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 received on 07/20/2026 have been entered. Claims 15 and 52-62 are pending.
Claims 1 and 3-14 have been cancelled.
Claims 52-62 have been newly added.
Claim 15 has been amended.
Claims 15 and 52-62 are examined in this Office action.
Objections and Rejections that are Withdrawn
All rejections to claims 1 and 3-14 are rendered moot in light of Applicant’s cancelation of the claims.
The 35 USC 112 Written Description rejection to claim 15 has been withdrawn in light of Applicant’s amendments to the claim.
The 35 USC 102/103 rejection to claim 15 has been withdrawn in light of Applicant’s amendments to the claim. However, Applicant’s amendments have raised new grounds for a 35 USC 103 rejection as outlined below.
Claim Rejections - 35 USC § 103
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 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 15 and 52-62 are rejected under 35 U.S.C. 103 as being unpatentable over KONDO (Kondo et al., Pub. No.: US 2011/0225677 A1; Pub. Date: Sep. 15, 2011; included on IDS dated 02/03/2025) in view of WU (Wu et al., 2016, Journal of Experimental Botany, Vol. 67(11), pages 3339-3351) and RIZHSKY (Rizhsky et al., 2004, Plant Physiology, Vol. 134(4), pages 1683-1696). This is a modified rejection necessitated by the claim amendments.
Claim 15 recites “[a] method of improving drought tolerance and water loss in a plant, plant cell or plant tissue, wherein the plant, plant cell or plant tissue is grown under conditions comprising drought conditions, the method comprising expressing a Receptor-like Protein 33 (RLP33) from an exogenous nucleic acid in the plant, plant cell or plant tissue, wherein the exogenous nucleic acid comprises a sequence having at least 98% sequence identity to the nucleotide sequence set forth in SEQ ID NO: 1, and wherein the plant, plant cell, or plant tissue exhibits improved drought tolerance and water loss as compared to a plant, plant cell or plant tissue without the exogenous nucleic acid”.
In regard to claim 15, KONDO teaches and claims a method for producing a plant, comprising the steps of: preparing a transformed plant into which the AT3G05660 gene encoding a receptor-like protein having a leucine-rich repeat structure or a gene functionally equivalent to such a gene is introduced (i.e., the method comprising expressing a Receptor-like Protein 33 (RLP33) from an exogenous nucleic acid in the plant, plant cell or plant tissue, wherein the exogenous nucleic acid comprises a sequence having at least 98% sequence identity to the nucleotide sequence set forth in SEQ ID NO: 1) (Kondo, Abstract and page 1, paragraph 0001; claim 29).
KONDO teaches and claims the At3G05660 gene (Kondo, SEQ ID NO: 2), which encodes a receptor-like protein (RLP) amino acid sequence , which shares 100% identity with instant sequence SEQ ID NO: 1 (see sequence alignment in Non-Final Rejection dated 03/18/2026) (i.e., wherein the nucleotide sequence encoding the RLP33 has at least 98% sequence identity to the nucleotide sequence set forth in SEQ ID NO: 1).
Although KONDO does not explicitly teach wherein the plant, plant cell, or plant tissue exhibits improved drought tolerance and water loss as compared to a plant, plant cell or plant tissue without the exogenous nucleic acid, KONDO does teach the AT3G05660 gene (which shares 100% sequence identity to instant sequence SEQ ID NO: 1; see claim 15 rejection), which encodes a protein comprising the amino acid sequence of SEQ ID NO: 3 (which shares 100% sequence identity to instant sequence SEQ ID NO: 2; see claim 52 rejection), expressed in all plant tissues or at least some plant tissues. Therefore, the instantly claimed property of the plant, plant cell, or plant tissue exhibiting improved drought tolerance and water loss as compared to a plant, plant cell or plant tissue without the exogenous nucleic acid would be inherent to the compositions taught by KONDO. Since all the structural elements recited in the instant claims are taught by KONDO, and function follows structure, the instantly claimed function would follow in the exogenous AT3G05660 gene.
Applicants are reminded that the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. § 102 or § 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. § 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983). See MPEP § 2112.
Applicants are also reminded that prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present but not recognized in the prior art. See MPEP § 2145. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. Id.; In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). Indeed, courts have held that “[t]he fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As the nucleic acid and amino acid sequences of the instant application that were reduced to practice by the Applicant mirror those taught by KONDO, it would be inherent to the Arabidopsis and Populus plants of KONDO to exhibit the same (allegedly unexpected and superior) technical effects as described in the instant application.
Although KONDO does not explicitly teach that the plant exhibits improved drought tolerance and water loss, and this limitation would be inherent to the plants taught by KONDO, it was also known in the prior art that AtRLP33 (At3g05660) increased expression when exposed to environmental stresses (drought) as evidenced by WU and RIZHSKY.
WU teaches that to overcome the functional redundancy and further understand the role of AtRLP genes, WU et al. studied the evolution of AtRLP genes and compiled a comprehensive profile of the transcriptional regulation of AtRLP genes upon exposure to environmental stresses and hormones. This will help to select AtRLP genes that might be involved in a specific biological process for further experimental studies aimed at dissecting AtRLP function. In addition, WU et al. performed a genome-wide cloning of AtRLP genes, and generated and characterized transgenic Arabidopsis overexpressing individual AtRLP genes. The data presented in the WU et al. study provide valuable resources for future investigations into the biological role of AtRLP genes (Wu, Introduction, page 3340, right column, second full paragraph).
WU teaches that AtRLP23, AtRLP28, AtRLP30, AtRLP33 and AtRLP37, were selected to examine their expression in response to NaCl and mannitol at different time points (i.e., wherein the plant, plant cell or plant tissue is grown under conditions comprising drought conditions) (Wu, page 3342, right column, last paragraph).
WU teaches the most transcriptionally responsive AtRLP genes per treatment in Table 2 (page 3344). Under drought conditions, AtRLP33 (At3g05660) showed a 1.9-fold increase in transcription.
Furthermore, RIZHSKY teaches that within their natural habitat, plants are subjected to a combination of abiotic conditions that include stresses such as drought and heat. The response of Arabidopsis plants to a combination of drought and heat stress was found to be distinct from that of plants subjected to drought or heat stress. Transcriptome analysis of Arabidopsis plants subjected to a combination of drought and heat stress revealed a new pattern of defense response in plants that includes a partial combination of two multigene defense pathways (i.e. drought and heat stress), as well as 454 transcripts that are specifically expressed in plants during a combination of drought and heat stress (Rizhsky, Abstract).
RIZHSKY teaches transcripts that are elevated during a combination of drought and heat stress; At3g05660 (AtRLP33) showed a 2.5-fold increase in expression level in response to drought and heat stress (Rizhsky, Table 1).
At the time the instant application was filed, it would have been obvious and within the scope of one of ordinary skill in the art to utilize the method as taught by KONDO, using the AtRLP33 gene (At3g05660) as taught by KONDO, WU, and RIZHSKY. Based on the teachings of KONDO, WU, and RIZHSKY, one of ordinary skill in the art would be motivated to use the AtRLP33 gene (At3g05660) in a method to improve drought tolerance and water loss as taught by KONDO, knowing that the AtRLP33 gene (At3g05660) expression is increased during drought conditions as taught by WU and RIZHSKY. Thus, one of ordinary skill in the art would have a high expectation of success by following the teachings of KONDO, WU, and RIZHSKY.
In regard to claim 52, KONDO teaches and claims SEQ ID NO: 3, the receptor-like protein (RLP) amino acid sequence encoded by the AT3G05660 gene, which shares 100% sequence identity with instant sequence SEQ ID NO: 2 (see sequence alignment in Non-Final Rejection dated 03/18/2026) (i.e., wherein the RLP33 comprises an amino acid sequence having at least 98% sequence identity to the amino acid sequence shown in SEQ ID NO: 2).
In regard to claim 53, KONDO teaches that a DNA that contains a protein coding region alone of a target gene having no transcriptional unit may be used herein, as long as it is integrated into a host's transcriptional unit and then the target gene can be expressed (i.e., wherein the exogenous nucleic acid is stably integrated into the plant genome) (Kondo, page 5, paragraph 0047).
In regard to claim 54, KONDO teaches a technique for introducing an expression vector in which the LRR-RLP gene is arranged under control of a promoter that enables expression in a target plant; the LRR-RLP gene and the promoter are linked to construct an expression cassette and then the cassette may be introduced into a vector (i.e., wherein the nucleotide sequence is operably linked to a heterologous promoter) (Kondo, page 3, paragraph 0034; page 4, paragraph 0043). The instant Specification describes the term "operably linked" as referring to positioning of a regulatory region and a sequence to be transcribed in a nucleic acid so as to influence transcription or translation of such a sequence; for example, to bring a coding sequence under the control of a regulatory region (instant Specification, page 11, paragraph 0042).
In regard to claims 55 and 56, KONDO teaches a promoter to be used is not particularly limited, as long as it enables expression of the LRR-RLP gene in a plant. Any known promoter can be appropriately used. An example of such a promoter includes a cauliflower mosaic virus 35S promoter (CaMV35S). CaMV35S is a constitutive promoter (i.e., wherein the heterologous promoter is a constitutive promoter, or an inducible promoter; wherein the heterologous promoter is a 35S promoter) (Kondo, page 4, paragraph 0037).
In regard to claims 57-60, KONDO teaches examples of target plants include dicotyledons and monocotyledons, such as plants belonging to the families Brassicaceae: Arabidopsis thaliana, and Salicaceae: poplar (Populus trichocarpa, Populus nigra, or Populus tremula) (i.e., wherein the plant is a monocot or a dicot; wherein the plant is selected from the group consisting of genera Arabidopsis, Glycine, Populus, and Sorghum; wherein the plant is Arabidopsis; wherein the plant is Populus) (Kondo, page 5, paragraph 0049).
In regard to claims 61 and 62, Kondo does not explicitly teach a plant that displays one or more of the following characteristics: retains water within its cell by altering its stomatal aperture; has altered stomatal aperture length compared to a wild type plant; has improved gaseous exchange, transpiration, and photosynthesis under severe water deficit conditions compared to a wild type plant; has higher survival rate under water deficit conditions compared to a wild type plant; and has delayed leaf senescence in drought conditions compared to a wild type plant (instant claim 61); or wherein the drought condition is a cyclic drought condition or a short-term drought condition (instant claim 62), Kondo does teach the AT3G05660 gene (which shares 100% sequence identity to instant sequence SEQ ID NO: 1), which encodes a protein comprising the amino acid sequence of SEQ ID NO: 3 (which shares 100% sequence identity to instant sequence SEQ ID NO: 2), expressed in all plant tissues or at least some plant tissues. Additionally, the teachings of WU and RIZHSKY point to the RLP33 gene (At3g05660) playing a role in water conservation by increasing expression under drought conditions.
Therefore, the instantly claimed properties would be inherent to the resultant compositions of the method taught by Kondo, because they contain all the structural elements recited in the instant claims (see explanation in the claim 15 rejection above).
Response to Applicant’s Arguments
Applicant's arguments filed 07/20/2026 have been fully considered but they are not persuasive.
Applicant argues that KONDO does not teach or suggest every aspect of amended claim 15.
With the addition of the teachings of WU and RIZHSKY to the USC 103 Rejection, the Examiner believes that every aspect of amended claim 15 has been accounted for in the modified rejection as outlined above.
Applicant argues that KONDO presents no motivation nor does KONDO recognize the problem of water loss.
With the addition of the teachings of WU and RIZHSKY to the USC 103 Rejection, the Examiner has established a nexus between the RLP33 gene (At3g05660) as taught by KONDO and the increase in expression of the RLP33 gene (At3g05660) when exposed to drought conditions as taught by WU and RIZHSKY. Both WU and RIZHSKY present a finite number of genes that show an increase in expression when exposed to drought conditions. Thus, one of ordinary skill in the art would have been motivated to use the RLP33 gene (At3g05660) as taught by KONDO, WU, and RIZHSKY having recognized the problem of water loss under drought conditions.
Summary
No claim is allowed.
Applicant's 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA MEADOWS whose telephone number is (703)756-1430. The examiner can normally be reached Monday - Friday 9:00 am - 5:00 pm.
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CHRISTINA MEADOWS
Examiner
Art Unit 1663
/CHRISTINA L MEADOWS/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
