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 .
Priority
Applicant’s claim for benefit of priority based on Community Plant Variety Office (CPVO) application 2022/2616 filed on November 22, 2022 has been acknowledged.
Photographs
The colored photographs filed on November 22, 2023 are accepted.
Objection to the Disclosure
37 CFR 1.163
The following is a quotation of section (a) of 37 CFR 1.163:
(a) The specification must contain as full and complete a disclosure as possible of the plant and the characteristics thereof that distinguish the same over related known varieties, and its antecedents, and must particularly point out where and in what manner the variety of plant has been asexually reproduced. In the case of a newly found plant, the specification must particularly point out the location and character of the area where the plant was discovered.
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.
In plant application filed under 35 U.S.C. 161, the requirements of 35 U.S.C. 112 are limited.
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.
As specific to United States Plant Patent applications, the specifics of 37 CFR 1.164 (reproduced below) are controlling:
The claim shall be in formal terms to the new and distinct variety of the specified plant as described and illustrated, and may also recite the principal distinguishing characteristics. More than one claim is not permitted.
In plant applications filed under 35 U.S.C. 161, the requirements of 35 U.S.C. 112 are limited. The following is a quotation of 35 U.S.C. 162:
No plant patent shall be declared invalid for noncompliance with section 112 of this title if the description is as complete as is reasonably possible. The claim in the specification shall be in formal terms to the plant shown and described.
The disclosure is objected under 37 CFR 1.163(a) because the specification presents less than a full and complete botanical description and the characteristics which distinguish over related known varieties.
More specifically:
Paragraph [0003] describes the discovery of the claimed plant as a spontaneous partial plant mutation in a “greenhouse”. Inventor should further describe the character of the area of where the claimed plant. Was it discovered amongst a bed of other ‘Birkin’ plants or someplace else in the greenhouse? See 37 CFR 1.163(a).
Paragraph [0005] and 2 describe the claimed plant as “dark green mature adaxial foliar surface with light pink general coloration adjacent to the lateral venation” and 3 describes the claimed plant as “yellow-green mature adaxial foliar surface, with greyed-purple veins, and greyed-orange coloration adjacent to the venation”. These recitations contradict with each other regarding the mature adaxial leaf color and adjacent leaf lateral venation color. Clarification is necessary as to the color designations of the mature adaxial foliage and adjacent lateral leaf venation.
Paragraph [0005] at 3 and abstract describe the claimed plant as having mature adaxial leaf vein color of “greyed-purple veins and a greyed-orange coloration adjacent to the venation”; paragraph [0003] describes the claimed plant with “prominent pink veins”; and Table 1 “combination of yellow-green and pink” mature adaxial main vein. These recitations contradicts with page 6 describing the mature adaxial leaf venation as “146A” for the main and lateral veins. There is no color designation with reference from the employed color chart of the pink veins. The greyed-purple coloration is not described in the specification nor is it not visible in Figs. 1 and 2. It is noted that Fig. 2 shows the adaxial leaf with light pink lateral veins and green with splotches of yellow green on the main central vein. In addition, the photograph in the CPVO application shows the juvenile adaxial leaf lateral veins as pink and the main vein as pink and green. The older leaves show the main and lateral veins as yellow green in the CPVO application. Inventor should verify the color designations of the mature adaxial leaf venation and make appropriate corrections.
Fig. 1 appears to show older adaxial leaves that are solid green with no pink veins (position at 6 o’clock) and green with yellow green veins (position at 9 o’clock). Inventor should disclose in the specification the color descriptions of the older leaves. It is noted that the CPVO application clearly shows solid green much older leaves, mature leaves with yellow green veins and juvenile leaves with pink veins. It would appear that the juvenile leaves lateral veins are pink and main veins are green and pink. The mature leaf veins appear to be yellow green to pink and the much older leaf veins are yellow green or green.
Inventor should disclose in the specification the color designations of the juvenile adaxial leaf main vein and lateral veins with reference from the employed color chart.
Inventor should disclose in the specification the color designation of the juvenile abaxial leaf main vein if different from the lateral veins.
Table 1 describes the claimed plant as having pink juvenile adaxial leaf veins, however, page 6 describe the pink coloration only at the lateral veins. It is not clear if the juvenile main central veins are pink too. Clarification is necessary.
Table 1 describes the claimed plant as having pink juvenile veins on adaxial leaf surface. Page 6 describes the lateral veins as red purple however; it is not clear if the main vein on adaxial leaf surface is also red purple. Clarification is necessary.
The specification is to provide as fully and completely a disclosure as possible of the claimed plant and the characteristics thereof to distinguish the claimed plant over related known varieties and its antecedents.
The above listing may not be complete. Inventor should carefully compare the claimed plant with the botanical descriptions set forth in the specification to ensure completeness and accuracy and to distinguish the plant within this expanding market class. Any further botanical information should be imported into the specification, as should any additional or corrected information relative to same.
Claim Rejection
35 USC § 112(a) and 112(b)
Claim 1 is rejected under 35 U.S.C. 112(a) and 112(b) as not being supported by a clear and complete botanical description of the plant for reasons set forth in the Objection to the Disclosure Section above.
Conclusion
No claim is allowed.
Closest Prior Art
The closest related prior art to the claimed plant is ‘Pink Princess’ where ‘Pink Princess’ differs from the claimed plant in having random pink splotches while the claimed plant has greyed purple veins. For this reason, the claimed plant is deemed free of the prior art.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUNE HWU whose telephone number is (571)272-0977. The examiner can normally be reached on M-TH 5:00AM-3:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shubo (Joe) Zhou can be reached on 571-272-0724. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/June Hwu/
Primary Examiner, Art Unit 1661