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 .
Status of Claims
Claims 1-11 are under examination on the merits.
Nucleotide and/or Amino Acid Sequence Disclosures
This application contains sequence disclosures that are encompassed by the definitions for
nucleotide and/or amino acid sequences set forth in 37 CFR 1.831(b). However, this application fails to
comply with the requirements of 37 CFR 1.831 through 1.834.
Figure 9 depicts two sequences, DR2 and DR1, that are longer than 10 nucleotides. Figure 17a depicts 2 amino acid sequences, figure 19b depicts 1 amino acid sequence, figure 20 a depicts 2 amino acid sequences, figure 21b depicts one amino acid sequence, and figure 22 depicts 3 amino acid sequences that are all longer than 4 amino acids. Polynucleotide sequences longer than 10 nucleotides and amino acid sequences longer than 4 amino acids are required to be present in the sequence listing file with an assigned sequence identifier. Where a sequence is presented in a drawing, reference must be made to the sequence by use of the sequence identifier (§ 1.832(a)), either in the drawing or in the Brief Description of the Drawings, where the correlation between multiple sequences in the drawing and their sequence identifiers (§ 1.832(a)) in the Brief Description is clear.
Full compliance with the sequence rules is required in response to this Office action. A complete response to this Office action must include both compliance with the sequence rules and a response to the issues set forth herein. Failure to fully comply with both of these requirements in the time period set forth in this Office action will be held to be non-responsive.
Claim Objections
Claims 1, 3, 6 & 11 are objected to because of the following informalities:
Claim 1 (line 2): “(i)” should be deleted if there is no second option for where the heterologous DNA molecule is to be introduced.
Claim 1 (line 5): --molecule-- should be inserted after “a DNA”.
Claim 3 (line 3): --a-- should be inserted before “a”.
Claim 6 (line 2): “suspension cells or” should be replaced with --suspension cells,--.
Claim 11 (line 2): “Brassica” should be italicized.
Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 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. All dependent claims are included in the rejections below.
Claim 1 recites a heterologous DNA molecule which comprises a promoter, a DNA encoding a CTP and a protein, wherein the promoter, DNA encoding the CTP, and protein are operably linked (lines 4-8). A DNA molecule would not be considered to comprise a protein, although molecules comprising both DNA and proteins are known. It is unclear and indefinite whether claim 1 should be interpreted as requiring a DNA molecule encoding both a CTP and a protein having activity or if claim 1 should be interpreted as requiring a DNA heterologous DNA molecule comprising both a DNA sequence and a protein. If the DNA molecule should be a DNA molecule encoding both a CTP and a protein having enzymatic and/or biological activity, then in lines 5-6 --and-- should be inserted after the comma and in line 8 “promoter, DNA” should be replaced with --promoter and DNA--.
Claim 1 (lines 11-12) requires screening for a plant cell comprising a transformed plant containing a nuclear genome comprising the heterologous DNA molecule thereby transforming a plant. Even if the definition of a plant encompasses a plant cell such that a green photosynthetic plant cell could be considered to comprise a transformed plant, it is unclear how selecting or screening for the plant thereby transforms a plant. Does step c require transformation or merely selection? The required steps are indefinite.
The interpretation of claim 1 makes claim 2 also indefinite. Claim 2 is drawn to the method of claim 1 “further” comprising the step of obtaining a transgenic plant comprising the nuclear genome from the green photosynthetic plant cell of step (c). If claim 1, step (c) “thereby transforming a plant” is interpreted as an intended result of the active step, the claim 2 can be interpreted as a method wherein a transgenic plant is obtained once. However, if claim 1, step (C) requires the transformation of a plant with a heterologous DNA molecule, then claim 2 must be interpreted as requiring a second step of obtaining a transgenic plant. Because claim 2 has two distinct interpretations, the claim is indefinite.
The term “improved” in claim 5 (line 3), “increased” in line 3, “decrease” in line 4, and “increase” in line 5 are relative terms which render the claim indefinite. The terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The claims should recite a standard against which the increase, decrease, or improvement may be compared.
Claim 7 recites “the selecting of plant cells in step (b)” in line 1. This limitation lacks antecedent basis in the claim, because step (b) has no selecting of plant cells. There is a step of selecting plant cells in step (c), however.
Written Description
The following is a quotation of the first paragraph 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-11 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-11 require a protein having an enzymatic and/or biological activity of a wild-type protein encoded by a wild-type plastid photosynthetic gene. Broadly, the plants require a gene having any enzymatic and/or biological activity of any protein encoded by a wild-type plastid gene involved in photosynthesis. Claim 5 further requires that the protein provides for improved photosynthesis, increased accumulation of the protein, decrease in Km of the protein for a substrate, or increase in the Kcat of the protein.
The specification describes 32 plastid genome-encoded genes found in monocot and dicot crop plants (table 1), including in maize and sorghum (table 2) and soybean (table 3), and describes that conserved photosynthetic gene coding regions can be as high as 97-100% identical (paragraph [0230]). The specification allows that genes required for photosynthesis are not limited to the genes listed in the tables and encompass “functional equivalents”, for example genes encoding proteins that have an enzymatic and/or biochemical activity of the gene (paragraph [0074]).
The specification describes that mutation in a chloroplast-encoded photosynthetic gene leads to a plant unable to perform photosynthesis (paragraph [0072]). The specification describes chloroplast psaA, psaB and psbC as photosynthetic genes (paragraph [0087]).
The specification describes methods to mutate photosynthetic genes, including a method to target chloroplast psbA and psbB photosynthetic genes using a TALE fusion (paragraphs [0226-0228]). The specification describes a maize codon-optimized AscI gene fused to a chloroplast transit peptide and cloned into a plasmid for Agrobacterium-mediated transformation (paragraph [0202-0206]). The specification describes complementation of a non-photosynthetic mutant of AscI-mediated deletion of psaA with either the wild-type gene sequence or a modified gene sequence with the AscI site eliminated (paragraph [0208]). The specification further describes complementation of chloroplast deletion mutants via nuclear transgenesis of the RuBisCo large subunit with a chloroplast transit peptide to rescue a rbcL deletion in the chloroplast in tobacco (paragraph [0209]).
The specification does not describe the specific enzymatic and/or biological activities of the photosynthetic genes nor describe structural features responsible for the enzymatic and biological activities nor provide examples of plants comprising a protein having an enzymatic and/or biological activity of a wild-type plastid photosynthetic gene that does not have all the enzymatic and/or biological activities of the plastid photosynthetic gene.
Chloroplast photosynthetic genes are described in the art. However, chloroplast photosynthetic genes encode proteins that have different enzymatic and biological activities. The chloroplast ATP synthase subunit alpha, encoded by atpA, produces ATP from ADP (for an example in Arabidopsis, UniProtKB entry P56757, sequence available 5/30/2000 and accessed 7/14/2026). Any protein with ATP synthase activity could be considered as having an enzymatic or biological activity of the wild-type protein encoded by atpA. Likewise, cytochrome f, encoded by petA, mediates electron transfer between photosystem I and photosystem II and binds a heme group (for an example in Arabidopsis, UniProtKB entry P56771, sequence available 5/30/2000 but accessed 7/14/2026). Any protein capable of binding heme might broadly be considered as having an enzymatic or biological activity of the wild-type cytochrome f. However, heme-binding proteins in plants are involved in various biological process in plants (Sun et al (2025) Plant Molecular Biology Reporter. 43: 925-932 (published 1/17/2025, after the priority date of the instant application, hereafter Sun; abstract). Cytochrome b5 binds heme and mediates multiple metabolic and cellular process; cytochrome b5-like proteins regulate biotic stress response and organ development (Sun, page 926, left column, paragraph 2). Heme-binding proteins are not limited to plants but have been identified in bacteria and animals (Sun page 926, left column, paragraph 3). Thus, proteins having an enzymatic or biological activity of a chloroplast photosynthetic gene encompass many proteins in plants, animals, and bacteria.
Applicant has described plants comprising proteins that are either identical to or homologous to a wild-type protein encoded by a wild-type plastid photosynthetic gene, but the claims encompass plants comprising a protein having an enzymatic and/or biological activity of the protein encoded by a wild-type plastid photosynthetic gene. Applicant has not provided examples or structural features to demonstrate possession of plants comprising proteins over the full scope of the claimed material.
Because plants comprising a protein having an enzymatic and/or biological activity of a protein encoded by a wild-type plastid photosynthetic gene are not described over the full scope of the claims, the method of using the proteins to transform a plant is likewise not described, and the specification fails to provide an adequate written description of the claimed invention. Therefore, given the lack of written description in the specification with regard to the structural and functional characteristics of the compositions used in the claimed methods, Applicant does not appear to have been in possession of the claimed genus at the time this application was filed.
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.
Claim(s) 1-3, 5-6 & 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kanevski et al (1994) Proc. Natl. Acad. Sci. 91: 1969-1973 (published March 1994, hereafter Kanevski).
Claim 1 requires a heterologous DNA molecule comprising a promoter, a DNA encoding a CTP and a protein operably linked. For purposes of examination, this has been interpreted as a heterologous DNA molecule comprising a promoter and a DNA encoding a CTP and a protein.
Kanevski discloses a method comprising transforming tobacco plants by bombardment with a plasmid for targeted deletion of rbcL from the plastid genome, leading to a uniformly altered population of ptDNA copies and the absence of wild-type ptDNA copies (figure 1, page 1969, right column, paragraphs 1-4 & page 1970, right column, paragraph 1). The mutant plants, which were selected as calli on spectinomycin medium, then regenerated and rooted (page 1969, right column, paragraph 4), were restored with rbcL expressed from the nucleus from a constitutive cauliflower mosaic virus 35S cassette, specifically the tobacco LSU fused at its N terminus with the pea SSU transit peptide to enable import of the chimeric protein into chloroplasts (page 1971, left column, paragraph 2-right column, paragraph 1). The rbcL construct comprised a kanamycin resistant gene (figure 2A). Transformation yielded green plants (page 1972, left column, paragraph 1). Transformants were selected on medium comprising kanamycin and spectinomycin (page 1969, right column, paragraph 4), leading to wild-type plants having white shoots, transformed but not photosynthetic plants having a pale green color, and transformed and complemented photosynthetic plants having a green color (figure 3, caption). Kanevski discloses that complemented plants were able to grow slowly in the greenhouse in low light (page 1972, left column, paragraph 3) and provides pictures of green transformed plants on medium (figure 1).
A nuclear rbcL gene lacking the pea SSU transit peptide did not lead to complementation (page 1972, left column, paragraph 4). Kanevski discloses seedlings of the transformed plants (table 1, page 1972, right column, paragraph 2). Kanevski discloses that the tobacco nuclear genome carries integrated copies of plasmid DNA (page 1973, left column, paragraph 3) and that relocation of psbA to the nucleus of the photosynthetic gene psbA has also been reported (page 1973, left column, paragraph 4).
The deletion of the rbcL gene reads on a mutation in a plastid photosynthetic gene DNA sequence, and the tobacco plants comprising the deletion and no wild-type ptDNA read on recipient homoplasmic non-photosynthetic plant cells. The pea SSU transit peptide reads on a chloroplast transit peptide. Thus, the method of Kanevski reads on a method of introducing into a recipient homoplasmic plant cell a heterologous DNA molecule comprising an operably linked promoter and a DNA encoding a chloroplast transit peptide and a protein having an enzymatic or biological activity of a wild-type protein encoded by the plastid photosynthetic gene.
The successfully complemented plant cell transformants are visibly green in the photos provided by Kanevski, so although Kanevski is silent with respect to how much light the transformed plant cells were exposed to, the amount they received was sufficient to support greening. The transformed plants of Kanevski were selected on medium and green tobacco plants were identified and obtained that comprised a nuclear genome comprising the heterologous DNA molecule.
Claims 1-2 are anticipated by Kanevski. Additionally, the non-photosynthetic plant cells were grown as calli as part of the method and the photosynthetic plant cell was used to regenerated a transgenic plant, which anticipates claim 6. Tobacco is a dicot, which anticipates claim 11. Additionally, the kanamycin gene used for selection reads on a DNA molecule that confers a desirable non-agronomic trait, because the resistance phenotype enabled screening for transformants (claim 3). Finally, the transformed complemented plants were able to grow slowly in the greenhouse, autotrophically, which reads on the protein providing improved photosynthesis relative to the non-complemented plants (instant claim 5). Claim 5 is indefinite with regard to the standard by which “improved photosynthesis” is judged.
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.
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.
Claim(s) 1-6 & 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kanevski in view of Sharwood et al (2016) Current Opinion in Plant Biology. 31: 135-142. (Published 4/27/2016, hereafter Sharwood).
Claims 1-6 & 9-11 are drawn to a method for transforming a plant with a heterologous DNA molecule, including wherein the protein having an enzymatic and/or biological activity of a wild-type protein is not the wild-type protein and wherein the protein provides for improved photosynthesis and in a monocot plant cell.
The teachings of Kanevski are presented above. Kanevski does not teach a method wherein the protein is not the protein encoded by the wild-type plastid photosynthetic gene DNA sequence or in a monocot.
Sharwood teaches a motivation to improve Rubisco in plants in order to improve crop yield and resource use efficiency (page 135, left column, paragraph 1-right column, paragraph 1). Sharwood teaches that Rubisco from C4 plants have evolved faster carboxylation rates (Kcat) and reductions in CO2 affinity (increased Km for CO2) (page 136, left column, paragraph 2-right column, paragraph 1).
Sharwood teaches that sorghum Rubisco S-subunit has been transformed into rice leading to increased Kcat and Kc (page 138, right column, paragraph 1). Sharwood teaches that bioengineering of Rubisco has also been attempted in the model plant tobacco, and that tobacco is the most amenable chloroplast transformation species because of the cmtrL genotype (page 138, right column, paragraph 2).
Sharwood teaches that generating heritably stable, plastome transformed progeny in monocotyledonous species is challenging but that there is evidence of the feasibility of transforming the rice plastome (page 138, right column, paragraph 2).
Before the filing of the instant application, it would have been obvious to one of ordinary skill in the art to modify the method of Kanevski to introduce a protein that is not the wild-type protein encoded by the wild-type plastid photosynthetic gene DNA sequence. One of ordinary skill in the art would have been motivated to introduce a protein that is not the wild-type protein in order to improve Rubisco in order to improve crop yield and resource use efficiency. One of ordinary skill in the art would have had reasonable expectation of success, because tobacco has a tailored genotype for bioengineering Rubisco and transformation in other species with other heterologous photosynthetic genes has been successful.
In light of Sharwood, a protein that is not the wild-type protein encoded by the wild-type plastid photosynthetic gene (instant claim 4) including one that improves photosynthesis or has an increased Kcat (instant claim 5) would have been obvious.
Before the filing of the instant application, it would also have been obvious to one of skill in the art to modify the method of Kanevski to a monocot plant cell such as rice. One of ordinary skill in the art would have been motivated to apply the method to rice, because rice is a C3 plant, and Rubisco from C4 plants have evolved faster carboxylation rates. One of ordinary skill in the art would be motivated to improve photosynthesis and improve crop yield. One of ordinary skill in the art would have had reasonable expectation of success, because transformation of the rice plastome was demonstrated as feasible two decades ago. In light of Sharwood, therefore, the method in a rice plant cell (claim 10) which is not a tobacco or Arabidopsis cell (claim 9) would have been obvious.
Claims 1-3, 5-6 & 11 are mapped to Kanevski above. Claims 1-6 & 9-11 would have been obvious in view of Kanevski and Sharwood.
Claim(s) 1-6 & 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kanevski in view of Moller et al US 20170183672 A1 (published 6/29/2017, hereafter Moller).
Claims 1-6 & 8-11 are drawn to the method of transforming a plant, including wherein a selectable antibiotic resistance conferring gene is not used for selection in the recipient plant cell and the method in a monocot plant cell.
The teachings of Kanevski are presented above. Kanevski does not teach a method wherein antibiotic resistance is not used for selection in the recipient plant cell or the method in a monocot.
Moller teaches a method for transformation of plant tissues wherein a selection gene encodes an auxin biosynthetic polypeptide allowing for selection on media lacking plant auxins (abstract).
Moller teaches a motivation to use an auxin biosynthetic polypeptide gene as a selection gene because methods that rely on the use of synthetic plant auxin 2,4-D in selection media must be kept in the dark for a prolonged period, and quicker, cheaper methods are needed (paragraph [0004-0005]). Moller teaches an additional motivation to use the auxin-selectable transgene, because it has improved safety over an antibiotic selectable marker (paragraph [0268]).
Moller teaches a plastid transformation vector comprising homologous sequence to the maize chloroplast genome bombarded into immature maize embryos. Following transformation with the plastids, auxin mediated selection and regeneration were carried out (paragraphs [0264-0266]). The selection step is carried out under light/dark cycle; specifically, embryo selection plates are placed under continuous light for 3 days followed by 16/8 hour light/dark cycle for a further 6 days or a 16/8 light dark cycle directly. Green calli are visible 3 days after being placed in light (claim 1 (ii), paragraphs [0334-0339]). Moller teaches regeneration of whole transformed plants by performing shoot regeneration using a cocktail of plant growth regulators to promote organogenesis (paragraph [0273]).
Moller teaches a further method of inserting a transgene such as betaine aldehyde dehydrogenase, which confers tolerance to salinity, and trehalose phosphate synthase, which confers drought tolerance, into the vector for plastid transformation and transformed into plastids using the same protocol (paragraphs [0267-0268]).
Moller also envisions that the homologous recombination elements may target a transgene and/or selection gene to the plant nuclear genome, in alternative to the plastid genome (paragraph [0096]).
Before the filing of the instant application, it would have been obvious to one of ordinary skill in the art to modify the method of Kanevski to introduce a heterologous DNA molecule comprising a selection gene encoding an auxin biosynthetic polypeptide rather than an antibiotic resistance gene. One of ordinary skill in the art would have been motivated to use an auxin biosynthetic polypeptide to improve safety and decrease cost of transformation protocols relative to antibiotic selection. One of ordinary skill in the art would have been motivated to also incorporate a gene conferring drought or salinity tolerance, which read on an agronomically beneficial trait, and to perform the method in maize, as taught by Moller. One of ordinary skill would have had reasonable expectation of success, because Moller suggests that the transgenes can be integrated into the nuclear genome as well as the chloroplast genome, and plant transformation methods were routine in the art prior to the instant filing.
In using a auxin biosynthetic polypeptide for selection, an antibiotic resistance or herbicide tolerance conferring gene would not need to be used for selection of the recipient plant cell (instant claim 8). Additionally, the plant cell would be maize (instant claims 9-10). Claims 1-3, 5-6 & 11 have been mapped to the teachings of Kanevski above. Claims 1-3, 5-6 & 8-11 are obvious over Kanevski in view of Moller.
Claim(s) 1-3, 5-7 & 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kanevski in view of Sidorov et al US 9,267,144 B2 (patented 2/23/2016, hereafter Sidorov).
Claims 1-3, 5-7 & 9-11 are drawn to a method for transforming a plant with a heterologous DNA molecule, including wherein selecting of plant cells comprises selecting a sector of green plant cells.
The teachings of Kanevski are presented above. Kanevski does not teach the method wherein selecting plant cells comprises selecting a sector of green plant cells or the method in a monocot.
Sidorov teaches a method of transforming maize cells with plastid or nuclear transformation vectors (column 11, line 63 - column 12, line 51). The method comprises isolating maize immature embryos isolated from maize ears and used to establish green multiple bud cultures from apical meristem and leaf primordia of the immature embryos under 16h/8h light schedules (column 12 line 59- column 13 line 32). Sidorov also teaches nuclear transformation of bud cultures with particle bombardment (column 20, lines 22-34). Sidorov claim 14 (and claim 1) teaches a method for transforming a plastid of a maize cell, culturing an immature embryo of a maize plant in presence of light, obtaining a green multiple bud culture, introducing an exogenous DNA molecule of interest into at least one cell of the green multiple bud culture, selecting for at least one plastid transformed maize cell and regenerating a maize plant from the at least one plastid transformed maize plant cell. Siderov teaches that GFP can be used as a screenable marker to facilitate identification of plastid transformants (column 11, lines 52-61).
Sidorov teaches a method wherein DNA was delivered by particle gun bombardment (column 14, lines 13-51) and plastid transformants were selected in streptomycin in light and transferred every 3-4 weeks until highly resistant sectors were observed or the cultures were dead (column 14, lines 54-65). A leaf was observed a green, streptomycin resistant transformant, homoplasmic sector (column 15, lines 2-8). The transformed callus was transferred to selective medium to amplify the transformed tissue. Sidorov teaches that this sector did not regenerate into a whole plant but expected such regeneration to be possible (column 15, lines 26-31). Sidorov teaches a motivation for purifying heteroplasmid plastid-transformed tissues, because homoplasmid monocotyledonous plants are most useful compared to heteroplasmic plants (column 2, lines 10-13). Sidorov teaches a motivation for the method in maize, because plastids are an attractive target for genetic engineering as major biosynthetic centers of plants (column 1, lines 30-44).
Before the filing of the instant application, it would have been obvious to one of ordinary skill in the art to modify the method of Kanevski to select photosynthetic plant cells by selecting a sector of green plant cells, as taught by Sidorov. One of ordinary skill in the art would have been motivated to select a sector in order to ensure that the transformed plant was homoplasmic and not chimeric. One of ordinary skill in the art would have had reasonable expectation of success, because Sidorov observed sectors of photosynthetic tissue after plastid transformation.
Additionally, one of ordinary skill in the art would have been motivated to transform maize, as Sidorov did, to engineer plasitds. One of ordinary skill would have had reasonable expectation of success, because Sidorov taught that regeneration of plants should be possible, and nuclear transformation of maize, which the instant claims are directed to, was routine in the art prior to the filing of the instant application.
In light of Sidorov, claim 7, wherein selecting of plant cells comprises selecting a sector of green plant cells, and claims 9-10, wherein the plant cell is a maize cell and not a tobacco or Arabidopsis plant cell would have been obvious. Claims 1-3, 5-6 & 11 have been mapped to the teachings of Kanevski above. Claims 1-3, 5-7 & 9-11 are obvious in view of Kanevski and Sidorov.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-11 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 40-50 of copending Application No. 18/180,399 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 40-50 of Application 18/180,399 are identical to claims 1-11 of the instant application. 35 U.S.C. §121 does not apply to claims directed to identical subject matter, and so claims 1-11 are rejected as statutory double patenting.
Conclusion
No claims are allowed.
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/VICTORIA L DELEO/Examiner, Art Unit 1662
/Anne Kubelik/Primary Examiner, Art Unit 1663
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