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 17 January 2025 claims the benefit of U.S. Provisional application number 62/722,102 filed on 23 August 2018.
Title
The title should be amended to read --Pongamia Tree Named ‘K002’-- to better describe the claimed invention.
Restriction
Regarding the Requirement for Restriction mailed 7 May 2025, Applicant has elected group 1, (1. Claim 1 (in part), drawn to a Pongamia plant named ‘K002’, classified in PLT/216), for continued examination, without traverse.
Photographs
The photographs filed 17 January 2025 are rejected. Applicant should provide photographs of the claimed plant only.
Applicant needs cancel the currently filed photographs and refile photographs with only Figs 1A-1G as currently filed, that is, with only Figs relating to the elected variety.
Claim Objections
The claim should be amended such that only the elected variety ‘K002’ is referenced. An example of an acceptable claim is as follows “A new and distinct variety of Pongamia pinnata (L) Pierre tree named ‘K002’ as illustrated and described herein.”
Abstract
The abstract should be amended such that only the elected variety ‘K002’ is referenced. The abstract should give more information than that of the claim, it is suggested that Applicant include a list or paragraph describing generally, the key distinguishing features of the new variety such as petal color, leaf morphology, or unique chemical makeup of oil produced in the bean pods. See MPEP 608.01(b).
Specification
Paragraph 1 should be updated with the latest status of each application listed. For example, Applicant should disclose if the applications have been issued to patent or abandoned.
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:
Applicant must provide more meaningful color description for the claimed variety with reference to a recognized color chart of Applicant' s choice. The “Royal Horticultural Society Colour Chart” is suggested. Applicant should supplement the general color descriptions currently set forth with color designations from their chosen color chart, where colors are described throughout the specification and for such characteristic botanical features as bark, lenticels, foliage (upper and lower surface), color of opened flower, skin of fruit, fruit flesh, and seeds. See MPEP § 1605.
Paragraph 2, “The pongamia varieties described herein are…” should be amended to --The Pongamia variety described is botanically...--
Paragraph 3, 4, 7, 9, and 37 should be amended such that only the single elected variety ‘K002’ is referenced.
Paragraph 7 states that the plant was discovered growing in a cultivated area in Queensland Australia and that the parentage is unknown. However, Paragraph 8 states “The original ortet (donor tree) of each of these pongamia varieties was initially identified and selected primarily on the basis of…” If the donor tree were identified and selected for given traits it is questioned why the parentage of the claimed plant would be unknown.
Applicant should be specific and describe the “character” of the area i.e. a greenhouse, garden, nursery, etc. of where the claimed plant was discovered. See MPEP 1605. Additionally, A
Applicant should disclose the city or county nearest to the site of the discovery of the plant.
Paragraph 8, “The original ortet (donor tree) of each of these pongamia varieties…” should be amended to -- The original ortet (donor tree) of ‘K002’…--.
Paragraph 8 should be amended to disclose characteristics of the area where the donor tree was found and whether the donor plant has a name, is patented, and if there is a patent application concerning the donor plant. If the donor plant is unnamed or unpatented such should be stated in the specification.
It is required that distinguishing attributes of the claimed plant be compared with the parents (in this instance the donor plant) and at least one closely related cultivar. Applicant must draw a comparison of the claimed plant with the parents (donor) and at least one commercial cultivar, for instance ‘K207’ (USPP34074). (see 37 CFR 1.163)
Paragraphs 11-36 should be deleted.
Paragraph 38 should be deleted.
Paragraph 40, the tree size description should be amended such that quantitative values for height and width are described, these could be specific values, averages, or ranges.
Paragraph 41, the lateral shoots description should be amended such that quantitative values for new branches per year, length, and girth are described, these could be specific values, averages, or ranges.
Paragraph 42, leaf size and shape description should be amended such that leaf shape (including apex, base, and margin shape), texture, and quantitative values for length, width, and color (both adaxial and abaxial surface) are described, these could be specific values, averages, or ranges.
Paragraph 42, the stipule description should be amended such that stipule shape, texture, and quantitative values for length and width are described, these could be specific values, averages, or ranges.
Paragraph 43, the flower description should be amended such that the pedicel, inflorescence type, the length, width, and height of buds and flowers, and the dimensions of the sepals, banner, wing, and keel are fully disclosed. The coloration of the various parts should be thoroughly described using quantitative values such as color codes from a color chart of Applicant’s choosing. The quantitative information can be specific values, averages, or ranges.
Paragraph 44, should be amended so as to describe length, diameter, texture and color of the pods.
Paragraph 45, should be amended so as to describe length, diameter, texture and color of the seeds.
Applicant should set forth in the specification information relative to the instant tree's disease/pest resistance/susceptibility.
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.
Comments
It is suggested that Applicant review some current Pongamia plant patents (for instance USPP26062, USPP34074, or USPP26060) in order to present the specification as complete detailed description of the plant and characteristics that would distinguish it from other related know varieties and its antecedents (see 37 CFR 1.163). All other information in the specification may remain if Applicant desires
Summary
The claim is not 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,
reachable hours: Pacific time Monday-Wednesday & Friday 0900-1230 & 1430-1830, Thursday 0830-1630.
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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/ZACHARIAH ALLAN KAY/Examiner, Art Unit 1661
/SUSAN MCCORMICK EWOLDT/Primary Examiner, Art Unit 1661