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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in The European Union on May 3, 2024 (QZ PBR 2024/1031). It is noted, however, that applicant has not filed a certified copy of the European Union application as required by 37 CFR 1.55.
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):
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 of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(b):
CONCLUSION.-The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his 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 35 CFR 1.163(a) and under 35 U.S.C. 112(a), first paragraph, 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:
Page 1, line 20, Applicant states the female parent is “unnamed” but then sets forth “ ‘14-M332’ ”. ‘14-M332’ appears to be a cultivar name. Correction and/or clarification is necessary.
Page 1, Table 1, line 3, Applicant states the instant plant’s vigor is “Medium”. However, Applicant states “medium to low” on page 1, lines 11 and 12 and page 3, line 17. These recitations are contradictory. Correction and/or clarification is necessary.
Page 2, line 26, Applicant should delete “an illustration” and insert --illustrations--.
Page 2, line 27, Applicant should delete “flower” and insert --flowers--.
Page 3, Table 2, line 1, Applicant should insert --Plant-- after “U.S.”.
Page 4, line 7, Applicant should set forth in the specification a measurement unit after “3.0”.
Page 5, lines 2 and 3, Applicant should set forth in the specification additional information relative to the instant plant’s pedicels including the typical and observed pedicel diameter and texture.
Page 5, lines 20, 21, 30, and page 6, line 1, Applicant should delete “ray florets”, “ray florets”, “RAY FLORETS”, and “florets” and insert --petals--, --petals--, --PETALS--, and --petals--, respectively as the appropriate term for this characteristic is petals as set forth on line 27 of the same page.
Page 5, line 27, Applicant states “Shape of corolla”. However, Applicant has not set forth a corolla shape only what the corolla is composed of.
Page 6, lines 1-11, Applicant should set forth in the specification the typical and observed petal base descriptor.
Page 6, line 3, Applicant should set forth in the specification a measurement unit after “0.8”.
Page 7, line 15, Applicant states Hardiness has not been determined to date. However, Applicant states the instant plant “can endure -20˚C” on page 3, line 16. Correction and/or clarification is necessary.
The above listing may not be complete. Applicant should carefully review the disclosure and import into same 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.
Claim Rejection
35 U.S.C. 112, 1st & 2nd Paragraphs
Claim 1 is rejected under 35 U.S.C. 112, first and second paragraphs as not being supported by a clear and complete botanical description of the plant for the reasons set forth in the Objection to the Disclosure Section above.
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 (i.e., changing from AIA to pre-AIA ) 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 sale or other public availability of the invention. The instant application was filed June 16, 2025. There is foreign priority claimed however no certified copy of the foreign priority document has been filed. The one-year grace period subsequently is June 16, 2024. Activity prior to this date falls outside the exceptions of 102(b)(1)(A) or 102(b)(1)(B) and thus may constitute a bar to patentability. 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. In this instance the disclosure, sale, was more than one year from the effective filing date.
A search of the CPVO Register-CPVO Application Consultation 4.23.14 discloses a Iberis plant named ‘IBSZ0008’ in Plant Breeder’s Right application number 20241031 and discloses the first sale inside the EU was October 13, 2023 in Germany. The sale date of October 13, 2023 is before the effective filing date of the claimed application. It appears 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. The Applicant and Breeder are listed as Syngenta Crop Protection AG which is the Assignee/Applicant in the instant case. However, the Inventor, Theodorus Cronelis Maria van Kleinwee is not set forth in the Plant Breeder’s Right application. As a result of this publication which shows that the instant plant was in the public domain before the filing of the instant application in the U.S., Claim 1 is rejected under 35 U.S.C. 102(a)(1).
The reference cited above discloses the claimed plant.
If the above sale was made by the Inventor or another who obtained the claimed plant directly or indirectly from the Inventors and such is accurate then this information should be set forth in the specification which may obviate the above rejection.
The use of affidavits or declarations under 37 CFR 1.130 may be used to overcome prior art rejections. 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. The rule 130(a) is used to disqualify a disclosure as prior art by attributing it to the inventor. 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.
The 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 not 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.
Future Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT L BELL whose telephone number is (571)272-0973. The examiner can normally be reached M- Th, 6 - 4:30pm.
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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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K. L. Bell
/KENT L BELL/
Primary Examiner, Art Unit 1661