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 8-17 are examined on the merits in the present Office action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 8-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11198885. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims make obvious the instant claims.
The instantly claimed method is drawn to increasing expression of a nucleotide sequence in a plant wherein the sequence is operably linked to SEQ ID NO: 3. Instant SEQ ID NO: 3 is identical to SEQ ID NO: 3 of US 11198885. Patented claims 1-13 are drawn to a plant producing increased expression of a nucleic acid sequence by being operably linked to SEQ ID NO: 3. Patented claims 14-20 are drawn to a method of producing plant material comprising SEQ ID NO:3 operably linked to a nucleic acid sequence to increase expression of the sequence. Patented claims 21-30 are drawn to a method of inserting SEQ ID NO: 3 into a nucleic acid sequence of a plant to increase expression of the sequence.
The active method step of the instant application is drawn to expressing a polynucleotide sequence that is operably linked to an expression-increasing element comprising SEQ ID NO:3 and to a promoter, wherein the expression of the polynucleotide is increased in comparison to a control plant lacking the expression-increasing element. “Expressing”, as recited in the instant application, encompasses a broad range of activities including growing a plant encompassed by the patented claims.
The patented claims are drawn to products and methods that make obvious the instant claims. The patented product claims are drawn to comprising SEQ ID NO: 3 wherein the polynucleotide sequence of SEQ ID NO:3 is located in a polynucleotide sequence comprising a promoter. The patent claims methods of using the products by the method comprising growing a plant having an expression increasing element comprising SEQ ID NO:3 located in a promoter, wherein the expression increasing element of SEQ ID NO:3 and the promoter are operably linked to a transcript-encoding polynucleotide, and wherein the expression of the transcript-encoding polynucleotide in said plant is increased when compared to a control plant lacking the expression increasing element. Further, the patent claims methods of making plant material, the method comprising inserting a transcription increasing element of SEQ ID NO: 3 in a promoter of a plant, and growing the plant to produce plant material, wherein the expression increasing element and the promoter are operably linked to a transcript-encoding polynucleotide, and wherein the expression of the transcript-encoding polynucleotide in said plant is increased when compared to a control plant lacking the expression increasing element. The instant claims directly read on the patented claims, require limitations of the patented claims and are made obvious by the patented claims. Therefore, while the claims are not identical, the instant claims are made obvious over the patented claims.
Claims 8-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12188031. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US 12188031 make obvious the instant claims. Instant SEQ ID NO: 3 is identical to SEQ ID NO: 3 of US 12188031.
The instantly claimed method is drawn to increasing expression of a nucleotide sequence in a plant wherein the sequence is operably linked to SEQ ID NO: 3. Instant SEQ ID NO: 3 is identical to SEQ ID NO: 3 of US 11198885. Patented claims 1-4 are drawn to a method of producing plant material comprising SEQ ID NO:3 operably linked to a nucleic acid sequence to increase expression of the sequence.
The active method step of the instant application is drawn to expressing a polynucleotide sequence that is operably linked to an expression-increasing element comprising SEQ ID NO:3 and to a promoter, wherein the expression of the polynucleotide is increased in comparison to a control plant lacking the expression-increasing element. “Expressing”, as recited in the instant application, encompasses a broad range of activities including growing a plant encompassed by the patented claims.
The patent claims a method of producing a commodity plant product comprising processing a plant or seed comprising a DNA molecule comprising an expression-increasing element comprising SEQ ID NO:3 located in a promoter, wherein the expression increasing element of SEQ ID NO:3 and the promoter are operably linked to a transcript-encoding polynucleotide, and wherein the expression of the transcript-encoding polynucleotide in said plant is increased when compared to a control plant lacking the expression increasing element. The patented method further comprises recovering the commodity plant product from the processed plant or seed and a method for producing nucleic acids comprising SEQ ID NO:3 located in a promoter, wherein the expression increasing element of SEQ ID NO:3 and the promoter are operably linked to a transcript-encoding polynucleotide. The instantly claimed method is made obvious by the patented method because it would have been obvious and unavoidable to practice the instantly claimed method by practicing the patented method. Therefore, while the claims are not identical, the instant claims are made obvious over the patented claims.
Closest prior art
The claims are deemed free of prior art given that prior art does not disclose or reasonably suggest full length seq id no: 3. The closest prior art is Davey, which teaches making a 12 nucleotide-long GAL-like sequence which is the same as instant SEQ ID NO: 1 [0141] (Davey: page 7, paragraph bridging left and right columns; Davey and Wilson. Nanomed Nanobiotechnol. 9: 1-15. 2017). However, there is no teaching or suggestion in the art which would have provided one of ordinary skill in the art with the expectation of the increase in expression when the enhancer is a trimer compared to as a monomer as taught by the Applicant (Figure 2).
Conclusions
Claims 1-4 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R BYRNES whose telephone number is (571)270-3935. The examiner can normally be reached 9:00 - 5:00 M-F.
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/DAVID R BYRNES/Examiner, Art Unit 1662
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