DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 75-92 are pending.
Claims 75-92 are examined on the merits.
Claim Objections
Claim 75 is objected to because of informalities. Claim 75 recites “integrated into a genome plant”. It appears applicant intended “integrated into a plant genome”. Correction is required for clarity.
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.
Written Descriptions
Claims 75-92 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The Federal Circuit has clarified the application of the written description requirement. The court stated that a written description of an invention "requires a precise definition, such as by structure, formula, [or] chemical name, of the claimed subject matter sufficient to distinguish it from other materials". University of California v. Eli Lilly and Co., 119 F.3d 1559, 1568; 43 USPQ2d 1398, 1406 (Fed. Cir. 1997). The court also concluded that "naming a type of material generally known to exist, in the absence of knowledge as to what that material consists of, is not description of that material". Id. Further, the court held that to adequately describe a claimed genus, Patent Owner must describe a representative number of the species of the claimed genus, and that one of skill in the art should be able to "visualize or recognize the identity of the members of the genus". Id.
The claims are rejected for lacking adequate written description support regarding the broad scope of the following.
Independent claims 75, 78, and 85 broadly recite expression vectors, genetically modified plants, and methods capable of producing a “recombinant protein” in plant seeds in an amount between 3-30% recombinant protein per total soluble protein (TSP). however, the specification does not reasonably convey possession of the full scope of the claimed subject matter.
The specification repeatedly describes the invention as directed to production of recombinant heme proteins in transgenic plants. For example, the specification states that the disclosure relates to “production of animal heme proteins in transgenic plants and seeds” and describes expression cassettes for production of animal heme proteins in plants (pa0003-0012). The specification further states that “the recombinant heme proteins used for transformation are hemoglobin and myoglobin”, specifically porcine hemoglobin and porcine myoglobin (pa0168-0169). The specification further discloses that the hemoglobin gene and myoglobin gene were codon-optimized for soybean expression (pa0184-0187).
The working examples are likewise limited to heme proteins. Example 1 describes construction of soybean expression vectors containing codon-optimized porcine hemoglobin or porcine myoglobin genes (pa0198-0200). In particular, the EC3 construct corresponds to PPhas + myoglobin cDNA + Arc5 + Rb7MAR (pa0200). Example 2 describes regeneration and confirmation of transgenic soybean events carrying these constructs (pa0201-0203). Example 3 evaluates expression of porcine hemoglobin and porcine myoglobin in soybean seed (pa0204-0210).
Thus, the specification demonstrates possession of soybean expression systems utilizing selected animal heme proteins, specifically porcine hemoglobin and porcine myoglobin. The specification does not describe a representative number of recombinant proteins spanning the full scope of the claimed genus of “recombinant proteins”, nor does it identify structural features common to all recombinant proteins that would permit a person of ordinary skill in the art to recognize members of the claimed genus capable of achieving the claimed expression level. The specification contains no working examples for enzymes, antibodies, membrane proteins, multimeric proteins other than hemoglobin, glycoproteins, industrial proteins, pharmaceutical proteins, or other classes of recombinant proteins.
Additionally, claims 76, 79, and 86 recites promoter, terminator, and matrix attachment region sequences having at least 70% identity ranges for these regulatory elements, the specification does not disclose representative species across the breadth of the claimed 70% identity genus, nor does it demonstrate possession of variants throughout that scope that retain the expression characteristics necessary to achieve the claimed 3-30% TSP expression level.
Further, claims 77, 80, 81, 83, 87-88 and 90 encompass numerous plant species. However, the working examples are limited to soybean transformation and soybean seed expression (pa0201-0210). The specification does not provide representative examples demonstrating possession of the claimed expression system throughout the full range of recited plant species.
Accordingly, the specification does not reasonably convey to a person of ordinary skill in the art that Applicant was in possession of the full scope of the claimed subject matter at the time of filing.
Scope of Enablement
Claims 75-92 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specifications, while being enabling for the production of porcine hemoglobin and porcine myoglobin in soybean seeds using the specifically disclosed expression construct and transformation events; does not reasonably provide enablement for the full scope of the claimed invention, including production of any recombinant protein at expression levels of 3-30% total soluble protein (TSP), using promoter, terminator, and matrix attachment region variants having at little as 70% sequence identity to the disclosed sequences, and across the full scope of the recited plant species. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
An “analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention.” MPEP 2164.01. “A conclusion of lack of enablement means that. . . the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention [i.e. commensurate scope] without undue experimentation.” In re Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); MPEP 2164.01.
In In re Wands, 858 F.2d 731,8 USPQ2d 1400 (Fed. Cir. 1988), several factors implicated in determination of whether a disclosure satisfies the enablement requirement and whether any necessary experimentation is “undue” are identified. These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands, 858 F.2d 731,737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). No single factor is independently determinative of enablement; rather “[i]t is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others.” MPEP 2164.01. Likewise, all factors may not be relevant to the enablement analysis of any individual claim.
The claims are not enabled commensurate in scope with the breadth of the claimed invention. Independent claims 75, 78, and 85 broadly encompass production of any recombinant protein in plant seeds at levels between 3-30% total soluble protein (TSP). however, the specification provides working examples only for porcine hemoglobin and porcine myoglobin expressed in soybean (pa0198-0210).
The specification itself demonstrates the unpredictability of achieving the claimed expression level. Table 1 reports expression of porcine hemoglobin in independent soybean transgenic events. The reported hemoglobin accumulatio values are substantially below the claimed 3-30% TSP range, including values of 0.036%, 0.047%, 0.114%, 0.167%, 0.172%, and 0.189% TSP, with multiple events reported below the limit of detection or quantification (pa0206, Table 1).
Table 2 reports expression of porcine myoglobin in independent soybean transgenic events. Although some EC3 events achieved expression levels withing the claimed range, including values such as 8.87%, 9.93%, 10.95%, 15.59%, 16.67%, 19.02%, 23.94%, and 26.58% TSP, many other EC3 events exhibited substantially lower expression levels, including 0.03%, 0.04%, 0.06%, 0.07%, 0.11%, 0.17%, 0.19%, 0.24%, 0.29%, 0.30%, 0.43%, 1.01%, 1.31%, 1.54%, 1.72%, 2.11%, and 2.55% TSP (pa0210, Table 2). Thus, even for Applicant’s disclosed soybean myoglobin construct, achieving the claimed expression level is highly event-dependent and unpredictable.
The specification provides no guidance permitting a person of ordinary skill in the art to predict which recombinant proteins, which transformation events, or which plant species would achieve the claimed 3-30% TSP expression level. Instead, the specification would require extensive screening of transformed events to identify those rare events that satisfy the claimed expression threshold.
Moreover, claims 76, 79, and 86 further broaden the scope by encompassing promoter, terminator, and matrix attachment region sequences having as little as 70% identity to SEQ ID NO: 14, 12, and 13. While the specification recites identity ranges (pa0160-0165), it does not provide working examples demonstrating that such variants retain the functional properties necessary to achieve the claimed expression level.
Claims 77, 80, 81, 83, 87, 88, and 90 further extend the scope to numerous plant species. Nevertheless, the examples are limited to soybean transformation and soybean seed expression (pa0201-0210). The specification contains no working examples demonstrating achievement of the claimed expression levels in the full scope of recited plant species.
Accordingly, undue experimentation would be required to practice the full scope of the claimed invention, and the specification does not enable the claimed subject matter commensurate with its breadth.
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.
Claims 75-92 are rejected under 35 U.S.C. §103 as being unpatentable over Rooijen (Gijs Van Rooijen et. al., US7390936B1, Application 2000-08-23, Publication 2008-06-24), in view of (Hugh Mason et. al., US20200407741A1, Application 2019-03-04, Publication 2020-12-31) and Senger (Toralf Senger et. al., US20120185965A1, Application 2010-08-27, Publication 2012-07-19).
Claim 75 recites a plant expression vector comprising a nucleic acid encoding a recombinant protein, wherein said nucleic acid is operatively linked to a beta-phaseolin (phas) seed-specific promoter, an Arcs terminator, and a Rb7Mar 3' Matrix Attachment Region; wherein, when the plant expression vector induces the production of the recombinant protein in plant seeds in an amount between 3-30% of total soluble protein in the seed.
Rooijen teaches a plant expression vector comprising a nucleic acid encoding a recombinant protein. Specifically, Rooijen teaches that a pre-pro-chymosin DBA fragment was fused between a phaseolin promoter and a phaseolin terminator, and that the complete phaseolin promoter-pre-pro-chymosin-phaseolin terminator expression cassette (Fig. 2, SEQ ID NO:3, and Example 1). Rooijen further teaches that the expression cassette was cloned into plant transformation vectors pSBS2004 and pSBS3000 to generate plasmids pSBS1251 and pSBS2165 (Example 1).
Rooijen further teaches that the nucleic acid encoding the recombinant protein is operatively linked to a beta-phaseolin (phas) seed-specific promoter, because the specification identifies the phaseolin promoter as a preferred seed-specific promoter for expression in plant seeds (Example 1; Fig 2 and SEQ ID NO: 3; p8, pa2).
Rooijen further teaches that, when the expression vector is integrated into a plant genome, the recombinant protein is produced in plant seeds at an amount within the claimed range, as reports, chymosin expression levels of 4.2%, 4.7%, and 4.4% (Table 1, Example 3), with an average expression level of 4.43% of total seed protein. Because the soluble proteins constitute the predominant protein fraction of mature seeds and recombinant storage proteins are quantified within that protein fraction, a recombinant protein levels of 4.43% of total seed protein would reasonably correspond to an expression level within the claimed range of 3-30% recombinant protein per total soluble protein.
Rooijen does not teach that the expression vector comprised an Arc5 terminator.
Senger teaches an Arc5 terminator operatively linked to a coding sequence in plant expression constructs (Table 3). Specifically, Senger teaches that a plant expression cassette comprises a promoter, coding sequence, and terminator, and identifies SEQ ID NO: 31-35 as preferred terminators (pa0065; pa0126). Senger further teaches construction of binary T-DNA vectors containing promoter-gene-terminator expression modules (pa0260-0268). Applicant’s SEQ ID NO: 12 is 99.3% identical to a portion of Senger SEQ ID NO:35 (see below).
Rooijen and Senger do not teach that the expression vector further comprises an Rb7Mar 3’ Matrix Attachment Region.
Mason teaches incorporating a Matrix Attachment Region (MAR) into plant expression vectors. Specifically, Mason teaches positioning a MAR downstream of a transcription terminator (Pa0064) and further teaches that the MAR is preferably the Rb7 MAR, corresponding to nt7-1174 of SEQ ID NO: 16 (pa0065). Applicant’s SEQ ID NO: 13 is 100% identical to a portion of Mason SEQ ID NO: 16.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the plant expression vector of Rooijen by replacing the phasolin terminator with the Arc5 terminator taught by Senger and further incorporating the Rb7 MAR taught by Mason downstream of the terminator. Senger teaches that the Arc5 terminator is a suitable transcription termination element for plant expression cassettes (pa0126), while Mason teaches that Rb7 MAR positioned downstream of the terminator enhances plant transgene expression (pa0064-0065). Therefore, combining these known regulatory elements with the seed-specific expression vector of Rooijen would have represented nothing more than the predicatble use of prior-art elements according to their established functions to obtain an improved plant expression cassette.
Accordingly, claim 75 is prima facie obvious over Rooijen, in view of Senger and Mason.
Claim 76 recites the plant expression vector of claim 75, wherein the phas seed-specific promoter comprises a sequence with, at least, 70% identity to SEQ ID NO: 14; the arcs terminator comprises a sequence with, at least, 70 % identity to SEQ ID NO: 12; and the Rb7Mar 3' Matrix Attachment Region comprises a sequence with, at least, 70% identity to SEQ ID NO: 13. Claim 77 recites the plant expression vector of claim 75, wherein it is suitable for the expression of recombinant proteins in legume plants.
Regarding the additional limitation, sequence alignment demonstrates that SEQ ID NO: 14 is 100% identical to the corresponding portion of Rooijen SEQ ID NO: 3; SEQ ID NO 12 is 99.3% identical to the corresponding portion of Senger SEQ ID NO: 35; and SEQ ID NO: 13 is 100% identical to the corresponding portion of Mason SEQ ID NO: 16 (see alignment below). Therefore, the prior art teaches sequences having at least 70% identity to the claimed sequence.
Rooijen further teaches use of the phaseolin promoter derived from Phaseolus vulgaris, a legume, and further teaches use of the expression system in legume plants including Glycine max and Medicago sativa (p11).
Accordingly, claims 76 and 77 are prima facie obvious over Rooijen, in view of Senger and Mason.
Claim 78 recites a genetically modified plant, plant tissue or plant seed comprising an expression vector for producing recombinant proteins, wherein the vector comprising a beta-phaseolin (phas) seed-specific promoter, an Arcs terminator; and a Rb7Mar 3' Matrix Attachment Region; wherein the genetically modified plant produces 3-30% of the recombinant proteins per total soluble protein in the plant seeds.
For the same reasons set forth above with respect to claim 75, Rooijen further teaches generating transgenic plants using the plant expression construct and obtaining seeds containing recombinant chymosin (Examples 1-3; Fig 2; Table 1).
Claim 78 is prima facie obvious over Rooijen, in view of Senger and Mason.
Claim 79 recites the genetically modified plant of claim 78, wherein the phas seed-specific promoter comprises a sequence with, at least, 70% identity to SEQ ID NO: 14; the arc5 terminator comprises a sequence with, at least, 70 % identity to SEQ ID NO: 12, and the Rb7Mar 3' Matrix Attachment Region comprises a sequence with, at least,70% identity to SEQ ID NO: 13.
Claim 79 recites the same sequence-identity limitations as claim 76. For the same reasons set forth above with respect to claims 76 and 78, claim 79 is prima facie obvious over Rooijen, in view of Senger and Mason.
Claim 80 recites the genetically modified plant, plant tissue or plant seed of The genetically modified plant, plant tissue or plant seed of wherein the plant is a legume plant.
For the same reasons set forth above with respect to claims 77 and 78, claim 80 is prima facie obvious over Rooijen, in view of Senger and Mason.
Claim 81 recites the genetically modified plant, plant tissue or plant seed of claim 78, wherein the plant is selected from the group Glycine max, Oryza sativa, Hordeum vulgare, Zea mays, Secale cereale, Avena sativa, Beta vulgaris, Beta vulgaris subsp. vulgaris, Pastinaca sativa, Phaseolus vulgaris, Pisum sativum, Vigna angularis, Vigna radiata, Cicer arietinum, Arachis hypogaea, Lens culinaris, Medicago sativa, Eruca vesicaria, Brassica juncea, Lactuca sativa, Brassica, Solanum tuberosum, Ipomoea batatas, Manihot esculenta, Triticum aestivum and Triticum spelta. Claim 82 recites genetically modified plant, plant tissue or plant seed of claim 78, wherein the plant is Glycine max. Claim 83 recites genetically modified plant, plant tissue or plant seed of claim 78, wherein the plant is Pisum sativum. Claim 84 recites a recombinant protein isolated from the genetically modified plant, plant tissue or plant seed of claim 78.
For the same reasons set forth above with respect to claim 78, Rooijen teaches that the methods may be used over a broad range of plant species, including soybean (Glycine max), rapeseed (Brassica napus, Brassica campestris), sunflower (Helianthus annuus), cotton (Gossypium hirsutum), corn (Zea mays), tobacco (Nicotiana tobacum), alfalafa (Medicago sativa), wheat (Triticum sp.), barley (Hordeum vulgare), oats (Avena sativa L.), sorghum (Sorghum bicolor), Arabidopsis thaliana, potato (Solanum sp.), flax/linseed (Linum usitatissimum), safflower (Carthamus tinctorius), oil palm (Eleais guineeis), groundnut (Arachis hypogaea), Brazil nut (Bertholletia excelsa) coconut (Cocus nucifera), castor (Ricinus communis), coriander (Coriandrum sativum), squash (Cucurbita maxima), jojoba (Simmondsia chinensis) and rice (Oryza sativa) (claim 4).
Rooijen teaches a legume-derived phaseolin seed-specific promoter and use of the system in legume plants, Pisum sativum is a legume plant.
Rooijen teaches recovering/isolating of recombinant chymosin from transgenic plant seeds (Example 5).
Claims 81 -84 are prima facie obvious over Rooijen, in view of Senger and Mason.
Claim 85 recites a method to produce 3-30% of recombinant proteins per total soluble protein in plant seeds, the method comprising: cultivating a genetically modified plant comprising an expression vector comprising a recombinant protein, a beta- phaseolin (phas) seed-specific promoter, an Arc5 terminator; and a Rb7Mar 3' Matrix Attachment Region.
For the same reason set forth above with respect to claim 75, Rooijen further teaches growing transformed plant cells into mature plants capable of setting seed and obtaining seed containing recombinant chymosin, with reporting an average expression level of 4.43% total seed protein (Examples 1-3; Table 1).
Claim 85 is prima facie obvious over Rooijen, in view of Senger and Mason.
Claim 86 recites the method of claim 85, wherein the phas seed-specific promoter comprises a sequence with, at least, 70% identity to SEQ ID NO: 14; the arc5 terminator comprises a sequence with, at least, 70 % identity to SEQ ID NO: 12, and the Rb7Mar 3' Matrix Attachment Region comprises a sequence with, at least, 70% identity to SEQ ID NO:13. Claim 87 recites the method of claim 85, wherein the plant is a legume plant. Claim 88 recites the method of claim 85, wherein the plant is selected from the group Glycine max, Oryza sativa, Hordeum vulgare, Zea mays, Secale cereale, Avena sativa, Beta vulgaris, Beta vulgaris subsp. vulgaris, Pastinaca sativa, Phaseolus vulgaris, Pisum sativum, Vigna angularis, Vigna radiata, Cicer arietinum, Arachis hypogaea, Lens culinaris, Medicago sativa, Eruca vesicaria, Brassica juncea, Lactuca sativa, Brassica, Solanum tuberosum,Ipomoea batatas, Manihot esculenta, Triticum aestivum and Triticum spelta. Claim 89 recites the method of claim 85, wherein the plant is Glycine max. Claim 90 recites the method of claim 85, wherein the plant is Pisum sativum. Claim 91 recites a seed harvested from the plant of the method of claim 85. Claim 92 recites a recombinant protein isolated from the method of claim 85.
Regarding the additional limitations, claim 86 recites the same sequence identity limitations as claims 76 and 79. Claim 87-79 recite the same plant limitations as claims 77 and 80-83, respectively. Claim 91 recites a seed harvested from the plant of claim 85, which is taught by Rooijen, wherein mature transformed plants produce recombinant protein-containing seed (Examples 2-4). Claim 92 recites a recombinant protein isolated from the method of claim 85, which is taught by Rooijen’s isolation of recombinant chymosin from transgenic plant seeds (Example 5).
Accordingly, claims 86-92 are prima facie obvious over Rooijen, in view of Senger and Mason.
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Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANXIN SHEN whose telephone number is (571)272-7538. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad A Abraham can be reached at (571)272-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YANXIN SHEN/Examiner, Art Unit 1663
/WEIHUA FAN/Primary Examiner, Art Unit 1663
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