DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first-to-invent provisions.
Status
Claims 2, 16, 19, and 21-24 as filed on 13 January 2025 are examined herein. These claims were amended to focus on SEQ ID NO:553 and SEQ ID NO:554 relative to the originally-filed claims.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Examiner’s Notes & Claim Interpretation
Citations to Applicant’s specification are abbreviated herein “Spec.” Occasionally, “SIN” is used as an abbreviation “SEQ ID NO” herein.
SEQ ID NO:554 was not well characterized in the prior art.
In fact, using the NCBI’s BLAST® website on 25 June 2026 produced a list of ‘hypothetical’ and ‘uncharacterized’ proteins with only the top 3 falling withing the scope of the claims.
.Even what is possibly the closest Arabidopsis protein, that encoded by At4g08330 at approximately 83% sequence-identical, is not well characterized in the art.
As seen below, the “100%” match in GenEMBL was published in 2014 and referenced as “At4g08330-like.”
A0A078JNJ6_BRANA
See complete list at the end of this report)
ID A0A078JNJ6_BRANA Unreviewed; 162 AA.
AC A0A078JNJ6;
DT 29-OCT-2014, integrated into UniProtKB/TrEMBL.
DT 29-OCT-2014, sequence version 1.
DT 28-JAN-2026, entry version 33.
DE SubName: Full=BnaA02g36660D protein {ECO:0000313|EMBL:CDY69123.1};
GN Name=BnaA02g36660D {ECO:0000313|EMBL:CDY69123.1};
GN ORFNames=GSBRNA2T00083452001 {ECO:0000313|EMBL:CDY69123.1};
OS Brassica napus (Rape).
OC Eukaryota; Viridiplantae; Streptophyta; Embryophyta; Tracheophyta;
OC Spermatophyta; Magnoliopsida; eudicotyledons; Gunneridae; Pentapetalae;
OC rosids; malvids; Brassicales; Brassicaceae; Brassiceae; Brassica.
OX NCBI_TaxID=3708 {ECO:0000313|EMBL:CDY69123.1, ECO:0000313|Proteomes:UP000028999};
RN [1] {ECO:0000313|EMBL:CDY69123.1, ECO:0000313|Proteomes:UP000028999}
RP NUCLEOTIDE SEQUENCE [LARGE SCALE GENOMIC DNA].
RC STRAIN=cv. Darmor-bzh {ECO:0000313|Proteomes:UP000028999};
RX PubMed=25146293; DOI=10.1126/science.1253435;
RA Chalhoub B., Denoeud F., Liu S., Parkin I.A., Tang H., Wang X., Chiquet J.,
RA Belcram H., Tong C., Samans B., Correa M., Da Silva C., Just J.,
RA Falentin C., Koh C.S., Le Clainche I., Bernard M., Bento P., Noel B.,
RA Labadie K., Alberti A., Charles M., Arnaud D., Guo H., Daviaud C.,
RA Alamery S., Jabbari K., Zhao M., Edger P.P., Chelaifa H., Tack D.,
RA Lassalle G., Mestiri I., Schnel N., Le Paslier M.C., Fan G., Renault V.,
RA Bayer P.E., Golicz A.A., Manoli S., Lee T.H., Thi V.H., Chalabi S., Hu Q.,
RA Fan C., Tollenaere R., Lu Y., Battail C., Shen J., Sidebottom C.H.,
RA Wang X., Canaguier A., Chauveau A., Berard A., Deniot G., Guan M., Liu Z.,
RA Sun F., Lim Y.P., Lyons E., Town C.D., Bancroft I., Wang X., Meng J.,
RA Ma J., Pires J.C., King G.J., Brunel D., Delourme R., Renard M., Aury J.M.,
RA Adams K.L., Batley J., Snowdon R.J., Tost J., Edwards D., Zhou Y., Hua W.,
RA Sharpe A.G., Paterson A.H., Guan C., Wincker P.;
RT "Plant genetics. Early allopolyploid evolution in the post-Neolithic
RT Brassica napus oilseed genome.";
RL Science 345:950-953(2014).
CC ---------------------------------------------------------------------------
CC Copyrighted by the UniProt Consortium, see https://www.uniprot.org/terms
CC Distributed under the Creative Commons Attribution (CC BY 4.0) License
CC ---------------------------------------------------------------------------
DR EMBL; LK038695; CDY69123.1; -; Genomic_DNA.
DR AlphaFoldDB; A0A078JNJ6; -.
DR STRING; 3708.A0A078JNJ6; -.
DR PaxDb; 3708-A0A078JNJ6; -.
DR Gramene; CDY69123; CDY69123; GSBRNA2T00083452001.
DR KEGG; bna:106427013; -.
DR KEGG; bna:106429515; -.
DR OMA; KHIGNAY; -.
DR OrthoDB; 1907500at2759; -.
DR Proteomes; UP000028999; Unassembled WGS sequence.
DR InterPro; IPR045282; At4g08330-like.
DR PANTHER; PTHR33674; METHIONINE-S-OXIDE REDUCTASE; 1.
DR PANTHER; PTHR33674:SF8; OS01G0833400 PROTEIN; 1.
DR Pfam; PF24046; At4g08330; 1.
PE 4: Predicted;
KW Reference proteome {ECO:0000313|Proteomes:UP000028999}.
SQ SEQUENCE 162 AA; 17919 MW; B6CA2A3C245D1EEB CRC64;
Query Match 100.0%; Score 856; Length 162;
Best Local Similarity 100.0%;
Matches 162; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MDRSASVGIKDGGFGGNHLYSPSFSSSSSMRHVNYSCGSCGYELNLSSTNRITSSIGSKY 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MDRSASVGIKDGGFGGNHLYSPSFSSSSSMRHVNYSCGSCGYELNLSSTNRITSSIGSKY 60
Qy 61 GKSMKTGIISFFNIDEGRFSQVDEFQCMPHFSRYSWGLFRRKTKLLCRQCNNYIGNASYD 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 GKSMKTGIISFFNIDEGRFSQVDEFQCMPHFSRYSWGLFRRKTKLLCRQCNNYIGNASYD 120
Qy 121 KAPPEYALVTQNSSPRKGVTDTVTKYDIRIRALQPSSGVASL 162
||||||||||||||||||||||||||||||||||||||||||
Db 121 KAPPEYALVTQNSSPRKGVTDTVTKYDIRIRALQPSSGVASL 162
Claim Objections
Claims 22 and 24 are objected to because of the following informalities.
Claim 22 is objected to because it recites approximately fifteen different species without italicizing any of the names.
Claim 24 is objected to because it recites the indefinite pronoun “a” to refer to the transgenic plant from claim 23 rather than “the” or “said” transgenic plant.
Appropriate correction is requested.
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.
Claim 22 is 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 pre-AIA the applicant regards as the invention.
Claim 22 is rejected because it recites approximately fifteen species of plants with no italics (see objection supra) with, frequently, an exemplary common name of the species in parentheses. For example, in line 5, the claim recites the limitation “Oryza sativa [sic] (rice).”
Oryza sativa, however, is the name of one species of rice, but other species of rice exist. See e.g. Londo et al. (2006) Proc Natl Acad Sci USA 103(25):9578-83. Similarly, lines 3-4 recites the limitation “Saccharum [sic] sp. (energycane).” Energycane is just one species of Saccharum. See e.g. Mendonça Vilela et al. (2017) Genome Biol Evol 9(2):266-78.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
35 USC § 112(a)-Based Claim Rejections - written description
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 2, 16, 19, 21, 22, 23, and 24 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 claim(s) contains 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The Federal Circuit held that a written description of an invention "’requires a precise definition, such as by structure, formula [or] chemical name,’ of the claimed subject matter sufficient to distinguish it from other materials." Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1405 (Fed. Cir. 1997) (quoting Fiers v. Revel, 984 F.2d 1164, 1171, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993)). The court also stated "naming a type of material generally known to exist, in the absence of knowledge as to what that material consists of is not a description of that material." Id., 119 F.3d at 1568, 43 USPQ2d at 1406. The court held that “[a] description of a genus of cDNAs may be achieved by means of a recitation of a representative number of cDNAs, defined by nucleotide sequence, falling within the scope of the genus or of a recitation of structural features common to members of the genus, which features constitute a substantial portion of the genus.” Id., 119 F. 3d at 1569, 43 USPQ2d at 1406.
Claim 2, the first independent claim, is drawn to a method of producing a plant with an exogenous nucleic acid that comprises a sequence at least 85% identical to SEQ ID NO:553 or encoding a polypeptide with an amino acid sequence at least 85$ sequence-identical to SEQ ID NO:554.
The claim also requires a change in biomass in a plant produced from the cell relative to a plant without such an exogenous gene.
Claim 19 is an independent claim drawn to a plant cell comprising the same genera of biomolecules with the same functional requirement as claim 2 if a plant is regenerated from that cell.
Dependent claim 21 is drawn to a transgenic plant. Dependent claim 22 recites various varieties of plants.
Dependent claim 23 depends from claim 21 and restricts the claimed genus of variants to 90% sequence-identical to SEQ ID NO:554.
Dependent claim 24 is drawn to a seed product from “a” transgenic plant of claim 23; there is no requirement for a sequence related to either SEQ ID NO:553 or SEQ ID NO:554. But the claim does require “tissue” and it’s reasonable to interpret this “tissue” a having a molecule with either SEQ ID NO:553 or a variant thereof or encoding SEQ ID NO:554 or a variant thereof as an exogenous nucleic acid molecule (or segment thereof).
SEQ ID NO:553, for example, is 857 nucleotides in length; and SEQ ID NO:554 is 162 amino acids in length.
For SEQ ID NO:553, if the first approximately 85% of the nucleotides were held constant, and the remaining 128 (approximately 15%) were varied, this would result in 1284 different variants. For SEQ ID NO:554, that would result in 2420 variants.
For both, that is only a small fraction of the number claimed, because different regions could be held constant.
Applicant fails to describe a representative number of species for the claimed genera – Applicant only describes SEQ ID NO:553 / SEQ ID NO:554 with working examples.
On page 86, the specification describes the claimed invention in Example 2 (p. 84). Results for transgenic expression of SEQ ID NO:553 / 554 (Ceres Clone ID no. 1384304) produced rice that is:
(1) taller;
(2) has an increased biomass;
(3) and has and increased panicle weight, although the second line suggests a decrease.
In paragraph 0037 the specification teaches that Ceres Clone: 1384304 is SEQ ID NO:554.
Figure 1 presents an alignment which has SEQ ID NO:554.
Although Figure 4 represents similar polypeptide sequences, the other polypeptides are not featured in working examples.
Applicant only describes the transgenic suppression of the pair of SEQ ID NO:553 / SEQ ID NO:554 relative to the claimed genera.
Of course, merely expressing a randomly selected polypeptide would not be expected to produce the beneficial phenotypes seen in Example 2.
In the transgenic transcription factor art, Zhang teaches that transgenic effects of transcription factor expression conceptually can be thought of as arising from hypermorph activity or neomorph activity. Zhang (2003) Curr Opin Plant Biol 6:430-40, 431. Here, Applicant is causing the transgenic overexpression of SEQ ID NO:554, but not defining why such overexpression brings about the beneficial phenotypes / change in biomass. Nor does Applicant describe the native activity of the polypeptide. Especially in the case of neomorph activity, one skilled in the art would be uncertain what sections of the polypeptide’s amino acid sequence are necessary and/or sufficient for activity, and thus which amino acids of the polypeptide could be modified and retain activity in the instant invention.
SEQ ID NO:554 was not well characterized in the prior art.
In fact, using the NCBI’s BLAST® website on 25 June 2026 produces a list of ‘hypothetical’ and ‘uncharacterized’ proteins with only the top 3 falling withing the scope of the claims.
.Even what is possibly the closest Arabidopsis protein, that encoded by At4g08330 at approximately 83% sequence-identical, is not well characterized.
As seen above in the claim interpretation, the “100%” match was published in 2014.
Still, SEQ ID NO:554 when transgenically expressed, provides a beneficial phenotype.
However, the claims also read on a very large genus of variants around SEQ ID NO:554 – up to 15% sequence-variant. The claims also read on fragments of SEQ ID NO:553.
The art, however, describes that changes to the amino acid sequence can eliminate or at least modify the activity of a protein.
For example, Rhoads et al. which describes that mutation of Cys-128 to Ala in an alternative oxidase caused a pronounced overall increase in enzyme activity relative to the wild-type in the presence or absence of pyruvate (page 30753 Figure 3), whereas mutation of Cys-78 to Ala in the same Arabidopsis alternative oxidase resulted in a minimally active enzyme that showed no response to added pyruvate. Rhoads et al. (1998) J Biol Chem 273(46):30750-56, 30753 Fig. 3.
Furthermore, Guo et al. describes that while proteins are fairly tolerant to mutations resulting in single amino acid changes, increasing the number of substitutions additively increases the probability that the protein will be inactivated. Guo et al. (2004) Proc Natl Acad Sci USA 101:9205-10, 9209, rt. col., para. 2. Thus, according to Guo et al., changing up to 19 amino acids in the relatively short SEQ ID NO:77 has a high likelihood of inactivating the protein. Minor changes might alter the activity of the protein when expressed transgenically.
In addition to polypeptide variants, the claims read on polynucleotide variants.
These variant polynucleotide sequences include variants that include a premature stop codon or a frame-shift mutation inserted near the 5' end of the coding sequence. A premature stop codon might produce a protein that is markedly shorter. But a frame-shift mutant could produce an unrecognizable protein variant relative the recited amino acid sequence. Further the genera would encompass internal deletions of the encoded amino acid sequence. Still further, the permitted changes could be confined to the first base of a codon as opposed to the wobble base and thus a small number of nucleotide changes could substantially change the amino acid sequence of the polypeptide.
An arguably huge addition to the genera claimed arises because of the use of the limitations “fragments.” Since the claims use open language (“comprises”) a “fragment” of SEQ ID NO:533 with no minimum size, reads on a vast genus of polynucleotides (and encoded polypeptides).
The abstract of Hilty et al. describes the complexities of measuring and/or assessing plant growth, in other words an undefined change in biomass.
This is described by Hilty et al. as involving regulating growth and/or development. Hilty et al. Hilty et al. (2021) New Phytol 232:25-41.
Therefore one skilled in the art would not be able to envision even the claimed genus of polynucleotide and/or polypeptide variants that are up to 15% sequence-variant from the claimed SEQ ID NO:553 / SEQ ID NO:554, as well as fragments of SEQ ID NO:553 that are also active in the instant invention.
Applicant fails to describe a representative number of species that are active in the invention. Although Applicant provides Figure 1, the other proteins are not shown to be active when transgenically expressed.
As discussed above, In the event that a sufficient number of species are not described, however, the Federal Circuit provides a second prong to satisfy the written description requirement. The court held that the written description requirement may be also satisfied by or by structural features that are necessary and/or sufficient for activity for members of the claimed genus. Regents U.C.. v. Lilly, 43 USPQ2d at 1406. The court held that “[a] description of a genus of cDNAs may be achieved by means of a recitation of a representative number of cDNAs, defined by nucleotide sequence, falling within the scope of the genus or of a recitation of structural features common to members of the genus, which features constitute a substantial portion of the genus.” Id.
Applicant however also fails to describe structural features common to active members of the claimed genus of transgenic biomass-changing polypeptides that share the required level sequence identity with SEQ ID NO:554. Applicant fails to provide any structure / function analysis of either the polypeptide or of the protein-encoding polynucleotide when expressed transgenically.
Hence, as shown above, Applicant fails to describe a representative number of species of sequences related to SEQ ID NO:554 that change biomass in a transgenic plant. Applicant also fails describe the structural elements of a SEQ ID NO:554-related polypeptide that are necessary and/or sufficient for the phenotype of changing the biomass of a plant when expressed transgenically.
Applicant’s claims also read on any change in biomass, including, for example, killing the plant.
Hence Applicant fails to satisfy the written description requirement because Applicant fails to describe a representative number of species of sequences related to SEQ ID NO:554 / SEQ ID NO:553 and Applicant also fails describe the structural elements of this polypeptide that are necessary and/or sufficient for activity in the instant invention. Therefore Applicant has not demonstrated to one skilled in the art possession of the broad genus of claimed polypeptides. Since the specification fails to provide an adequate written description to support the breadth of the claims, one of skill in the art would not believe Applicant to be in possession of the invention as broadly as claimed at the time of filing.
Dependent claims are included in this rejection because none provide further limitations obviating this rejection.
35 USC § 112(a)-Based Claim Rejections (enablement)
Claims 2, 16, 19, 21-23 and 24 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 increasing the biomass of a plant when SEQ ID NO:554 is expressed transgenically, does not enable the invention as broadly as claimed. 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 use the invention commensurate in scope with these claims.
The Federal Circuit in In re Wands lists eight considerations for determining whether or not undue experimentation would be necessary to practice an invention. In re Wands, 858 F2d 731, 8 USPQ2d 1400, 1406 (Fed. Cir. 1988). 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 claims. Id.
Biotechnology is generally held to be an unpredictable art. In re Vaeck, 947 F.2d 488, 496, 20 U.S.P.Q.2d 1438, 1445 (Fed. Cir. 1991).
The scope of the claims is set forth supra In the rejection under the written description requirement of 35 USC 112(a) and is incorporated by reference here.
In contrast to the claim scope, Applicant teaches only the transgenic expression of SEQ ID NO:554.
The specification teaches the claimed invention in Example 2 as increasing types of biomass. See also Table 1.
Figure 1 teaches other polypeptide sequences with some similarity to SEQ ID NO:554.
Transgenic expression results, however, are not provided for other proteins of Figure 1.
The art, however, teaches that amino acid changes can alter or eliminate a polypeptide's activity. Furthermore, mutagenesis to make nucleic acid molecule variants and hence, polypeptide variants, as broadly as claimed is unpredictable. Guo et al. teaches that while proteins are fairly tolerant to mutations resulting in single amino acid changes, increasing the number of substitutions additively increases the probability that the protein will be inactivated. Guo et al. (2004) Proc. Natl. Acad. Sci. USA 101: 9205-10, 9209, right col., para. 2.
To fully enable the claimed invention, extensive guidance would be required. Such guidance is not provided.
One of skill in the art, after reading the specification, would be uncertain as to both how to make and how to use the instant invention as broadly as claimed. One of skill in the art would find it difficult to predict which of the claimed sequence variants could be used in the instant invention, and which could not. Although testing individual nucleic acid molecules and/or polypeptides may be routine, Applicant has provided no guidance as to how to proceed.
Especially considering the scope of the claims which include increasing AND decreasing biomass.
Thus neither Applicant nor the art provide any guidance regarding changes to the amino acid sequence of SEQ ID NO:554 where such changes relate to the protein’s ability to increase or decrease biomass when transgenically expressed.
Thus whether the claimed sequence variants will function in the instant invention is unpredictable. Thus neither Applicant nor the art provide the extensive guidance required to practice the full scope of Applicant’s claimed invention.
Given the claim breadth regarding variant sequences, combined with the unpredictability in the art, and lack of guidance as discussed above, undue experimentation is required to practice Applicant’s invention. Therefore one skilled in the art would be forced to make and test numerous nucleic acids encoding polypeptides related to the ones used in the instant working example with no guidance as to which ones could be used in the instant invention. Thus Applicant’s claimed invention would require undue trial and error experimentation with no reasonable expectation of success.
Further, see the additional complexities regarding increasing and/or decreasing biomass in the abstract of Hilty et al. Hilty et al. (2021) New Phytol 232:25-41.
Additionally, the claims allow for a decrease in biomass, but it is not clear how to use such a plant.
Therefore the specification does not enable the broad scope of the claims.
35 USC § 103-based Claim Rejections
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:
§ 103. Conditions for patentability; non-obvious subject matter
A patent for a claimed invention may not be obtained, . . . . 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 2, 16, 19, 21, 22, 23, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Feldmann et al. U.S. Patent Publication No. 2007/0039067 A1 claiming priority to several provisional applications filed in 2004.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
As seen in the alignment below, Feldmann et al. teaches instant SEQ ID NO:554 as its SEQ ID NO:26621. Feldmann et al.’s first claim is drawn to a nucleic acid molecule drawn from a Markush group of all sequences in the sequence listing thus including its SEQ ID NO: 26621.
Claims 8 and 14-15 place this in a plant, including seeds.
In paragraph 0094 Feldmann et al. teaches rice.
In paragraph 0008 Feldmann et al. teaches improved biomass.
The instant claims are silent as to the direction of the change in biomass.
Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of Applicants' invention to follow the teachings of Feldmann et al. to express instant SEQ ID NO:554 in a transgenic plant. It would also be routine and obvious to observe a change in biomass. Given the level of skill in the art at the time of Applicants' invention, one of ordinary skill in the art would have had a reasonable expectation of success.
Thus claims 2, 16, 19, 21, 22, 23, and 24 are obvious.
US-11-241-607-26621
Sequence 26621, US/11241607
Publication No. US20070039067A1
GENERAL INFORMATION
APPLICANT: Makarov, Vladimir
APPLICANT: Brover, Vyacheslav
APPLICANT: Feldmann, Kenneth
APPLICANT: Swaller, Timothy
TITLE OF INVENTION: SEQUENCE-DETERMINED DNA FRAGMENTS AND CORRESPONDING POLYPEPTIDES
CURRENT APPLICATION NUMBER: US/11/241,607
CURRENT FILING DATE: 2005-09-30
PRIOR APPLICATION NUMBER: US 60/615,270
PRIOR FILING DATE: 2004-09-30
PRIOR APPLICATION NUMBER: US 60/635,140
PRIOR FILING DATE: 2004-12-08
PRIOR APPLICATION NUMBER: US 60/637,104
PRIOR FILING DATE: 2004-12-16
PRIOR APPLICATION NUMBER: US 60/638,820
PRIOR FILING DATE: 2004-12-22
PRIOR APPLICATION NUMBER: US 60/637,210
PRIOR FILING DATE: 2004-12-16
PRIOR APPLICATION NUMBER: US 60/615,055
PRIOR FILING DATE: 2004-09-30
PRIOR APPLICATION NUMBER: US 60/614,271
PRIOR FILING DATE: 2004-09-30
PRIOR APPLICATION NUMBER: US 60/614,332
PRIOR FILING DATE: 2004-09-30
PRIOR APPLICATION NUMBER: US 60/627,206
PRIOR FILING DATE: 2004-11-12
PRIOR APPLICATION NUMBER: US 60/615,080
PRIOR FILING DATE: 2004-09-30
NUMBER OF SEQ ID NOS: 66429
SEQ ID NO 26621
LENGTH: 162
TYPE: PRT
ORGANISM: Zea mays subsp. mays
Query Match 100.0%; Score 856; Length 162;
Best Local Similarity 100.0%;
Matches 162; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MDRSASVGIKDGGFGGNHLYSPSFSSSSSMRHVNYSCGSCGYELNLSSTNRITSSIGSKY 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MDRSASVGIKDGGFGGNHLYSPSFSSSSSMRHVNYSCGSCGYELNLSSTNRITSSIGSKY 60
Qy 61 GKSMKTGIISFFNIDEGRFSQVDEFQCMPHFSRYSWGLFRRKTKLLCRQCNNYIGNASYD 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 GKSMKTGIISFFNIDEGRFSQVDEFQCMPHFSRYSWGLFRRKTKLLCRQCNNYIGNASYD 120
Qy 121 KAPPEYALVTQNSSPRKGVTDTVTKYDIRIRALQPSSGVASL 162
||||||||||||||||||||||||||||||||||||||||||
Db 121 KAPPEYALVTQNSSPRKGVTDTVTKYDIRIRALQPSSGVASL 162
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL T BOGGS whose telephone number is (571)272-2805. The examiner can normally be reached Monday - Friday, 0800 to 1830 Mtn.
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, Amjad Abraham can be reached at 571-270-0708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RUSSELL T BOGGS/ Ph.D., J.D.Examiner, Art Unit 1663
Prosecution Insights