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 .
This Action has been made FINAL.
Amendments
The amendments filed on 24 January 2024 have been entered.
Oath/Declaration
Applicant should file an oath/declaration (PTO/AIA /03 (09-22)). This document is to confirm that the inventor of record is the actual inventor or joint inventor of the plant being claimed, 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 some intentional breeding or genetic modification. Note that if the plant was produced by breeding program as described in the specification the box on the oath/declaration form “the plant was found in a cultivated area” should not be marked.
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:
Examiner’s Comments
In paragraph 23, Applicant discloses that the terminology and descriptors are in line with the descriptors of 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 cases, rather it is the statutes and regulations described in MPEP section 1600 that are controlling.
It is suggested to Applicant to review some current industrial fruit plant patents of a similar genera or plant with a similar life history in order 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.
Throughout the specification (particular emphasis on Tables 1 and 2) relative terms such as small, moderately, medium, dark, strong, short, or broad are used to describe attributes of the claimed plant or comparator. These descriptors are subjective, as there is no comparative basis or quantitative information about what is meant by these subjective terms. The terms are subjective, not defined in the specification, and the specification does not provide a standard for ascertaining the requisite degree, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. These descriptors should be clarified with specific definitions, quantifiable measurements, or by making a clear comparison with a related cultivar.
Applicant must provide more meaningful color description for the claimed variety with reference to
Applicant should make a descriptive comparison between the distinguishing features of the parents and the claimed variety. Paragraph 7 of the specification discloses “ ‘Mini’ was developed from a controlled cross between the cacao female parent ‘CCN-51’ (unpatented) and the cacao male parent ‘Crinkle Leaf’ (unpatented) in 2018, which produced an F1 population… Clonal selections were made from this F1 population… Additional seedling selections were then made from F2 individuals…Cacao variety ‘Mini’ is a specific selection from this F2 population…”. Given supra the parentage and a comparison of the parents has not been disclosed, the grandparents (‘CCN-51’ and ‘Crinkle Leaf’) of the claimed plant have been disclosed. Furthermore, it is not clear if the F2 generation referenced is also derived from some clonal event nor is it made clear what type of clonal process was performed to produce either the F1 or F2 populations. Clarification and/or correction is required. Additionally, the concept conveyed by paragraph 27, that is that ‘Crinkle Leaf’ is the paternal clone of the claimed variety, is incongruous with supra.
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 and its direct antecedents.
Applicant should provide the environmental/horticultural conditions under which the claimed plant was grown, including information such as (but not limited to) ambient temperature, light levels, fertilizer rate, etc. Additional information is needed.
Applicant should set forth the rootstock onto which the claimed plant was propagated and grown and provide information for the plant when grown on its own roots (if available). Additionally, Applicant should provide the patent status of the rootstock.
Applicant should disclose the age of the claimed plant at the time the description was made.
Applicant should set forth in the specification the time it takes to initiate root development of the claimed plant.
Applicant should set forth in the specification the typical and observed tree diameter, trunk diameter (usually measured at a given height above soil level), and bark coloration in the interest of providing as complete a description of the observed plant as is reasonably possible.
Applicant should set forth a more detailed botanical description relative to branch size and typical crotch angles.
Applicant should set forth in the specification the leaf arrangement, the venation pattern, vein color, the average length and width of the leaf (in quantitative measurements), the leaf color (upper and lower surface of both young and mature leaves), the characteristics of the leaf margins, the texture of the leaf, the length and diameter of the petiole, the measurements of the nectaries and the number, length and color of the stipules, if present, in the interest of providing as complete a botanical comparison as is reasonably possible. Correction is required.
Applicant should disclose specific color references representative of the observed anthocyanin coloration of the pedicel, sepals, ligula, and staminode.
Applicant should disclose information describing the fruit surface texture, groove depth, fruit color (by color code), exocarp thickness, average number of seeds per fruit, seed length, seed width, seed color (by color code), etc.
Pollination requirements of the claimed plant should be addressed in the specification, including (if available) ploidy level, whether the plant is self-fertile or partially self-fertile, which pollinators stimulate the best fruit set when utilized, and which (if any) pollinators are incompatible with the observed variety.
Applicant should set forth an approximate date of bud burst, bloom time and duration in the specified location of culture, if available.
Applicant should positively quantify known shipping and storage characteristics of the observed variety, such as for example, the number of days the fruit has been stored under specific conditions.
Applicant should disclose information to the claimed plant’s cold hardiness and drought/heat tolerance.
If additional information is available relative to plant/fruit disease resistance/susceptibility, such should be set forth in the specification.
Paragraph 17, recites “Fig. 3H illustrates an open flower of variety ‘Crinkle Leaf’ ” which is a grand parent. Fig.3H in the photograph appear to portray a flower dissimilar to that of the claimed plant alone, this is improper as it adds a degree of uncertainty to which plant is being claimed. Applicant may delete the photograph or add new photographs of the claimed plants flower alongside that of the flower of the grand parent for comparison or another plant of the species or delete the photograph entirely. The specification must be amended accordingly. To clearly convey which flower belongs to which plant, labels should be in the photographs or the paragraph in the specification should clearly describe which pod belongs to which plant such as “ …‘mini bottom’ …” or “ …‘Crinckle Leaf ’ left…”.
Paragraph 18, recites “…Figs.4X illustrates pods of variety ‘Crinkle Leaf’, and Fig.4Y illustrates cross sections of variety ‘Crinkle Leaf’ Fig.4X and 4Y in the photographs appear to portray pods that are dissimilar to those of the claimed plant alone, this is improper as it adds a degree of uncertainty to which plant is being claimed. Applicant may delete the photograph or add new photographs of the claimed plants pods along side that of the pods of the grand parent for comparison or another plant of the species or delete the photograph entirely. The specification must be amended accordingly. To clearly convey which pod belongs to which plant, labels should be in the photographs or the paragraph in the specification should clearly describe which pod belongs to which plant such as “ …‘mini bottom’ …” or “ …‘Crinckle Leaf ’ left side…”.
In Table 3, Applicant should disclose what unit of measure is being used to describe the length and circumference of the pods.
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.
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
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 …described in a printed publication… or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 remains rejected under 35 U.S.C. 102(a)(1) as being anticipated by naturally occurring varieties of Theobroma cacao such as that disclosed by “Buds in the News” (https://budsinthenews.info/2016/09/cocoa-theobroma-cacao/). The application is not patentably distinct from the cited reference because of the instant specification’s inadequate botanical listing of characteristics for the claimed plant (see supra). The cited reference discloses pictures showing leaves, floral structures and the fruit of cacao. Additionally, the reference discloses some general botanical information pertaining to flowers and fruit. As a result, the claimed plant cannot be distinguished from the prior art as the instant application does not sufficiently disclose botanical characteristics that are declared as distinguishing (such as leaf structure i.e. internode length, leaf size, branch diameter, petiole diameter or flower diameter), nor are there any quantitative measurements of the claimed plant disclosed. 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 wild type cacao. meets the limitations of claim 1 and thus anticipates the claimed invention because of the inadequate botanical description.
Response to Arguments
These arguments have been carefully considered but are not deemed persuasive.
In response to the arguments dated 17 February 2026, Applicant urges that the botanical information requested in nonfinal rejection items 2-18 is not readily available at this time.
Regarding the request for specific botanical information, this information is required in order to provide a full, clear and compete botanical description of the plant and the characteristics which define same per se and which distinguish the plant from related known cultivars and antecedents (37 CFR 1/163). This basic information is readily observed and measurable and is required to aid in botanically identifying and/or distinguish the cultivar for which United States Plant Patent protection is sought.
Regarding the information requested in item 6, merely stating “grafting onto to 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 Applicant’s argument against the Rejection under 35 USC § 102, the lack of clear botanical description of the claimed plant necessitates a rejection under 102 because nearly any existing variety of Theobroma would be technically indistinguishable from the claimed variety for lack of a full botanical description.
Conclusion
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 extension fee 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.
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. The examiner can normally be reached M-F 9:00 am - 4:00 pm.
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 on (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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/ZACHARIAH ALLAN KAY/Examiner, Art Unit 1661
/SUSAN MCCORMICK EWOLDT/Primary Examiner, Art Unit 1661
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