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 .
Election/Restrictions
Claims 1-23 and 29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 24, 2025.
Claim Rejections - 35 USC § 112
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.
Claim 1 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.
The instant claims appear to employ a novel plant. Since the plant is essential to the claimed invention it must be obtainable by a repeatable method set forth in the specification or otherwise be readily available to the public. If the plant is not so obtainable or available, the requirement of 35 USC 112 may be satisfied by a deposit of the plant. The specification does not disclose a repeatable process to obtain the plant and it is not apparent if the plant is readily available to the public. Because the variety 18-14-185 was produced by an interspecific cross using open pollination, and that such cross would not be reproducible, it would appear that a deposit of tissue from which said variety that can be reliably regenerated would be needed. The Examiner notes that the instant specification make no mention of a deposit of Biological Material which would be required under 37 CFR 1.809.
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.
Claims 23-27 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Roberts (US 2017/0335236).
With regards to claim 23, Roberts teaches a hybrid mint plant (abstract) that contains menthone and menthol at a ratio of 0.48-1:1 (0005).
With regards to claims 24-26, Roberts teaches about 2.5 to about 3.8% mass of limonene, about 1.2 to about 1.8% mass of methone, about 22 to about 35% mass of menthofuran, about 3.9 to about 5.9% mass of menthyl acetate, about 1.5 to about 2.5% mass menthol, and about 4.4 to about 6.7% mass of 1,8 cineole (0005).
Roberts does not teach the exact amounts of the different compounds. However, due to the use of the word about in both the claim and the art and the at least minimal overlap in concentration ranges, the ranges of Roberts reads on the range of the claimed invention absent a showing of criticality of said ranges.
With regards to claim 27, Roberts teaches the use of at least one part of the hybrid mint plant to be chosen from leaf, stem, seed, rhizome, stolon, flower or their combinations (0018).
With regards to claim 29, Roberts teaches the mint plant to be resistant to mint wilt from verticillium dahlia (0017).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 5712721130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763