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 .
Claims 46-65 are pending and examined on their merit herein.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 46-65 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 broad in scope in the following aspects:
Firstly, the claim recite “a polypeptide comprising a sequence at least 90% identical to SEQ ID NO: 13” (Claim 46 and 56), “a polypeptide comprising a sequence having at least 95% identity to SEQ ID NO. 13” (Claim 55).
These claims are interpreted as encompassing polypeptides that comprise the full-length sequence of SEQ ID NO: 13 or any portion of SEQ ID NO: 13. This includes any short amino acid sequences within SEQ ID NO: 13.
Secondly, the claims are broad even when directed to 90% or 95% identity of the full length of SEQ ID NO: 13 due to the numerous variants of polypeptides having 29 or 14 amino acid substitutions, insertions, deletions or additions anywhere relative to SEQ ID NO: 13.
At the same time, the claims require the modified plants, as a function of increased expression or activity of the polypeptide, have a reduced level of one or more tobacco-specific nitrosamines (TSNAs); and an increased level of one or more antioxidants, or reduced levels of nitrite.
The Specification has described NtMYB3, having the nucleotide sequence of SEQ ID NO: 36 which encodes the polypeptide sequence SEQ ID NO: 13. The Specification has taught modified tobacco plant transformed with NtMYB3 cloned in vector “p45-2-7” under the expression control of a CsVMV promoter (Example 9, para. [0356]). The Specification has taught that cured leaf samples of the NtMYB3 transgenic plants have increased antioxidant capacity (FIG. 18) and a normal leaf color in the TO generation (FIG. 19).
However, while the Specification has indicated leaf samples “are prepared for evaluation of TSNAs, oxidative degradation potential, alkaloids, and nitrites/nitrates”, there is no evidence showing NtMYB3-overexpressing transgenic plants with reduced TSNA or nitrite.
While the Specification has shown transgenic plants overexpressing AtPAP1, an Arabidopsis MYB transcription factor, having increased anthocyanin accumulation, increased antioxidant capacity, reduced nitrite and reduced TSNA, it should be pointed out that AtPAP1 transgenic tobacco plants have a purple leaf color due to increased anthocyanin accumulation. In contrast, NtMYB3 plants have normal color.
The Specification has not adequately described the modified tobacco plants with increased expression of NtMYB3 (SEQ ID NO: 13) having the required array of phenotypic traits. The Specification has not adequately described any modified tobacco plants overexpressing any variant polypeptides having 90% or 95% identity to SEQ ID NO: 13, having reduced nitrite or reduced TSNA.
The specification fails to sufficiently describe the necessary structural features that must be retained by protein variants as to establish a structure-function relationship with respect to the required array of phenotypic traits resulted from overexpressing the protein variants. The Specification has described the AtPAP1 polypeptide and its overexpressing resulting the phenotypes. However, as the Specification has pointed out, AtPAP1 protein is only 33.67% identical to SEQ ID NO: 13. While they both loosely share the feature of a MYB domain in the N-terminus, the two proteins share almost no similarity in the C-terminus two thirds of the protein.
As known in the art, the MYB TF family is defined by one or more characteristic conserved MYB repeats in the DNA-binding domain. In contrast to the well-structured and conserved DNA-binding domains of the N-terminus, the larger C-terminal regions of MYBs appear to be principally unstructured, varying greatly in length and sequence (Millard, Nucleic Acids Res. 47, 9592–9608 (2019)). Such extended regions of intrinsic disorder are enriched among eukaryotic TFs compared with other proteins, allowing MYBs to regulate diverse pathways such as stress responses, hormone signaling, organ development, reproduction, and secondary metabolite production.
Moreover, it has been shown that, depending on whether the variable C-termini contains an activation or repression domain, anthocyanin biosynthesis is also negatively regulated by MYB transcription factors (Chen, Plant Physiology and Biochemistry 136 (2019): 178-187; Abstract).
In the instant case, while AtPAP1 has been shown to have the conserved function of regulating anthocyanin production in both Arabidopsis and tobacco, there is no evidence that NtMYB3 has the same function in anthocyanin metabolism. As shown in the Specification, NtMYB3 plants do not seem to have any elevated amount of anthocyanin (see, normal leaf color compared with purple leaf color from AtPAP1 expression). While the Specification has shown correlation between anthocyanin overaccumulation and reduced nitrite/TSNA, there is no evidence that, given the lack of anthocyanin overaccumulation, NtMYB3 tobacco plants have reduced nitrite/TSNA. It is even more uncertain whether the overexpression of any variants having 90 or 95% identity to NtMYB3 (SEQ ID NO: 13) would have reduced nitrite/TSNA.
Since the only recognizable structural feature—MYB DNA binding domain—is not sufficient to predict the function of MYB TFs with regard to anthocyanin metabolism and reduced nitrite/TSNA, there is a lack of the description of the structural features that are required for the modified plants to acquire the required array of phenotypes.
The analysis will now turn to the second element of the court’s decision in Eli Lilly; namely, the description of a representative number of species. As discussed above, the broadly claimed genus of protein variants is enormous in size.
Given the virtually infinite structural variable associated with these embodiments, the claims read on an extremely broad and highly diverse structures. Thus, in view of the analysis presented above, a skilled artisan would appreciate that the claims are directed to extremely broad and highly diverge genus of protein variants that are required to confer the specific array of phenotypes, such reduced levels of nitrite or TSNA.
In contrast, Applicant has only appeared to describe and reduce to practice a modified tobacco plants overexpressing the NtMYB3, to have increased antioxidants. Applicant has not described other variants of NtMYB13, or even NtMYB13 per se, wherein the overexpression leads to reduced levels of nitrite or TNSA, or even increased anthocyanin production.
Given the large size and structural diversity associated with the claimed genus, Applicant’s disclosure is not representative of the claimed genus as a whole. This point is particularly relevant because, as discussed above, the prior art speaks to the disconnection between the structure of the broadly claimed variants and the recited specific function.
Thus, based on the analysis above, Applicant has not met either of the two elements of the written description requirement as set forth in the court's decision in Eli Lilly. As a result, it is not clear that Applicant was in possession of the claimed genus at the time this application was filed.
Claims 46-65 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
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 broadly drawn to modified tobacco plants having have a reduced level of one or more tobacco-specific nitrosamines (TSNAs) or reduced levels of nitrite, and an increased level of one or more antioxidants, as a function of increased expression or activity of SEQ ID NO: 13 or broad genus of polypeptides having various sequence identity.
As discussed above, the Specification has taught modified tobacco plants overexpressing a MYB transcription factor, AtPAP1, from Arabidopsis, that resulted in increased anthocyanin accumulation, reduced nitrite and reduced TSNA in cured leaves of the modified tobacco plant. The Specification has also taught the overexpression (using the same vector and same promoter as AtPAP1 overexpression) of NtMYB3 (SEQ ID NO: 13) in a modified tobacco plant, which demonstrates increased level of antioxidants.
However, as discussed above, while the Specification has indicated leaf samples “are prepared for evaluation of TSNAs, oxidative degradation potential, alkaloids, and nitrites/nitrates”, there is no evidence showing NtMYB3-overexpressing transgenic plants with reduced TSNA or nitrite. Moreover, the Specification has not taught overaccumulation of anthocyanin in the NtMYB3-OE plants since the plants have normal leaf color.
The Specification has not adequately taught the modified tobacco plants with increased expression of NtMYB3 (SEQ ID NO: 13) having the required array of phenotypic traits. The Specification has not adequately taught any modified tobacco plants overexpressing any variant polypeptides having 90% or 95% identity to SEQ ID NO: 13, having reduced nitrite or reduced TSNA.
It would have been unpredictable for the NtMYB3 plants—or the tobacco plants overexpressing the broad genus of protein variants—to have the required phenotypes in reduced TSNA or nitrite. As discussed above, the Specification has taught a correlation between increased anthocyanin production and reduced nitrite/TSNA in AtPAP1-OE tobacco plants. However, since NtMYB3 plants do not have increased anthocyanin production, it is not clear whether the modified plants would actually display any reduction in nitrite or TSNA.
The specific functions of MYB TFs are diverse and not clearly understood in the dynamics of plant physiology and metabolism. As discussed above, while the N-terminal part of the MYB TFs share structural features of DNA binding MYB motifs that allow them to bind to a diverse array of plant promoters, their larger C-terminal domains are less conserved and may have activation or repression activities depending on complex and specific protein-protein interactions. As Chen taught, a MYB transcription factor could even negatively regulate anthocyanin production, given the diverse C-termini (see citations above).
In the absence of guidance from either the instant disclosure or the art, it would require undue trial and error experimentation for a skilled artisan to make and use the broadly claimed modified plants with increased expression or activity of AtMYB3 or its variants, with no reasonable expectation of success in arriving at the required phenotypes in reduced nitrite or TSNA in a modified tobacco plant.
Thus, in view of the unpredictability associated with combinatorial substitutions in a protein, the lack of enabling guidance from either the instant disclosure or the art, and breath and diversity of the embodiments encompassed by the claimed genus, the lack of sufficient working examples, and the level of the art at the time of the invention, one of ordinary skill in the art must rely on undue trial and error experimentation to make and test the modified plants encompassed by the broad genera, in order to make and/or use the invention within the full scope of these Claims.
For at least this reason, the Specification does not teach a person with skill in the art how to make and/or use the subject matter within the full scope of these Claims.
Conclusion
No claims are allowed.
Claims 46-65 are free of the prior art, because there is no prior art reasonably teaching or suggesting the claimed modified tobacco plants having reduced levels of one or more TSNAs in cured tobacco leaf and increased levels of one or more antioxidants resulted increased expression or activity of a gene encoding SEQ ID NO: 13 or variants thereof.
The closest prior art is Xie (The Plant Journal 45.6 (2006): 895-907). Xie teaches a process, comprising the step of transgenically expressing the AtPAP1 gene in a tobacco plant which encodes a protein having 100% sequence identity with the instant SEQ ID NO: 23. Xie teaches the transgenic tobacco plant co-expressing both AtPAP1 and MtANR (encoding anthocyanidin reductase) leaves accumulate elevated levels of proanthocyanins (PAs, strong antioxidants) in both mature and young leaves (p. 902, Table 2). However, in Xie, overexpressing AtPAP1 alone did not cause increased accumulation of PAs. Therefore, the reduction in at least one or more of the TSNAs in cured tobacco leaf cannot be deduced as an inherent consequence of expressing AtPAP1 in tobacco plant. Moreover, the evidence set forth in the instant Specification that overexpressing AtPAP1 in tobacco plant under the CsVMV promoter caused reduced levels of TSNA in tobacco leaves amounts to unexpected results in view of the prior art. Therefore, Xie does not anticipate nor render the instant claims prima facie obvious. In addition, Xie does not teach or suggest the phenotypes resulted from overexpressing SEQ ID NO: 13 which is NtMYB3.
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WEIHUA . FAN
Primary Examiner
Art Unit 1663
/WEIHUA FAN/Primary Examiner, Art Unit 1663
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