DETAILED CORRESPONDENCE
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA (America Invents Act). As a result, Applicant is encouraged to review the AIA in the MPEP. Applicant should also note that the wording, requirements, and statutes may have some subtle changes from actions and requirements prior to AIA .
Claims Pending
Claim 1 is pending. Claim 1 will be examined on the merits.
Photographs
The photographs, filed on 20 August 2024, have been approved.
Information Disclosure Statement
The Information Disclosure Statement, filed on 22 November 2024, has been acknowledged.
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 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 to under 37 CFR 1.163 because the specification presents less than a full, clear and complete botanical description of the plant and the characteristics which define same per se and which distinguish the plant from related known cultivars and antecedents.
More specifically:
On page 1, lines 8-9, Applicant should initially disclose which selection is the female and which selection is the male.
On page 1, lines 13 and 23, it is not clear as what the term “Arkansas” represents in the recitation “designated Arkansas ‘A-2718T’”. Is “Arkansas” part of the cultivar name or something else? Clarification is needed.
On page 2, line 15, the specification discloses that the claimed plant is different from its female parent in that the claimed plant has having larger fruit size. Although the specification indicates that larger fruit size is indicated as different in the claimed plant than in the female parent, it is unclear how “larger” it is since no comparison to the parent is made. Applicant should disclose such information, if available, to how the claimed plant is distinguished from its female parent.
On page 2, line 16, the specification discloses that the claimed plant is different from its male parent in that the claimed plant has a smaller fruit size. Although the specification indicates that smaller fruit size is indicated as different in the claimed plant than in the male parent, it is unclear how “smaller” it is since no comparison to the parent is made. Applicant should disclose such information, if available, to how the claimed plant is distinguished from its male parent.
On page 2, line 16, Applicant discloses that the claimed plant is “sweeter” than the male parent. This is considered a laudatory expression since there is no brix information disclosed in the fruit information.
On page 3, lines 3-6, it is strongly suggested to Applicant to amend all brackets “[ ]” to parenthesis as brackets denote deletions in amendments to the specification and/or claims(s). Additionally, line 4, underlining denote additions or insertions. If the application issues to patent, this could cause confusion to the printers. Correction is needed.
On page 4, line 19-20, Applicant discloses that “The fruit size is medium-large (ave. 7.4 g)”. However, the term “medium-large” could refer to the dimension (length and diameter). It is suggested to Applicant to amend to read “fruit weight” to better explain what “medium-large” means. See also page 10, line 1. Correction is/or clarification is needed.
Applicant should disclose the brix information if available.
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. Applicant should carefully review the disclosure and import into the disclosure any corrected or additional information which would aid in botanically identifying and/or distinguishing the cultivar for which United States Plant Patent protection is sought.
Claim Rejection
35 U.S.C. § 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.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention. The reference “The Packer” https://www.thepacker.com/news/produce-crops/university-arkansas-releases-late-season-blackberry (retrieved from the Internet on 2 December 2024) which discloses that ‘Sweet-Ark Immaculate’ is available for the 2024 planting season. ‘Sweet-Ark Immaculate’ is also known as ‘A-2718T’ as evidenced by the attached reference “Register of New Fruits and Nut Cultivars List 52” (page 4 of the PDF).
“The Packer” discloses that the University of Arkansas released the claimed plant for availability for the 2024 planting season. The claimed plant was available to the public before the effective filing date of the claimed invention (20 August 2024). The disclosure was not made by the inventor or joint inventor or by another who obtained the claimed plant directly or indirectly from the inventor or joint inventor.
The exceptions are when the disclosure is made one year or less before the effective filing dateof the claimed invention if (A) the disclosure was made by the inventor or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. Or if (B) the
subject matter had before the disclosure had been publicly disclosed by the inventor or joint
inventor or another who obtained the subject matter disclosed directly or indirectly from the
inventor or joint inventor (see 102(b)(1)).
The use of affidavits or declaration under 37 CFR 1.130 is highly suggested to be used to
overcome prior art rejection. MPEP 2155.01 states the following regarding that the disclosure
was made by the inventor or a joint inventor.
AIA 35 U.S.C. 102(b)(1)(A) provides that a grace period disclosure shall not be prior art to a claimed inventing under AIA 35 U.S.C. 102(a)(1): if the disclosure was made by the inventor or a joint inventor. An applicant may show that a disclosure was made by the inventor or a joint inventor by way of an affidavit or declaration under 37 CFR 1.130(a) (an affidavit or declaration of attribution). See In re Katz, 687 F.2d 450, 455, 215 USPQ 14, 18 USPQ 1982) and MPEP
§717.01(a)(1). Where the authorship of the prior art disclosure includes the inventor or a joint inventor named in the application, an unequivocal statement from the inventor or a joint inventor that the inventor or joint inventor (or some combination of named inventors) invented the subject matter of the disclosure, accompanied by a reasonable explanation of the presence of additional authors, may be acceptable in the absence of evidence to the contrary. See In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982), When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to accept a disclosure as prior art by establishing that the disclosure was made by the inventor or joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or joint inventor. However, an affidavit or declaration under 37 CFR 1.130(a) that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc, 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017). See also Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982) (affirming rejection notwithstanding declarations by the alleged actual inventors as to their inventorship in view of a nonapplicant author submitting a letter declaring the nonapplicant author's inventorship). This is similar to the process for disqualifying a publication as not being by “others” discussed in MPEP § 2132.01, except that AIA 35 U.S.C. 102(b)(1)(A) requires only that the disclosure be by the investor or a joint inventor.
The 37 CFR 1.130(a) (also known as rule 130) is for declaration of attribution and is used to invoke the 102(b)(1)(A) exception. 37 CFR 1.130(a) affidavit or declaration of attribution states the following:
Affidavit or declaration of attribution, when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
Rule 130(a) declaration must show sufficient facts, in weight and character, to establish that the
potential prior art disclosure is an inventor-originated disclosure. The declaration must have both
1) an unequivocal statement from one or more joint inventors that he/she/they invented the
potential prior art subject matter, and 2) a reasonable explanation of the presence of additional
authors/inventors of the potential prior art subject matter then it will generally be acceptable unless there is evidence to the contrary.
If the declaration states the disclosure is by another in an inventor-originated disclosure, then it
must be clear of record that the application under examination that the subject matter in the
disclosure was not obtained from but also invented by a person named as an inventor in the
application. The rule 130 declaration may include a statement that the declarant is the inventor of
the subject matter. The inventor’s oath or declaration in rule 63 is signed by the declarant and made of record is acceptable. The Application Data Sheet naming the declarant as the inventor is not acceptable.
Summary
No claim is allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to SUSAN MCCORMICK EWOLDT whose telephone number is (571) 272-0981. The Examiner can normally be reached on M-TH 5-330.
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, Shubo 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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/SUSAN MCCORMICK EWOLDT/Primary Examiner, Art Unit 1661