DETAILED ACTION
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 the claims
Claim 1 is pending. Claim 1 will be examined on the merits.
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(a) because the specification contains errors that require correction and does not contain as full and complete a disclosure as possible.
Response to arguments
A. Applicant has failed to set forth in the specification a description of the pests and diseases that the claimed plant is resistant, tolerant and/or susceptible to. Applicant should disclose the name and Latin name (genus and species) of any pests or diseases disclosed.
Applicant argues that the requested information is not readily available at this time. This is not persuasive. This information is required in order to provide a full, clear and complete botanical description of the claimed plant and the characteristics which define and distinguish it from related known cultivars and antecedents. See 37 CFR 1.163. This information is readily observed and measurable and is required to aid in botanically identifying and/or distinguishing the claimed plant for which United States Plant Patent protection is sought.
B. Paragraph 0008 of the specification has not been amended to disclose the name of the rootstock that was used for grafting. In addition, Applicant has not disclosed if the rootstock was patented. If it was patented, Applicant should insert the patent number after the name. If it was not patented, Applicant should insert “(not patented)” after the name.
Applicant argues that the requested information is not readily available at this time. This is not persuasive. This information is required in order to provide a full, clear and complete botanical description of the claimed plant and the characteristics which define and distinguish it from related known cultivars and antecedents. See 37 CFR 1.163. This information is readily observed and measurable and is required to aid in botanically identifying and/or distinguishing the claimed plant for which United States Plant Patent protection is sought.
C. Paragraphs 0014, 0015, 0016, 0017 and 0018 of the specification and Figures 6-9 should be removed because the pictures depicted in Figures 6-9 are for cacao variety ‘MCC02’. Pictures of comparison varieties are not necessary. These pictures are not necessary as the claimed invention is for cacao plant ‘ISC-2’.
Applicant’s arguments have been found persuasive. The rejection/objection of item C has been withdrawn.
D. Paragraph 0025 of the specification has not been amended to disclose the age of the described plant.
Applicant argues that the requested information is not readily available at this time. This is not persuasive. This information is required in order to provide a full, clear and complete botanical description of the claimed plant and the characteristics which define and distinguish it from related known cultivars and antecedents. See 37 CFR 1.163. This information is readily observed and measurable and is required to aid in botanically identifying and/or distinguishing the claimed plant for which United States Plant Patent protection is sought.
E. Table 1 of the specification has not been amended to provide the RHS designation for all colors disclosed in the table. See MPEP 1605 where it teaches “the color should be positively identified in the specification by reference to a designated color as given by a recognized color dictionary or color chart”. Correction is required.
Applicant argues that the requested information is not readily available at this time. This is not persuasive. This information is required in order to provide a full, clear and complete botanical description of the claimed plant and the characteristics which define and distinguish it from related known cultivars and antecedents. See 37 CFR 1.163. This information is readily observed and measurable and is required to aid in botanically identifying and/or distinguishing the claimed plant for which United States Plant Patent protection is sought.
F. Paragraph 0032 and Table 2 of the specification should be removed. The characteristics of the female parent are not necessary. The specification should have a comparison of the claimed plant with 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 0033 of the specification provides a proper comparison of the claimed plant with the female parent. Applicant should amend the specification to provide a similar comparison of the claimed plant with the male parent and a commercially known variety that is not one of the parents. Correction is required.
Regarding item F, Applicant 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 parent in paragraph 0032. Regardless, Applicant should amend the specification to include a comparison of the claimed plant with the male parent and a commercially known variety that is not one of the parents.
G. The listing of references at the end of the specification is noted; however, 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-892, they have not been considered. In the instant case, the Glendinning reference has only been considered.
In view of the above, the instant application does not provide a full and complete disclosure of the claimed plant and the characteristics thereof as to distinguish the claimed plant over related known varieties. Therefore, the rejection is deemed proper and is maintained.
This description is to provide as fully and completely a disclosure as possible of the claimed plant and characteristics thereof as to distinguish the claimed plant over related known varieties and its antecedents.
The above listing may not be complete. Applicant should carefully compare the claimed plant with the botanical descriptions set forth in the specification to ensure completeness and accuracy and to distinguish the plant within this expanding market class. Any further botanical information should be imported into the specification, as should any additional or corrected information relative to same.
Claim Rejection
35 USC § 112(a) and 112(b)
Claim 1 remains 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.
Conclusion
The claim is not allowed.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEITH O. ROBINSON whose telephone number is (571)272-2918. The examiner can normally be reached Monday - Friday, 9:00 a.m. - 5:30 p.m. EST.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KEITH O. ROBINSON/Primary Examiner, Art Unit 1661