Status of the Application
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6 March 2026 has been entered.
The rejection under 35 USC 112(a) for failing to comply with the enablement requirement is withdrawn in view of Applicant’s response and amendment to the Specification.
Claim Rejections - 35 USC § 112
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.
Claim 17 remains 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.
Applicant claims a Weigela plant variety “based on” a Weigela plant of variety ‘SMNWFG’ having remontancy blooming a first, second and third times separately over a growing season.
Applicant describes Weigela variety ‘SMNWFG’ on pages 13-18 and by means of an intended deposit of biological material (page 38). Applicant describes Weigela variety ‘SMNWFG’ as being produced using open pollination methods in paragraph 0059 on pages 9-10 of the instant Specification.
Applicant does not describe any structure/function relationship for the claims Weigela variety having remontancy and wine-colored foliage, especially given the fact that Applicant states that “dark foliage” is relative in paragraph 0077 on pages 11-12.
Hence, it is unclear that Applicant was in possession of the invention as broadly claimed. See University of Rochester v. G.D. Searle & Co., 68 USPQ2d 1424, 1433 (DC WNY 2003) which teaches knowing the "starting point" is not enough; that is little more than a research plan. The court held that the disclosure of screening assays and general classes of compounds was not adequate to describe compounds having the desired activity: without disclosure of which peptides, polynucleotides, or small organic molecules have the desired characteristic, the claims failed to meet the description requirement of § 112.
Applicant argues that amended claim 17 is not directed to a genus of Weigela plants defined solely by functional characteristics, but instead to a plant variety based on the specifically identified and deposited variety 'SMNWFG'. Applicant argues that the deposited biological material provides a concrete structural and genetic reference point for the claimed invention. Applicant argues that the claim does not attempt to encompass all Weigela exhibiting remontancy but instead is focused on plants based on the disclosed and preserved genotype of the deposited variety (page 8 of the Remarks).
Applicant’s argument is not found to be persuasive. Claim 17 as presently amended is directed to a product-by-process, “based on a Weigela plant of variety ‘SMNWFG’. The Specification on at paragraphs [0059] and [0098] and [0099] appears to imply that “based on” defines a starting point but does not necessarily describe the end product or the steps used to produce said end product. On page 10 of the Specification, “based on” appears to include open pollination and irradiated seed. Hence, Applicant has filed to adequately describe the invention as broadly claimed.
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 17 is 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.
At claim 17, line 1, the limitation “based on” renders the claim indefinite. The Specification on at paragraphs [0059] and [0098] and [0099] appears to imply that “based on” defines a starting point but does not necessarily teach the end product or the steps used to produce said end product. Hence, the metes and bounds of the claim are unclear.
Claim Rejections - 35 USC § 102
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)(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 17 remains rejected under 35 U.S.C. 102(a)(2) as being anticipated by Verhoef (U.S. PGPUB 2023/0037286 P1).
Verhoef discloses Weigela plant named ‘VBL1’ which is described having red-purple foliage color of RHS color 200A (page 2, paragraph 0054) which is what Weigela variety ‘SMNWFG’ is disclosed as having (page 15, paragraph 0086 of the instant Specification), and blooms in spring and repeats during summer and fall in Canada (page 2, paragraph 0020) which appears to meet the limitations of instant claim 17 as presently amended of “blooming first, second and third times separately over a growing season”. Hence, Verhoef had previously disclosed the claimed invention.
The Office does not have the facilities and resources to provide the factual evidence needed in order to establish that the product of the prior art does not possess the same, material, structural and functional characteristics of the claimed product. In the absence of evidence to the contrary, the burden is on the Applicant to provide that the claimed product is different from those taught by the prior art and to establish patentable differences. See In re Best 562F.2d 1252 USPQ 430 (CCPA 1977) and Ex parte Gray 10 USPQ 2d 1922 (PTO Bd. Pat. App. & Int. 1989).
Applicant argues that the Verhoef reference is directed to a third party Weigela by the name of "VBL1". Applicant argues that there is no mention of the VBL1 being based on the Weigela plant of variety 'SMNWFG'- indeed, VBL1 according to Verhoef is a cross between Weigela 'Verweig 3' and Weigela 'Velda' and there is no mention of being based on variety 'SMNWFG'. Applicant argues that there is no disclosure or inherent suggestion of derivation from 'SMNWFG' in contrast to claim 17 of the present application.
Applicant argues that in view of the differences between (a) the features as defined in amended claim 17 and (b) the disclosures of the Verhoef reference, it is respectfully submitted the art rejection under 35 U.S.C. § 102 should be reconsidered and withdrawn (page 9 of the Remarks).
Applicant’s arguments are not found to be persuasive. As addressed above, claim 17 as presently amended appears to be directed to a product-by-process. See In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985), which teaches that a product-by-process claim may be properly rejectable over prior art teaching the same product produced by a different process, if the process of making the product fails to distinguish the two products. Applicant provides no evidence that the prior art is actually distinguishable from the claimed Weigela plant blooming first, second and third times separately over a growing season. Therefore, the rejection is maintained for the reasons of record.
Conclusion
Claims 1-5, 8, 9, 11-13 and 15 are allowed.
Claim 17 remains rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID H KRUSE whose telephone number is (571) 272-0799. The examiner can normally be reached Monday-Friday 7AM-3:30PM.
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/David H Kruse/
Primary Examiner, Art Unit 1663