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1605    Specification and Claim [R-11.2013]

35 U.S.C. 162   Description, claim.

No plant patent shall be declared invalid for noncompliance with section 112 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.

37 C.F.R. 1.163   Specification and arrangement of application elements in a plant application.

  • (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. For a newly found plant, the specification must particularly point out the location and character of the area where the plant was discovered.
  • (b) The elements of the plant application, if applicable, should appear in the following order:
    • (1) Plant application transmittal form.
    • (2) Fee transmittal form.
    • (3) Application data sheet (see § 1.76).
    • (4) Specification.
    • (5) Drawings (in duplicate).
    • (6) The inventor's oath or declaration (§ 1.162).
  • (c) The specification should include the following sections in order:
    • (1) Title of the invention, which may include an introductory portion stating the name, citizenship, and residence of the applicant.
    • (2) Cross-reference to related applications (unless included in the application data sheet).
    • (3) Statement regarding federally sponsored research or development.
    • (4) Latin name of the genus and species of the plant claimed.
    • (5) Variety denomination.
    • (6) Background of the invention.
    • (7) Brief summary of the invention.
    • (8) Brief description of the drawing.
    • (9) Detailed botanical description.
    • (10) A single claim.
    • (11) Abstract of the disclosure.
  • (d) The text of the specification or sections defined in paragraph (c) of this section, if applicable, should be preceded by a section heading in upper case, without underlining or bold type.

37 C.F.R. 1.164   Claim.

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.

The specification should include a complete detailed description of the plant and the characteristics thereof that distinguish the same over related known varieties, and its antecedents, expressed in botanical terms in the general form followed in standard botanical textbooks or publications dealing with the varieties of the kind of plant involved (evergreen tree, dahlia plant, rose plant, apple tree, etc.), rather than a mere broad nonbotanical characterization such as commonly found in nursery or seed catalogs. The specification should also include the origin or parentage and the genus and species designation of the plant variety sought to be patented. The Latin name of the genus and species of the plant claimed should be stated and preceded by the heading set forth in 37 CFR 1.163(c)(4). The specification must particularly point out where, e.g., location or place of business, and in what manner the variety of plant has been asexually reproduced.

Form Paragraphs 16.01, 16.09, and 16.10 may be used to object to the disclosure under 37 CFR 1.163(a).

¶ 16.01    Specification, Manner of Asexually Reproducing

The application is objected to under 37 CFR 1.163(a) because the specification does not “particularly point out where and in what manner the variety of plant has been asexually reproduced.” Correction is required.

¶ 16.09    Specification, Less Than Complete Description

The disclosure is objected to 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. More specifically: [1].

¶ 16.10    Specification, Location of Plant Not Disclosed

The disclosure is objected to under 37 CFR 1.163(a) because the specification does not particularly point out the location and character of the area where the plant was discovered.

Where color is a distinctive feature of the plant, 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.

Form Paragraphs 16.02 and 16.03 may be used to object to the disclosure or reject the claim, respectively, because of a lack of a clear and complete disclosure with regard to colors.

¶ 16.02    Colors Specified Do Not Correspond With Those Shown

The disclosure is objected to under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the [1] colors specified fail to correspond with those shown.

¶ 16.03    Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Non-Support for Colors

The claim is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as being unsupported by a clear and complete disclosure with regard to [1] colors, for the following reasons: [2].

If the written description of a plant is deficient in certain respects (see, e.g., In re Greer, 484 F.2d 488, 179 USPQ 301 (CCPA 1973)), a clarification or additional description of the plant, or even a wholesale substitution of the original description so long as not totally inconsistent and unrelated to the original description and photograph of the plant may be submitted in reply to an Office action. Such submission will not constitute new matter under 35 U.S.C. 132. Jesselv.Newland, 195 USPQ 678, 684 (Dep. Comm’r Pat. 1977).

The rules on Deposit of Biological Materials, 37 CFR 1.801-1.809, do not apply to plant patent applications in view of the reduced disclosure requirements of 35 U.S.C. 162, even where a deposit of a plant has been made in conjunction with a utility application (35 U.S.C. 101).

A plant patent is granted only on the entire plant. Only one claim is necessary and only one is permitted. A method claim in a plant patent application is improper. An example of a proper claim would be “A new and distinct variety of hybrid tea rose plant, substantially as illustrated and described herein.”

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Last Modified: 03/27/2014 10:10:33