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 .
Claims Pending
Claim 1 is pending. Claim 1 has examined on the merits.
Priority
The present application filed on 12 September 2025 is a continuation in part of application number 18/784,761 filed on 25 July 2025.
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:
A. Applicant is required to provide in the Specification a listing of copending applications developed by the same breeding programs (see (4) below). For clarity, the content of the Specification in its entirety is given below. In the instant application the heading/content conforms to the preferred format with the exception of the listing of the co-pending application information.
The following arrangement is preferred in framing the specification and, except for the title of the invention, each of the lettered items should be preceded by the headings indicated below as tailored for application for a plant filed under 35 USC 161:
Content of Specification
(a) Title of the Invention:
(b) Cross-References to Related Applications: (If any.) Related applications include:
(1) A utility application from which the claimed plant is the subject of a divisional application.
(2) A continuation (copending, newly filed application) to the same plant filed when a parent application has not been passed to issue.
(3) An application not copending with an original application which was not allowed.
(4) Copending applications to siblings or similar plants developed by the same breeding program, etc.
(c) Statement Regarding Federally Sponsored Research and Development: (If any.) See MPEP § 310.
(d) Background of the Invention:
(e) Summary of the Invention:
(f) Brief Description of the Drawing(s):
(g) Botanical Description of the Plant:
(h) Claim.
(I) Abstract of the Disclosure:
(j) Drawings: See 37 CFR 1.81, 1.83-1.85, and MPEP § 608.02.
(k) Genetic Sequence Listing: (If any.) See 37 CFR 1.821-1.825.
Co-pending applications 18/783,946, 18/784,004, 18/784054 and 18/784641 appear to have the same parental cross as described in the instant application (‘Stella’ x ‘Van’)). If the parents of the claimed plant and the plant of the co-pending applications are the same, Applicant is required to be descriptive with the comparison between the instant plant and the co-pending plant in how the claimed plant differs from the co-pending plant.
On page 1, [0004], Applicant should disclose the scientific name of bacterial canker (Pseudomona syringae, if correct).
In para [0010], Applicant should disclose the US Plant Patent name for 8954 which is ‘GI 148/1’. Correction is needed.
In para [0010], it is not clear the meaning of “Medium” as the term is vague and insufficient. Correction is needed.
In para [0014], it is unclear as to what “Moderate” represents in the flower quantity. The term “moderate” is vague and insufficient. “Flower quantity” implies a quantitative number of flowers. Clarification is needed.
In para [0016], Applicant states that the petal color is N155B. It is unclear if this is a description of the upper petal color, the lower petal color or both. Applicant should provide a description of the upper and lower petal color in order to provide as complete a botanical description as is reasonably possible.
In para [0021], Applicant discloses the fruit firmness is “520 g/mm”. However, this description is not clear. Correction and/or clarification is needed.
In para [0021], Applicant should amend “Bing” to –‘Bing’.
In para [0021], Applicant discloses that the Brix is “18”. This recitation is unclear. Clarification is needed.
J. Applicant should disclose the petal arrangement such as free or intermediate or overlapping, for example.
K. In para [0021], the term “medium” is not considered a texture in describing the fruit flesh. It is not clear as to what encompasses “medium” for the flesh. Clarification is needed.
L. On page 7, [0021], “Productivity:20,000 lbs. per acre.” Should be amended to –Productivity: 20,000 lbs. per acre.--.
M. Applicant should disclose the co-pending US application numbers for the comparison varieties.
N. In para [0025], Table 3, Applicant should amend “Bing” to –‘Bing’.
O. In para [0025], Table 3 the terms used to describe Stem Length (short, medium-long, medium and long) is unclear given that ‘V690630’ has a fruit stalk length (stem length?) is 4 cm and disclosed as short; ‘V69061’ has a fruit stalk length (stem length?) is 4 cm and disclosed as medium-long; the claimed plant has a fruit stalk length (stem length?) is 4 cm and disclosed as medium and; ‘V69068’ has a fruit stalk length (stem length?) is 4 cm and disclosed as long.
In para [0025], Applicant discloses that the Flesh color of ‘V69063’, ‘V69062’, ‘V690628’ and ‘V69068’ is Black-red, dark red, dark red-purple and red, respectively. The flesh colors disclosed in the respective specification for ‘V69063’, ‘V69062’, ‘V690628’ and ‘V69068’ is N186A or in ‘V60628’ it is not described. Furthermore, the disclosed skin color (N186A) in these applications is identical to the flesh colors (N186A).
Given the discrepancies in the Stem length and flesh color and ambiguous terminology, Applicant should review the entire table and amend the comparisons to provide quantitative characteristics and comparisons that define each of the claimed cultivars and how each are different from the claimed plant. Correction is required.
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.
Claim Rejection
35 U.S.C. § 112(a) and 112(b)
Claim 1 is 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection 1.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /2S, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and Application/Control Number: 18/784,004 Page 6 Art Unit: 1661 approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/783,946 in view of Nacouzi ef al. (“Quality and Phytochemical Composition of Sweet Cherry Cultivars Can Be Influenced by Altitude,” Plant 2023, 12, 2254, pgs, 1-17).
The claimed application is drawn to a sweet cherry tree named ‘V690628’ from a controlled cross with female parent ‘Van’ and male parent, ‘Stella’ where the claimed tree is self-fertile, resistant to rain crack and bacterial canker. The ‘946 application is drawn to a sweet cherry tree named ‘V69068’ where the parentage and general botanical description is identical to the claimed tree except having a harvest date of June 30, fruit size of 3 cm and fruit acidity of 0.8 g/100g while the claimed tree has a harvest date of June 27, fruit size of 3 cm and an acidity of 0.78 g/100g.
Nacouzi et al. teach that different altitudes, climate and geographic conditions may affect fruit quality (pg. 2, 1% full para). Titratable acidity decreases with harvest date where the lowest titratable acidity was found with Barqa on June 3, 2021 and the highest titratable acidity was found with Qousaya on May 7, 2021 (pg. 4, lines 8-10). Fig. 3 shows the variation in fruit diameter and titratable acidity in ‘Irani variety between different altitudes over the harvest season (pg. 5, 2" full para.) Nacouzi ef al. further state that weather conditions influence the fruit during the ripening stage and that sugar synthesis increases with sunlight and high temperature (pg. 12, 1% full para). The instant claim tree and ‘946 contain identical botanical characteristic except for acidity levels, fruit size and harvest dates which can be a result from various factors as taught by Nacouzi et al.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/784,641 in view of Nacouzi et al. (“Quality and Phytochemical Composition of Sweet Cherry Cultivars Can Be Influenced by Altitude,” Plant 2023, 12, 2254, pgs, 1-17).
The claimed application is drawn to a sweet cherry tree named ‘V69062’ from a controlled cross with female parent ‘Van’ and male parent, ‘Stella’ where the claimed tree is self-fertile and resistant to rain crack. The ‘641 application is drawn to a sweet cherry tree named ‘V690630’ where the parentage and general botanical description is identical to the claimed tree except having a harvest date of June 17, fruit size of 2.7 cm and fruit acidity of 0.8 g/100g while the claimed tree has a harvest date of June 27, fruit size of 3 cm and an acidity of 0.0.78g/100g.
Nacouzi et al teach that different altitudes, climate and geographic conditions may affect fruit quality (pg. 2, 1% full para). Titratable acidity decreases with harvest date where the lowest titratable acidity was found with Barqa on June 3, 2021 and the highest titratable acidity was found with Qousaya on May 7, 2021 (pg. 4, lines 8-10). Fig. 3 shows the variation in fruit diameter and titratable acidity in ‘Irani variety between different altitudes over the harvest season (pg. 5, 2" full para.) Nacouzi ef al. further state that weather conditions influence the fruit during the ripening stage and that sugar synthesis increases with sunlight and high temperature (pg. 12, 1% full para). The instant claim tree and ‘641 contain identical botanical characteristic except for acidity levels, fruit size and harvest dates which can be a result from
various factors as taught by Nacouzi et al.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/784,004 in view of Nacouzi ef al. (“Quality and Phytochemical Composition of Sweet Cherry Cultivars Can Be Influenced by Altitude,” Plant 2023, 12, 2254, pgs, 1-17).
The claimed application is drawn to a sweet cherry tree named ‘V69062 from a controlled cross with female parent ‘Van’ and male parent, ‘Stella’ where the claimed tree is self-fertile and resistant to rain crack. The ‘004 application is drawn to a sweet cherry tree named ‘V690628’ where the parentage and general botanical description is identical to the claimed tree except having a harvest date of June 24 and fruit acidity of 0.55 g/100g while the claimed tree has a harvest date of June 27 and an acidity of 0.78 g/100g.
Nacouzi er al teach that different altitudes, climate and geographic conditions may affect fruit quality (pg. 2, 1st full para). Titratable acidity decreases with harvest date where the lowest Application/Control Number: 18/784,004 Page 8 Art Unit: 1661 titratable acidity was found with Barqa on June 3, 2021 and the highest titratable acidity was found with Qousaya on May 7, 2021 (pg. 4, lines 8-10). Fig. 3 shows the variation in fruit diameter and titratable acidity in ‘Irani variety between different altitudes over the harvest season (pg. 5, 2nd full para.) Nacouzi ef al. further state that weather conditions influence the fruit during the ripening stage and that sugar synthesis increases with sunlight and high temperature (pg. 12, 1% full para). The instant claim tree and ‘004 contain identical botanical characteristic except for acidity levels and harvest dates which can be a result from various factors as taught by Nacouzi et al.
These are provisional nonstatutory double patenting rejections.
Examiner’s Comment
It is noted that Applicant has indicated that amendments would be forth coming and would provide a marked-up and clean specification. The only correspondence received by the Office was the current claim set filed 14 March 2025.
Summary
No claim is allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAREN M REDDEN whose telephone number is (571)270-0298. The examiner can normally be reached 730-6 Monday-Thursday.
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/KAREN M REDDEN/Primary Examiner, Art Unit 1661