DETALIED 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 .
Priority
The present application is a continuation of International Patent Application No. PCT/CN2025/076129, filed on February 7, 2025.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) to Chinese Patent Application No. 202410207266.7, filed on February 26, 2024. A Certified Copy of the Foreign Priority Application was retrieved by the USPTO from a participating IP Office. However, the present application does not yet satisfy the formal requirements to establish entitlement to the benefit of the earlier foreign filing date. Specifically, the following items are required under 37 CFR 1.55 and MPEP § 214:
1. Certified Copy English Translation of Foreign Application: A certified copy of the foreign
application (specification and drawings) upon which the priority claim is based must be
submitted. If the foreign application is not in the English language, a verified English translation
must also be provided.
Status of the Claims
Claims 1-2 are pending and are examined herein.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/26/2025 is acknowledged and is being considered by the examiner. Several references included in the IDS are Non-English and are not translated; these will be considered only to extent that the abstracts are in English.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 112(b) as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. All dependent claims are included in these rejections unless they contain a limitation that overcomes the deficiencies of the parent claim from which they depend. Details are listed below. Claim 1 is listed below for reference within this document.
A method for regulating and controlling disease resistance in a rice plant by at least one of:
reducing disease resistance of a plant by knocking out hydrogen peroxide sensor 1
(HPS 1) gene or protein, or
improving the disease resistance of the plant by overexpressing the HPS 1 gene or the
protein;
wherein the method comprises: introducing the HPS 1 gene or the protein into Agrobacterium
tumefaciens; and transforming the rice plant with the Agrobacterium tumefaciens carrying the
HPS 1 gene or the protein to obtain an HPS 1-overexpressing transgenic rice strain;
wherein the HPS 1 gene comprises a nucleotide sequence of SEQ ID NO: 1 and encodes
protein having an amino acid sequence of SEQ ID NO: 2; and
fungi are at least one of pathogens causing rice blast or pathogens causing sheath blight; and
bacteria are pathogens causing bacterial blight.
The preamble in claim 1 recites a method of regulating and controlling disease resistance in a rice plant by “reducing disease resistance of a plant by knocking out hydrogen peroxide sensor 1 (HPS 1) gene or protein.” However, the claim further recites active steps “wherein the method comprises: introducing the HPS 1 gene or the protein into Agrobacterium tumefaciens; and transforming the rice plant with the Agrobacterium tumefaciens carrying the HPS 1 gene or the protein to obtain an HPS 1-overexpressing transgenic rice strain.” The recited active steps do not accomplish “knocking out [of] hydrogen peroxide sensor 1 (HPS 1) gene or protein.” Introducing a gene or a protein to agrobacterium and using said agrobacterium to transform a plant does not in and of itself result in knock out of the gene. The intended goal “to obtain an HPS 1-overexpressing transgenic rice strain” is also different from, if not entirely opposite to, the preamble reciting “knocking out hydrogen peroxide sensor 1 (HPS 1) gene or protein.”
Similarly, the preamble in claim 2 recites a method of regulating and controlling insect pes resistance in a rice plant by “reducing disease resistance of a plant by knocking out hydrogen peroxide sensor 1 (HPS 1) gene or protein.” However, the claim further recites active steps “wherein the method comprises: introducing the HPS 1 gene or the protein into Agrobacterium tumefaciens; and transforming the rice plant with the Agrobacterium tumefaciens carrying the HPS 1 gene or the protein to obtain an HPS 1-overexpressing transgenic rice strain.” The recited active steps do not accomplish “knocking out [of] hydrogen peroxide sensor 1 (HPS 1) gene or protein.” Introducing a gene or a protein to agrobacterium and using said agrobacterium to transform a plant does not in and of itself result in knock out of the gene. The intended goal “to obtain an HPS 1-overexpressing transgenic rice strain” is also different from, if not entirely opposite to, the preamble reciting “knocking out hydrogen peroxide sensor 1 (HPS 1) gene or protein.”
Further regarding claims 1-2, the claims both recite the active step “transforming the rice plant with the Agrobacterium tumefaciens carrying the HPS 1… protein to obtain an HPS 1-overexpressing transgenic rice strain.” Transforming a plant with Agrobacterium tumefaciens carrying the protein of interest does not result in a transgenic plant overexpressing the protein. The art does not work that way. Agrobacterium carrying an introduced nucleic acid construct and upon transformation of a plant with said Agrobacterium, the Agrobacterium delivers the nucleic acid into the plant.
Also regarding claims 1-2, the claims both recite the clause “wherein the HPS 1 gene comprises a nucleotide sequence of SEQ ID NO: 1 and encodes protein having an amino acid sequence of SEQ ID NO: 2.” The phrase “comprises a nucleotide sequence of” encompasses an indefinite number of potential fragments of SEQ ID NO: 1 and 2 and is thus unclear. SEQ ID NO: 1, for example, is 2150 nucleotides long. What constitutes as “a nucleotide sequence of SEQ ID NO: 1,” in a method claim for regulating and controlling disease resistance?” A monomer? Dimer? Tetramer? 20-mer? Full-length sequence?
Furthermore, claim 1, a method claim, recites in the last two lines the phrase “and fungi are at least one of pathogens causing rice blast or pathogens causing sheath blight; and bacteria are pathogens causing bacterial blight” which is unrelated to the active method steps. It is unclear whether the quoted recitation limits the claim where the preamble broadly recites a method for regulating and controlling “disease resistance.” the purpose of this phrase within the claim.
In the interest of compact prosecution, the recitation is being given the broadest reasonable interpretation of also including the adverb ‘wherein’ and being a limiting clause as follows: “and wherein fungi are at least one of pathogens causing rice blast or pathogens causing sheath blight; or wherein bacteria are pathogens causing bacterial blight.” Applicants are advised to consider claiming these limitations in a dependent claim.
In addition, claim 2, a methods claim, recites in the last line the clause “and an insect pest is brown planthopper,” which is unrelated to the active method steps. Does it limit the preamble of the claim which broadly recites “insect pest” (line 1). It is unclear the purpose of this phrase within the claim.
In the interest of compact prosecution, the recitation is being given the broadest reasonable interpretation of also including the adverb ‘wherein’ and being a limiting clause as follows: “and wherein an insect pest is brown planthopper.”
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamamura (Yamamura, C., Mizutani, E., Okada, K., Nakagawa, H., Fukushima, S., Tanaka, A., Maeda, S., Kamakura, T., Yamane, H., Takatsuji, H. and Mori, M. (2015), Diterpenoid phytoalexin factor, a bHLH transcription factor, plays a central role in the biosynthesis of diterpenoid phytoalexins in rice. Plant J, 84: 1100-1113. https://doi.org/10.1111/tpj.13065, published 2015, cited in IDS) taken with the evidence of Os01g019630 (GenBank Accession BAS70864.1 “Os01g0196300 [Oryza sativa Japonica Group]”, Published 10/10/2015), Chromosome 1 (GenBank Accession AP014957.1 “Oryza sativa Japonica Group DNA, chromosome 1, cultivar: Nipponbare, complete sequence,” published 10/10/2015), and Toki et al. (Toki, S., Hara, N., Ono, K., Onodera, H., Tagiri, A., Oka, S. and Tanaka, H. (2006), Early infection of scutellum tissue with Agrobacterium allows high-speed transformation of rice. The Plant Journal, 47: 969-976. https://doi.org/10.1111/j.1365-313X.2006.02836.x, published 2006).
Regarding claim 1, Yamamura recites in the introductory paragraph that “Phytoalexins are antimicrobial compounds that are both synthesized by and accumulated in plants after exposure to microorganisms’ [i.e., fungi are at least one of pathogens causing rice blast or pathogens causing sheath blight; and bacteria are pathogens causing bacterial blight]…. Phytoalexins are also considered important in the plant defense system against a variety of pathogens and as molecular markers of disease resistance.” (i.e., disease resistance) (page 1100, col 1).
Regarding claim 2, Yamamura teaches on page 1110, col 2, that “kauralexin, a terpenoid phytoalexin, was reported to… [have] antifungal and antifeedant activities.” Merriam-Webster (https://www.merriam-webster.com/dictionary/antifeedant) defines antifeedant as “a natural or synthetic substance that stops or inhibits feeding by a pest and especially an insect.” Thus, Antifeedant activities are included in “insect pest resistance” and insect pest includes “brown planthopper” (c.f., claim 2, lines 1 and 12).
Yamamura teaches “a rice transcription factor named diterpenoid phytoalexin factor (DPF), which is a basic helix-loop-helix (bHLH) transcription factor” “ that regulates [diterpenoid phytoalexin (DP)] biosynthesis in rice” (i.e., regulating and controlling disease resistance in a rice plant and regulating and controlling insect pest resistance in a rice plant)(abstract; page 1101, col 2, second full paragraph).
Yamamura teaches that the “sequence data for genes referred to…may be found in the GenBank/EMBL data libraries under the following accession numbers (in parentheses): DPF (Os01 g0196300)” (page 1111, col 1, fourth full paragraph).
Os01g0196300, a GenBank amino acid sequence defined as ‘Os01g0196300 [Oryza sativa Japonica Group],’ can be found on GenBank by searching for “Os01g0196300” and is identical to instant SEQ ID NO: 2 (i.e., the HPS 1 gene encodes amino acid sequence of SEQ ID NO: 2) (see alignment below).
PNG
media_image1.png
928
772
media_image1.png
Greyscale
Os01g0196300 is linked to and was derived from chromosome 1 (a nucleic acid sequence defined as ‘Oryza sativa Japonica Group DNA, chromosome 1, cultivar: Nipponbare, complete sequence.’ The Os01g0196300-corresponding region of Chromosome 1, 5202089-5203794, shares 100% identity with SEQ ID NO: 1 (i.e., the HPS 1 gene comprises a nucleotide sequence of SEQ ID NO: 1) (See alignment in References Cited by examiner). Taken together, the evidence of Os01g0196300 and Chromosome 1 indicate that Yamamura’s DPF is identical to the instant HPS1 gene, absent evidence to the contrary.
Yamamura teaches “DPF over-expressing and DPF knockdown rice” (i.e., reducing disease resistance of a plant by knocking out HPS 1 gene or protein, or improving the disease resistance of the plant by overexpressing the HPS 1 gene or the protein)
Yamamura teaches that plasmid construction and rice transformation were performed as described in Methods S4 which recites the following: “For overexpression of DPF in rice [i.e., to obtain an HPS 1-overexpressing transgenic rice strain], we constructed the expression vectors as follows: The full-length cDNA for DPF (AK102964)…was cloned into…a binary vector, pRiceFOX… We constructed a gene-silencing vector to downregulate DPF expression as follows: the 3[Symbol font/0xA2]-UTR-containing region of DPF was amplified by PCR using the primers shown in Table S2. The approximately 300-bp PCR fragment was then cloned into the pENTR/D-TOPO entry vector (Invitrogen) and used to make an inverted repeat construct in the pANDA destination vector through a LR clonase reaction… Transformation of rice was performed as previously described (Toki et al., 2006).”
Toki et al., as evidence of Yamamura’s transformation of rice, recites “the [plasmid] was transferred into A. tumefaciens”(i.e., introducing the HPS 1 gene into Agrobacterium
Tumefaciens) and “Agrobacterium…transformation of rice” (i.e., transforming the rice plant with the Agrobacterium tumefaciens carrying the HPS 1 gene) (page 971, col 1, first full paragraph; Title).
Accordingly, Yamamura anticipates the claimed inventions.
Conclusion
No claims allowed.
Examiner’s Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YVETTE B TAMUKONG whose telephone number is (571)272-1040. The examiner can normally be reached M-Th 730-5 EST.
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.
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.
/YVETTE BIH TAMUKONG/ Examiner, Art Unit 1662
/BRATISLAV STANKOVIC/ Supervisory Patent Examiner, Art Units 1661 & 1662
Prosecution Insights