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1610 The Action [R-08.2012]

The action on the application by the examiner will include all matters as provided for in other types of patent applications. See 37 CFR 1.161.

With reference to the examination of the claim, the language must be such that it is directed to the “new and distinct variety of plant.” This is important as under no circumstance should the claim be directed to a new variety of flower or fruit in contradistinction to the plant bearing the flower or the tree bearing the fruit. This is in spite of the fact that it is accepted and general botanical parlance to say “A variety of apple or a variety of blackberry” to mean a variety of apple tree or a variety of blackberry plant.

Where the application is otherwise allowable, a claim which recites, for example “A new variety of apple characterized by,” may be amended by the insertion of - tree - after “apple” by an examiner’s amendment.

By the same token, the title of the invention must relate to the entire plant and not to its flower or fruit, thus: Apple Tree, Rose Plant.

Care should also be exercised that the specification does not contain unwarranted advertising, for example, “the disclosed plant being grown in the XYZ Nurseries of Topeka, Kansas.” It follows, also, that in the drawings any showing in the background of a plant, as a sign carrying the name of an individual, nursery, etc., is objectionable and deletion thereof is required. Nor should the specification include laudatory expressions, such as, “The rose is prettier than any other rose.” Such expressions are wholly irrelevant. Where the fruit is described, statements in the specification as to the character and quality of products made from the fruit are not necessary and should be deleted.

The Office action may include so much of any report of the ARS as the examiner deems necessary, or may embody no part of it. In the event of an interview, the examiner, in his or her discretion, may show the entire report to the inventor or attorney.

Form Paragraph 16.12 may be used to reference portions of the ARS report.

¶ 16.12 Report From U.S. Dept. of Agriculture

This application has been submitted to the U.S. Department of Agriculture for a report. Pertinent portions follow: [1]

The report of the ARS is not in the nature of a publication and matters raised therein within the personal knowledge of the specialists of the ARS are not sufficient basis for a rejection unless it is first ascertained by the examiner that the same can be supported by affidavits by said specialists (37 CFR 1.104(d)(2)). See Ex parte Rosenberg, 46 USPQ 393 (Bd. App. 1939).

Form Paragraphs 16.04 and 16.08, as appropriate, may be used to reject the claim.

¶ 16.04 Rejection, 35 U.S.C. 102

The claim is rejected under 35 U.S.C. 102 as failing to patentably distinguish over [1].

¶ 16.08 Rejection, 35 U.S.C. 112

The claim is rejected under 35 U.S.C. 112[1] because [2].



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Last Modified: 02/16/2023 12:58:17