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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Acknowledgement is made of Applicant's submission of the English translation of the certified copy and a statement that the translation is accurate in the reply dated 06-16-2026.
The effective filing date is 02-26-2024.
Status of the Claims
Amendments dated 06-16-2026 are entered.
Claims 1-2 are amended, pending, and examined herein.
Status of Objections and Rejections
All previous objections and rejections not set forth below have been withdrawn in view of Applicant’s amendments and/or upon consideration of Applicant’s arguments.
The text of those sections of Title 35 U.S. Code, not included in this action, can be found in a prior Office action.
Claim Rejections - 35 USC § 112
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. The previous rejection is modified in light of Applicant’s amendments. Details are listed below.
Claims 1-2 both recite the clause “wherein the HPS 1 gene consists of a nucleotide sequence of SEQ ID NO: 1 and encodes protein having an amino acid sequence of SEQ ID NO: 2” (emphasis provided). The phrases “a nucleotide sequence of SEQ ID NO: 1” and “an amino acid sequence of SEQ ID NO: 2” encompass an indefinite number of potential fragments of SEQ ID NO: 1 and 2 and are 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? The Examiner suggest the claims should instead recite “the nucleotide sequence of SEQ ID NO: 1” and “the amino acid sequence of SEQ ID NO: 2” which would constitute the full length sequences of SEQ ID NOs: 1-2.
Claim 1 is further rejected because the relationship or nexus between method steps and “wherein” clauses are unclear. The clauses have no prior antecedent basis connecting them to the rest of the claim. The recitation of classes of pathogens does not make sense in a method for regulating and controlling disease resistance in a rice plant.
Claim Rejections - 35 USC § 102
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).
The previous rejection is modified in light of Applicant’s amendments.
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; or wherein 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) (emphasis provided; page 1100, col 1).
MPEP § 2131.02 teaches that a reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).
In the instant reference, one of ordinary skill in the art would instantly envisage fungi and bacteria as pathogens causing disease in a plant. are instantly envisioned
Regarding claim 2, Yamamura teaches on page 1110, col 2, that “kauralexin, a terpenoid phytoalexin, was reported to… [have] antifungal and antifeedant activities” (emphasis provided). 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” (emphasis provided). 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 in Non-Final Office action).
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).
As evidenced by Toki et al., above, Yamamura does indeed teach introducing the HPS 1 gene into Agrobacterium Tumefaciens and, transforming the rice plant with the Agrobacterium tumefaciens carrying the HPS 1 gene.
Accordingly, Yamamura anticipates the claimed inventions.
Response to Arguments
Applicant's arguments filed 06-16-2026 have been fully considered but they are not persuasive.
Applicant traverses the rejection of claims 1-2 under 35 U.S.C. 102(a)(1) as allegedly being anticipated by Yamamura in view of the evidence of Os01g0196300, Chromosome 1, and Toki et al. Specifically, Applicant remarks that “Yamamura does not disclose the claimed HPS1-based method for improving resistance to the specific diseases and insect pest as recited in amended claims 1 and 2” and that “Yamamura and Toki et al. do not teach at least the method step of HPS 1 gene insertion into Agrobacterium tumefaciens and Agrobacterium tumefaciens carrying the HPS 1 gene transformation into the rice plant” (Applicant Remarks, page 4, last 3 paragraphs).
Regarding Applicant’s remark that Yamamura and Toki et al. do not teach the “method step of HPS 1 gene insertion into Agrobacterium tumefaciens and Agrobacterium tumefaciens carrying the HPS 1 gene transformation into the rice plant,” para 3 on page 9 of Office Action dated 05/07/ teaches that Yamamura as evidenced by Toki et al., does teach HPS 1 gene insertion into Agrobacterium tumefaciens and Agrobacterium tumefaciens carrying the HPS 1 gene transformation into the rice plant. Also see the above modified rejection under 35 U.S.C. 102(a)(1).
Applicant also remarks that “Yamamura does not disclose the claimed HPS1-based method for improving resistance to the specific diseases and insect pest as recited in amended claims 1 and 2” (emphasis provided). Initially, the instantly amended claim 1 is rejected under35 USC § 112(b) as being indefinite because the alternative wherein clauses lack a nexus with the method steps. The wherein clause in claim 2, only has an antecedent basis in the preamble of claim 2. Thus, the wherein clauses in the amended claims 1-2 appear to be intended use. For example, claim 2 is drawn to a method for regulating or controlling brown plant hopper resistance in a rice plant.
Secondly, the MPEP recites that during examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference. See MPEP § 2111.02 subpart II. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
In the instant application, the Preamble of both claims 1-2 do not result in any structural differences.
Finally, while Yamamura is silent on specific disease pathogens and specific insect pest, brown plant hopper, the gene being overexpressed is identical to that of the instantly claimed invention. Thus, the instantly claimed functional properties and characteristics, are inherently present in Yamamura’s plant so long as there is increased expression or activity of the HPS 1 gene (i.e., SEQ ID NO: 1) which encodes protein having an amino acid sequence of SEQ ID NO: 2 as recited by Applicant. If the prior art structure is capable of performing the intended use, then it meets the claim.
Since the Patent Office does not have the facilities to examine and compare the plant of Applicant’s with that of Yamamura, the burden of proof is upon the Applicant to show an unobvious distinction between the claimed plant and the plant of the prior art.
Applicant shares that “a corresponding Chinese patent application covering the same claims scope has been accepted and granted under patent number CN118166022 (B), dated 24-09-2024” (Applicant Remarks, page 5, 2nd paragraph). This is acknowledged. However, Applicant is reminded that patent law is jurisdictional and that the instant application is being examined in the United States.
Conclusion
No claims 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.
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.
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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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/YVETTE B. TAMUKONG/Examiner, Art Unit 1662
/BRATISLAV STANKOVIC/ Supervisory Patent Examiner, Art Units 1661 & 1662
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