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 2 and 7-10 are pending and examined on the merits.
Information Disclosure Statement
No Information Disclosure Statement has been filed. It would seem that the references cited the Search Report of the related case from the Chinese Patent Office should at least be provided.
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 2 and 7-10 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 “PagPB” without ever introducing the meaning of the acronym. The art fails to make up for the specification not providing a definition. In the absence of such a definition, a person of ordinary skill in the art cannot determine the metes and bounds of the claims.
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 2 and 7 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 drawn to methods that simply require “silencing the PagPB gene.” There is no requirement that the PagPB gene be targeted directly. This means that methods that transcriptionally downregulated the expression of the PagPB gene indirect, such as by downregulating an upstream transcription factor are also encompassed within the scope of the claims. Note that claim 8 is interpreted as being a plant comprising a gene silencing construct that directly targets the PagPB gene, because it recites “silencing vector of the PagPB gene.”
The instant disclosure describes cloning a silencing vector for the PagPB gene that directly targets the mRNA product of the PagPB gene in poplar 84K.
These descriptions are insufficient, because they fail to describe the potentially broad scope of upstream silencing targets that could indirectly silence the PagPB gene.
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.
The prior art on this subject seems sparse. Generally, Liu et al 2021 (Physiol Mol Biol Plants 27:6, p. 1277-1293) disclose a transcriptional study in poplar 84K in response to nitrogen deficiency stress. The Examiner was unable to determine whether the instantly claimed gene was identified in this study. Moreover, the claimed sequence of PagPG is annotated as an “uncharacterized protein” and thus no functional suggestion for the protein can be gleaned by its structure.
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.
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/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663
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