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 .
Status of Application
Applicants’ remarks filed February 19, 2026 are acknowledged. Applicants argue that the botanical information requested is not readily available at this time. These arguments have been carefully considered but are not deemed persuasive. Regarding the requested specific botanical information (i.e. A, B, C, D, E, F, G, H, I, J, P, Q), this information is required in order to provide a full, clear, and complete botanical description of the instant plant and the characteristics which define and distinguish it from related known cultivars and antecedents (37 CFR 1.163). This information is readily observed and measurable and is required to aid in botanically identifying and/or distinguishing the instant cultivar for which United States Plant Patent Protection is sought. A Final Office Action follows. The information requested in A-J and M-R are set forth below using the same page and line numbers as set forth in the previous Office Action mailed August 27, 2025.
Regarding the information requested in “O”, merely stating grafting onto rootstock” does not provide adequate information. Was the claimed plant asexually reproduced by grafting onto an unknown Theobroma cacao rootstock that has been patented, not patented, or patent status unknown?
Regarding the use of “superior”, this term is a subjective term that was not defined in the specification and the metes and bounds of the term “superior” cannot be ascertained. However, Applicants argue that “the recitation of “superior” in the context referred to by the Examiner conveys an improvement relative to comparative varieties”, on page 5 of the response. In this context, the term “superior” constitutes a laudatory expression. Such expressions are wholly irrelevant (MPEP 1610). It is suggested “superior” be amended to --increased-- in order to describe the overall elevated yield produced by the claimed plant.
Regarding the objection, “R”, referring to Table 2, Applicants may include this Table but must further provide a similar Table for the male and/or provide an adequate comparison with the male parent and a commercially known variety that is not one of the parents. The Examiner was merely stating that Table 2 was unnecessary given the comparison to the female plant provided in paragraph [0032]. A similar comparison to the male parent and a commercially known variety (for instance the cacao variety ‘MCC02’ as shown in FIGs 5-8; see withdrawn rejection objection “K”) is required as stated in MPEP 1605.
Thus the rejection is deemed proper and is maintained.
Withdrawn Objection/Rejection
The objection to the disclosure under 37 CFR 1.163 because the specification presents less than a full, clear and complete botanical description and the rejection under 35 USC 112(a) and 112(b) as not being supported by a clear and complete botanical description has been withdrawn in part in view of Applicants’ remarks. Upon careful consideration, the information requested in “K” and “L” have been withdrawn.
Specification
The listing of references in the specification (page 10) 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-982, they have not been considered.
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):
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 of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(b):
CONCLUSION.-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.
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 35 CFR 1.163(a) and under 35 U.S.C. 112(a), first paragraph, 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:
In the specification, Applicant has not disclosed a detailed, written botanical description of the claimed plant to distinguish it over other cacao varieties. These characteristics should include overall plant information (height, width, shape, vigor, root system), detailed information regarding the stem, foliage, flower buds, immature/mature inflorescence, reproductive organs, disease/pest resistance/susceptibility crop time, etc. Information should include botanical description which should be as detailed as possible in such that colors (using the color chart reference) on all surfaces should be disclosed as well as textures.
Applicant set forth in the specification information relative to the average height and diameter of the instant tree. Additionally, Applicant should disclose the average number of branches, length and diameter, and color as well as bark color. Applicant should also disclose the trunk diameter at a given height above the ground. All colors should be referenced by the employed color chart.
Applicant should set forth in the specification information relative to the instant plant’s petioles including the typical and observed petiole length, diameter, texture, and color with reference to the employed color chart.
Applicant should set forth in the specification information relative to the instant plant’s leaves including the typical and observed leaf arrangement, shape, margin and base descriptors, texture (both surfaces), color (both surfaces), venation pattern, and venation color. All colors should be referenced by the employed color chart.
Applicant should set forth in the specification the typical and observed inflorescence depth, diameter, number of petals per inflorescence, color (both surfaces), texture and shape. Colors should be referenced by the employed color chart.
Applicant should set forth in the specification the typical and observed sepal number, shape, apex and margin descriptors, texture (both surfaces), and color (both surfaces) with reference to the employed color chart.
Applicant should set forth in the specification information relative to the instant plant’s reproductive organs. Applicant should disclose such information and describe the different structures in the specification.
Applicant should set forth in the specification information relative to the instant plant’s cold tolerance and drought/heat tolerance.
Applicant should positively set forth in the specification the instant plant’s known shipping and storage characteristics of the instant plant’s fruit such as the number of days the fruit has been stored under specific conditions.
Applicant should set forth in the specification the names, including Latin names (i.e. genus and species), of any pests and/or diseases to which the instant plant is resistant and/or susceptible.
Page 5, lines 4 and 17, Applicant should delete “superior” as this recitation is considered a laudatory expression (MPEP 1610).
Page 5, paragraphs [0019] and [0020], Applicant discloses the term “superior” in describing the yield of the instant plant. This term is considered subjective. It is not clear as to what “superior” encompasses. Correction and/or clarification is necessary.
Page 6, lines 26-28, and page 7, lines 9-11, Applicant should set forth in the specification the name of the rootstock onto which the instant plant was propagated and grown on. In addition, Applicant should set forth in the specification the patent status of the rootstock used. If patented, the U.S. Plant Patent number should be set forth after the cultivar name. If not patented, such should be set forth after the cultivar name.
Page 6, lines 26-28, Applicant should set forth in the specification the age of the plant when described.
Page 7, Table 1 and page 8, Table 1, Applicant should set forth in the specification a more meaningful color description for the instant plant with reference to the employed color chart (MPEP 1605). Applicant should supplement the general color descriptions set forth in Table 1 with reference to the employed color chart.
Page 8, paragraph [0031] and page 9, Table 2, of the specification should be deleted. The characteristics of the female parent are not necessary. The specification should have a comparison of the claimed plant and its male parent, female parent, and a known variety (i.e., a commercial variety) that is not one of the parents. See MPEP 1605. Paragraph [0032] shows a proper comparison between the claimed plant and the female parent. Applicant should amend the specification to provide a similar comparison of the instant plant with the male parent and a commercially known variety that is not one of the parents. Correction and/or clarification.
The above listing may not be complete. Applicant should carefully review the disclosure and import into same 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, 1st & 2nd Paragraphs
Claim 1 remains rejected under 35 U.S.C. 112, first and second paragraphs as not being supported by a clear and complete botanical description of the plant for the reasons set forth in the Objection to the Disclosure Section above.
Examiner’s Comment
Paragraph [0024], Applicant discloses that the terminology and descriptors are in line with the “UPOV Guidelines for the Conduct of Tests for Distinctness, Uniformity and Stability.” Applicant is reminded that UPOV is not the controlling regulation in U.S. Plant Patent case rather the statutes described in MPEP section 1600 control.
Final
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.
Future Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT L BELL whose telephone number is (571)272-0973. The examiner can normally be reached M- Th, 6 - 4:30pm.
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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/KENT L. BELL/
Primary Examiner
Art Unit 1661
/KENT L BELL/Primary Examiner, Art Unit 1661
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