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 .
Information Disclosure Statement
The Information Disclosure Statements filed on 10/16/2025 have been entered and considered. Initialed copies of the form PTO-1449 are enclosed with this action.
Status of claims
On 12/3/2025, claim set was amended, canceling many claims.
Claims 1-2, 7-8, 12-13, 19, 21, 23-24, 29, 34-41, 44 are pending and examined in the office action.
Priority
Instant application 19360252, filed 10/16/2025, is a Continuation of 17049326, filed 10/20/2020, now abandoned.
17049326 is a National Stage entry of PCT/US2019/033976, International Filing Date: 05/24/2019. PCT/US2019/033976 Claims Priority from Provisional Application 62676161, filed 05/24/2018.
62676161 disclosed the claimed subject matter. Thus, the priority is recognized.
Interpretation of "dry-excised mature plant embryo explant"
The specification does not define “dry-excised mature plant embryo explant”.
According to the specification ([0021]), “A "dry excised explant" is a mature embryo explant taken or excised from a mature dry seed. A plant seed naturally dries during its maturation process. As described further below, other types of explants may be taken or excised from a mature seed depending on their treatment, such as after wetting, imbibing, etc., a dry seed, and an explant may be wetted, imbibed, etc., after being excised from a dry seed.”
In view of the applicant’s example (the specification, [0108], Example 2, the only example of making and using "dry-excised explant"), the mature embryo explants were excised from dry soybean seeds….. The explants were rehydrated before bombardment.
Accordingly, a " dry-excised mature plant embryo explant" is a mature embryo explant taken or excised from a mature dry (with some moisture content, and may be wetted or imbibed) seed. After being wetted, imbibed, etc., such explant still reads on a " dry-excised mature plant embryo explant".
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 non-obviousness.
Claims 1-2, 7-8, 12-13, 19, 21, 23-24, 29, 34-41, 44 are rejected under 35 U.S.C. 103 as being unpatentable over Shultz et al (WO 2018085693, published 5/11/2018, filed 11/3/2017, priority 11/4/2016 to US62418078), in view of Lowe et al (Rapid genotype “independent” Zea mays L. (maize) transformation via direct somatic embryogenesis. In Vitro Cellular & Developmental Biology - Plant 54:240–252, published online 2018.4).
Claim 1 is drawn to a method comprising:
a) excising an embryo from a dry-mature plant seeds, thereby producing a dry-excised mature plant embryo explant;
b}) delivering to the dry-excised mature plant embryo explant a particle coated or applied with a site-specific nuclease, wherein the site-specific nuclease is a CRISPR associated protein, wherein the CRISPR associated protein is comprised in a ribonucleoprotein that further comprises a guide RNA; and
c) regenerating a plant from the dry-excised mature plant embryo explant without forming an embryogenic callus or callus culture from the dry-excised mature plant embryo explant, wherein the regenerated plant comprises an edit or site-directed integration at or near the target site of the site-specific nuclease in the genome of at least one cell of the regenerated plant.
for editing a genome of a plant (preamble).
Claim 2 limits the particle to gold particle.
Claim 13 limits the site-specific nuclease to Cas9 and so on.
Claims 39-40 limit the plant to dicot and soybean.
Regarding claims 1-2, 13, 39-40
Shultz et al teach a method of altering/editing a genome of a plant comprising introducing Cas9 and guide RNA into dry-excised mature plant embryo explants (Example 7, [0123]-[0134]).
Specifically, Shultz et al teach excising an embryo from dry mature plant (soybean, a dicot) seeds by using razor blade to produce explants-- dry-excised mature plant embryo explants (Example 7, [00126]), teaching and demonstrating claim 1, step a);
preparing gold particles and coating DNA into the gold particles ([00127]-[00128]), and delivering the gold particles applied with ribonucleoprotein comprising Cas9 nuclease and guide RNA into the explant by particle bombardment ([00130]), the editing was proven by PCR assay ([00131]), teach and demonstrating claim 1, step b) and claims 2 and 13;
after the bombardment, shoots were grown for a few days and elongated, after 2 weeks of shoot elongation, the shoots were sufficiently to be transferred for maturation ([0129]), thus, Shultz et al also teach regenerating a plant from the explant comprising the proven editing, part of claim 1, c).
Shultz et al also teach plant regeneration in detail and claim the regeneration step ([0050], [0060]-[0062], claims 16-17).
Thus, Shultz et al teach and demonstrated the steps of claims 1-2, 13,
except
do not teach “regenerating a plant from the dry-excised mature plant embryo explant without forming an embryogenic callus or callus culture from the dry-excised mature plant embryo explant”.
Shultz et al nevertheless suggest that as an embodiment, callus is produced from the non-epidermal plant cell, and plantlets and plants produced from such callus; and that as another embodiment, whole seedlings or plants are grown directly from the non-epidermal plant cell without a callus stage ([0050], [0060]).
Thus, Shultz et al teach that bypassing callus formation is an alternative process of plant regeneration to the process of callus formation.
Lowe et al teach in detail and demonstrated directly regenerating transformed/edited plant (maize) embryos without a callus stage (p240, abstract; p241, right col, 2nd to last para; p242, left col, 1st para; Results in p243-246).
Lowe et al additionally summarized that “this callus-free transformation process has worked in all inbred lines tested” (p240, abstract), and that “the method described here is believed to be genotype-independent, fast, and simple” (p251, left col, last para).
Thus, Lowe et al not only teach the process, but also provide an advantage of callus free regeneration of edited/transformed plant, and a motivation for one ordinary skill in the art to perform such callus-free regeneration.
Regarding dependent claims
Shultz et al teach that after such bombardment, the bombarded/edited explants were assayed by PCR in the site-specific edited genome region, confirming/identifying the explant and plant comprising an edit or a site-directed integration (Example 7, [00131]). PCR is a molecular assay, thus, Thus, Shultz et al teach the limitations of claims 7-8.
Shultz et al teach (as an embodiment) delivering a donor template/a insertion sequence along with the nuclease and guide RNA into plant cells for integration of the insertion sequence into the genome of the plant at or near the target site of the site-specific nuclease by homologous recombination ([0028]). Thus, Shultz et al teach the limitations of claims 19 and 21.
Shultz et al teach that a marker gene or/and selectable marker gene (conferring herbicide resistance) is/are delivered together with the site-specific nuclease including promoter driving DNA expression in plant cells ([0020], [0024]-[0025]), the limitations of claims 23-24 and 29.
Shultz et al teach (as an embodiment) that a marker gene or/and selectable marker gene (conferring herbicide resistance) is/are delivered together with the site-specific nuclease ([0024]-[0025]), and teach expose the transformed explant to herbicide (a selection agent) to select herbicide resistance ([0050]). Shultz et al teach the limitation of claims 35-37.
Shultz et al teach using adenylyltransferase as selectable marker for selection ([0099], [00105]), the limitation of claim 38.
An invention would have been obvious to one ordinary skill in the art if any teaching, suggestion or motivation in prior art leading the one to combine the teaching(s) or suggestion(s) of the cited references to arrive the claimed invention.
In this case, it would have been obvious to one ordinary skill in the art to slightly modify the invention of Shultz et al such that the method includes the regeneration step without callus formation as an alternative, as suggested by Schultz et al and taught and demonstrated by Lowe et al. One ordinary skill in the art would have been motivated to perform such modification because Lowe et al demonstrated that such step is genotype-independent, fast, and simple. The expectation of success would have been high, because Lowe et al demonstrated that such callus-free transformation process has worked in all lines tested.
In addition, the applicant does not provide any example of regenerating a plant from the explant without forming a callus or callus culture (Specification, Examples 1-11, [0105]-[0139]). Thus, the applicant merely claims what taught and/or suggested by the cited prior art.
Therefore, the invention would have been obvious to one ordinary skill in the art.
Claim 44 is rejected under 35 U.S.C. 103 as being unpatentable over Shultz et al viewed with evidence from SPG (Soybean Harvest Management, 2026), in view of Lowe et al.
Claim 1 has been analyzed above.
Claim 44 limits claim 1, wherein b) the dry-excised mature embryo plant is excised from a plant seed having a moisture content within a range from about 3% to about 25%.
Shultz et al or Lowe et al is silent on the soybean seed moisture content.
SPG provides evidence that soybean seed moisture for harvest and storage is about 13% (p1, “Harvest Moisture”).
Accordingly, the soybean seed of Shultz et al is about 13%, or at least within a range from about 3% to about 25%.
Therefore, dependent claim 44, like claim 1, also would have been obvious to one ordinary skill in the art, viewed with evidence from SPG.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Shultz et al in view of Lowe et al, as applied to claim 1 above, and further in view of Svitashev et al (Genome editing in maize directed by CRISPR–Cas9 ribonucleoprotein complexes. Nature communication. 1-7, 2016).
Claim 1 has been analyzed above.
Claim 12 limits claim 1, wherein said ribonucleoprotein has a ratio of site- specific nuclease protein to guide RNA of about 1:8, or about 1:6, or about 1:4, or about 1:2, or about 1:1, or about 2:1, or about 4:1, or about 6:1, or about 8:1.
Shultz et al teach the ribonucleoprotein comprising site-specific nuclease protein and guide RNA as analyzed above, but are silent on the ratio thereof.
Svitashev et al teach a ribonucleoprotein comprising site-specific nuclease Cas9 protein and guide RNA (gRNA) in a 1:2 ratio (p5, right col, 6th para), teaching the limitation of instant claim 12.
The ribonucleoprotein complex also comprises a donor DNA (ODP2 gene) (p5, right col, 4th para). The ribonucleoprotein is coated by gold particles (p5, right col, last para).
Svitashev et al demonstrated delivering such ribonucleoprotein (RNP) into the plant cell by bombardment, achieving successful editing in making mutations, and successful regeneration of the edited plant cells (Results in p2, right col, and Table 1; and p3, left col, and Figure 1).
It would have been prima facie obvious to slightly modify the invention of Shultz et al in view of Lowe et al, such that the ribonucleoprotein of Shultz et al includes the specific nuclease to gRNA ratio, as taught by Svitashev et al. One ordinary skill in the art would have been motivated to perform such modification because Svitashev et al had demonstrated successful delivery, editing and regeneration. The expectation of success would have been high, because the method of Shultz et al had been successful in plant cells, and Svitashev et al also demonstrated success by including the specific protein to gRNA ratio. The inclusion of such ratio in the ribonucleoprotein of Shultz et al would have been expected to be successful in delivery, editing and regeneration of plant cells.
Therefore, the dependent claim would have been obvious to one ordinary skill in the art.
In addition, the demonstrated success by Svitashev et al further support Shultz et al in view of Lowe et al that a ribonucleoprotein (RNP) comprising a site-specific nuclease (Cas9), a guide RNA and a donor DNA had been successfully delivered to plant cells by bombardment, had successfully achieved editing in making mutations, and the edited plant cells had been successfully regenerated.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Shultz et al in view of Lowe et al, as applied to claim 1 above, and further in view of Yau et al (Less is more: strategies to remove marker genes from transgenic plants. BMC Biotechnology 2013, 13:36, 2013).
Claim 1 has been analyzed above.
Claim 34 limits claim 1, wherein the polynucleotide molecule comprises a transgene comprising a coding sequence or a transcribable DNA sequence, wherein the transgene is located outside of the donor template.
Shultz et al or Lowe et al do not teach the limitation of transgene being located outside of the donor template.
According to specification ([0013]), a transgene comprises a gene of interest, protein encoding sequence, or a marker gene.
Yau et al teach a method of making GM plant (p1, abstract). Yau et al teach that the gene encoding selectable marker (SMG) is not located at the same site of the donor site (p6, right col, last para; p7, left col, 1st para, fig 3A). SMG is located outside of GOI (gene of interest, donor) (p7, fig 3A). The gene is a transgene comprising a coding sequence.
Yau et al teach the advantage being that SMG can be potentially removed, while the donor sequence and the conferred characteristics is maintained (p6, right col, last para).
It would have been prima facie obvious to slightly modify the invention of Shultz et al in view of Lowe et al such that the method includes a step of letting the marker gene located outside of the donor site as taught and demonstrated by Yau et al. One ordinary skill in the art would have been motivated to perform such modification because of the advantage of easy removal of the marker gene while maintaining the donor gene as taught by Yau et al. The expectation of success would have been high, because the method of Shultz et al had been successful in plant cells. SMG located outside of donor site is common method as taught by Yau et al. The modification would have been slight that would not be expected to affect the success of Schutz at al.
Therefore, the dependent claim would have been obvious to one ordinary skill in the art.
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over Shultz et al in view of Lowe et al, as applied to claim 1 above, and further in view of Srivastava (WO 2015116969, published 8/6/2015, filed 1/30/2015).
Claim 1 has been analyzed above.
Claim 41 limits claim 1, wherein the dry-excised mature embryo explant comprises, prior to the delivering step, a polynucleotide comprising a transgene or marker gene.
Shultz et al do not explicitly teach bombarding a nuclease into the explant comprising existing transgene and/or marker gene for editing the genome of the mature embryo explant.
Srivastava teaches a method of removing a selectable marker genes or marker gene promoter by using site-specific endonuclease (part of the transgene) from transgenic plant cells, for producing better GM plant crops (p1, last 2 paras; p22-24, Material and methods; claim 1), and demonstrated success (Results, p24-26). Srivastava teaches that the construct comprising the nuclease is delivered to plant cell (callus) by particle bombardment (p24, 1st para).
Srivastava teaches and claims applying the method to soybean (p19, 1st para; claims 13 and 22). Soybean is the source of explant of Shultz et al.
It would have been prima facie obvious to slightly modify the invention of Shultz et al in view of Lowe et al, such that the method includes introducing a nuclease into a mature embryo explant comprising existing transgene and/or marker gene as taught by Srivastava. One ordinary skill in the art would have been motivated to perform such modification because that removing part of the transgene like marker gene is advantageous for GM crops as taught and demonstrated by Srivastava. The expectation of success would have been high, because the method of Shultz et al had been successful in plant cells, and would have been expected to be successful in transgenic plant cells. The modification had been demonstrated by Srivastava.
Therefore, the dependent claim would have been obvious to one ordinary skill in the art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Instant and reference applications share inventors and the same applicant Monsanto. 2 rejections are made:
Claims 1-2, 7-8, 12-13, 19, 21, 23-24, 29, 34-41, 44 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12-13, 17-18, 23, 25-26, 39-40, 47-50, 60-62, 65 of co-pending Application 19210545 (USPGPUB 20250277198).
The co-pending applicant claims (amended 7/9/2025):
Claim 1. “A method of editing a genome of a plant, comprising:
a) delivering to a dry mature plant embryo explant via bacterially mediated transformation a recombinant DNA construct comprising a sequence encoding a site-specific nuclease, wherein the sequence is operably linked to a plant-expressible promoter; and
b) regenerating a plant from the dry mature plant embryo explant, wherein the regenerated plant comprises an edit or site-directed integration at or near the target site of the site- specific nuclease in the genome of at least one cell of the regenerated plant”.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Reference claims 1, 12-13, 17-18 teach instant claims 1-2, 13, including a specific nuclease CRISPR associated protein Cas9 and Cpf1 (claims 17-18), and guide RNA (claims 40-41),
except do not claim the step of excising, using gold particle, and the step of regeneration without callus formation.
The instant "dry-excised mature plant embryo explant" is interpreted above.
As analyzed above, in view of Shultz et al and Lowe et al, the step of excising, using gold particle, and the step of regeneration without callus formation, are deemed obvious in view of cited prior art.
Regarding dependent claims, reference claim 39 teaches the limitation of instant claim 34.
Reference claim 62 teaches the limitation of instant claim 41.
Reference claim 65 teaches the limitation of instant claim 44.
Reference claims 1, 23, 25-26, 40, 47-50, 60-61 teach or suggest the limitations of instant claims 7-8, 12, 19, 21, 23-24, 29, 35-40.
In addition, as analyzed above, the dependent claims are also deemed obvious in view of Shultz et al and Lowe et al.
Therefore, the instant claims and reference claims are obvious over each other.
Claims 1-2, 7-8, 12-13, 19, 21, 23-24, 29, 34-41, 44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-25 of US Patent 12331329.
The USP claims:
Claim 1. “A method of editing a genome of a plant, comprising:
a) excising an embryo from a dry mature plant seed, thereby producing a dry-excised mature plant embryo explant;
b) delivering to the dry-excised mature plant embryo explant via particle bombardment a recombinant DNA construct comprising a sequence encoding a site-specific nuclease, wherein
i) the site-specific nuclease is a ribonucleoprotein;
ii) the site-specific nuclease is Cas1, Cas1B, Cas2, Cas3, Cas4, Cas5, Cas6, Cas7, Cas8, Cas9, Csn1, Csx12, Cas10, Csy1, Csy2, Csy3, Cse1, Cse2, Csc1, Csc2, Csa5, Csn2, Csm2, Csm3, Csm4, Csm5, Csm6, Cmr1, Cmr3, Cmr4, Cmr5, Cmr6, Csb1, Csb2, Csb3, Csx17, Csx14, Csx10, Csx16, CsaX, Csx3, Csx1, Csx15, Csf1, Csf2, Csf3, Csf4, Cpf1, CasX, CasY, CasZ, an Argonaute protein, or a homolog or modified version thereof;
iii) the site-specific nuclease is not a guided nuclease; or
iv) the site-specific nuclease is a meganuclease, a zinc-finger nuclease (ZFN), a recombinase, a transposase, or a transcription activator-like effector nuclease (TALEN), and
wherein the sequence encoding the site-specific nuclease is operably linked to a plant-expressible promoter,
c) culturing the dry-excised mature plant embryo explant after bombardment for at least two days in dark at about 37° C.; and
d) regenerating a plant from the dry-excised mature plant embryo explant without forming an embryogenic callus or callus culture from the dry-excised mature plant embryo explant,
wherein the regenerated plant comprises an edit or site-directed integration at or near the target site of the site-specific nuclease in the genome of at least one cell of the regenerated plant.”
Although the claims at issue are not identical, they are not patentably distinct from each other because:
The instant "dry-excised mature plant embryo explant" is interpreted above.
Reference claims 1-2 teach instant claims 1-2, 13 in a more specific way, including a specific condition of culturing the dry-excised mature plant embryo explant at least two days in dark at about 37° C.
Regarding dependent claims, reference claims 3-25 teach or suggest the limitations of instant claims 7-8, 12, 19, 21, 23-24, 29, 34-41, 44.
In addition, as analyzed above, the dependent claims are also deemed obvious in view of Shultz et al and Lowe et al.
Therefore, the instant claims and reference claims are obvious over each other.
Conclusion
No claim is allowed.
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/Wayne Zhong/
Primary Examiner, Art Unit 1662
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