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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 12 May 2026 has been entered.
Allowable Subject Matter
Claims 1-8, 10-14 and 20 are allowed.
Claim 20 is allowed in view of the Tsukahara Declaration filed under 37 C.F.R. 1.130(a) filed 14 May 2026 that provides evidence that petunia-calibrachoa variety ‘SAKPXC036’ does produce viable pollen.
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.
Claims 21-25 are 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 method of producing a petunia-calibrachoa plant by propagating a vegetive cutting from a “petunia-calibrachoa” lant produced by a single cross between ‘SAKPXC036’ and another parental line plant (or itself), or by applying a plant breeding technique.
Applicant describes petunia-calibrachoa variety ‘SAKPXC036’ predominantly by a deposit of biological material. Applicant describes producing petunia-calibrachoa variety ‘SAKPXC036’ by crossing Petunia hybrida line ‘PPBI’ female parent with Calibrachoa hybrida ‘7FS-6A-1BC-1’ male parent and selecting a single plant (page 3, paragraph 0020). It is unclear if either or both of the male and female parents are inbred lines.
Applicant does not describe producing any “single cross” or “product of applying a plant breeding technique” from petunia-calibrachoa variety ‘SAKPXC036’. There is no way to predict what the product of the “single cross” or “product of applying a plant breeding technique” would be even if petunia-calibrachoa variety ‘SAKPXC036’ does produce viable pollen (Tsukahara Declaration filed under 37 C.F.R. 1.130(a) filed 14 May 2026).
Hence, it is unclear that Applicant was in possession of the invention as broadly claimed. A method is not described if products used in the method are not described. See 64 Fed. Reg. 71427, 71428 (1999), comment No. 4. While a description of a representative number of species is adequate to represent an entire genus, wherein there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus (see MPEP 2163).
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 22 and 24 are 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 22 is unclear what plant is being propagated via seed or tissue culture as the method of claim 21 recites “propagating a vegetive cutting”. Hence, the metes and bounds of the claim are unclear.
At claim 24 is unclear what plant is being propagated via seed or tissue culture as the method of claim 23 recites “propagating a vegetive cutting”. Hence, the metes and bounds of the claim are unclear.
Conclusion
Claims 21-25 are 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
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