Detailed Action
This Action has been made FINAL.
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 1-2 and 4-7 are currently pending.
Claims 1 and 4 have been amended.
Claims 1-2 and 4-7 are examined herein.
Withdrawn Rejections
The rejection of claim 1 under 35 USC 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter has been withdrawn in light of applicant’s amendments.
Claim Interpretation
The claims require a method step of “pinching” the stem of a poinsettia. It is known in the art that there are multiple ways to pinch poinsettias; see for example Berghage et al (Berghage R., Pinching Technique Influences Lateral Shoot Development in Poinsettia Amer. Soc. Hort. Sci. 114(6), p.909-914, 1989) who teaches that stems can be pinched with a hard pinch, medium pinch, or soft pinch (Berghage abstract). The examiner is interpreting the claims to require any type of pinching at all. In addition, regarding claim 6 the method claims use open language of “comprising the steps of”, therefore, the methods do not exclude additional method steps, such as second or third stem pinches later in the plant’s development. For claims 2-4, specifically, the claims require a change in growth habit relative to a plant that has been pinched after planting and rooting, and this is interpreted to be any plant pinched after planting and rooting, meaning that it does not require the plant to be of the same variety or genotype and it does not require the plant to have not been pinched before rooting. Claim 4 has been amended to include that the poinsettia with the altered growth habit is “of the same variety”, however no variety is claimed, the examiner is interpreting this limitation to be any variety. please see the 112(b) rejection below.
The term “altered” is interpreted to mean modified in any way. As defined by Harris and Harris the term Habit means "The general appearance, characteristic form or mode of growth of a plant" Plant Identification Terminology. 2001. J.G. Harris and M.W. Harris.
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 4 remains 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.
Regarding claim 4, the limitation intended by the recitation “wherein the altered growth habit is 14 days faster than a poinsettia of the same variety pinched after planting and rooting” is unclear, it is unclear because there is no standard of measure provided for what point the plant is supposed to be faster in getting to; this could be height, number of nodes, mass or something else entirely.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 5 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Berghage (Pinching Technique Influences Lateral Shoot Development in Poinsettia Amer. Soc. Hort. Sci. 114(6), p.909-914, 1989). The rejection is repeated for the reasons of record as set forth in the Office action Mailed 16 January 2024, as applied to claim 5. Applicant' s arguments filed 16 April 2024 have been fully considered but they are not persuasive.
Claim 5 remains rejected under 35 U.S.C. 102(a)(1). Claim 5 is directed to a poinsettia plant produced by a method that results in a growth habit having 3 fewer branches than a poinsettia pinched after planting and rooting. This is a product by process claim, and it is examined only for the structure implied by the method steps used to produce the product (MPEP 2113). Berghage teaches poinsettias produced by methods using different types of pinching: soft, medium, hard, and “LR” for leaf removal (Berghage abstract). Berghage teaches fewer total nodes on the primary stems and fewer laterals contributing to the bract canopy of plants undergoing a “hard” pinch compared to plants undergoing a soft pinch or a LR pinch (Berghage 912 Table 3). Nodes and laterals are interpreted to be branches. Therefore, the hard pinched plants anticipate the plants of claim 5 because they have 3 fewer branches than the soft pinched or LR plants, Berghage is silent with regard to whether or not the plants were cut, callused, and pinched prior to rooting; however, the plants with fewer branches taught by Berghage are reasonably interpreted to be indistinguishable from the claimed plants. If a prior art product is indistinguishable from the claimed product, it can anticipate or render obvious the claimed product even though it was made by a different process (MPEP 2113).
Response to Applicants remarks received 26 November 2024
Applicant urges that the examples in the specification demonstrate that plants produced from the method of claim 1 are different from the plants produced by a method such as that described by Berghage. This argument has been carefully considered but is not deemed persuasive. The plant disclosed by the prior art would reasonably be interpreted to be indistinguishable from plants that are encompassed by the claims, given the processes do not genetically alter the plants. If a prior art product is indistinguishable from the claimed product, it can anticipate or render obvious the claimed product even though it was made by a different process (MPEP 2113). Furthermore, In response to applicant's argument that the examples in the specification demonstrate plants produced from the method of claim 1 are different from the plants produced by a method such as Berhgage, it is noted that the features upon which applicant relies are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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.
The factual inquiries 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 nonobviousness.
Claims 1-2 and 4-7 remain rejected under 35 U.S.C. 103 as being unpatentable over Hentig et al (Hentig v., storage of poinsettia cuttings, 1986, Acta horticulturae, 181, p.313-322, Article 313) in view of Berghage (Berghage R., Pinching Technique Influences Lateral Shoot Development in Poinsettia Amer. Soc. Hort. Sci. 114(6), p.909-914, 1989). Due to Applicants amendments to the claims, the rejection has been modified from the rejection as set forth in the Office action Mailed 23 April 2024, as applied to claims 1-7. Applicant' s arguments filed 5 January 2026 have been fully considered but they are not persuasive. The teachings of Hentig and Berghage are relevant to the claims as follows.
Claim 1 recites “A method of growing a poinsettia with improved growth habit from a callused, pinched cutting consisting of the steps: A) Cutting a stem tip cutting, and then B) Callusing the cutting, and then C) Pinching the stem tip before planting, wherein the pinching is pinching the distal shoot apical meristem off the cutting, removing one to two leaf nodes and leaving a minimum of four leaf nodes on the cutting, and then D) Planting the cutting in the final container.
Wherein the poinsettia produced by callusing and pinching before planting has an altered growth habit, wherein only one pinch is performed , wherein the altered growth habit has about 3 fewer branches than a poinsettia pinched after planting and rooting.”
Hentig teaches a method of propagating callused cuttings of poinsettia “preliminary results with the storage of unrooted callus cuttings are presented here. The cuttings formed callus within two weeks under ordinary propagation conditions in "Oasis" cubes (polyurethane foam) and could then be stored for four weeks under normal cold-storage conditions at 12 to 13 ° C, 85 to 95 % rel. humidity and total darkness. Afterwards rooting took place within two weeks under ordinary rooting conditions.” (abstract) and Berghage teaches methods of pinching poinsettia cuttings to influence growth habit “Plants were pinched in one of four ways: 1) soft (removal of the apical meristem plus stem and leaf tissue associated with leaves <2 cm long); 2) medium (removal of the apical meristem plus stem and leaf tissue associated with leaves up to 7 cm long); 3) hard (removal of the apical meristem plus stem and leaf tissue associated with all immature leaves); and 4) leaf removal (LR; soft pinch as defined above plus removal of all immature leaves but not the associated stem tissue).” (abstract).
Regarding item A) “Cutting a stem tip cutting”.
Hentig teaches “Uniform, healthy cuttings of about 7.5 cm length were harvested from stock plants of poinsettias (Euphorbia pulcherrima) 'Annette Hegg' and 'Angelika'” (p. 315 para 1).
Regarding item B) “Callusing the cutting”.
Hentig teaches “These were then stuck in 4 cm3 "Oasis" cubes (polyurethane foam) that were in turn placed in propagation trays (Vefi system). The cuttings were kept in a greenhouse propagation tunnel at 20 to 24° C air and substrate temperature and 85 to 95 % relative humidity under long-day conditions (15 h day length). The cuttings were sprayed with a 0.1 % Rovral solution five days after being stuck. Within two weeks, the desired callus formation had taken place” (p.315 para1).
Regarding item C) “Pinching the stem tip before planting, wherein the pinching is pinching the distal shoot apical meristem off the cutting, removing one to two leaf nodes and leaving a minimum of four leaf nodes on the cutting”.
Berghage teaches methods for pinching poinsettias “Plants were pinched in one of four ways: 1) soft (removal of the apical meristem plus stem and leaf tissue associated with leaves <2 cm long); 2) medium (removal of the apical meristem plus stem and leaf tissue associated with leaves up to 7 cm long); 3) hard (removal of the apical meristem plus stem and leaf tissue associated with all immature leaves); and 4) leaf removal (LR; soft pinch as defined above plus removal of all immature leaves but not the associated stem tissue)” (abstract). While Berghage does not teach the step of pinching poinsettia cuttings before planting as opposed to after planting. It would have been prima facie obvious to a person skilled in the art to pinch the poinsettia cuttings prior to planting, this is a case of changing the order of known steps in a prior art process see MPEP 2144.04(iv)(c). It is not clear how much time exists between pinching a cutting and planting a cutting it may be only a few moments.
The number of leaf nodes removed in the pinch and the number of leaf nodes left on the cutting is addressed with the wherein clauses after step D) below.
Regarding item D) “Planting the cutting in the final container”.
Hentig teaches a method of planting a poinsettia cutting “Depending on the experiment set-up, the cuttings were stored for four, six or eight weeks (figure 1). The Oasis cubes were kept evenly moist; wilting was prevented by misting the cuttings four to five times a day. Afterwards, the "callus cuttings" were brought into another growth chamber at 20 to 22° C air temperature and 20° C substrate temperature, 85 to 95 % rel. humidity and 15 h day length at 2 500 lux (250 ft.c.) for rooting. The exact control of the climatic conditions following the various storage durations appeared to be especially important in order to ascertain any difference. For this reason, the rooting process was carried out in a growth chamber. After rooting was completed, the cuttings were potted in 11 cm pots in Einheitserde P (standard soil P) and were immediately set up in the greenhouse under short-day conditions in order to induce the flower formation. In the course of these "post-storage trials" designed to determine the "market quality" of the plants grown from stored cuttings, only small, single-stem plants were produced” (p.315 para1).
Regarding item C) “Pinching the stem tip before planting, wherein the pinching is pinching the distal shoot apical meristem off the cutting, removing one to two leaf nodes and leaving a minimum of four leaf nodes on the cutting”, and the wherein clauses at the end of claim 1; “wherein the poinsettia produced by callusing and pinching before planting has an altered growth habit, wherein only one pinch is performed, wherein the altered growth habit has about 3 fewer branches than a poinsettia pinched after planting and rooting”.
Pinching techniques such as the soft or hard pinch taught by Berghage would reasonably alter the plant’s growth habit, Berghage only uses one type of pinch in each of their parallel experiments. The altered growth habit of both the hard and the soft pinched plants would reasonably entail the removal of 3 nodes from the plants pinched and so once grown they would have 3 fewer branches, while item C) requires that only 1 or 2 leaf nodes be removed it is not clear why more leaf nodes could not be removed in a pinch given that ultimately the cutting requires only that there be no less than 4 leaf nodes intact, 2 nodes removed is close to 3 nodes removed a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. (MPEP 2144.05); in the case of Berghage’s hard pinch technique, they remove the apical meristem plus stem and leaf tissue associated with all immature leaves, this includes nodes and some young branches. Berghage’s soft pinch technique removes the apical meristem plus stem and leaf material associated with immature leaves equal to or less than 2cm in blade length this obviously includes nodes and some young branches (see Berghage Fig.2). Further, the plants used in the experiments of Berghage had at least 8 mature leaves and pinch techniques were only implemented above the last mature leaf and associated node, so the plants would have had at least 4 nodes as required by item C).
While Berghage does not teach the step of pinching poinsettia cuttings before planting as opposed to after planting. It would have been prima facie obvious to a person skilled in the art to pinch the poinsettia cuttings prior to planting, this is a case of changing the order of known steps in a prior art process see MPEP 2144.04(iv)(c).
Claim 2 recites “The method of claim 1, wherein the improved growth habit is about 4 cm taller stems than a poinsettia pinched after planting and rooting.”
Berghage teaches that soft pinching resulted in taller primary stems compared to hard pinching by more than 4cm (Table 3). Therefore, one of ordinary skill in the art would have had a reasonable expectation that using the soft pinching technique in the instant method would have resulted in the plants having taller stems compared to plants treated with other pinching techniques.
Claim 4 recites “The method of claim 1, wherein the improved growth habit is 14 days than a poinsettia of the same variety pinched after planting and rooting.”
Berghage teaches that hard or LR pinching resulted in plants with peak growth rate about 35 days after pinching compared to soft pinching which resulted in requiring 55 days after pinching to reach maximum growth rate. As discussed, above, in the 112(b) rejection, it is unclear what is required to be “faster than a poinsettia of the same variety”, but it is clear that hard pinched or LR pinched plants are 20 days ahead of the soft pinched plants (Berghage Table 3).
Claim 6 recites “A method of producing a callused, pre-pinched poinsettia cutting comprising the steps of cutting a stem tip cutting, callusing the cutting, and pinching the stem tip before planting.”
Hentig teaches a method of propagating callused cuttings of poinsettia “preliminary results with the storage of unrooted callus cuttings are presented here. The cuttings formed callus within two weeks under ordinary propagation conditions in "Oasis" cubes (polyurethane foam) and could then be stored for four weeks under normal cold-storage conditions at 12 to 13 ° C, 85 to 95 % rel. humidity and total darkness. Afterwards rooting took place within two weeks under ordinary rooting conditions” (abstract). Berghage teaches methods of pinching poinsettia cuttings to influence growth habit “Plants were pinched in one of four ways: 1) soft (removal of the apical meristem plus stem and leaf tissue associated with leaves <2 cm long); 2) medium (removal of the apical meristem plus stem and leaf tissue associated with leaves up to 7 cm long); 3) hard (removal of the apical meristem plus stem and leaf tissue associated with all immature leaves); and 4) leaf removal (LR; soft pinch as defined above plus removal of all immature leaves but not the associated stem tissue)” (abstract).
Regarding claim 6 “…cutting a stem tip cutting…”
Hentig teaches “Uniform, healthy cuttings of about 7.5 cm length were harvested from stock plants of poinsettias (Euphorbia pulcherrima) 'Annette Hegg' and 'Angelika' ” (p. 315 para 1).
Regarding claim 6 “…callusing the cutting…”
Hentig teaches “These were then stuck in 4 cm3 "Oasis" cubes (polyurethane foam) that were in turn placed in propagation trays (Vefi system). The cuttings were kept in a greenhouse propagation tunnel at 20 to 24° C air and substrate temperature and 85 to 95 % relative humidity under long-day conditions (15 h day length). The cuttings were sprayed with a 0.1 % Rovral solution five days after being stuck. Within two weeks, the desired callus formation had taken place” (p.315 para1).
Regarding claim 6 “…Pinching the stem tip before planting.”
Berghage teaches methods for pinching poinsettias “Plants were pinched in one of four ways: 1) soft (removal of the apical meristem plus stem and leaf tissue associated with leaves <2 cm long); 2) medium (removal of the apical meristem plus stem and leaf tissue associated with leaves up to 7 cm long); 3) hard (removal of the apical meristem plus stem and leaf tissue associated with all immature leaves); and 4) leaf removal (LR; soft pinch as defined above plus removal of all immature leaves but not the associated stem tissue)” (abstract). While Berghage does not teach the step of pinching poinsettia cuttings before planting as opposed to after planting. It would have been prima facie obvious to a person skilled in the art to pinch the poinsettia cuttings prior to planting, this is a case of changing the order of known steps in a prior art process see MPEP 2144.04(iv)(c).
Claim 7 recites “A callused, pre-pinched poinsettia cutting produced by the method of claim 6”.
The callused cuttings taught by Hentig differ from the claimed cuttings only by not being “pre-pinched”. If the practitioner were to change the order of the method steps, then they would arrive at the claimed callused, pre pinched cuttings. It would have been prima facie obvious to a person skilled in the art to pinch the poinsettia cuttings prior to planting, this is a case of changing the order of known steps in a prior art process see MPEP 2144.04(iv)(c).
It would have been obvious at the time of filing to modify the Poinsettia callused cutting production and planting methods taught by Hentig such that the callused cuttings would be pinched in the way taught by Berghage thereby producing pinched callused poinsettia cuttings.
One would have been motivated to do so because the teachings of both Hentig and Berghage are directed at producing Poinsettias. Hentig teaches “we believed that sealing this “danger zone” with wound callus would bring better results” and that their callus method “resulted in significantly longer storage periods and fewer losses” (Discussion 1st paragraph). Berghage teaches “removal of immature leaf blades promotes rapid uniform lateral shoot development and increased inflorescence number in the canopy. This result can be achieved either through the use of a hard pinch or through a soft pinch with concomitant leaf blade removal” (Discussion, last Paragraph).
One would have had a reasonable expectation of success in combining the methods because Hentig and Berghage both taught successful production methods and growth habit manipulations of poinsettias plants.
paragraph).
Response to Applicants remarks received 5 January 2026
Applicant urges that the method claimed yields unexpected results since berghage teaches that removing the apical meristem and all of the immature leaves from a plant is required to produce a plant with fewer branches and removing fewer leaves does not work. (response pg.1)
This is not found persuasive. With regard to Applicant’s argument that Applicant has offered evidence of unexpected and unobvious results, pursuant to MPEP 716.02(b), the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with regard to the claimed soybean plant, however there was no basis for judging the practical significance of data with regard to maturity date, flowering date, flower color, or height of the plant.). In the instant case and as stated in the response Berghage clearly teaches that hard pinched plants will have about 3 fewer nodes and other pinching methods (i.e. soft pinch) would potentially result in more branches (see table 3). Therefore, Berghage teaches a pinching method that results in about 3 fewer nodes. Furthermore, Berghage teaches that the plants used in their experiment “…were given one of four pinching treatments…” (Berghage, pg. 109 left column para3) which reads on “wherein only one pinch is performed” As such, Applicant’s results do not appear to be unexpected and unobvious and of both statistical and practical significance in view of the teachings of the closest prior art.
Further, even if Applicant can make such a showing, MPEP 716.02(c) provides that the evidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. MPEP 716.02(c) directs the examiner to MPEP 716.01(d), which establishes that although the record may establish evidence of secondary considerations which are indicia of nonobviousness, the record may also establish such a strong case of obviousness that the objective evidence of nonobviousness is not sufficient to outweigh the evidence of obviousness. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 769, 9 USPQ2d 1417, 1427 (Fed. Cir. 1988), cert. denied, 493 U.S. 814 (1989); Richardson-Vicks, Inc., v. The Upjohn Co., 122 F.3d 1476, 1484, 44 USPQ2d 1181, 1187 (Fed. Cir. 1997) (showing of unexpected results and commercial success of claimed ibuprofen and pseudoephedrine combination in single tablet form, while supported by substantial evidence, held not to overcome strong prima facie case of obviousness). The showing, when made, must outweigh the rationale in support of a finding of prima facie obviousness provided in the 103 rejection(s). Here, the teachings of the prior art are deemed to outweigh Applicant’s evidence, which does not appear to demonstrate that the results are in fact unexpected and unobvious and of both statistical and practical significance.
Finally, MPEP 716.02(d) provides that whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In this case, Applicant claims the method using all poinsettias but Applicant’s results demonstrate that the treatment produced different results with different varieties with some differing only by one branch on average between Applicant’s method and control plants. As such the claims are not commensurate in scope with Applicant’s evidence.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
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/ZACHARIAH ALLAN KAY/ Examiner, Art Unit 1661
/BRATISLAV STANKOVIC/Supervisory Patent Examiner, Art Units 1661 & 1662
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