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
Applicants’ election, with traverse, of Invention I (claims 1, 2, and 9), in the reply filed on June 23rd, 2026, from Abd Almonem Doolaanea, is acknowledged.
The traversal is based on the grounds that the groups are directed to different aspects of a single inventive concept relating to the SiPT1 gene and that the claims are linked by a common structural and functional relationship (Remarks, end paragraph of pg. 6). Applicant argues that that Inventions I and II can be used together in one plant, as a plant may have both the dominant SiPT1 and the allele Sipt1, and that no search burden is expected because searching any of the gene sequences will result in results related to the other sequences (Id., paragraph bridging pg. 7-8). Applicant argues the addition of claim 9 would not result in additional search burden.
Applicant argues that, even though the Examiner showed the rational of distinction with regard to Inventions I/II and III, there is no search burden because in the claims of Invention III, Inventions I/II were referred to within the language of the claims and thus searching/examining of Invention I and/or Invention II would cover a significant portion of examination for Invention III (Id., pg. 9).
Applicants’ arguments have been carefully considered but they are not persuasive. For reasons of record stated on pages 2-4 in the Office action dated 05/08/2026, the restriction requirement is deemed proper. Briefly, the SiPT1 gene and the Sipt1 allele will require a separate search for the prior art as the gene and allele differ in structure. As Applicant points out, the Sipt1 is a mutant of SiPT1, indicated further the difference in structure. A search of the SiPT1 gene with 100% identity to the claimed nucleotide, cDNA, and encoded protein sequences would logically not be the same search as the mutation of such a gene. Although Applicant contends that the sequences could be used together in a plant, the claims are such that the genes are characterizing the trait and are not within a plant. Further, the method of claim 9, an application of the SiPT1 gene in plant breeding, which is included in Invention I, does not necessitate the gene of invention II, as shown in the claim language. The instant specification explicitly teaches the structural differences of both the sequences and the plants resulting from the phenotypes of the branching trait gene vs the uniculm phenotype.
Although the claim language of Invention III includes the gene/uniculm phenotype allele of Inventions I and II respectively, as stated in the Office action dated 05/08/2026, the SiPT1 gene or the Sipt uniculm allele as claimed can be used in a materially different process than that of Invention III. This is demonstrated by claim 9, which recites that the SiPT1 gene may be used in plant variety breeding. A sequence search for the sequence of the gene or allele of Inventions I and II may be conducted in NCBI BLAST, which would not necessarily find art pertinent to the PCR amplification method or a method for detecting and determining the plant architecture phenotype of sesame.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(a)-(d) and (f) [foreign application CN202310296885.3 filed March 24th, 2023] and 35 U.S.C. 120 [continuation of Int’l. Appl. No. PCT/CN2024/075025 filed January 31st, 2024] is acknowledged. Thus, the earliest possible priority for the instant application is March 24th, 2023.
A certified English translation of the foreign application was not provided. Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on December 12th, 2024 was considered, initialed, and attached hereto. A signed copy of the list of references cited is included with this Office Action.
Status of Claims
Claims 1-9 filed June 23rd, 2026 are pending.
Claims 3-8 are withdrawn as being directed to unelected inventions.
Claims 1-2 and 9 are examined herein.
Nucleotide and/or Amino Acid Sequence Disclosures
REQUIREMENTS FOR PATENT APPLICATIONS CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCE DISCLOSURES
Items 1) and 2) provide general guidance related to requirements for sequence disclosures.
37 CFR 1.821(c) requires that patent applications which contain disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) must contain a "Sequence Listing," as a separate part of the disclosure, which presents the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of 37 CFR 1.821 - 1.825. This "Sequence Listing" part of the disclosure may be submitted:
In accordance with 37 CFR 1.821(c)(1) via the USPTO patent electronic filing system (see Section I.1 of the Legal Framework for Patent Electronic System (https://www.uspto.gov/PatentLegalFramework), hereinafter "Legal Framework") as an ASCII text file, together with an incorporation-by-reference of the material in the ASCII text file in a separate paragraph of the specification as required by 37 CFR 1.823(b)(1) identifying:
the name of the ASCII text file;
ii) the date of creation; and
iii) the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(1) on read-only optical disc(s) as permitted by 37 CFR 1.52(e)(1)(ii), labeled according to 37 CFR 1.52(e)(5), with an incorporation-by-reference of the material in the ASCII text file according to 37 CFR 1.52(e)(8) and 37 CFR 1.823(b)(1) in a separate paragraph of the specification identifying:
the name of the ASCII text file;
the date of creation; and
the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(2) via the USPTO patent electronic filing system as a PDF file (not recommended); or
In accordance with 37 CFR 1.821(c)(3) on physical sheets of paper (not recommended).
When a “Sequence Listing” has been submitted as a PDF file as in 1(c) above (37 CFR 1.821(c)(2)) or on physical sheets of paper as in 1(d) above (37 CFR 1.821(c)(3)), 37 CFR 1.821(e)(1) requires a computer readable form (CRF) of the “Sequence Listing” in accordance with the requirements of 37 CFR 1.824.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed via the USPTO patent electronic filing system as a PDF, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the PDF copy and the CRF copy (the ASCII text file copy) are identical.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed on paper or read-only optical disc, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the paper or read-only optical disc copy and the CRF are identical.
Specific deficiencies and the required response to this Office Action are as follows:
Specific deficiency – Nucleotide and/or amino acid sequences appearing in the drawings are not identified by sequence identifiers in accordance with 37 CFR 1.821(d). Sequence identifiers for nucleotide and/or amino acid sequences must appear either in the drawings or in the Brief Description of the Drawings. Fig. 4 lists sequences that are not identified with a sequence identifier in the either in the drawings or in the Brief Description of the Drawings.
Required response – Applicant must provide:
Replacement and annotated drawings in accordance with 37 CFR 1.121(d) inserting the required sequence identifiers;
AND/OR
A substitute specification in compliance with 37 CFR 1.52, 1.121(b)(3) and 1.125 inserting the required sequence identifiers into the Brief Description of the Drawings, consisting of:
A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
A copy of the amended specification without markings (clean version); and
A statement that the substitute specification contains no new matter.
Claim Objections
In claims 1-2 and 9, “SiPT1” is used as abbreviation. It is suggested to insert a definition for SiPT1 without bringing in new matter, immediately before the first appearance of “SiPT1” in claim 1; and to enclose the appearance of “SiPT1” in parentheses (in claim 1 only).
Claim Interpretation
Claims 1 and 2 do not explicitly recite a specific and substantial asserted utility. When read in light of the instant specification, there is a specific and substantial use for the SiPT1 gene and corresponding protein when used for the branching phenotype within a Sesamum indicum plant/plant part. Accordingly, the claims have not been rejected under 35 USC § 101 or 35 USC § 112(a) as lacking either a specific and substantial asserted utility or a well-established utility.
Claim 1 recites a gene, SiPT, the nucleotide of said gene, and a cDNA corresponding to the gene. As these are two separate compositions, the gene with its nucleotide sequence and the cDNA corresponding to the gene, the claim is interpreted to be in the alternative, i.e., a gene regulating plant architecture trait with its nucleotide sequence as shown in SEQ ID NO: 1, or the cDNA corresponding to the gene SiPT1.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2 and 9 are rejected under 35 U.S.C. 101. Claims 1 and 2 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to a product of nature without significantly more.
Broadest Reasonable Interpretation
Claim 1 recites “a gene, SiPT1, regulating a sesame plant architecture trait, is characterized by being located on the 10th chromosome of sesame, it is classified as a dominant control gene and has a 100% explanation ratio for the branching trait, the gene has a length of 1,318 bp, contains 4 exons and 3 introns, and its nucleotide sequence is shown in SEQ ID No. 1; the cDNA corresponding to the gene SiPT1, which regulates the sesame plant architecture trait, has a sequence length of 522 bp and encodes 173 amino acids, and its nucleotide sequence is shown in SEQ ID No. 2.” Claim 2 recites “a protein encoded by the gene SiPT1 regulating the sesame plant architecture trait or its corresponding cDNA according to claim 1, characterized by containing 173 amino acids, wherein the amino acid sequence is shown in SEQ ID NO. 3.”
The Examiner has interpreted the above gene and protein as products found in a naturally occurring sesame plant. (being located on the 10th chromosome of sesame; see also Sequence Listing) Since claims 1 and 2 do not recite characteristics that amount to a difference between naturally occurring genes and proteins, the gene and protein of claims 1 and 2, respectively, have been interpreted as those found on chromosomes within naturally occurring sesame plants.
Step 1: Whether the claim is to a statutory category
Under Step 1 of the subject matter eligibility test for products and processes, it must be determined if the claim is to a process, machine, manufacture or a composition of matter. In the instant case, claim 1 and 2 are directed to a composition of matter (gene or protein). The claims are therefore directed to a statutory category, a product, and according to the broadest reasonable interpretation, it is also a natural product.
Step 2A: ‘Directed to a judicial exception’ analysis:
Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Markedly different characteristics can be expressed as the product's structure, function, and/or other properties. Non-limiting examples of characteristics that can determine the presence of a marked difference include biological or pharmacological functions or activities; chemical and physical properties; phenotype, including functional and structural characteristics; and structure and form, whether chemical, genetic, or physical.
The Examiner has interpreted the SiPT1 gene and encoded protein regulating sesame plant architecture as tantamount to those found in nature. The Applicant concedes that among the branching germplasm accessions used to confirm that the SiPT1 gene regulates the branching trait of the sesame plant architecture, the wild species S. radiatum with the branching phenotype was chosen [¶58]. Furthermore, Applicant has not provided evidence of a markedly different characteristic between the instantly recited gene and protein and their naturally-occurring counterparts. As such, claims 1 and 2 recite a judicial exception.
Under Revised Step 2A, prong 1 of the analysis (determining the Judicial Exceptions), it must be determined if the claim is directed to a law of nature, a natural phenomenon (product of nature) or an abstract idea. In the instant case, the formulation is a naturally occurring product (mixture of cell aggregates and cell aggregate). Because the products are the same as a product of nature, it falls within a judicial exception.
Prong Two: Does the claim recite additional elements that integrate the judicial exception into a practical application?
Under Step 2A, prong 2 of the analysis, it must be determined whether the claim recites additional elements that integrate the judicial exception into a practical application. In the instant case, the claims fail to recite any additional elements that integrate the judicial into a practical application, and therefore the claims remain directed to a judicial exception invoking further analysis under step 2B.
Step 2B: ‘Significantly more’ analysis:
Under Step 2B, it must be determined if the claim recites additional elements that amount to significantly more than the judicial exception. In the instant case, claims 1 and 2 fail to recite any additional elements that amount to significantly more than the judicial exception since the claims are recited as product-by-process without reciting any structural features. Therefore, the claims as a whole do not amount to significantly more than the exception.
Therefore, claims 1 and 2 are directed to subject matter that is not patent-eligible and are, as a result, rejected under 35 U.S.C. 101.
Claim 9 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because Claim 9 is directed toward “A use of” the SiPT1 gene according to claim 1 with an intended use of “in plant variety breeding”. Claim 9 is a “use claim” that does not recite any active steps. Therefore, the claimed subject matter is none of a process/method, machine, manufacture, or composition of matter. Further to MPEP § 2173.05(q) and absent evidence to the contrary, claim 9 is not directed toward a category of patent eligible subject matter and is, therefore, not patentable. Please also note the rejection of claim 9 under 35 U.S.C. § 112(b) herein below because it is a “use claim”.
Claim Rejections - 35 USC § 112(b)
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 1-2 and 9 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 1 recites that the SiPT1 gene “has a 100% explanation ratio for the branching trait.” It is not clear what the Applicant means as this is not a commonly used or standard term in plant science and genetics. The specification explains more specifically that “a gene SiPT1 regulating sesame plant architecture trait is located on the 10th chromosome of sesame and is a dominant control gene (contrary to the single-stem allele gene), with a 100% explanation ratio for the branched phenotype (i.e., the gene controls the branched phenotype)” [¶09]. However, “controlling” seems to indicate that the gene dictates the entire biological process of gene expression rather than the act of “conferring” an effect from a specific gene to an organism. In the instant case it is unclear if the Applicant intends to state that the gene is able to control the entire biological process surrounding the branching phenotype or if the Applicant intends to claim that the SiPLT1 gene imparts the specific phenotype of branching to a sesame plant.
Claims 2 and 9 are also rejected insofar as they depend from claim 1, and do not overcome the stated rejection.
Further, claim 9 is directed toward “A use of” the SiPT1 gene according to claim 1 with an intended use “in plant variety breeding”. Claim 9 is a “use claim” that does not recite any active steps and it is not clear what subject matter falls within, or outside of, the claim. Further to MPEP § 2173.05(q), claim 9 is indefinite.
Subject Matter Free of Art
Examiner notes that the claims have subject matter free of art to the extent that the SiPT1 gene has 100% identity to SEQ ID NO: 1, cDNA with 100% identity to SEQ ID NO: 2, and an amino acid sequence with 100% identity to SEQ ID NO: 3. It is noted that a full search has not been conducted in light of the additional information required (See, Request for Information 37 CFR 1.105 below).
Conclusion
No claims allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY K. JOHNSON whose telephone number is (571)272-5761. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bratislav Stankovic can be reached at 571-270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMILY K JOHNSON/Examiner, Art Unit 1662
/BRATISLAV STANKOVIC/Supervisory Patent Examiner, Art Units 1661 & 1662
ATTACHMENT TO OFFICE ACTION
Request for Information under 37 CFR § 1.105
Applicants and the assignee of this application are required under 37 CFR § 1.105 to provide the following information that the Examiner has determined is reasonably necessary to the examination of this application.
This request is being made for the following reasons:
Applicants are claiming a gene regulating a sesame plant architecture trait, SiPT1. The instant specification indicates that “Yinni Heli” is the representative germplasm accession for the branching phenotype [¶20] and that SEQ ID NO: 1 is the SiPT1 gene sequence in the “Yinni Heli” cultivar [¶54]. The instant specification states that this germplasm accession is reserved in the sesame germplasm resource bank of the Henan Sesame Research Center [¶28] and that the materials can be obtained from the public accessible germplasm bank or other public germplasm resource libraries [¶29]. However, a search of the art does not reveal a publicly available accession of “Yinni Heli”. As the instant specification does not provide what starting materials were used for the branching phenotype, the requested information is required to make a meaningful and complete search of the prior art.
In response to this requirement, if known, please provide answers to each of the following interrogatories eliciting factual information:
Please supply the breeding methodology and history regarding the development of the instant plant.
a) Such information should include all of the public or commercial designations/ denominations used for the original parental lines.
b) Information pertaining to the public availability of the original parental lines should be set forth.
c) The breeding method used should be set forth, such as whether single seed descent, bulk method, backcross method, or some other method was used.
d) The filial generation in which the instant plant was chosen should be set forth.
e) Information pertaining to the homozygosity or heterozygosity of the parents as well as the instant plant should be set forth.
f) Are there any patent applications or patents in which sibs or parents of the instant plant are claimed? If so, please set forth serial numbers and names of the sibs or parents.
If Applicants view any or all of the above requested information as a Trade Secret, then Applicants should follow the guidance of MPEP § 724.02 when submitting the requested information.
In responding to those requirements that require copies of documents, where the document is a bound text or a single article over 50 pages, the requirement may be met by providing copies of those pages that provide the particular subject matter indicated in the requirement, or where such subject matter is not indicated, the subject matter found in applicant’s disclosure. Please indicate where the relevant information can be found.
The fee and certification requirements of 37 CFR § 1.97 are waived for those documents submitted in reply to this requirement. This waiver extends only to those documents within the scope of this requirement under 37 CFR § 1.105 that are included in the applicant’s first complete communication responding to this requirement. Any supplemental replies subsequent to the first communication responding to this requirement and any information disclosures beyond the scope of this requirement under 37 CFR § 1.105 are subject to the fee and certification requirements of 37 CFR § 1.97 if submitted subsequent to a first Office action on the merits.
The Applicants are reminded that the reply to this requirement must be made with candor and good faith under 37 CFR § 1.56. Where the Applicants do not have or cannot readily obtain an item of required information, a statement that the item is unknown or cannot be readily obtained may be accepted as a complete reply to the requirement for that item.
This requirement is an attachment of the enclosed Office action. A complete reply to the enclosed Office action must include a complete reply to this requirement. The time period for reply to this requirement coincides with the time period for reply to the enclosed Office action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY K. JOHNSON whose telephone number is (571)272-5761. The examiner can normally be reached Monday - Friday 7:30 am - 4:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bratislav Stankovic can be reached at 571-270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/BRATISLAV STANKOVIC/Supervisory Patent Examiner, Art Units 1661 & 1662
Prosecution Insights