Press, Totowa, NJ. https://doi.org/10.1007/978-1-62703-278-0_1) [Abstract]. With only a few exceptions, the targeted gene silencing will not be transferred to subsequent generations [pg. 10, ¶4]. These limitations require experiments for each new species or specific tissue targeted, and the optimal time point and location of infection have to be determined experimentally. Gene silencing may only be successful when the consequences of the target gene VIGS (i.e., decreased activity or expression of a DPH3 homolog-related peptide comprising decreased alkaloid and/or TSNA precursor content) do not exceed the stability of the VIGS vector.
The Applicant has not reduced to practice VIGS in any tissue other than leaves. The Applicant has not provided any examples of a plant, plant propagation material, or any sort of processed leaf or product produced from the tobacco leaves with the VIGS modification. As VIGS is known to be transient and no examples of a plant grown from the tobacco plant with the modification with decreased activity or expression of a DPH3 homolog-related peptide or decreased alkaloid content are reduced to practice, the Applicant has not sufficiently linked the structure to the function.
Use of DPH3 homolog-related peptides is not prevalent in relation to altering alkaloid and/or TSNA content. Zhang et al. (2022, “Translational fidelity and growth of Arabidopsis require stress-sensitive diphthamide biosynthesis”, Nature Communications, 13:4009) teaches DPH1-DPH7 are responsible for catalyzing biosynthesis steps of diphthamide, a post-translationally modified histidine residue of eukaryotic TRANSLATION ELONGATION FACTOR2 (eEf2) [Abstract]. Zhang teaches that diphthamide contributes to the functionality of the translational machinery monitored by plants to regulate growth. Diphthamide remains only partly understood across cellular physiology. Lack of diphthamide modification on eEF2 is reported to cause severe defects in humans and mutant mice dying during embryonic development, while single-celled organisms and mammalian cell cultures lacking diphthamide remain viable with elevated rates of -1 ribosomal frameshifting in protein biosynthesis of yeast and mouse mutant cells lacking diphthamide [pg. 2, col. 1, ¶2]. Zhang teaches knockout dph1 mutants in Arabidopsis, wherein the mutants exhibit TARGET OF RAPAMYCEIN (TOR) kinase activity attenuation, autophagy activation, and dwarfing in plants as a result of a reduction in cell proliferation in leaves and roots [pg. 2, col. 1, ¶3]. Zhang concludes that Arabidopsis requires DPH1 function to maintain cell proliferation at levels sustaining normal growth rates, as well as the full capacity for TOR activation [pg. 9, col. 2, ¶5].
Given the limited research around DPH3, and therefore DPH3 homolog-related peptides with regard to decreasing alkaloid and/or TSNA content in tobacco plants, the level of predictability in the art is low. One of ordinary skill in the art would likely predict that some modifications of a DPH3 homolog-related peptide may impair growth of a plant if it retained a similar biological function to DPH3 in other species given that Zhang teaches that DPH1-DPH7 are important for catalyzing diphthamide biosynthesis.
As in the claim interpretation, “DPH3 homolog-related peptide” covers a large range of evolutionarily related short sequences of amino acids sharing a common ancestor and exhibiting similarity in sequence, structure, or function. The instant disclosure provides a singular example of VIGS of Nitab4.5_002165g0050.2 purportedly reducing alkaloid content in leaves [Example 1]. The VIGS construct uses a “300-nucleotide cDNA fragment of Nitab4.5_0005997g0050.2 (SEQ ID NO: 21).” Examiner notes that SEQ ID NO: 21 is actually 290 nucleotides long. The results show a significant decrease in nicotine only [Fig. 1]. Homologue testing in Example 2 simply states that the effects of the homologues of SEQ ID NO: 3, namely those listed in Table 1, are tested in assays as described in the above example. Table 1 provides only three homologues and does not display any data describing the influence of VIGS on the genes or further on alkaloid and/or TSNA precursor content.
The recitation of DPH3 homolog-related peptide is defined only in the specification using exemplary language. A related homolog of a DPH3 peptide is a broad term for any character, gene, or structure that shares a common ancestral origin. Though homologous/orthologous genes among different plants may perform similar or equivalent functions3, the broader recitation of “homolog-related” does not guarantee the same functional connotation as just “homolog”. It is not clear what would fall within “homolog-related” given that related could be interpreted in multiple ways. A representative number of species was not described to represent the entire genus of decreasing the activity or expression of a DPH3 homolog-related peptide given the vastness of the genus. Sufficient structure was not provided of the homolog-related peptides that share a common ancestor and still maintain the same function in the claims.
The instant specification provides only the VIGS construct using SEQ ID NO: 21, a cDNA fragment of Nitab4.5_0005997g0050.2. The instant claims are broadly drawn to any related homolog of a DPH3 peptide, which is already a broad term, as defined above, with 80% identity to SEQ ID NO: 3 or a peptide that is encoded by a nucleotide sequence with at least 80% identity to SEQ ID NOs: 1 or 2. This leaves an extremely broad range of possible sequences. For example, SEQ ID NO: 1 is 7,088 nucleotides long. 80% identity to 7,088 nucleotides allows for a difference of around 1,418 bp, just considering substitutions. With the three alternative nucleotides that can be substituted, this leads to greater than around 1.781 x 102215 possible sequences for 80% identity. The claim of “at least 80% identity” renders the scope even greater. It is not clear that such a sequence would maintain its function.
The Applicant does not provide working examples of a DPH3 homolog-related peptide with 80% identity to any of the amino acid sequences or encoding nucleotide sequences in a tobacco plant or part thereof having been modified and comprising decreased alkaloid and/or TSNA precursor content. Due to the functional unpredictability of homolog-related peptides and 80% sequence identity, and breadth of the potential sequences, undue experimentation would be required to ensure that all all DPH3 homolog-related peptides with 80% identity to any of the claimed sequences still maintained the functionality.
Therefore, given the lack of written description in the instant disclosure with regard to the structural and functional characteristics of the claimed compositions, the Applicant does not appear to have been in possession of the claimed genus at the time this application was filed.
Response to Applicant’s Arguments:
Applicant's arguments filed August 18th, 2026, have been fully considered but they are not persuasive. The Applicant argues that the specification provides adequate written description support for determining the levels of alkaloid and TSNA precursors. The Applicant contends that the specification discloses various techniques for modification of nucleic acid sequences and that such modifications encompass stable genomic alterations beyond transient VIGS. The Applicant further argues that the specification demonstrates possession of methods for identifying and confirming modified plants and demonstrates possession of methods for confirming a reduction in alkaloid content resulting from the modification.
First, with regard to Applicant’s assertion that the specification provides adequate written description support for determining the levels of alkaloid and TSNA precursors, Examiner agrees that Applicant has identified several assays for determining the levels of alkaloids. Applicant contends that the “disclosure determines that the Applicant was in possession of methods for determining whether there has been a decrease in the content of alkaloids and/or TSNA precursors at the time of filing.” (see Reply to Office Action dated 08/18/2026). Examiner does not disagree that methods for determining alkaloid content and/or TSNA precursor content are known, however methods for determining whether there has been a decrease in the content of alkaloids and/or TSNA precursors does not appear to be the nature of the invention or what is instantly claimed.
As is cited in the abstract, “[t]he present invention provides a method for modulating the alkaloid content of a plant (e.g. a tobacco plant), the method comprising modifying said plant by modulating the activity or expression of a DPH3 Homolog-related peptide. The present invention also provides for the use of a DPH3 Homolog-related peptide for modulating the alkaloid content of a plant, as well as tobacco cells, plants, plant propagation materials, harvested leaves, processed tobaccos, or tobacco products obtainable in accordance with the invention.” (see Abstract dated 08/01/2024).
Second, with regard to Applicant’s assertion that the specification discloses various techniques for modification of nucleic acid sequences and that such modifications encompass stable genomic alterations beyond transient VIGS, Examiner maintains that any modification may not result in the intended function performed by the VIGS modification in the instant disclosure. Though the Applicant suggests methods known in the art, no examples are reduced to practice, with the exception of the VIGS modification. As stated in the Office Action mailed 05/18/2026, VIGS is a transient expression method spreading through plant tissues (pg. 9 second paragraph). As VIGS is transient, crops bred from the plants would not have the same function.
Different modification methods face entirely separate biological and technical barriers, such as Agrobacterium-mediated transformation that requires integrating DNA directly into the plant’s genome. Alternative methodologies may not result in the same functionality, given that, as stated in the Office Action mailed 05/18/2026, use of DPH3 homolog-related peptides is not prevalent in relation to altering alkaloid and/or TSNA content. Further, as shown by the Applicant, the VIGS modification was only able to significantly reduce nicotine, demonstrating that the results for decreasing any alkaloid and/or TSNA precursor are not predictable even with the modification reduced to practice.
Given the unpredictability of the result of the modification, as well as the broad genus of possible modifications that are not even limited to the examples provided in the instant disclosure, the Applicant has not reduced to practice a representative number of species to support the genus claims. As stated in the MPEP, a "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014). MPEP § 2163.
Third, with regard to Applicant’s argument that the specification demonstrates possession of methods for identifying and confirming modified plants and demonstrates possession of methods for confirming a reduction in alkaloid content resulting from the modification, Examiner notes that the claimed material does not appear to be methods for identifying modified plants or methods for confirming a reduction in alkaloid content. The instant disclosure shows discloses how percentage identity can be determined (page 62, from line 5), however this does not decrease the broad genus of 80% identity to the SEQ ID NOs. of claim 7, and claims depending from claim 7. It does not provide a common structure or reduce to practice any other species of the broad genus to support that a DPH3 homolog-related peptide with 80% identity to the claimed sequences would be able to perform the function.
As noted in the Office Action mailed 05/18/2026, the recitation of DPH3 homolog-related peptide is defined only in the specification using exemplary language. A related homolog of a DPH3 peptide is a broad term for any character, gene, or structure that shares a common ancestral origin. Though homologous/orthologous genes among different plants may perform similar or equivalent functions, the broader recitation of “homolog-related” does not guarantee the same functional connotation as just “homolog”. Even if the methods for determining the sequence identity are provided in the instant specification, there is no reduction to practice of species within the genus of DPH3 homolog-related peptides, much less those with 80% sequence identity to the claimed sequences.
Further, although Applicant states that the instant specification discloses methods for identifying and confirming modified plants, that stably modified plants would have a modification in the genome, and methods for distinguishing modified plants, the ability to determine if a plant has been modified compared to a non-modified plant does not reduce to practice the broad genus claims. One skilled in the art would still have an extremely large number of species that fall within the claims. Using any modification would require experimentation to confirm that the structure of the modification can lead to the claimed function. Further, given that there is no reduction to practice of species within the genus of DPH3 homolog-related peptides, much less those with 80% sequence identity to the claimed sequences, undue experimentation would be required by one of ordinary skill in the art to attempt any modification to any of the peptides to result in the claimed function. The methods of identification and confirmation would be required at each step, but do not provide a structural limitation that links the one example reduced to practice to the extensive genus claimed.
Similarly, providing methods for the identification of the levels of alkaloids does not change the fact that the Applicant has not reduced to practice a statistically significant reduction in any alkaloid other than nicotine, which is shown in Figure 1. The only other two alkaloids are also TSNA precursors and did not have a significant reduction, demonstrating that even within TSNA precursors, the results of the VIGS modification are not consistent. The unpredictability in these results does not show that the Applicant is in possession of a tobacco plant that has been modified to decrease the expression of a DPH3 homolog-related peptide such that any alkaloid known to exist would be decreased.
Thus, this rejection is maintained.
Scope of Enablement
Claims 7-8, 10-13, 16, 18-19, and 21-22 remain 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 Nicotiana plant, or leaf, which has been modified to achieve a reduction in nicotine in comparison to an unmodified Nicotiana plant, wherein the modification is VIGS of Nitab4.5_0002165g0050.2, does not reasonably provide enablement for any modification to decrease expression of any DPH3 homolog-related peptide with at least 80% identity to any of SEQ ID NOs. 3 or encoding polynucleotides of SEQ ID NOs: 1 or 2, wherein the plant has decreased content of any alkaloid and/or TSNA precursor in comparison to an unmodified plant, or plant products or propagation material thereof. 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 or use the invention commensurate in scope with these claims.
In re Wands lists a number of factors for determining whether or not undue experimentation would be required by one skilled in the art to make and/or use the invention. These factors are: (1) the quantity of experimentation necessary; (2) the amount of direction or guidance presented; (3) the presence or absence of working examples of the invention; (4) the nature of the invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability or unpredictability of the art; (8) the breadth of the claim. In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988).
Claims 7-8, 10-13, 16, 18-19, and 21-22 are broadly directed to a tobacco plant or part thereof which has been modified by any means to achieve any modulation of a DPH3 homolog-related peptide and comprises decreased content of any alkaloid and/or TSNA precursor in comparison to a modified plant, as well as any propagate with decreased DPH3 homolog-related peptide activity or expression or decreased alkaloid and/or TSNA precursor content.
Applicant teaches:
Virus-induced gene silencing (VIGS) of Nitab4.5_0002165g0050.2 (which has the genomic sequence of SEQ ID NO: 1, the coding sequence of SEQ ID NO: 2, and the amino acid sequence of SEQ ID NO: 3), using a 300-nucleotide cDNA fragment of Nitab4.5_0005997g0050.2 (SEQ ID NO: 21). The TRV VIGS vector comprised both TRV RNA1 (SEQ ID NO: 22) and TRV RNA2 propagated into A. tumefaciens [Example 1].
VIGS of Nitab4.5_0002165g0050.2 causing a significant reduction in nicotine within a Nicotiana plant as compared to an unmodified control plant [Example 1].
Applicant does not teach:
Modification of the activity or expression of a DPH3 homolog-related peptide with at least 80% identity to SEQ ID NO: 1-3 other than SEQ ID NOs: 1-3.
Modification of any kind to decrease the expression of a DPH3 homolog-related peptide, other than VIGS.
Any plant propagation material obtained from the tobacco plant comprising decreased expression of a DPH3 homolog-related peptide from the heritable modification.
While alkaloids are a vast genus of molecules found primarily as secondary metabolites in plants, several other types of alkaloids are known to be produced by other organisms, such as animals, fungi and bacteria, and some alkaloids are specific to certain plants. For example, Papaver somniferum (opium poppy) is known for producing unique benzylisoquinoline alkaloids, mainly morphine, codeine, and thebaine, which are not produced by tobacco plants (Beaudoin, G. et al., 2014, Benzylisoquinoline alkaloid biosynthesis in opium poppy”, Planta, 240(1):19-32, doi: 10.1007/s00425-014-2056-8). The instant claims broadly include all such alkaloids, but only reduce to practice a significant reduction in nicotine content. The instant disclosure and the instant claims do not set forth structural characteristics essential to the DPH3 homolog-related peptide such that one would envision which DPH3 homolog-related peptides would decrease the content of any alkaloid or any TSNA precursor. It is additionally unclear if having sequence identity of at least 80% to SEQ ID NOs: 1-3 would provide sufficient structure to result in the same effect of decreasing alkaloid content in a tobacco plant, as posited by the Applicant.
The instant claims are directed to a decrease in expression of a DPH3 homolog-related peptide, meaning that any methodology may be used for any decreased in protein activity or gene expression. This may include anything from a natural modification (i.e., herbivory) to a single point mutation in any part of the gene encoding the peptide. The instant specification is only adequately enabled for the use of one technique, VIGS, for decreasing nicotine content.
The instant disclosure only teaches VIGS of Nitab4.5_0002165g0050.2, but does not indicate any other sequences with at least 80% to SEQ ID NOs: 1-3 with a similar functionality of decreased alkaloid content. The instant specification merely states that homologues were tested but does not provide any data to support the conclusion that sequences with at least 80% identity to SEQ ID NOs: 1-3 would be able to be used in the invention as claimed. One of ordinary skill in the art would not reasonable be able to make or use the invention to the broad scope it is currently claimed.
For example, SEQ ID NO: 3, the amino acid sequence of the DPH3 homolog-related peptide is 242 amino acids long. Peptides with at least 80% identity to SEQ ID NO: 3 encompass peptides with up to 48 amino acid substitutions relative to SEQ ID NO: 3. There are a large number of possible substitutions with anywhere from 1 to 48 possible amino acids substituted in any position of the 242-length sequence and any other the other 19 possible amino acids substituted. For the potential amino acid substitutions alone at each of the 48 positions, there would be 1948 possibilities, of which the Applicant has not provided sufficient working examples or direction. The instant disclosure fails to provide guidance for how to make polypeptides with 80% identity to the listed sequences of claim 3 which have the claimed function.
Additionally, the exemplified species of the genus claim of 80% identity to SEQ ID NOs: 1-3, are unpredictable. One would not be able to substitute, add or delete portions of the sequence while asserting with certainty that the sequence maintains the function. For example, sites or regions with binding and/or folding activity are critical to the protein’s structure/function relationship and necessitate correct three-dimensional spatial orientation of binding and active sites. Keskin, O. et al. (2005, “Favorable scaffolds: proteins with different sequence, structure and function may associate in similar ways”, Protein Engin. Des. & Selec., 18(1):11-24) further teaches that even proteins with similar structure may have different functions [Abstract]. The instant specification does not teach any variants, fragments or orthologs to the DPH3 homolog-related peptide as it only provides a single example of Nitab4.5_002165g0050.2 VIGS. Nitab4.5_002165g0050.2 has the amino acid sequence of SEQ ID NO: 3, coding sequence of SEQ ID NO: 2, and genomic sequence of SEQ ID NO: 1. The specification fails to provide guidance for how to make or use nucleotides with 80% identity to the SEQ ID NOs: 1-3 with the same function. The Applicants have not provided working examples or prophetic examples of a representative number of plants carrying the modification with such great variety while maintaining the function.
As use of DPH3 homolog-related peptides is not prevalent in relation to altering alkaloid and/or TSNA content, the art does not remedy the deficiencies of the enablement. DPH1-DPH7 are responsible for catalyzing biosynthesis steps of diphthamide, a post-translationally modified histidine residue of eukaryotic TRANSLATION ELONGATION FACTOR2 (eEf2) (Zhang et al. (2022, “Translational fidelity and growth of Arabidopsis require stress-sensitive diphthamide biosynthesis”, Nature Communications, 13:4009) [Abstract]. Diphthamide is known to contribute to the functionality of the translational machinery monitored by plants to regulate growth, but remains only partly understood across cellular physiology. Knockout dph1 mutants in Arabidopsis exhibited TARGET OF RAPAMYCEIN (TOR) kinase activity attenuation, autophagy activation, and dwarfing in plants as a result of a reduction in cell proliferation in leaves and roots [pg. 2, col. 1, ¶3]. Thus, Arabidopsis requires DPH1 function to maintain cell proliferation at levels sustaining normal growth rates, as well as the full capacity for TOR activation [pg. 9, col. 2, ¶5].
As DPH1-7 are responsible for diphthamide biosynthesis, it is possible that DPH3 has some similar functionality, but given the limited research around DPH3, and therefore DPH3 homolog-related peptides, with regard to decreasing alkaloid and/or TSNA content in tobacco plants, the level of predictability in the art is low. One of ordinary skill in the art would likely predict that some modifications of a DPH3 homolog-related peptide may impair growth of a plant if it retained a similar biological function to DPH3 in other species given that Zhang teaches that DPH1-DPH7 are important for catalyzing diphthamide biosynthesis. One would not reasonably predict that a homolog-related peptide or 80% identity would confer the function of decreased alkaloid and/or TSNA precursor content.
Lastly, VIGS can serve as an alternative to mutant collections or stable transgenic plants to allow the characterization of gene functions in a wide range of angiosperm species, but is a transient method of genetic transformation (Lange, M, et al. 2013, “Virus-Induced Gene Silencing (VIGS) in Plants: An Overview of Target Species and the Virus-Derived Vector Systems”, In: Becker, A. (eds) Virus-Induced Gene Silencing. Methods in Molecular Biology, vol 975. Humana Press, Totowa, NJ. https://doi.org/10.1007/978-1-62703-278-0_1) [Abstract]. With only a few exceptions, the targeted gene silencing will not be transferred to subsequent generations [pg. 10, ¶4]. These limitations require experiments for each new species or specific tissue targeted, and the optimal time point and location of infection have to be determined experimentally. Gene silencing may only be successful when the consequences of the target gene VIGS (i.e., decreased activity or expression of a DPH3 homolog-related peptide comprising decreased alkaloid and/or TSNA precursor content) do not exceed the stability of the VIGS vector.
The Applicant has provided only the working example for VIGS in tobacco leaves, not in any other tissue. The Applicant has not provided any working examples of a plant, plant propagation material, or any sort of processed leaf or product produced from the tobacco leaves with the VIGS modification. As VIGS is known to be transient and no guidance is provided for a plant grown from the tobacco plant with the modification with modulated or decreased activity or expression of a DPH3 homolog-related peptide or decreased alkaloid content, one would not be reasonably enabled to make or use the invention. It would not be predictable to achieve a plant grown from the tobacco plant, or plant propagation material obtained from the tobacco plant that would maintain the same function as the original tobacco plant because the VIGS modification was likely transient. Although there appear to be a few exceptions to this, significant experimentation would be required to ensure the modification could be passed down or would be effective with any DPH3 homolog-related peptide.
Thus, the examples provided by the Applicant do not provide adequate working examples to enable the scope of the invention without undue experimentation. Given the breadth of the claims, the lack of guidance and working examples, the unpredictability in the art, and the state of the art, undue experimentation would be required to make and use the claimed invention, and therefore, the invention is not enabled throughout the broad scope of the claims.
Response to Applicant’s Arguments:
Applicant's arguments filed August 18th, 2026, have been fully considered but they are not persuasive. Applicant argues that the specification provides extensive guidance enabling a person of ordinary skill in the art to make and use the invention without undue experimentation. The Applicant contends that the specification teaches multiple methods by which a person of ordinary skill in the art may reduce or eliminate expression of a gene encoding a DPH3 homolog-related peptide, thus providing sufficient guidance for one of ordinary skill in the art to make and use the invention without undue experimentation.
With regard to Applicant argument that the specification provides extensive guidance enabling a person of ordinary skill in the art to make and use the invention without undue experimentation, the Applicant contends that the working example together with the detailed experimental protocols provide a clear roadmap to practice the invention. Examiner notes that the specification is enabling for a Nicotiana plant, or leaf, which has been modified to achieve a reduction in nicotine in comparison to an unmodified Nicotiana plant, wherein the modification is VIGS of Nitab4.5_0002165g0050.2, as stated in the Office Action dated 05/18/2026 (page 12, 1st paragraph). Enablement for this small scope is found in the singular working example provided on pages 69-70 of the instant specification.
The experimental protocols are various methodologies known in the art for alternative modifications that have not been verified with the sequences of the instant application, much less with the variable DPH3 homolog-related peptide with at least 80% identity to the claimed sequences. The recitation of DPH3 homolog-related peptide is defined only in the specification using exemplary language. A related homolog of a DPH3 peptide is a broad term for any character, gene, or structure that shares a common ancestral origin but does not indicate anything about the functionality of such a peptide.
Further, use of any alternative modification does not guarantee that the function will be maintained or improved to perform the claimed function. Currently the structure of the working example supports a statistically significant reduction to nicotine content, but is not enabling to a reduction in any other alkaloid as claimed, especially given the broad scope of alkaloids (see Office Action dated 05/18/2026, last paragraph of page 13). It is not clear that a different modification would maintain the function. Additionally, use of DPH3 homolog-related peptides is not prevalent in relation to altering alkaloid and/or TSNA content, rendering the scope unpredictable. The art does not remedy the deficiencies of the enablement (see Office Action dated 05/18/2026, last paragraph of page 15). Even if the experimental protocols are known in the art, the working example, the breadth of the claims, and the unpredictability of 80% identity to a DPH3 homolog-related peptide would not allow one to make or use the invention without undue experimentation. One would be required to determine what qualified as a DPH3 homolog-related peptide, try an unreasonable number of available sequences and modifications, and determine if the invention worked.
As in the MPEP, the Applicant cannot rely on the knowledge of one skilled in the art to supply information that is required to enable the novel aspect of the claimed invention when the enabling knowledge is in fact not known in the art. The Federal Circuit has stated that “‘[i]t is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.’” Auto. Technologies, 501 F.3d at 1283, 84 USPQ2d at 1115 (quoting Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366, 42 USPQ2d 1001, 1005 (Fed. Cir. 1997)).
The Applicant further argues that the specification as filed does demonstrate the modulation of alkaloids and TSNA precursors other than nicotine. Example 1 and Figure 1 show that only the reduction in nicotine was statistically significant. The only alkaloids that were tested were TSNA precursors, anabasine and PON. As stated in the Office Action dated 05/18/2026, alkaloids are a vast genus of molecules found primarily as secondary metabolites in plants, but can additionally be produced by other organisms, such as animals, fungi and bacteria. Further, some alkaloids are specific to certain plants, such as benzylisoquinoline alkaloids, found only in poppy plants. The Applicant has not demonstrated a reduction to any other alkaloids other than nicotine, anabasine, and PON, and even within the singular working example, only one alkaloid was reduced to a statistically significant level. Given the broad scope of alkaloids, some of which would need to be genetically introduced into a tobacco plant, making and using the invention as claimed would not be clear to one of ordinary skill in the art.
Claim Rejections Under 35 USC § 102
Claims 7-8, 10-13, 16, and 18, are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Coffin, M., “Genes and Uses for Plant Enhancement”, International Publication NO: WO 2009134339 A2, published 11/05/2009 (see, IDS filed 01/22/2025). This is a modified rejection necessitated by amendments to the claims.
Claim 7 recites A tobacco plant or part thereof or a tobacco cell or cell culture, having been modified to decrease the expression of a diphthamide biosynthesis protein 3 (DPH3) Homolog-related peptide, and comprising decreased alkaloid and/or tobacco-specific nitrosamine (TSNA) precursor content in comparison to an unmodified plant or unmodified cell or cell culture, wherein the DPH3 Homolog-related peptide: a) comprises the amino acid sequence of SEQ ID No. 3; or a sequence which has at least 80% identity to SEQ ID No. 3.
Claim 8 recites a plant propagation material obtained from the tobacco plant according to claim 7, the plant propagation material comprising decreased expression of a DPH3 Homolog-related peptide, and decreased alkaloid and/or TSNA precursor content in comparison to a plant propagation material obtained from an unmodified tobacco plant, wherein the DPH3 Homolog-related peptide: a) comprises the amino acid sequence of SEQ ID No. 3; or a sequence which has at least 80% identity to SEQ ID No. 3.
Claim 10 recites the tobacco plant or part thereof or tobacco cell or cell culture according to claim 7, wherein the content of one or more alkaloids selected from nicotine, nornicotine, PON, anabasine, myosmine, and anatabine is modulated or decreased.
Claim 11 recites the tobacco plant or part thereof or tobacco cell or tobacco cell culture according to claim 10, wherein the nicotine content is decreased.
Claim 12 recites a plant or a crop bred or grown from the tobacco plant or part thereof or tobacco cell or cell culture according to claim 7, the plant or the crop comprising decreased expression of a DPH3 Homolog-related peptide, or decreased alkaloid and/or TSNA precursor content in comparison to a plant or a crop bred or grown from an unmodified tobacco plant or part thereof or an unmodified tobacco cell or cell culture.
Claim 13 recites a product or a leaf produced from the tobacco plant or part thereof or a tobacco cell or cell culture according to claim 7, the product or the leaf comprising decreased expression of a DPH3 Homolog-related peptide, or decreased alkaloid and/or TSNA precursor content in comparison to a product or a leaf produced from an unmodified tobacco plant or part thereof or an unmodified tobacco cell or cell culture.
Claim 16 recites a harvested leaf or a cut harvested leaf of the tobacco plant according to claim 7, or obtained from a plant propagated from a propagation material obtained from the tobacco plant according to claim 7, the harvested leaf or the cut harvested leaf comprising decreased expression of a DPH3 Homolog-related peptide, or decreased alkaloid and/or TSNA precursor content in comparison to a harvested leaf or a cut harvested leaf obtained from an unmodified tobacco plant.
Claim 18 recites a processed leaf: obtained by processing the tobacco plant according to claim 7; obtained from a plant or a harvested leaf thereof, wherein the plant was propagated from the plant propagation material obtained from the tobacco plant according to claim 7; or obtained by processing a harvested leaf or a cut harvested leaf of the tobacco plant according to claim 7, the processed leaf comprising decreased expression of a DPH3 Homolog-related peptide, or decreased alkaloid and/or TSNA precursor content in comparison to a processed leaf obtained by processing an unmodified tobacco plant or a harvested leaf or a cut harvested leaf thereof.
Regarding claim 7, 10-11, and 32, Coffin discloses transgenic seeds for crops with enhanced agronomic traits, providing recombinant DNA molecules for expression or suppression of a protein (i.e., modulate or decrease the activity of a peptide) [Abstract]. Coffin discloses that tobacco is a plant of interest for the production of transgenic plants having enhanced traits (i.e., a tobacco plant or part thereof or a tobacco cell or cell culture having been modified) [pg. 77, ln. 9]. Coffin discloses SEQ ID NO: 1607 through SEQ ID NO: 94613, homologs to the proteins cognate to genes used in trait improving [pg. 36, lns. 14-17].
Coffin teaches that "homolog" means a protein that performs the same biological function as a second protein, including those identified by sequence identity search [pg. 9, lns 8-10]. Homologs of the proteins in the invention are identified by comparison of the amino acid sequence of the protein to amino acid sequences of proteins from the same or different plant sources [pg. 35, lns. 27-30]. Thus, homolog is used herein to describe proteins that are assumed to have functional similarity by inference from sequence base similarity [pg. 36, lns. 13-14].
Coffin discloses SEQ ID NO: 23048 with 93.5% identity to instant SEQ ID NO: 3 (i.e., wherein the DPH3 homolog-related peptide comprises an amino acid sequence as set out in SEQ ID NO: 3; or a functional variant or functional fragment or orthologue of SEQ ID NO: 3; or a sequence which has at least 80% identity to SEQ ID NO: 3; or a homologue of SEQ ID NO: 3) (see, alignment below). With high sequence identity to SEQ ID NO: 3, this is taken to be a DPH3 homolog-related peptide (see, claim interpretation). As Coffin discloses plant sequences and their use for altering plant phenotypes by overexpression or down regulation and teaches a DPH3 homolog-related peptide, a reduced alkaloid and/or TSNA content is inherent to the plants as claimed. Although Coffin does not explicitly teach that the alkaloid and/or TSNA precursor content (nicotine, noricotine, PON, anabasine, myosmine, and anatanine) is decreased, the function would inherently come from the taught structure.
Query Match 93.5%; Score 1180.5; Length 243;
Best Local Similarity 94.2%;
Matches 229; Conservative 5; Mismatches 8; Indels 1; Gaps 1;
Qy 1 MAIQRL-LPLFFLLISSLTFLAQSRSDTNHVYSPCADAKVQKSDGFSFGIAFSSRTSFFL 59
|||||| | | |||||||| |||||||||||||||||||||:||||||||||:||||||:
Db 1 MAIQRLPLLLVFLLISSLTLLAQSRSDTNHVYSPCADAKVQRSDGFSFGIAFASRTSFFV 60
Qy 60 NSSVQLSPCDKRLSLSSANSQIAVFRPKVDEISLLTINTTNFFPDSYGGYMVAFAGRKYA 119
|||||||||||||||||||||||||||||||||||||||::|||||||||||||||||||
Db 61 NSSVQLSPCDKRLSLSSANSQIAVFRPKVDEISLLTINTSSFFPDSYGGYMVAFAGRKYA 120
Qy 120 ARSLPAFVANNTFTVTSFTLVLEFKKGRLENLYWKRDGCSSCSGNSNFVCLNDQDCAIRT 179
|||||||||| |||||||||| |||||||||||||||||||||||||||||| |||||||
Db 121 ARSLPAFVANGTFTVTSFTLVHEFKKGRLENLYWKRDGCSSCSGNSNFVCLNGQDCAIRT 180
Qy 180 NNCKNRGGNVDCSLGIQLTFSGTDKHESVFNSWFEVKNLRQYSLYGLYSNLRSSLTDQYN 239
|||||||||||||||||||||||||| ||||||||||||||||||||||||| |||||||
Db 181 NNCKNRGGNVDCSLGIQLTFSGTDKHASVFNSWFEVKNLRQYSLYGLYSNLRGSLTDQYN 240
Qy 240 KFF 242
|||
Db 241 KFF 243
Regarding claim 8, Coffin teaches that seeds of transgenic plants are provided by this invention can be used to propagate more plants containing the trait-improving recombinant DNA constructs of this invention (i.e., plant propagation material obtained from the plant).
Regarding claim 12, Coffin teaches methods for manufacturing non-natural, transgenic seed that can be used to produce a crop of transgenic plants with an enhanced trait resulting from expression of stably-integrated, recombinant DNA in the nucleus of the plant cells (i.e., a plant or crop bred or grown from the tobacco plant or part thereof or tobacco cell or cell culture) [pg. 3, lns. 4-6].
Regarding claims 13 and 16, in the provided examples, Coffin teaches that the plant parts were harvested at day 49 for dry weight measurements (i.e., a product or a leaf produced from the tobacco plant or part thereof or a tobacco cell or cell culture; a harvested leaf of the tobacco plant) [Example 1].
Regarding claim 18, Coffin teaches that transgenic plants can be used to provide plant parts according to the invention for regeneration or tissue culture of cells or tissues containing the described constructs. Plant parts for these purposes can include leaves or any other portion of the plant which can be used to regenerate additional transgenic plants, cells, protoplasts or tissue culture (i.e., a processed leaf: obtained from a plant or a harvested leaf thereof, wherein the plant was propagated from the plant propagation material obtained from the tobacco plant according to claim 7) [pg. 80, lns. 3-10].
Thus, Coffin anticipates claims 7-8, 10-13, 16, and 18.
The art does not explicitly teach nor suggest a leaf processed by curing, fermenting, pasteurizing or a combination thereof, cured tobacco material, or a tobacco blend from tobacco comprising a modification to modulate or decrease activity of a DPH3 homolog-related peptide and decreased alkaloid and/or TSNA precursor content in comparison to an unmodified plant.
Response to Applicant’s Arguments:
The Applicants’ arguments in the response submitted on August 18th, 2026, have been fully considered but they were not found to be persuasive. The Applicant contends that a claim is anticipated only if it discloses each and every element of the claim, expressly or inherently (Remarks, page 12, first paragraph). Applicant argues that Coffin does not disclose that the sequence should be increased or decreased and that Coffin discloses thousands of amino acid sequences (Id., page 12, paragraph 2). Further Applicant contends that Coffin does not disclose any method of modifying alkaloid content or TSNA precursor content (Id., page 12, paragraph 3).
The Examiner disagrees. The instant claims are composition claims. As described above, Coffin highlights that SEQ ID NO: 23048 is an important polynucleotide of the invention because it can be used in trait improvement in plants like tobacco. Although Coffin does not create a tobacco plant having been modified to decrease expression of this polypeptide, wherein the plant comprises decreased alkaloid content, Coffin teaches how to do so by providing all steps and working examples for other claimed polypeptides. “[A] reference can anticipate a claim even if it “d[oes] not expressly spell out” all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would “at once envisage” the claimed arrangement or combination.” See Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1392 (Fed. Cir. 2015) (finding a reference can anticipate a claim where there is no evidence that the claimed combination was in fact created, but where the claimed combination is plainly suggested as an alternative embodiment). See also Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1379 (Fed.Cir.2001) (“Rather, anticipation only requires that those suggestions be enabled to one of skill in the art.”)
Here, the skilled artisan is taught methods to create a transgenic plant as claimed by modifying expression of a claimed polypeptide and provided SEQ ID NO:23048 as a suitable polynucleotide for use in a method to create the claimed composition. Using this information, the skilled artisan can “at once envisage” the claimed composition. Note also the explanation given by the Patent Trial and Appeal Board in Ex parte Christophe Reuzeau, Appeal No. 2016-000979 (decided 03/24/2017), at pages 9-18, where in a factually similar context the rejection was affirmed.
Therefore, for at least the reasons of record, and those reasons indicated above, the rejection is maintained.
Claims 12-13, 16, 18-19, and 21-22, are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Pramod, S. et al. International Publication No. WO 2021247740 A1, “Compositions and Methods for Producing Tobacco Plants and Products Having Altered Alkaloid Levels,” published 12/09/2021. This rejection is made to the extent that the claims are interpreted to require merely decreased alkaloid and/or TSNA precursor content in comparison to a product or a leaf produced from an unmodified tobacco plant. Thus, the claimed material would be indistinguishable from other tobacco material having been modified to have lower alkaloid and/or TSNA precursor content as it does not require modulated activity or expression of a DPH3 homolog-related peptide. This rejection is maintained.
Claim 12 recites a plant or a crop bred or grown from the tobacco plant or part thereof or tobacco cell or cell culture according to claim 7, the plant or the crop comprising decreased alkaloid and/or TSNA precursor content in comparison to a plant or a crop bred or grown from an unmodified tobacco plant or part thereof or an unmodified tobacco cell or cell culture.
Claim 13 recites a product or a leaf produced from the tobacco plant or part thereof or a tobacco cell or cell culture according to claim 7, the product or the leaf comprising decreased alkaloid and/or TSNA precursor content in comparison to a product or a leaf produced from an unmodified tobacco plant or part thereof or an unmodified tobacco cell or cell culture.
Claim 16 recites a harvested leaf or a cut harvested leaf of the tobacco plant according to claim 7, or obtained from a plant propagated from a propagation material obtained from the tobacco plant according to claim 7, the harvested leaf or the cut harvested leaf decreased alkaloid and/or TSNA precursor content in comparison to a harvested leaf or a cut harvested leaf obtained from an unmodified tobacco plant.
Claim 18 recites a processed leaf: obtained by processing the tobacco plant according to claim 7; obtained from a plant or a harvested leaf thereof, wherein the plant was propagated from the plant propagation material obtained from the tobacco plant according to claim 7; or obtained by processing a harvested leaf or a cut harvested leaf of the tobacco plant according to claim 7, the processed leaf comprising decreased alkaloid and/or TSNA precursor content in comparison to a processed leaf obtained by processing an unmodified tobacco plant or a harvested leaf or a cut harvested leaf thereof.
Claim 19 recites the processed leaf according to claim 18, wherein the leaf is processed by curing, fermenting, pasteurizing or a combination thereof, or wherein the leaf is a cut processed leaf
Claim 21 recites cured tobacco material made from the tobacco plant or a part thereof according to claim 7, or a harvested leaf of the tobacco plant according to claim 7, or a processed leaf obtained by processing the tobacco plant or part thereof according to claim 7, the cured tobacco material comprising decreased alkaloid and/or TSNA precursor content in comparison to a cut tobacco material made from an unmodified tobacco plant, a part thereof, a harvested leaf thereof, or a processed leaf thereof.
Claim 22 recites a tobacco blend comprising said cured tobacco material of claim 21.
Pramod teaches compositions and methods for producing tobacco plants and products having altered alkaloid levels [Abstract]. Pramod teaches that a variety of factors affect tobacco alkaloid levels including genotype, environment, fertilization, and agronomic practices [¶5]. Genetic studies using the low alkaloid Burley 21 (LA BU21) lines indicated that two unlinked loci contribute to nicotine levels in the tobacco leaf. Pramod teaches a modified tobacco plant, or part thereof, comprising a genetic modification in a gene and downregulating the expression or activity of the gene [¶9]. Pramod additionally teaches harvesting from low nicotine varieties [¶260], cured tobacco material from the tobacco [claim 12], leaf processing by processes such as fermenting [¶222], and a tobacco blend made from the cured tobacco [¶17] (i.e., a product produced, a harvested leaf, a processed leaf, wherein the leaf is processed by fermenting, cured tobacco material, a tobacco blend).
The products of the instant claims simply require that the plant or the crop comprises modulated or decreased activity or expression of a DPH3 homolog-related peptide or decreased alkaloid and/or TSNA precursor content in comparison to a plant or a crop bred or grown from an unmodified tobacco plant or part thereof. Therefore, a plant or crop bred or grown from the plant of claim 7, or products thereof, need not have modulated or decreased activity or expression of a DPH3 homolog-related peptide. Thus, there is nothing of record to distinguish the plants and products of claims 12-13, 16, 18-19, 21-22 from those of the prior art, as Pramod teaches decreased alkaloid content in comparison to an unmodified plant.
Response to Applicant’s Arguments:
The Applicants’ arguments in the response submitted on August 18th, 2026, have been fully considered but are not found to be persuasive. The Applicant contends that claim 7 (from which claims 12-13, 16, 18-19 and 21-22 depend) as amended recites specific sequences which Pramod does not disclose (Remarks, page 12, last paragraph). Applicant argues that because Pramod fails to disclose each and every element of the presently amended claim, Pramod does not anticipate claims 12, 13, 16, 18, and 21-22.
Examiner respectfully disagrees. Claim 12 recites a plant or crop bred or grown from the tobacco plant of claim 7, the plant or crop comprising decreased expression of a DPH3 homolog-related peptide or decreased alkaloid content and/or TSNA precursor content. A crop bred from the plant of claim 7 would contain a unique mix of genetic information from both parents rather than an exact, complete copy of either parent's entire genetic code and thus would not necessitate the specific sequence modified in claim 7. Further, claim 13 recites a product produced from the tobacco plant, which comprises a seed from the plant and would not require the modification, as detailed in the rejection of claim 12.
Claims 16 and 18 (and 19 depending from claim 18) recite a leaf or processed leaf obtained from a plant propagated from a propagation material obtained from the tobacco plant. As defined in the instant specification, the plant propagation material may be a seed [pg. 44, lns. 25-29]. Although Applicant does not define “plant part”, as recited in claim 21 (and 22 depending therefrom), this may encompass an embryo or seed that has been fertilized through cross pollination but is still attached to the plant as a plant part. Thus, this can be interpreted to not necessitate the inventive concept, which appears to be the modification of the DPH3 homolog-related peptide. Pramod therefore teaches all limitations of the claims as they merely require decreased alkaloid content and only require decreased expression of a DPH3 homolog-related peptide in the alternative.
Summary
Claims 7-8, 10-13, 16, 18-19, and 21-22 are rejected.
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR § 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/EMILY K JOHNSON/Examiner, Art Unit 1662
/BRATISLAV STANKOVIC/Supervisory Patent Examiner, Art Units 1661 & 1662
1 Incardona, F. et al. (1995), “How much are homologous peptides homologous?” J. Theor. Biol. 175:437-455.
2 UniProt (https://www.uniprot.org/uniprotkb/Q21102/entry) teaches that diphthamide biosynthesis protein 3 (DPH3) is required for the first step of diphthamide biosynthesis.
3 Wu, Z. et al. (2023, “Phylogenetic Inference of Homologous/Orthologous Genes Among Distantly Related Plants,” Commun. Biol. DOI: 10.1038/s42003-023-04849-4) teaches that homologous/orthologous genes among different plants typically perform similar or equivalent functions, which is theoretically plausible and empirically supported [pg. 2, ¶1].
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