ATTY DOCKETNO.: 80678-US-REG-D-NAT-1
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`Applicant respectfully requests reconsideration in light of the amendments and
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`REMARKS
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`arguments presented herein.
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`Amendments to the Specification
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`The specification is currently amended to remove browser-executable code and make
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`the title of the invention more descriptive.
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`Entry is respectfully requested.
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`Amendments to the Claims
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`Claim 1 is currently amendedto recite wherein the heterologous intron is
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`heterologousto at least one of the nucleic acid molecule of interest, the promoter, and the
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`terminator with support being found within,interalia, the definition of heterologous.
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`Claim 8 is currently amendedto recite wherein the seed comprises the expression
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`cassette or is a part of the transgenic plant with support being found,inter alia, on page 13
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`lines 18-22. Claim 12 is currently amendedto add the recitation of the method for improved
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`clarity. The instant amendments are made without disclaimer to expedite prosecution. Claim
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`13 is cancelled. Entry is respectfully requested.
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`Objections to the Specification
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`The specification was objected to for containing browser-executable code and for
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`concerns aboutthe descriptivenessofthe title. Applicant thanks the Examinerfor the
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`suggested amendmentto the title and has amendedthetitle accordingly.
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`Reconsideration is respectfully requested based on the instant amendments to the
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`specification.
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`Objections to the Claims
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`Examiner objects to claims 1-8,12, and 13 for informalities. Claim 12 is currently
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`amendedto add the recitation of the method for improvedclarity. Claim 13 is cancelled.
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`Rejections Under 35 U.S.C.§101
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`Claims 1-3 and 8 are rejected under 35 U.S.C. §101.
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`Regarding claims 1-3, claim 1 is currently amended to address the Office’s concerns.
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`Regarding claim 8, it is currently amended to address the Office’s concerns.
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`ATTY DOCKETNO.: 80678-US-REG-D-NAT-1
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`Reconsideration is respectfully requested.
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`Rejections Under 35 U.S.C.§112
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`Claims 1-8 and 12 were rejected under 35 U.S.C. §112 based on definiteness concerns.
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`Specifically, the office contends that the term heterologous in claim | renders the claims
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`indefinite and that the meets and boundsare not clear because it is not clear which one of a
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`promotor, a nucleic acid molecule of interest, a terminator, or a plantcell the intron is
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`heterologousto.
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`Applicant respectfully disagrees because those skilled in the art do not need this
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`information to determine whether an expression cassette or transgenic plant of interest falls
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`within applicant’s claims. In re Mercier, 185 U.S.P.Q. 774 (C.C.P.A. 1975)(claims
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`sufficiently define an invention so long as one skilled in the art can determine what subject
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`matter is or is not within the scope of the claims). When comparing the claimed invention to
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`an expression cassette of interest, one of ordinary skill in the art would readily recognize
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`whether that cassette contained a non-natural promotor or nucleic acid molecule of interest.
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`Similarly, when comparing the claimed invention to a transgenic plant of interest, one of
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`ordinary skill in the art would readily recognize whether that plant contained a non-natural
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`promoteror nucleic acid molecule of interest. For at least this reason, applicant believes the
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`recitation of heterologous is not indefinite and that the rejection of claims 1-8 and 12 under 35
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`U.S.C. §112 is improper.
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`Claim 1 is however currently amended in a mannerbelieved to address the Office’s
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`concerns and reconsideration is respectfully requested. Claim 13 is cancelled.
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`Rejections Under 35 U.S.C.§102
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`Claim 8 is rejected under 35 U.S.C. §102 as being anticipated by US Patent No.
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`5,304,712 (Harper). Applicant thanks the Office for the suggested claim amendmentand has
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`amendedthe claim to include the proposed limitation as well as an alternative limitation,
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`either of which is believed sufficient to overcome Harper.
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`Reconsideration is respectfully requested.
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`Claim 1, 3-8, and 12 is/are rejected under 35 U.S.C. $102 as being anticipated by
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`WO02014149826 (Nuccio). Applicant thanks the Office for the suggested claim amendment
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`and has amendedthe claim to include the proposed limitation as well as an alternative
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`limitation, either of which is believed sufficient to overcome Harper.
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`Reconsideration is respectfully requested.
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`Rejections Under 35 U.S.C.§103
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`ATTY DOCKETNO.: 80678-US-REG-D-NAT-1
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`Claims 1-8 and 12 are rejected under 35 U.S.C. §103 as being unpatentable over Genes
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`and Development (1987) Vol. 1; pp. 1183-1200 (Callis) in view of WO2014149826 (Nuccio).
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`Claims 1 and 12 have been amended. No prima facie case for obviousness can be made from
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`the combination of Callis and Nuccio.
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`Conclusions:
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`Applicant believes the foregoing amendments and remarks have placed the instant
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`claims in condition for allowance. A Notice of Allowance is respectfully requested. The
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`Examineris invited to call the undersigned if the instant paper does not place this application
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`in condition for allowance. The Commissioner is hereby authorized to charge any fees
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`deemed necessary, or credit any overpayment, to Deposit Account No. 501744.
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`If an
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`extension of timeis required, but a request is otherwise absent, Applicant hereby requests an
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`extension of time and authorizes the Commissioner to charge any related extension of time
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`fees to Deposit Account No. 501744.
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`Certificate of EFS-Web Transmission:
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`[hereby certify that this correspondence is being transmitted via the U.S. Patent and
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`Trademark Office electronic filing system (EFS-Web) to the USPTO on April 6, 2021.
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`CUSTOMERNO. 22847
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`Respectfully submitted by,
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`/Dale Skalla/
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`SKALLA,Dale
`Attorney for Applicants
`Reg. No. 70272
`Phone: 919-281-7305
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`