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 May 7th, 2026 have been entered.
Claims 2-4 and 6-7 have been canceled.
New claims 10-16 have been added.
Claims 1, 5, and 8-16 are pending and 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.
Withdrawn Objections & Rejections:
The objections to the specification are withdrawn in light of Applicant’s amendments.
The objections to the claims are withdrawn in light of Applicant’s amendments.
The rejections of claims 6 and 7 under 35 USC § 101 and 112(b) are moot in light of the cancelation of the claims. Examiner notes that although Applicant indicates that claims 6 and 7 have been redrawn as conventional method claims with specifically recited steps/operations to address the noted issues, claims 6 and 7 appear to be canceled.
The rejections of claims 1-9 under 35 USC § 112(a) are withdrawn in light of Applicant’s amendments.
The rejections of claims 1-9 under 35 USC § 103 are withdrawn in light of Applicant’s arguments and amendments.
New Rejections:
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 5, and 8-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. This is a new rejection necessitated by amendments to the claims.
Claim 1 recites that the nucleotide sequences of the functional genes in respective expression cassettes are different, wherein the four expression cassettes are expression cassette A, expression cassette B, expression cassette C, and expression cassette D. Claim 1 further defines the limitations of each expression cassette and recites in the last line that “the functional gene is a damage-induced gene.” It is unclear if the functional gene is meant to be a single gene as indicated at the end of the claim, or multiple different genes, as indicated earlier in the claim.
The dependent claims do not remedy the indefiniteness of claim 1. For example, claim 8 recites expression a singular functional gene in a recipient plant with the DNA molecule according to claim 1. Claims 10-14 recite similar limitations. Claim 15 further defines a specific functional gene having the nucleotide sequence set forth in SEQ ID NO: 1. It is not clear if this is meant to be a singular functional gene for the DNA molecule or if it is intended to be one of the nucleotide sequences for an individual expression cassette, given that the nucleotide sequences and functional genes are claimed to be different.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. This is a new rejection necessitated by amendments to the claims.
Claim 1 has been amended to recite that the functional gene is a damage-induced gene. Claim 9 recites the method according to claim 8, which includes the DNA molecule according to claim 1, wherein the functional gene is a damage-induced gene. Claim 9 does not further limit the method as claim 1 has previously limited the functional gene to a damage-induced gene. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Summary
Claims 1, 5, and 8-16 are deemed free of the prior art given the failure of the prior art to teach or reasonably suggest the “head-to-tail” tandem arrangement of the four expression cassettes with the combination of the four specific Arabidopsis thaliana genes with four specific PR signal peptides in a single vector for damage induced multi-gene coordinated expression.
Claims 1, 5, and 8-16 are rejected.
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY K. JOHNSON whose telephone number is (571)272-5761. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bratislav Stankovic can be reached at 571-270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMILY K JOHNSON/Examiner, Art Unit 1662
/BRATISLAV STANKOVIC/Supervisory Patent Examiner, Art Units 1661 & 1662
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