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
1. Applicant’s election without traverse of Group I (claims 61-79), and PPO-S (SEQ ID NO: 28 encoded by SEQ ID NO: 27) in the reply filed on March 18, 2024 is acknowledged.
Claim 80 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Non-elected subject matter in Claims 62-79 is also withdrawn.
Accordingly claims 61-79 in conjunction with PPO-B (SEQ ID NO: 4 encoded by SEQ ID NO: 3), PPO-D (SEQ ID NO: 8 encoded by SEQ ID NO: 7), and PPO-S (SEQ ID NO: 28 encoded by SEQ ID NO: 27) are examined on merits in the present Office action. This restriction is made Final.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Information Disclosure Statement
2. Initialed and dated copies of Applicant’s IDS form 1449 filed in the papers December 20, 2024 and July 16, 2026 are attached to the instant Office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
3. Claims 62, 63, 67, 68 and 76 are objected to because of the following informalities:
Claims 62, 63, 67, 68 and 76 are objected for having non-elected subject matter. Non-elected subject matter includes all PPO genes and their encoded proteins (PPO-A, PPO-C, PPO-E, PPO-G, PPO-J, PPO-M, PPO-N, PPO-O, PPO-P, PPO-Q, PPO-R; SEQ ID NOs: 1, 2, 5, 6, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26), except PPO gene B (SEQ ID NO: 3 encode SEQ ID NO: 4), and PPO-D gene (SEQ ID NO: 7 encodes SEQ ID NO: 8) and PPO-S (SEQ ID NO: 27 encodes SEQ ID NO: 28).
Appropriate correction is required.
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.
4. Claims 61, 62, 63, 64-66, 67, 68, 69-74 and 77-79 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: The claim is directed to a statutory category (a plant/composition of matter).
Step 2A, Prong One: The claim recites a nature-based product — a lettuce plant characterized by reduced PPO activity resulting from mutation(s) in native PPO gene/allele sequences (e.g., SEQ ID NOs: 3, 7 encoding PPO-B and PPO-D, respectively). The closest naturally occurring counterpart is a wild-type lettuce plant carrying naturally occurring mutations in these same PPO alleles, as demonstrated in analogous species (see Hystad et al., Theor. Appl. Genet., 128:1605-1615, 2015, Abstract, Figs. 1-2, Tables 1-7, reporting naturally occurring wheat PPO mutants with reduced PPO activity and reduced browning). Comparing the claimed plant to this natural counterpart, it is important to note that
No difference in structural difference is recited in claims. The claim do not require any transgene, marker, or sequence alteration absent from naturally occurring mutant alleles. The claimed reduction in PPO activity (1%-100%) falls within the range naturally produced by spontaneous loss-of-function mutations. The claimed properties as claimed in claims 72 and 73, including reduced-browning phenotype is the inherent, expected result of naturally occurring PPO knockout mutations and is not shown to differ from the natural counterpart. Because no markedly different characteristics are recited relative to the natural counterpart, the claim is directed to a product of nature (a judicial exception).
Step 2A, Prong Two: The claim recites no additional elements beyond the nature-based product itself that integrate the exception into a practical application.
Step 2B: For the same reason, the claim recites no additional element(s), individually or in combination, that amount to significantly more than the judicial exception.
The claim(s) is/are therefore not patent-eligible. See Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013); Diamond v. Chakrabarty, 447 U.S. 303 (1980) (markedly different characteristics standard).
The properties recited in claims 72-73 are held to be inherent in the naturally occurring mutant PPO alleles absent evidence to the contrary; Applicant may rebut with evidence (e.g., a showing of markedly different structure or unexpected function).
This rejection may be overcome by amending the claims to positively recite that the lettuce plant is non-naturally occurring, genetically modified transgenic and possesses elements (e.g., an inserted transgene, edited sequence, or other man-made structural alteration) that do not and cannot arise in nature.
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.
5. Claims 61-79 are rejected are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a transgenic lettuce plant, comprising reducing or eliminating lettuce endogenous PPO-B protein (SEQ ID NO: 3 encodes SEQ ID NO: 4) activity, endogenous PPO-D protein (SEQ ID NO: 7 encodes SEQ ID NO: 8) activity and PPO-S protein activity (SEQ ID NO: 27 encodes SEQ ID NO: 28) by transforming lettuce plant with a recombinant CRISPR/Cas9 vector targeted to knock-out or silence expression of said endogenous PPO-B protein (encoded by SEQ ID NO: 3) activity, PPO-D (encoded by SEQ ID NO: 7) activity, and PPO-S protein activity (encoded by SEQ ID NO: 27), and wherein said transgenic lettuce plant exhibits improved and desirable characteristics as claimed, does not reasonably provide enablement for (i) silencing or eliminating expression of PPO-B gene as set forth in SEQ ID NO: 3, PPO-D gene as set forth in SEQ ID NO: 7, and PPO-S gene as set forth in SEQ ID NO: 27 using any editing means or techniques as encompassed by the breadth and scope of claims; and (ii) silencing or eliminating expression of silencing or eliminating expression of PPO-B gene as set forth in SEQ ID NO: 3, PPO-D gene as set forth in SEQ ID NO: 7, and PPO-S gene as set forth in SEQ ID NO: 27 in a lettuce plant by a method that does not comprise transforming said lettuce plant with a CRISPR/Cas9 vector targeted to knock-out or silence expression of lettuce endogenous PPO-B gene as set forth in SEQ ID NO: 3 encoding SEQ ID NO: 4, PPO-D gene as set forth in SEQ ID NO: 7 encoding SEQ ID NO: 8, and PPO-S gene as set forth in SEQ ID NO: 27 encoding SEQ ID NO: 28. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
Claims are broadly drawn to a genome edited lettuce plant comprising non- naturally occurring mutations in each of a PPO-B gene encoding a PPO-B protein having at least 95% amino acid sequence identity to the amino acid sequence as set forth in SEQ ID NO:4 and a PPO-D gene encoding a PPO-D protein having at least 95% amino acid sequence identity to the amino acid sequence as set forth in SEQ ID NO:8, wherein said mutations eliminate or reduce activity of said PPO-B and PPO-D proteins by at least 10% in the genome edited lettuce plant as compared to a wild type lettuce plant of a same variety, or wherein the genome edited lettuce plant further comprising a non-naturally occurring mutation in a PPO-S gene encoding a PPO-S protein having at least 95% amino acid sequence identity to the amino acid sequence as set forth in SEQ ID NO:28, or wherein at least one of said mutations occurs in the coding sequence of both alleles of the PPO-B and/or the PPO-D genes, or herein at least one of said mutations occurs in the coding sequence of only one allele of the PPO-B and/or the PPO-D genes, or wherein said mutations comprise deletions or insertions of nucleotides in the coding sequences of (i) SEQ ID NO:3 (PPO-B) which encodes SEQ ID NO:4 and (ii) SEQ ID NO:7 (PPO-D) which encodes SEQ ID NO:8, or wherein said mutations comprise deletions or insertions of nucleotides in the coding sequences of SEQ ID NO:27 (PPO-S) which encodes SEQ ID NO:28, or wherein said mutations comprise deletions or insertions of nucleotides in the coding sequences of SEQ ID NO:27 (PPO-S) which encodes SEQ ID NO:28, or wherein the activity of said PPO-B and PPO-D proteins is reduced by at least 30%., 50% or 70%, or wherein the genome edited lettuce plant at harvest comprises one or more characteristics comprising reduced tip burn; higher levels of polyphenolics; higher levels of vitamin A; higher levels of beta-carotene; higher levels of vitamin C; or higher levels of vitamin K as compared to a wild type lettuce plant of the same variety lacking said genome edited mutations or wherein the genome edited lettuce plant at post-harvest comprises one or more characteristics comprising reduced browning; increased shelf life; lower levels of CO2 production; higher levels of carbohydrates; or less yellowing as assessed by midvein scoring as compared to a wild type lettuce plant of the same variety lacking said genome edited mutations, or wherein said post-harvest is 7, 13, 14, 21, 27, or 30 days after harvest, or wherein the genome edited lettuce plant of The genome edited lettuce plant of wherein the mutation in PPO-B is an insertion between nucleotides 1007 and 1008 of SEQ ID NO:3 or a deletion of nucleotide 1008 of SEQ ID NO:3, and the mutation in PPO-D is an insertion between nucleotides 1131 and 1132 of SEQ ID NO: 7, or wherein the mutation in PPO-S is an insertion between nucleotides 1044 and 1045 of SEQ ID NO:27, a deletion of three nucleotides between nucleotides 1045-1047 of SEQ ID NO:27, or a deletion of seven nucleotides between nucleotides 1045-1051 of SEQ ID NO:27, or wherein said lettuce is leaf lettuce, romaine lettuce, Fris6e lettuce, butter lettuce, Bibb lettuce, Boston lettuce, or iceberg lettuce, or wherein said lettuce is romaine lettuce, or wherein the lettuce plant is free of any plant pest sequences.
The claimed invention is not supported by an enabling disclosure taking into account the Wands factors. In re Wands, 858/F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988). In re Wands lists a number of factors for determining whether or not undue experimentation would be required by one skilled in the art to make and/or use the invention. These factors are: the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples of the invention, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claim.
The instantly claimed invention encompasses using, for example, variety of different genome editing techniques, but not limited to for example, CRISPR/Cas9 based, ZFN, TALEN, and Meganucleases, etc. to create transgenic plants or parts thereof exhibiting suppression of endogenous PPO genes PPO-B (SEQ ID NO:3), PPO-D (SEQ ID NO: 7) and PPO-S (SEQ ID NO: 27) in diverse lettuce plant species as encompassed by the breadth of claims to improve a lettuce plant trait characteristics as claimed.
The state of art related with CRISPR/Cas9 (Paul et al., Plant Cell Reports; 35:1417-1427; 2016) clearly suggests that the efficiency of Cas9 editing among plants depends on plant species, genomic loci targeted, expression levels of gRNA and Cas9, among other factors. The reference further teaches that Cas9:gRNA complexes routinely result off-target binding and cleavages which can result in unwanted mutations and chromosomal abnormalities. See in particular, last four lines of last paragraph of left column on page 1418.
In the absence of adequate guidance, it would require undue experimentation, to design CRISPR/Cas9 system specifically targeting endogenous PPO genes (including PPO-B, PPO-D and PPO-S genes) in diverse lettuce plant species in any plant species to produce the claimed product as encompassed by the breadth and scope of the claims.
Likewise, claims encompass reducing or eliminating the expression of any endogenous PPO genes (including PPO-B, PPO-D and PPO-S genes) in diverse lettuce plant species using engineered nucleases. However, Yee et al. (The FEBS Journal, 283:3329-3248, 2016) discusses major complications using engineered nucleases (such as but not limited to ZFN, TALEN, Meganucleases and CRISPR -associated Cas9), binding to unintended genomic sites that share sequence homology with the on-target site. The reference further teaches that cleavage of such off-target sites by the nucleases followed by indel formation with Non-Homologous End Joining (NHEJ) results in unintended inactivation or mutation. Such unintended consequences lead to severe adverse events affecting cell function and proliferation. See in particular, paragraph bridging paragraphs left and right columns on page 3241.
In the absence of adequate guidance, it would require undue experimentation, to design engineered nucleases (such as but not limited to ZFN, TALEN, Meganucleases and CRISPR-associated Cas9) specifically targeting endogenous PPO genes (including PPO-B, PPO-D and PPO-S genes) in diverse lettuce plant species in any plant species to produce the claimed product as encompassed by the breadth and scope of the claims.
Claims also encompass improving instantly claimed improved characteristics in a lettuce plant by a process that does not comprise transforming said lettuce plant with a an expression cassette that will result in intended mutations in any PPO genes including PPO-B, PPO-D and PPO-S genes..
The instant specification, only provides guidance on transformation of lettuce plants with recombinant CRISPR/Cas9 vectors targeted to knockout or silence expression of lettuce endogenous PPO-B gene as set forth in SEQ ID NO: 3, PPO-7 and PPO-S gene as set forth in SEQ ID NO: 27. The guidance further discusses that the transgenic mutant lettuce plants would exhibit improved lettuce plant characteristics. The transgenic mutant lettuce plants exhibiting decrease or complete elimination of PPO-B protein, PPO-D protein and PPO-S protein activities encoded by said SEQ ID NO: 3, SEQ ID NO: 7 and SEQ ID NO: 27, respectively. See in particular, Examples 1-15, Tables 1-12; pages 55-77.
The specification, however, fails to provide guidance on improving instantly claimed characteristics in a plant in any manner other than transforming a lettuce plant with a recombinant CRISPR/Cas9 vectors targeted to knockout or silence expression of lettuce endogenous PPO-E gene as set forth in SEQ ID NO: 3, SEQ ID NO: 7 and PPO-S gene as set forth in SEQ ID NO: 27. The specification does not provide guidance on co-factors, or negative regulators of PPO-B (SEQ ID NO: 3), PPO-D (SEQ ID NO: 7) and PPO-S (SEQ ID NO: 27), to overexpress to produce a lettuce plant with instantly claimed improved characteristics. The specification provides no guidance on up-stream regulatory factors, for example, that may be necessary in stimulating the down-regulation of endogenous PPO-B (SEQ ID NO: 3), PPO-D (SEQ ID NO: 7) and PPO-S (SEQ ID NO: 27) genes, and thereby decrease the activity of PPO-B (SEQ ID NO: 3), PPO-D (SEQ ID NO: 7) and PPO-S (SEQ ID NO: 27) encoded PPO proteins, to impart instantly claimed improved characteristics to the lettuce plant.
In the absence guidance, undue experimentation would have been required by a skilled artisan at the time the claimed invention was made to determine how a plant with instantly claimed improved characteristics could have been produced by a method that comprises decreasing the expression of PPO-B (SEQ ID NO: 3), PPO-D (SEQ ID NO: 7) and PPO-S (SEQ ID NO: 27) genes and the encoding PPO-proteins without transforming the lettuce plant with a recombinant CRISPR/Cas9 vectors targeted to knockout or silence expression of lettuce endogenous PPO-B gene as set forth in SEQ ID NO: 3, PPO-D gene as set forth in SEQ ID NO: 7 and PPO-S gene as set forth in SEQ ID NO: 27.
Given the breadth of the claims, unpredictability of the art and lack of guidance of the specification, as discussed above, undue experimentation would be required by one skilled in the art to make and use the claimed invention commensurate in scope with the claims.
Conclusion
6. Claims 61-79 are rejected. The closest prior art teach Feikert et al.( US Patent Publication NO. 20170114418 A1, Published April 27, 207) disclose a method of increasing shelf-life and decreasing browning of lettuce plant by decreasing expression of endogenous PPO (polyphenol oxidase) activity using RNAi inhibitory DNA construct directed to endogenous PPO gene(s). See in particular, paragraphs [0007], [0080], [0107], [0068], [0138]-[0210]; Examples 1-6, paragraphs [0211]-[0223]; Tables 1-2; claims 43-52. However, the closest prior art of Feikert et al. do not teach sequences having at least 95% identity to (i) SEQ ID NO: 3 encoding SEQ ID NO: 4 (PPO-B gene), (ii) SEQ ID NO: 7 encoding SEQ ID NO: 8 (PPO-D gene), and (iii) SEQ ID NO: 27 encoding SEQ ID NO: 28 (PPO-S gene) and their down-regulating by either gene editing techniques or non-gene editing techniques in any plant species including lettuce .
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vinod Kumar whose telephone number is (571) 272-4445. The examiner can normally be reached on 8.30 a.m. to 5.00 p.m.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad A. 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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/VINOD KUMAR/Primary Examiner, Art Unit 1663
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