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 .
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 with traverse of Group I in the reply filed on 3 June 2026 is acknowledged. The traversal is on the ground(s) that all the claims are joined by the same transgenic plants and associated methods. This is not found persuasive, because it is false. For example, claim 35 only requires a primer or probe that detects the absence or presence or disruption of a degron tail. This is a completely different search and consideration for patentability.
The requirement is still deemed proper and is therefore made FINAL.
Claims 26-37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3 June 2026.
Claim Status
Claims 14-43 are pending.
Claims 26-37 are withdrawn from consideration as being drawn to unelected inventions.
Claims 14-25 and claims 38-43 are examined on the merits.
Claim Rejections - 35 USC § 112
Indefiniteness
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.
Claims 14-25 and claims 38-43 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 pre-AIA the applicant regards as the invention.
The claims all recite IAA2. The numbering of the IAA proteins appears to be somewhat arbitrary across species. Thus, what is referred to IAA2 in one species may not be the structurally closest IAA protein in another species to the IAA2 from S. orientale as is disclosed.
Claim 17 recites “wherein said degron tail region comprises the region that aligns with amino acid residues 72-80 of SEQ ID NO:1.” It is unclear what “that aligns with” means. Specifically, it is unclear whether the degron tail needs the entirety of amino acid residues 72-80 of SEQ ID NO:1 or just share some the residues present.
Claim 38 recites, “functionally active fragments or variants of items (a), (b), (c), or (d). Item (c) is drawn to complements of a sequence, not a coding sequence. It is unclear how a complement could be deemed “functionally active.”
Improper Claim Dependence
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 25 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. A degron tail comprising a disruption or a deletion necessarily comprises a mutation. Thus, claim 25 fails to further limit claim 16. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 14-22, 25, and 38-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a process that occurred in nature without significantly more. The process that occurred in the wild Sisymbrium orientale population that generate the wild 2,4 D-resistant plants is within the scope of claims 1-8 and 10-11 as evidenced by Figueiredo et al 2022 (PNAS 119:9, p.1-9). See screen capture below.
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Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 14-22, 25, and 38-40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Preston et al 2015 (Pest Management 71: p. 1523-1528) as evidenced by Figueiredo et al 2022 (PNAS 119:9, p.1-9).
As discussed in the rejection under 35 USC 101 above, Figueiredo et al provided evidence that the 2,4 D -resistant population of Preston et al (referred to as reference 19 in the screen capture above) was made by a naturally occurring process which happened prior to the instant invention. Accordingly, claims 14-22, 25, and 38-40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Preston et al 2015 (Pest Management 71: p. 1523-1528) as evidenced by Figueiredo et al 2022 (PNAS 119:9, p.1-9).
Claim(s) 14-17, 20-25, and 38-43 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by LeClere 2018 (PNAS 115:13 p.E2911-E2920).
LeClere et al disclose Kochai scoparia plants with a naturally occurring mutation in the degron domain of an AUX/IAA protein that confers resistance to auxinic herbicides. Note that given the arbitrary number of IAA proteins, this could be considered and IAA protein. LeClere also teach transformation and heterologous expression of the mutant AUX/IAA protein in Arabidopsis which resulted in herbicide tolerant Arabidopsis. Accordingly, claims 14-17, 20-25, and 38-43 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by LeClere 2018 (PNAS 115:13 p.E2911-E2920).
Claim Rejections - 35 USC § 112
Lack of 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.
Claims 14-17, 19-25, and 38-43 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 claims are broadly drawn to methods of generating herbicide tolerant plant involving disrupting the degron domain of an IAA2 protein.
The claimed genus is unclear, because the numbering of IAA proteins appears to be arbitrary across species. Also note that the functional fragment/variant language of claim 38 leaves the scope claim 38-43 to have no real structural limitations.
The instant disclosure describes disrupting the degron domain of the IAA2 protein in Sisymbrium orientale to confer herbicide tolerance and transforming Arabidopsis with a transgene encoding said disrupted allele to confer herbicide tolerance to the plant. They also identify structurally similar proteins from other species but it not clear if any of these would be identified as “IAA2” proteins in the art.
These descriptions are insufficient, because it is unclear what genes encoding “IAA2” proteins would even be within the scope of claims given the arbitrary numbering of these proteins in the art.
Given the broad scope of the claimed genus, the lack of working examples and the failure to describe the structures required to confer the claimed function, one of skill in the art would not have recognized that Applicant was in possession of the claimed genus at the time of filing.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R KEOGH whose telephone number is (571)272-2960. The examiner can normally be reached M-Th 7-4:30, half day on Fridays.
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 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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/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663
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