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 .
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 remains 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:
In the specification, Applicant has failed to disclose 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 has failed to set forth the rootstock onto which the claimed plant was propagated and grown on. Additionally, Applicant should disclose if the rootstock used was patented or not.
Upon reconsideration, “C” has been withdrawn.
Applicant has failed to make the correction in the FIGs as requested. In para [0011], FIG. 2B actually illustrates the pedicel of a bud and not a flower. FIG. 2C and 2D actually illustrates only the pedicel. Correction is needed.
Upon Reconsideration, “E” has been withdrawn.
Applicant has failed to disclose the age of the clamed plant.
Applicant has failed to address the term “superior” in paras [0018] and [0019]. Applicant discloses the term “superior” in describing the yield of the claimed plant. This term is considered subjective. It is not clear as to what “superior” encompasses. Clarification is needed.
Applicant has failed to provide more meaningful color description for the claimed plant with reference to the recognized color chart. Applicant has failed to supplement the general color descriptions (“brown-dark red,” “dark red,” “medium brown,” “yellow,” “light green,” “white”, etc.) currently set forth with color designations from the employed color chart, for such characteristic botanical features as bark, foliage (upper and lower surface), color of opened flower, skin of fruit, fruit flesh, seeds, etc. See MPEP § 1605.
Applicant has failed to disclose information regarding the average height and diameter of the claimed tree. Additionally, Applicant has failed to disclose the average number of branches, length and diameter and color as well as the bark color. Applicant should also disclose the trunk diameter at a given height above the ground.
Applicant has failed to disclose information regarding the petiole such as average length, diameter and color in the interest of providing as complete a botanical description of the claimed plant as is reasonably possible.
Applicant has failed to disclose additional information regarding the claimed plant’s leaf such as leaf arrangement, shape, texture (both surfaces), color (both surfaces), margin, vein color and venation pattern.
Applicant has failed to disclose the average size of the inflorescence, average number of petals, color (both surfaces), texture and shape in the interest of providing as complete a botanical description of the claimed plant as is reasonably possible.
Applicant has failed to disclose average number of sepals, color and texture.
Applicant has failed to set forth in the specification additional information on the reproductive organs. Applicant should disclose such information and describe these structures in the interest of providing as complete a botanical description of the claimed plant as is reasonably possible.
Para [0032] and Table 2 should be deleted as the characteristics of the female parent are not necessary. The specification should have a comparison of the claimed plant with the male parent, female parent and a known variety (i.e. a commercial variety) that is not one of the parents. See MPEP 1605. Para [0033] provides an adequate 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 needed.
Applicant has failed to disclose information to the claimed plant’s cold tolerance and drought/heat tolerance.
Applicant has failed to positively quantify known shipping and storage characteristics of the claimed plant’s fruit, such as for example, the number of days the fruit has been stored under specific conditions.
Applicant has failed to set forth in the specification the names, including the Latin names (i.e. genus and species), of any pest and/or diseases to which the claimed plant is resistant and/or susceptible.
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 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.
Applicant’s Response
In response to the arguments dated 17 February 2026, Applicant argues 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 request for specific botanical information (i.e. A, F, H, I, J, K, L, M and N), 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 B, 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 the description given in FIGS. 2A-2I (objection B), it is clear from the FIG 2A that FIGS 2B-2D are merely subset close-up photos of FIG 2A. It is also understood, from Applicant’s arguments, that a young flower would include the bud stage through bud burst. However, the description of FIG 2B is “young flower” and FIG 2C is “closed flower” and appears to be an ambiguous description of the unopened flower structure. If Applicant desires to maintain this language, it is suggested to amend the description of FIG 2B to “illustrates the anthocyanin coloration of pedicel of a young, closed flower of the variety” to maintain and clarify the development of flowering chronology of the claimed plant.
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, Applicant argues that “the recitation of “superior” in the context referred to by the Examiner conveys and improvement relative to comparative varieties”, on page 4 of the response. In this context, the term “superior” now constitutes a laudatory expression. Such expressions are wholly irrelevant [MPEP 1610]. It is suggested that “superior” be amended to --increased-- in order to describe the overall elevated yield produced by the claimed plant.
Regarding the objection (O) referring the Table 2, 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. Examiner was merely stating that Table 2 was unnecessary given the comparison the to the female plant provided in [0033]. 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 E) is required as stated in MPEP 1605.
Thus, the rejection is deemed proper and is maintained.
Summary
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 SUSAN MCCORMICK EWOLDT whose telephone number is (571) 272-0981. The Examiner can normally be reached on M-TH 430-230.
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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/SUSAN MCCORMICK EWOLDT/Primary Examiner, Art Unit 1661