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 without traverse of Group II, consisting of claims 3-7, in the reply filed on 26 Feb 26 is acknowledged. Applicant elects the species of (iii) TIM protein is SEQ ID NO.1 and nucleotide SEQ ID NO.2 from List 2.
Claim Status
Claims 3-7 are under examination on the merits.
Claims 1-2 & 8-10 are withdrawn as drawn to non-elected subject matter.
Priority
Claims 3-7 receive the U.S. effective filing date of 1 Aug 2024.
Claim Rejections - 35 USC § 112
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 3-7 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.
Claim 3 recites that ‘an amino acid sequence’ of the TIM protein is ‘shown in’ SEQ ID NO.1. It is unclear if the claimed amino acid sequence is intended to be limited to the exact sequence of SEQ ID NO.1, or, if SEQ ID NO.1 is a representative sub portion a broader amino acid sequence which comprises SEQ ID NO.1 (i.e. ‘shown’ as part of an amino acid which is larger). Because the scope of the claim(s) varies depending on interpretation of this language, claims 3-7 are rendered indefinite and rejected.
Claim 3 recites ‘a downregulating method’ of TIM protein to confer virus resistance which ‘includes’ knocking out or silencing the corresponding TIM gene(s). It is unclear if Applicant is providing description of the two specific methods of downregulating being claimed, or if the term ‘includes’ is meant to indicate that all methods of downregulating TIM protein expression are encompassed, including methods other than knocking out or silencing. Because it is unclear what is indicated by use of ‘includes’ and apparent inclusion of both broad and narrow limitations in the same claim, the scope of the claim(s) varies depending on interpretation of the claim language as currently written.
As such, claim 3 is indefinite and rejected, as are its dependent claims 4-7.
Claim 5 recites the limitation "the virus" in line 1. There is insufficient antecedent basis for this limitation in the claim. This is because “the virus” appears to reference the “a virus-resistant plant” of claim 3 from which it depends. However, “a virus-resistant plant” is not a virus. Moreover, a virus-resistant plant does not require a plant actively infected or carrying a virus, and thus “a virus-resistant plant” does not inherently indicate presence of a particular virus, or any virus at all.
Because of this lack of antecedent basis, claim 5 is rejected.
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 3-7 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 claims contain 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 3 is drawn to a method for obtaining ‘a virus-resistant plant’ via a downregulating method of TIM protein. The claim does not specify which virus or plant species are referred to or the particular method of downregulating TIM. All other claims depend from claim 3. Broadest reasonable interpretation of such a claim is that the claimed invention confers virus resistance in any and all plants for any and all viruses based on and and all methods which downregulate genetic expression of TIM protein(s).
Regarding ‘any plant’:
Referring to Applicant’s specification, they provide description of soybean as well as the model dicot Nicotiana benthamiana and specific RNA viruses which infect those species [p.6, ¶27—p.10. ¶37]. Applicant does not describe manipulation of viral resistance in any and all plants generally, or the effect of TIM protein on viral disease in plants other than these two examples. It is known in the art that viruses and host plants have very specific pathogenic relationships and that not all viruses infect all plants and there is a high level of diversity in viruses, generally, which results in many species-specific pathosystems [see McLeish ‘Virus-intrinsic factors in host range evolution’, p.50, col.2, ¶2—p.51, col.2, ¶1; Current Opinion in Virology, 2019-02, Vol.34, p.50-5; Published 14 Jan 2019, and, Rubio, ‘Genetic Variability and Evolution of Plant Viruses’, p.2, col.1, ¶3—p.3, col.1, ¶1; Front. Plant Sci. 11:1092; Published 17 July 2020]. One skilled in the art would not reasonably consider the Applicant to have a method which works in any and all plants based on description of two particular species.
Regarding ‘any virus’:
Referring to Applicant’s specification, they provide description of modulation of TIM protein on infection of viruses including: soybean mosaic virus (SMV), turnip mosaic virus (TuMV), tobacco mosaic virus (TMV), and potato virus X (PVX). These are all RNA-viruses, specifically Potyvirus [p.6, ¶27—p.10. ¶37]. Applicant does not describe manipulation of viral resistance via TIM protein on viruses other than SMV, TuMV, TMV, PVX or any non-Potyvirus diseases. It is known in the art that viruses and host plants have very specific pathogenic relationships and that not all viruses infect all plants and there is a high level of diversity in viruses, generally, which results in many species-specific pathosystems [see McLeish ‘Virus-intrinsic factors in host range evolution’, p.50, col.2, ¶2—p.51, col.2, ¶1; Current Opinion in Virology, 2019-02, Vol.34, p.50-5; Published 14 Jan 2019, and, Rubio, ‘Genetic Variability and Evolution of Plant Viruses’, p.2, col.1, ¶3—p.3, col.1, ¶1; Front. Plant Sci. 11:1092; Published 17 July 2020]. One skilled in the art would not reasonably consider the Applicant to have a method which works to resist any and all viruses based on description of four RNA viruses of a particular family, Potyviridae.
Regarding ‘any method of downregulating’:
Referring to Applicant’s specification, they provide description of modulation of TIM protein on infection of viruses including: knockout via gene editing [Specification, p.7, ¶28] and silencing via RNAi [p.8, ¶30]. Applicant does not describe manipulation of viral resistance via TIM protein using any other methods or mechanisms of downregulating protein expression, of which there are many including translation factors and other non-TIM proteins [See Lyons, ‘The Translation Machinery’, p.4, col.2, ¶2—p.11 in The Plant Journal (2026) 125; Published 15 Dec 2025]. While Applicant does describe the use of knockout via gene editing and RNAi silencing of TIM, one skilled in the art would not reasonably consider the Applicant to have a described a method which encompasses any and all methods of downregulating protein regulation.
For these reasons the written description fails to provide sufficient description to reasonably convey to one skilled in the relevant art that the inventor had possession of the claimed invention. As such, claim 3 and its dependent claims 4-7 are rejected.
Conclusion
No claims are allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEITH R WILLIAMS whose telephone number is (571)272-3911. The examiner can normally be reached Mon - Fri, 9:30 - 5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham can be reached on (571)270-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEITH R. WILLIAMS/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
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