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 .
The amendment received December 10, 2025 is acknowledged and entered.
Priority
The present application filed on date claims benefit of U.S. Provisional Patent Application No. 63/731,837 filed on June 12, 2024.
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):
(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 under 37 CFR 1.163(a) because the specification presents less than a full and complete botanical description and the characteristics which distinguish over related known varieties.
NEW GROUNDS OF REJECTION
Paragraph [0008], line 2, the recitation “and U.S. Plant Patent No. PP31,064” should be deleted because the plant patent was to show that Cheyenne Spirit was described in U.S. Patent No. 7,982,110.
Page 6, line 17, the color designation “39V” is unclear because it does not exist in The Royal Horticultural Society Colour Chart 2015. Clarification and correction are necessary.
Claim Rejections
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.
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 patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) based upon a public use, sale or other public availability of the claimed invention as cited by Mills (Supplement to Greenhouse Management retrieved online at https://www.gardencentermag.com/article/2024-new--perennial-varieties/, cover page, pp. 1-23 and back cover page (14 pp. total) as evidence by inventor’s admission that “SUNMAGIC Vintage Watermelon” is the tradename for the claimed plant (p. 5 of remarks).
Mills discloses that Schoneveld Breeding has several new colors of Echinacea SUNMAGIC including Vintage Watermelon (p. 17, col. 2) as early as May 30, 2024 when the catalog was published (cover page). Fifteen colors of the SUNMAGIC Vintage series were available (p. 17, col. 2). Vintage Watermelon is the tradename of the claimed plant by inventor’s admission (p. 5 of remarks). The claimed plant was on sale or available to the public before the effective filing date of the claimed invention (June 12, 2024). The one-year grace period is June 12, 2023 and activity within the grace period may constitute a bar to patentability. There is no assignee for this plant application. The disclosure was not made by the inventor or joint inventor or by another who obtained the claimed plant directly or indirectly from the inventor or joint inventor. There is no evidence of record to establish the prior sale was by the inventor or was inventor-originated.
The exceptions are when the disclosure is made one year or less before the effective filing date of the claimed invention if (A) the disclosure was made by the inventor or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. Or if (B) the subject matter had before the disclosure had been publicly disclosed by the inventor or joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor (see 102(b)(1)).
The use of affidavits or declaration under 37 CFR 1.130 could overcome the prior art rejection. MPEP 2155.01 states the following regarding that the disclosure was made by the inventor or a joint inventor.
AIA 35 U.S.C. 102(b)(1)(A) provides that a grace period disclosure shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if the disclosure was made by the inventor or a joint inventor. An applicant may show that a disclosure was made by the inventor or a joint inventor by way of an affidavit or declaration under 37 CFR 1.130(a) (an affidavit or declaration of attribution). See In re Katz, 687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982) and MPEP § 717.01(a)(1) . Where the authorship of the prior art disclosure includes the inventor or a joint inventor named in the application, an unequivocal statement from the inventor or a joint inventor that the inventor or joint inventor (or some combination of named inventors) invented the subject matter of the disclosure, accompanied by a reasonable explanation of the presence of additional authors, may be acceptable in the absence of evidence to the contrary. See In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982). When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to except a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. However, an affidavit or declaration under 37 CFR 1.130(a) that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017). See also Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982) (affirming rejection notwithstanding declarations by the alleged actual inventors as to their inventorship in view of a nonapplicant author submitting a letter declaring the nonapplicant author's inventorship). This is similar to the process for disqualifying a publication as not being by "others" discussed in MPEP § 2132.01, except that AIA 35 U.S.C. 102(b)(1)(A) requires only that the disclosure be by the inventor or a joint inventor.
The 37 CFR 1.130(a) (also known as rule 130) is for declaration of attribution and is used to invoke the 102(b)(1)(A) exception. 37 CFR 1.130(a) affidavit or declaration of attribution states the following:
(a) Affidavit or declaration of attribution. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
Rule 130(a) declaration must show sufficient facts, in weight and character, to establish that the potential prior art disclosure is an inventor-originated disclosure. The declaration must have both 1) an unequivocal statement from one or more joint inventors that he/she/they invented the potential prior art subject matter, and 2) a reasonable explanation of the presence of additional authors/inventors of the potential prior art subject matter then it will generally be acceptable unless there is evidence to the contrary.
If the declaration states the disclosure is by another in an inventor-originated disclosure, then it must be clear of record that the application under examination that the subject matter in the disclosure was obtained from but also invented by a person named as an inventor in the application. The rule 130 declaration may include a statement that the declarant is the inventor of the subject matter. The inventor’s oath or declaration in rule 63 is signed by the declarant and made of record is acceptable. The Application Data Sheet naming the declarant as the inventor is not acceptable.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JUNE HWU whose telephone number is (571)272-0977. The examiner can normally be reached on M-TH 5:00AM-3:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shubo (Joe) Zhou can be reached on (571)272-0724. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/June Hwu/
Primary Examiner, Art Unit 1661