DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Group II, and the species PPRT1, in the reply filed on May 13, 2026 is acknowledged.
The traversal is on the ground(s) that the Requirement does not properly account for the common special technical feature now recited in claim 1, namely upregulating the ABA signal transduction pathway by reducing or knocking out expression of one or more recited genes selected from PPRT1, AITR1, USB1, CYP707a3, CYP707al, and orthologs thereof, which Applicant asserts that the previously cited prior art of Carmen et al. does not teach or suggest.
This is not found persuasive because claim 1 as currently amended does not recite upregulating the ABA signal transduction pathway by reducing or knocking out expression of one or more recited genes selected from PPRT1, AITR1, USB1, CYP707a3, CYP707al, and orthologs thereof; claim 1 as currently amended is drawn to a method of inducing unreduced aposporous or diplosporous embryo sac formation in a sexual angiosperm, the method comprising reducing or knocking out expression of one or more genes selected from PPRT1, AITR1, USB1, CYP707a3, and CYP707a1, and orthologs thereof. Further, the technical feature of reducing or knocking out expression of one or more genes selected from PPRT1, AITR1, USB1, CYP707a3, and CYP707a1, and orthologs thereof is not a special technical feature as it does not make a contribution over the prior art of Pei et al. (Expression Pattern and Function Analysis of AtPPRT1, a Novel Negative Regulator in ABA and Drought Stress Responses in Arabidopsis. J. Mol. Sci. 2019, 20(2), 394), who teach reducing or knocking out expression of the Arabidopsis thaliana PPRT1 gene.
The traversal is also on the ground(s) that the technical feature linking the species PPRT1, AITR1, USB1, CYP707a3, and CYP707a1, the induction of unreduced aposporous or diplosporous embryo sac formation by reducing or knocking out expression of genes involved in ABA signal transduction, is s a special technical feature.
This is not found persuasive because the technical feature of reducing or knocking out expression of one or more genes selected from PPRT1, AITR1, USB1, CYP707a3, and CYP707a1, and orthologs thereof is not a special technical feature as it does not make a contribution over the prior art of Pei et al. (Expression Pattern and Function Analysis of AtPPRT1, a Novel Negative Regulator in ABA and Drought Stress Responses in Arabidopsis. J. Mol. Sci. 2019, 20(2), 394), who teach reducing or knocking out expression of the Arabidopsis thaliana PPRT1 gene. This is also not found persuasive because the species do not share a substantial structural feature as well as a common use that flows from the substantial structural feature.
The requirement is still deemed proper and is therefore made FINAL.
Claims 3-4, 14, 19-25, 28, 33-34, 36-37 and 40 are withdrawn from consideration.
Improper Markush Grouping
Claim 1 is rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). The improper Markush grouping includes species of the claimed invention that do not share both a substantial structural feature and a common use that flows from the substantial structural feature. The members of the improper Markush grouping do not share a substantial feature and/or a common use that flows from the substantial structural feature for the following reasons: Claim 1 is drawn to a method of inducing unreduced aposporous or diplosporous embryo sac formation in a sexual angiosperm, the method comprising reducing or knocking out expression of one or more genes selected from PPRT1, AITR1, USB1, CYP707a3, and CYP707a1, and orthologs thereof. The recited alternative genes are unrelated to each other, and encode structurally and functionally distinct proteins. In response to this rejection, Applicant should either amend the claim(s) to recite only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claims(s) in fact share a substantial structural feature as well as a common use that flows from the substantial structural feature. This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. §134 and 37 CFR 41.31(a)(1) (emphasis provided).
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.
Claim 1 is 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.
Claim 1 is broadly drawn to a method of inducing unreduced aposporous or diplosporous embryo sac formation in any sexual angiosperm plant, the method comprising reducing or knocking out expression of one or more genes selected from PPRT1, AITR1, USB1, CYP707a3, and CYP707a1, and orthologs thereof.
With respect to the elected species of PPRT1, the specification describes a single species of a sexual angiosperm plant produced by reducing or knocking out the expression of a PPRT1 gene, a T-DNA Knock-out line of Arabidopsis thaliana (SALK_063373) purchased from TAIR (paragraph [0144]; Fig 11). The PPRT1 T-DNA Knock-out line of Arabidopsis thaliana exhibits a higher percentage of aposporous ovules (70.1% to 80%) as compared to a wild type control plant (4.6%) (Fig 22 Table 2).
The specification does not describe other sexual angiosperm plant species in which the expression of a PPRT1 gene is reduced or knocked out and unreduced aposporous or diplosporous embryo sac formation is induced. The specification also does not describe any ortholog of a PPRT1 gene.
With respect to the state of the art regarding the predictability of reducing or knocking out gene expression, it was known at the time of filing that such methods require knowledge of the structure of the target gene, and may vary in their phenotypic effect.
For example, with respect to antisense technology, Klee et al. (U.S. Patent No. 5,702,933, issued Dec. 30, 1997) teach that antisense genes are probably be species-specific, and that a different antisense gene would therefore be required for each species of plant desired to be transformed (column 1 lines 60-65). Waterhouse et al. teach that antisense suppression of gene expression requires a high degree of sequence homology (>75%) between the endogenous sequence and the antisense transgene to be effective (Trends in Plant Science, November 1999, Vol. 4, No. 11, pages 452-457, see page 453 column 1 second full paragraph). Sandler et al. (Inhibition of gene expression in transformed plants by antisense RNA. Plant Molecular Biology, 1988, Vol. 11, No. 3, pages 301-310) teach that DNA fragments encoding different portions of the nopaline synthase gene, when expressed as antisense transcripts, vary in their ability to inhibit nopaline synthase gene expression (page 308 column 2 and Table 4, page 309 column 1 first full paragraph). Antisense transcripts downstream from the Cla I site (nucleotide 373) effectively suppressed nopaline synthase gene expression, whereas the full length antisense transcript and the antisense transcript upstream from the Cla I site (nucleotides 1 to 373) did not (id).
With respect to the state of the art regarding the predictability of identifying orthologues, it was known at the time of filing that methods for the prediction of orthologues may fail to correctly identify orthologues and paralogues due to a variety of different factors that include gene duplication, domain shuffling, speciation and database errors. See, for example, Sjolander (Phylogenomic inference of protein molecular function: advances and challenges. Bioinformatics. 2004 Jan 22;20(2):170-9). See also, for example, Glover et al. (Advances and Applications in the Quest for Orthologs. Mol. Biol. Evol. 2019 Oct 1;36(10):2157-2164), who teach that developing accurate computational methods to infer orthologs is a challenging research problem that requires reconstructing the gene content of ancestral genomes, and inference of how each gene family was shaped by its history of speciation, gene duplication, horizontal gene transfer (HGT), and gene loss. Glover et al. teach that there is thus a need to improve orthology inference algorithms to deal with gene families with complex histories of gene duplications and loss, HGT, or domain gain or loss, and that additionally, computational tools used for orthology inference face challenges when dealing with an increasing number of genomes Glover et al. also teach that orthology is harder to detect at large evolutionary distances, and that methods for fair and accurate assessment of different inference methods (benchmarking) are required.
Given the breadth of the claims as they read on the elected species which allow for the induction of unreduced aposporous or diplosporous embryo sac formation in any sexual angiosperm plant by reducing or knocking out expression of a PPRT1 gene or an ortholog thereof, given the unpredictability of methods for reducing or knocking out gene expression, given that methods for the prediction of orthologues and paralogues may fail to correctly identify orthologues and paralogues, and given the extremely limited disclosure of only a single species of sexual angiosperm plant in which the expression of a PPRT1 gene is reduced or knocked out and aposporous embryo sac formation is induced, one skilled in the art would not recognize that the applicant was in possession of the claimed invention as a whole at the time of filing. Further, Applicant has not described a representative number of species falling within the scope of the genus of sexual angiosperm plants required by the rejected claim.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pei et al. Expression Pattern and Function Analysis of AtPPRT1, a Novel Negative Regulator in ABA and Drought Stress Responses in Arabidopsis. J. Mol. Sci. 2019, 20(2), 394.
Claim 1 as it reads on the elected species is drawn to a method of inducing unreduced aposporous or diplosporous embryo sac formation in a sexual angiosperm, the method comprising reducing or knocking out expression of a PPRT1 gene, or an ortholog thereof.
Pei et al. teach a method comprising reducing or knocking out expression of an Arabidopsis thaliana PPRT1 gene by T-DNA insertion (page 3 last paragraph). While Pei et al. are silent with respect to inducing unreduced aposporous or diplosporous embryo sac formation, Pei et al. need not teach this limitation to anticipate the rejected claim, because the recitation in the claim preamble is an intended use for the claimed method, and therefore is not limiting. Accordingly, Pei et al. anticipate claim 1.
Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CYNTHIA E COLLINS whose telephone number is (571)272-0794. The examiner can normally be reached M-F 8:30 am - 5:00 pm.
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/CYNTHIA E COLLINS/Primary Examiner, Art Unit 1662
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