Appeal No. 2006-0355
Application No. 09/905,574
The Examiner rejected claim 1 under the first and second paragraphs
of 35 U.S.C. § 112.1 According to the Examiner, claim 1 is not supported
by “[a] disclosure of the plant which is ‘as full and complete . . . as possible”
(Answer 5), and “[d]escribing the plant by using term[s] such as ‘large’ and
‘medium,’ without further elaboration, is vague and ambiguous” (id. at 6).
PRINCIPLES OF LAW
35 U.S.C. § 162 (Rev. 2, May 2004) states in relevant part:
No plant patent shall be declared invalid for non-compliance
with section 112 of this title if the description is as complete as
reasonably possible.
37 CFR § 1.163(a) (July 2004) sets forth the manner in which a plant
should be described in the specification of a plant patent application as
follows:
(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.
ISSUE ON APPEAL
The issue in this appeal, then, is whether the Examiner has established
that Appellants’ description of the peach tree named ‘GL4/66’ is insufficient
1 The Answer does not specifically identify the grounds of rejection, but the
final rejection (mailed October 22, 2002) indicates that the claim is rejected
under the first and second paragraphs of 35 U.S.C. § 112.
2
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