DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-2 and 4-6 are pending.
Claim 6 is withdrawn.
Claims 1-2 and 4-5 are examined.
Withdrawn objections
The objection to claims 1 and 2 is withdrawn in light of amendments made by Applicant.
Withdrawn rejections
The rejection of claims 1-5 and 7-8 under 35 USC 112(a) for failing to comply with the written description requirement as specified under “Missing Breeding History” is withdrawn in consideration of Remarks filed by Applicant.
Information Disclosure Statement
The listing of references in the specification, for example, in paragraphs 7, 25-26 and 32 is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Interpretation
For the purpose of examination, Cannabis plant “BF2014” is interpreted to be an F1 hybrid of a cross between a plant of “Private Reserve OG” and a plant of “Thin Mint Cookies”, based on the context of the specification. On page 2, in paragraph 0011, the specification states “The new C. sativa variety is a selection resulting from a sexual cross of C. sativa plants at Cerritos, CA, in 2015, involving a seed parent known as ‘Private Reserve OG’ (unpatented) and a pollen parent known as ‘Thin Mint Cookies’.” and in paragraph 0014 “Asexual reproduction of the new variety by cutting propagation since 2014 at Cerritos, CA has demonstrated that the new variety reproduces true to type with all of the characteristics, as herein described, firmly fixed and retained through successive generations of such asexual propagation.” While the specification also states, in paragraph 0014, that “[a] stable seed line of each of the new varieties has also been developed by successive generations of inbreeding and selection to correspond to the phenotypic characteristics described herein. A stable seed line of the new variety has also been developed by successive generations of inbreeding and selection to correspond to the phenotypic characteristics described herein.” This appears to be describing an inbred line, which would be distinct from the F1 hybrid at least by homozygosity.
Claim Rejections - 35 USC § 112
Indefiniteness
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.
Claims 1-2 and 4-5 remain 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. All dependent claims are included in the rejections set forth below unless indicated otherwise.
Due to Applicant's amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 12/29/2025, as applied to claims 1-5 and 7-8.
Claim 1 is indefinite in the recitation of " a Cannabis plant designated ‘BF2014’ wherein a representative sample of seed of said plant has been deposited under ______________" because the deposit accession information is missing and claims are not currently tied to any deposits with valid accession numbers, therefore the metes and bounds of the claim are not clear. Dependent claims fail to recite limitations that cure the deficiency and therefore are also indefinite.
Response to Applicant’s Remarks regarding rejection under 35 USC 112(b)
Applicant has not made any arguments regarding the rejection for failing to recite a valid deposit accession number. The claims remain rejected for the reasons addressed above.
Written Description
Claims 2 and 4-5 remain 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.
Due to Applicant's amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 12/29/2025, as applied to claims 1-5 and 7-8.
Applicant claims a cannabis plant, plant part, tissue, or cell thereof, produced by growing the seed of claim 1, or a first generation or second generation descendent thereof, wherein flower produced from the cannabis plant comprises the cannabinoid profile and terpene profile set forth in claim 2 (and claim 6). Examiner interprets "the cannabis plant" on line 3 or claim 2 to encompass said descendent and thus the descendent is likewise required to have said cannabinoid and terpene profile.
Thus, the plant of claim 2 encompasses a plant that is the progeny of an F1 hybrid of "BF2014"
(which is a hybrid itself) and a second plant, crossed with a third plant Such a progeny would result in numerous recombination events and result in a population of progeny which segregate for all the traits present in the parental varieties.
Applicant further claims a living cannabis plant descended from claim wherein the descendent
is a clonal descendent. However, there are no limitations regarding which generation the clonal descendant is derived from nor are there any limitations which preclude said clonal descendent being
derived from a sexually produced descendent of "BF2014", thus, the claimed plant encompasses the
broad genus described above.
Applicant has described a single Cannabis plant, “BF2014” (¶10, ¶14-16 and Tables 1 and 2).
Applicant has not described any other Cannabis plants, nor any descendants thereof.
Applicant has not described any structural features that distinguish plants descended from Cannabis plant “BF2014”, or F1 hybrids of “BF2014”, from other Cannabis plants.
Regarding the cannabinoid and terpene profiles required, these claimed characteristics appear to be partly or wholly functional, rather than structural. Applicant states that the values represented in Tables 1 and 2 are “merely exemplary” and include “predicted normal variations of observed values” and that due to the natural variability of chemotypic expression in Cannabis, the values do not represent the only possible range of outcomes ((¶0024-25 and (¶0033). Thus, it appears there is not a strong correlation between genotype and phenotype. In other words, they are simply the function of the genetic characteristics of the plant in response to the environment or some other variable present in the location in which the plant was grown. However, functional characteristics that are subject to change based on environment or other reasons cannot serve as the basis to describe the invariable structural features common to members of the claimed genus.
These undescribed and possibly unknown effects mean that a plant of a given genotype may have the claimed phenotype(s) when grown under certain conditions and not under others, and that a plant of a given genotype would be encompassed by the claims when grown under certain conditions and not when grown under others. Thus, the public would not know when they are infringing or when they might infringe the claimed plants.
Because the phenotypic manifestations of the gene(s) that confer this trait are affected by these conditions, the gene(s) (i.e., structures) that confer these traits must be described but they are not. The structural features that distinguish Cannabis plants with the gene(s) that confer the cannabinoid profile of Table 1 and terpene profile of Table 2 from other Cannabis plants are not described in the specification.
Further, in light of the specification, it is not clear what the cannabinoid and terpene profile of a plant with the profiles of Tables 1 and 2 would encompass, or what combination of cannabinoid and terpene levels, given the broad and variable values presented in the tables and accompanying disclosures. Applicant provides no upper or lower bounds—they seem to be almost completely open-ended.
Applicant does not describe the genus of plants as broadly claimed. The single described embodiment is not representative of the breadth of the claimed genus (which encompasses a vast number of undescribed plants descended and derived from “BF2014” with apparently any combination of described and undescribed cannabinoid and terpene levels), and applicant has not provided an adequate description of the structure-function relationship such that one of ordinary skill in the art would be able to envision which Cannabis plants are members of the claimed genus and which are not. Therefore, Applicant does not appear to have been in possession of the claimed genus of Cannabis plants at the time this application was filed.
Response to Applicant’s remarks regarding rejection under 35 USC 112(a) for failing to comply with the written description requirement
Applicant argues on pages 5-6 that the claim amendments to limit claim 2 to a first or second generation descendent of a plant grown from the deposited seed, and the claim amendments to limit
claim 6 to a clonal descendent of the seed of claim 1 sufficiently narrow the claims to overcome the
written description. Applicant further argues that recitations in the Specification, such as that the values in Tables 1 and 2 are merely exemplary, are not necessarily limiting to the scope of the claimed invention.
This argument has been fully considered but it is not persuasive. As set forth above, the genus of claimed plants still encompasses a wide breadth of genetic variation relative to the one described species of which Applicant has not described a representative number of species nor a structure-function relationship such that one of ordinary skill in the art would recognize Applicant to be in possession of the claimed genus of plants. Further, it is noted that Applicant appear to be referring to claim 5 on page 5 of the Remarks where Applicant argues that claim 6 has been amended to be limited to a clonal descendent of the seed of claim 1.
Enablement
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.
Claims 1-2 and 4-5 remain rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Due to Applicant's amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 12/29/2025, as applied to claims 1-5 and 7-8.
The claimed variety BF2014 is a hybrid, therefore the claims require seeds of parent lines ‘Private Reserve OG’ and ‘Thin Mint Cookies’. Since the seeds claimed are essential to the claimed invention, they must be obtainable by a repeatable method set forth in the specification or otherwise be readily available to the public. If a seed is not so obtainable or available, a deposit thereof may satisfy the requirements of 35 U.S.C. 112. The specification does not disclose a repeatable process to obtain the exact same seeds in each occurrence and it is not apparent if such a seed is readily available to the public. It is noted that Applicant asserts that a deposit of representative seeds of the instant variety will be made but the deposits lack any identifying deposit numbers and does not appear to have been made yet (¶0022; ¶0038-0039).
Further, if the deposit of these seeds is made under the terms of the Budapest Treaty, then an affidavit or declaration by the Applicant, or a statement by an attorney of record over his or her signature and registration number, stating that the seeds will be irrevocably and without restriction or condition released to the public upon the issuance of a patent would satisfy the deposit requirement made herein. A minimum deposit of 625 seeds is considered sufficient in the ordinary case to assure availability through the period for which a deposit must be maintained.
If the deposit has not been made under the Budapest Treaty, then in order to certify that the deposit meets the requirements set forth in 37 CFR 1.801-1.809, Applicant may provide assurance of compliance by an affidavit or declaration, or by a statement by an attorney of record over his or her signature and registration number showing that
(a) During the pendency of the application, access to the invention will be afforded to the Commissioner upon request;
(b) All restrictions upon availability to the public will be irrevocably removed upon granting of the patent;
(c) The deposit will be maintained in a public depository for a period of 30 years or 5 years after the last request or for the enforceable life of the patent, whichever is longer; and
(d) Evidence will be provided of the test of the viability of the biological material at the time of deposit (see 37 CFR 1.807).
In addition, the identifying information set forth in 37 CFR 1.809(d) should be added to the specification. See 37 CFR 1.801 - 1.809 [MPEP 2401-2411.05] for additional explanation of these requirements.
Response to Applicant’s Remarks regarding rejection under 35 USC 112(a) for failing to comply with the enablement requirement
Applicant requests that the rejection be held in abeyance pending resolution of other rejections. This is acknowledged but additional reasons for rejection are maintained.
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 (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 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.
A. Claims 1-2 and 4 remain rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vinkovetsky (Vinkovetsky, D. “Behind The Strain: Kush Mountains”. Leaf Magazines. 11/13/2021), taken with evidence of Cannabiotix (https://www.cannabiotix.com/strain/blue-flame-og. Accessed 12/16/2025) and the instant Specification.
Due to Applicant's amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 12/29/2025, as applied to claims 1-4.
Applicant claims a seed from a Cannabis plant designated “BF2014” and parts thereof.
Vinkovetsky discloses Cannabis variety “Blue Flame OG”. Cannabiotix provides Cannabis hybrid “Blue Flame OG” has parent lines “Thicc Mint Cookies” and “Private Reserve OG”. While applicant does not disclose any other names of “BF2014”, given the “BF” in “BF2014”, that Cannabiotix seems to be the same entity as Applicant, i.e., Cbiotix LLC, the similar names of the parent lines disclosed by Cannabiotix and in the instant specification, i.e., “Thin Mint Cookies” and “Private Reserve OG”, the preponderance of evidence suggests that the instantly claimed “BF2014” and “Blue Flame OG” disclosed by Cannabiotix are one and the same.
Such a plant would produce seed and comprise flowers/flower buds, stems trichomes, and leaves.
Therefore, the disclosure of Vinkovetsky taken with evidence of Cannabiotix and the instant Specification anticipates claims 1-2 and 4.
Response to Applicant’s arguments regarding rejection under 35 USC 102(a)(1)
Applicant argues that the claims have been amended to be limited to a living cannabis plant of variety BF2014 and that the only publicly available material as referenced in the Non-Final Rejection filed 12/29/2025 was dried flowers and extracts; therefore, the instantly claimed invention was not anticipated.
This argument has been fully considered but it is not persuasive. While the plant material previously available to the public was limited to dried flowers and extracts, this would have necessarily been produced by a living plant. One of ordinary skill in the art would have recognized that a living plant would inherently be disclosed by the disclosure of the dried material produced therefrom.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Vinkovetsky (Vinkovetsky, D. “Behind The Strain: Kush Mountains”. Leaf Magazines. 11/13/2021) taken with evidence of Cannabiotix (Cannabiotix. https://www.cannabiotix.com/strain/blue-flame-og. Accessed 12/16/2025) and the instant Specification.
Due to Applicant's amendment of the claims, the rejection is modified from the rejection set forth in the Office action mailed 12/29/2025, as applied to claims 5 and 7-8.
Claim 5 is drawn to a clonal descendent of the seed of claim 1.
The teachings of Vinkovetsky as applied to claim 1 are set forth above. As explained above, “BF2014” and “Blue Flame OG” appear to be the same plant.
Regarding claim 5, at the time of filing it would have been obvious to one having ordinary skill in the art to produce a clone of a cannabis plant of “BF2014” as this is a widespread and common practice in the cultivation of cannabis. One would have a reasonable expectation of success given that this is both widely and commonly practiced and given the skill level in the art.
Response to Applicant’s arguments regarding rejection under 35 USC 103
Applicant argues that the claims have been amended to be limited to a living cannabis plant of variety BF2014 and that the only publicly available material as referenced in the Non-Final Rejection filed 12/29/2025 was dried flowers and extracts; therefore, the instantly claimed invention was not anticipated.
This argument has been fully considered but it is not persuasive. While the plant material previously available to the public was limited to dried flowers and extracts, this would have necessarily been produced by a living plant. One of ordinary skill in the art would have recognized that a living plant would inherently be disclosed by the disclosure of the dried material produced therefrom.
Prior art not relied upon
The following prior art is made of record but was not relied upon in the rejections above. Cannabiotix has published Blue Flame OG at least as early as 8/15/2022, accessed using the Wayback Machine. (https://web.archive.org/web/20220815103055/https://www.cannabiotix.com/flower/blue-flame-og).
Conclusion
No claims are allowed.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R BYRNES whose telephone number is (571)270-3935. The examiner can normally be reached 9:00 - 5:00 M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bratislav Stankovic can be reached at (571) 270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID R BYRNES/Examiner, Art Unit 1662
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