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 .
Claim Status
Claims 11-14 and 16 are pending and being examined.
Claim 15 is cancelled by the Applicant.
All previous objections and rejections not set forth below have been withdrawn in view of applicant’s amendments to the claims.
The claim amendments by the Applicant by adding new issues, which were not present in any of the claims before, necessitated new grounds of rejections. It is a new rejection necessitated by the claim amendments, as discussed below.
It is noted that the previous rejections under 35 U.S.C. 112(b) are withdrawn. However, new rejections under 35 U.S.C. 112(b) are made due to the claim amendments.
Claim Rejections - 35 USC § 112(b)
Claims 11-14 and 16 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. This is a new rejection necessitated by the claim amendments.
Amended Claim 11 recites “…enhances tolerance of the maize plant to 0.05 mM nitrogen conditions by increasing root nitrate and ammonium under 0.05 mM nitrogen conditions…”. It is not clear to the Examiner what the Applicant implies by “increasing root nitrate and ammonium under 0.05 mM nitrogen conditions”. Does the Applicant mean that the roots of the transgenic maize plants have enhanced nitrate and ammonium content when grown under 0.05 mM nitrogen (salt) conditions, OR increased absorption and/or assimilation of nitrate and ammonium when grown under 0.05 mM nitrogen (salt) conditions.
All other claims (12-14 and 16) directly or indirectly depending from claim 11 inherit the indefiniteness of claim 11.
Claim Rejections - 35 USC § 102(a)
Claims 11-12 and 14 remain rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (WO2021189832A1, published on 30 September 2021). The publication is a PCT and USA as a designated country for the application. The corresponding U.S. national stage application of ‘832 published as US 2023/0117599 Al (published on 20 April 2023). The Examiner uses US 2023/0117599 Al in this Office action as the English translation of WO2021189832A1.
Due to the claim amendments, this rejection is modified from the rejection set forth on pages 6-8 in the Office action dated 4/7/2026.
Wang et al. describes a method of reducing the plant height or the ear length (height) of a Zea mays plant by overexpressing a functional gene comprising the nucleotide sequence of the coding region of the ZmSBP12 gene encoding the polypeptide comprising SEQ ID NO: 1 (claim 1). SEQ ID NO: 1, as described by Wang et al., has 100% sequence identity to instant SEQ ID NO: 3, as shown below.
RESULT 1
US-17-907-408-1
Filing date in PALM: 2022-09-27
Sequence 1, US/17907408
Publication No. US20230117599A1
GENERAL INFORMATION
APPLICANT: SOUTH CHINA AGRICULTURAL UNIVERSITY
APPLICANT: BIOTECHNOLOGY RESEARCH INSTITUTE, CHINESE ACADEMY OF
APPLICANT: AGRICULTURAL SCIENCES
TITLE OF INVENTION: USE OF ZmSBP12 GENE IN REGULATION OF DROUGHT RESISTANCE, PLANT
TITLE OF INVENTION: HEIGHT, AND EAR HEIGHT OF ZEA MAYS L.
FILE REFERENCE: GBBJSY008-PKG
CURRENT APPLICATION NUMBER: US/17/907,408
CURRENT FILING DATE: 2022-09-27
PRIOR APPLICATION NUMBER: PCT/CN2020/122356 (WO2021189832A1, published on 9/30/2021)
PRIOR FILING DATE: 2020-10-21
PRIOR APPLICATION NUMBER: CN202010232213.2
PRIOR FILING DATE: 2020-03-27
NUMBER OF SEQ ID NOS: 10
SEQ ID NO 1
LENGTH: 332
TYPE: PRT
ORGANISM: Zea mays L.
Query Match 100.0%; Score 1785; Length 332; Best Local Similarity 100.0%;
Matches 332; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MEWTAPKPASSPPLLWDWGDHAATGSGSSSDAPARRGGKEREAKRARAGEDRGGGELRCQ 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MEWTAPKPASSPPLLWDWGDHAATGSGSSSDAPARRGGKEREAKRARAGEDRGGGELRCQ 60
Qy 61 VEGCGLDLSRVKDYHRKHRVCEAHTKSPRVIVAGQERRFCQQCSRFHALSEFDQKKRSCR 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 VEGCGLDLSRVKDYHRKHRVCEAHTKSPRVIVAGQERRFCQQCSRFHALSEFDQKKRSCR 120
Qy 121 RRLSDHNARRRKPQPDAFTFASAKLPSTLFDDRRQISFVWNKAPVSHVRPFTSPWDSSSD 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 RRLSDHNARRRKPQPDAFTFASAKLPSTLFDDRRQISFVWNKAPVSHVRPFTSPWDSSSD 180
Qy 181 LKPPYAKEISDVSTKVGTITGQVHLDKSHMFNAIPTLSHGKDEPWPMKGLDMSISASKFD 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 LKPPYAKEISDVSTKVGTITGQVHLDKSHMFNAIPTLSHGKDEPWPMKGLDMSISASKFD 240
Qy 241 GAADLQHALSLLSAGACGLPDSVHQTSCIIQFNGASENSSDLHVTHGRNSGPASCADAQH 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 GAADLQHALSLLSAGACGLPDSVHQTSCIIQFNGASENSSDLHVTHGRNSGPASCADAQH 300
Qy 301 IAAQPQSQLFHFTTDTGNTVYEPSFFGVNQIN 332
||||||||||||||||||||||||||||||||
Db 301 IAAQPQSQLFHFTTDTGNTVYEPSFFGVNQIN 332
It is the inherent property of the maize plant overexpressing the ZmSPL12 gene encoding the amino acid sequence set forth by the instant SEQ ID NO: 3 to reduce plant height or the ear height, as described by Wang et al.; as well as tolerance of the maize plant to 0.05 mM nitrogen conditions by increasing root nitrate and ammonium under 0.05 mM nitrogen conditions after 24 days of treatment. The maize plant overexpressing ZmSPL12, as taught by Wang et al., has the same structure as the plant produced by the instantly claimed method, and therefore has the same properties.
Wang et al. describes using different promoter sequences operably linked to the ZmSBP12 gene (page 2, para 0019, line 1-11), as recited in claim 12. Wang et al. also describes a method of maize breeding by introducing the transgene construct into the maize plant by Agrobacterium-mediated transformation (p.5, para 0061, line 1-2), as recited in claim 14.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. This is a new rejection necessitated by the claim amendments.
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:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2023/0117599Al) as applied to claims 11-12 and 14 above, and further in view of Schledzewski et al. (Quantitative transient gene expression: comparison of the promoters for maize polyubiquitinl, rice actinl, maize-derived Emu and CaMV 35S in cells of barley, maize and tobacco, 1994, Transgenic Research, 3:249-255).
Claim 13 and 16 are drawn to a cauliflower mosaic virus CaMV 35S promoter or a rice Actin1 promoter.
Wang et al. describes a method for improving specific agronomic traits of maize by introducing a construct comprising a functional gene encoding the ZmSPL12 protein having 100% identical sequence to instant SEQ ID NO: 3 to be overexpressed, as discussed above. Wang et al. also describes cloning and expressing the ZmSPL12 gene was under the control of different promoters (page 2, para 0019, line 1-11) including the constitutive ubiquitin promoter (Fig. 1; page 4, para 0041).
However, Wang et al. does not explicitly describe a cauliflower mosaic virus CaMV 35S promoter or a rice Actin1 promoter.
Schledzewski et al. describes expression of CaMV 35S promoter and rice Actin-1 promoter in maize (abstract), as recited in claims 13 and 16. Schledzewski et al. teaches that the monocot-specific promoters like rice Actin1 promoter show up to 15-fold higher expression in monocot maize as compared to the 35S promoter (abstract).
Before the effective filing date of the invention, it would have been obvious to an ordinarily skilled artisan and the artisan would have been motivated to modify the method described by Wang et al. to replace the constitutive ubiquitin promoter with rice actin1 promoter. It would have been an experimental design choice of the artisan to use the constitutive 35S CaMV or rice Actin-1 promoters, which are functional equivalents of the ubiquitin promoter.
Before the effective filing date, an ordinarily skilled artisan would have been motivated to use the rice actin-1 promoter especially as compared to 35CaMV promoter to achieve higher expression level of the transgene.
Double Patenting
Claims 11-13 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,879,131 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of US 11,879,131 B2 is drawn to a method for improving lodging resistance of maize by overexpressing the ZmSBP12 protein comprising SEQ ID NO:1 by using a recombinant plant expression vector pCAMBIA-Ub1::ZmSBP12-eGFP. SEQ ID NO: 1 of ‘131 is identical to instant SEQ ID NO: 3. The vector of patented claim 1 comprises a ubiquitin promoter (as recited in instant claims 12-13) to drive expression of the ZmSBP12 coding sequence (see Fig. 1). The claims of ‘131 do not explicitly recite that the Ub1 promoter in the pCAMBIA-Ub1::ZmSBP12-eGFP vector is a maize ubiquitin promoter, as recited in instant claim 13. However, the vector recited in claim 1 of ‘131 appears to be at least substantially identical to the pCB-Ubi::ZmSPL12m-EGFP vector of the instant application (Fig. 3C; instant specification, p. 12, 3rd paragraph). Instant Fig. 3A is a diagram of another construct that comprises a Ubi promoter, which is identified as a maize promoter. The preponderance of the evidence indicates that the Ubi promoter of the vector recited in claim 1 of ‘131 is a maize Ubi promoter, absent evidence to the contrary.
It is the inherent property of the maize plant overexpressing the ZmSPL12 protein comprising the amino acid sequence of instant SEQ ID NO: 3 to have improved lodging resistance, as recited by claim 1 US 11879131 B2, as well as having the salt-tolerant and/or alkali-tolerant traits, as the plant produced by the patented method has the same structure as that produced by the instantly claimed method. The claims of ‘131 anticipate the instant claims.
Response to Applicant’s arguments
The argument set forth in the Applicant’s replies on 5/22/2026 has been fully considered.
but is not found persuasive.
Regarding claim rejections under 35 USC §102(a)(1), the Applicant argues that amending of claim 11 reciting, inter alia, “… wherein overexpression enhances tolerance of the maize plant to 0.05 mM nitrogen conditions by increasing root nitrate and ammonium under 0.05 mM nitrogen conditions after 24 days of treatment compared to a corresponding wild-type control maize plant” further narrows down the claim (response, p.9, para 4-6).
The examiner disagrees. It is the inherent property of the maize plant overexpressing the ZmSPL12 protein comprising the amino acid sequence of instant SEQ ID NO: 3 to reduce plant height or the ear height, as claimed by Wang et al., as well as tolerance of the maize plant to 0.05 mM nitrogen conditions by increasing root nitrate and ammonium under 0.05 mM nitrogen conditions after 24 days of treatment. The maize plant overexpressing ZmSPL12, as taught by Wang et al., is produced by the instantly claimed (agrobacterium mediated transformation) method and has the same structure and, therefore, has the same properties.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY CHATTERJEE whose telephone number is (703)756-1329. The examiner can normally be reached (Mon - Fri) 8.30 am to 5.30 pm..
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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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Jay Chatterjee
Patent Examiner
Art Unit 1662
/Jay Chatterjee/Examiner, Art Unit 1662
/BRATISLAV STANKOVIC/Supervisory Patent Examiner, Art Units 1661 & 1662
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