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 .
Priority
The present application filed on 18 September 2024 claims the benefit of U.S. Provisional application number 63/538,979 filed on 18 September 2023.
Oath/Declaration
Applicant should file a plant patent oath/declaration. This document is to confirm that the inventor of record is the actual inventor or joint inventor of the plant being claimed in this plant patent application, to confirm that the plant has been asexually reproduced by the inventor, and to verify whether the plant was found in a cultivated area or is the product of a breeding program or some type of genetic modification. Note that if the plant was produced by “accidental breeding” as described in the specification the box on the oath/declaration form “the plant was found in a cultivated area” should not be marked.
Application Data Sheet
On page 2 of the application data sheet filed on 19 September 2024 the subject matter line is filled out as “utility” however this is a plant patent application. A new application data sheet should be submitted with the subject matter line filled out as --PLANT--.
Photographs
The photographs are objected to because there is no margin as required by MPEP. The following is a quotation form MPEP 1606(g):
(g) Margins. The sheets must not contain frames around the sight (i.e., the usable surface), but should have scan target points (i.e., cross-hairs) printed on two cater-corner margin corners. Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch), thereby leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing sheets.
New photographs in line with requirements laid out in MPEP 1606 need to be submitted.
Claim Objection
The claim should be amended to --A new and distinct cultivar of Philodendron named ‘Pink Lemonade’ as herein illustrated and described--. The cultivar name should not contain, the Latin or common name of its genus or the common name of any species in that genus, if use of such might lead to confusion.
Abstract
The following is a quotation from 37 C.F.R. 1.72:
(b) A brief abstract of the technical disclosure in the specification must commence on a separate sheet, preferably following the claims, under the heading "Abstract" or "Abstract of the Disclosure." The sheet or sheets presenting the abstract may not include other parts of the application or other material. The abstract must be as concise as the disclosure permits, preferably not exceeding 150 words in length. The purpose of the abstract is to enable the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.
The abstract should be amended to affect more of a summary of the invention as a whole. Applicant could amend the abstract to –A new and distinct cultivar of Philodendron named ‘Pink Lemonade’-- , then follow up with a summary of the key features of the claimed plant. It is suggested that the features be those that distinguish the claimed from other closely related cultivars, are wholly new attributes, or any other feature considered by the applicant to be delineating from other cultivars.
Title
The title should be amended to --Philodendron plant named ‘Pink Lemonade’--. The title should be drawn toward the claimed plant (MPEP 1610). The cultivar name should not contain, the Latin or common name of its genus or the common name of any species in that genus, if use of such might lead to confusion.
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:
The Applicant has not disclosed sufficient botanical information for the claimed plant. Applicant should disclose a detailed, written botanical description of the claimed plant to distinguish it over other philodendron varieties. These botanical characteristics should include overall plant information, such as the stems (average number, size, color, texture, etc.), the foliage (size, shape, margin, texture, apex/base shape, vein color, venation pattern, petiole size, color, etc.), and if known, information regarding the flower buds (size, color), inflorescence (bloom period, size, petals, etc.), the reproductive organs (average numbers, color, sizes, etc.) and disease/pest resistance/susceptibility. In addition, to the botanical descriptions needed, Applicant is reminded that measurements and color values are also needed. Applicant is reminded to employ a color chart of Applicant’s choosing to reference colors to the botanical descriptions as there are no color values disclosed. Applicant is also reminded that the botanical description should be as detailed as possible, colors on all surfaces (upper and lower, where appropriate) should be disclosed and that textures (upper and lower, where appropriate) should be disclosed. These listing may not be complete. It is suggested to Applicant to review several Philodendron patents to ascertain what is required in a patent application.
Applicant must provide more meaningful color description for the claimed variety with reference to a recognized color chart. The Royal Horticultural Society Colour Chart is suggested. Applicant should supplement the general color descriptions currently set forth with color designations from an employed color chart. See MPEP § 1605.
Applicant should disclose the seed and pollen parent of the claimed plant, if known. If known, Applicant is requested to indicate whether the parent cultivars have been patented in the United States, are currently the subjects of pending U.S. plant patents applications, or not patented. If patented, --(U.S. Plant Patent No.)-- should be inserted after the appropriate cultivar name. If subject of a pending application, such should be referred to by serial number. If not patented, --(not patented)-- should be inserted after the appropriate cultivar name.
Applicant has not disclosed a comparison between the parents as required by MPEP, which states “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…” (37 CFR 1.163 (a) emphasis added). Applicant should disclose distinguishing botanical characteristics between the claimed plant, at least one closely related cultivar and its direct antecedents.
Throughout the claim, abstract, and specification where the cultivar name is recited, such as “ “Pink Lemonade Philodendron” ” the cultivar name should be amended to -- ‘Pink Lemonade’ --. The cultivar name should not contain, the Latin or common name of its genus or the common name of any species in that genus, if use of such might lead to confusion.
Applicant should add a section headlined Brief Description of the Drawing(s): Under this heading a separate brief description should be presented to describe the contents of each view of the figure of the drawing. The drawing in a plant patent must be prepared to show the plant with the most distinguishing characteristics of the plant in sufficient scale to be identifiable when reduced by as much as 50%. Drawings should be photographic, and must be in color where coloration is a distinguishing characteristic. Where characteristics of foliage, bark, flowers and/or fruit are distinguishing, such plant parts should be clearly depicted in one or more figures of drawing. Figures of the drawing need not be numbered unless specifically required by the examiner. Drawing must be mounted to satisfy the requirements of drawings in a utility application.
Applicant should disclose the age of the claimed plant at the time the photograph was taken.
Applicant is reminded to disclose the age of the claimed plant at the time the botanical description was made.
Applicant should disclose information about the claimed plant’s cold hardiness and drought/heat tolerance for example USDA hardiness zone tolerated.
Applicant should disclose what species of philodendron is being claimed.
Applicant should further describe how the claimed plant was accidentally bred. Was this plant the product of an open pollination, unintended/incorrect pollen solution applied to the seed parent, or something else entirely? Clarification is needed.
Applicant must particularly point out where and in what manner the variety of plant has been asexually reproduced, for example grafting, callus cutting, or terminal cutting. See 37 CFR 1.163 above. Correction is needed.
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. If Applicant files a substitute specification and provided the requirements of 37 CFR 1.125(b) and (c) are met, a clean version of the substitute specification, a separate marked up version incorporating all additions, deletions and modifications relative to the previous version, and a statement that the substitute specification contains no new matter are required. Applicant should specifically authorize cancellation of the present specification to the same.
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.
Examiner’s Comments
It is suggested to Applicant to review recent philodendron plant patents order to ascertain what information is required and useful for the patent examination process and to present the specification as a complete detailed description of the plant and characteristics that would distinguish it from other related known varieties and its antecedents (see 37 CFR 1.162). All other information in the specification may remain if the Applicant desires.
Every effort has been made to specifically address the deficiencies of the botanical information in the instant application. The above listed deficiencies may include some characteristics disclosed in the specification, however, to ensure completeness, general characteristics and their description may include things that are already disclosed in the specification.
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 1 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bellinger (USPP16,123). Applicant bears the burden of clearly and precisely describing the characteristics which define and distinguish the new variety (In re Greer 179 USPQ 301).
The application is not patentably distinct from the cited patent because of the instant specification’s incomplete botanical listing of characteristics for the claimed plant (see supra). As a result, the prior art plant cannot be distinguished from the claimed plant as the instant application does not disclose sufficient botanical characteristics nor any color values nor measurements of the claimed plant at all. Applicant should carefully review the disclosure and import additional information that would aid in botanically identifying and/or distinguishing the cultivar for which United States Plant Patent protection is sought. Applicant is advised that once the specification contains as full and complete a disclosure as possible of the plant, it may be sufficient to obviate this rejection.
The philodendron plant disclosed by Bellinger meets the limitations of claim 1 and thus anticipates the claimed invention because of the incomplete botanical description in the instant application.
Summary
No claim is allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from
the examiner should be directed to Zachariah Kay whose telephone number is (703)756-4771.
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 (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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/ZACHARIAH ALLAN KAY/Examiner, Art Unit 1661
/SUSAN MCCORMICK EWOLDT/Primary Examiner, Art Unit 1661