MPEP § 1610 — MPEP § 1610
Current through: 2022-07-01

1610-The Action 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1600 

 Section 1610 
 

 
 
 
 
 
 1610 The Action [R-01.2024]

 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, at their 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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 1601-Introduction: The Act, Scope, Type of Plants Covered 

 1602-Rules Applicable 

 1603-Elements of a Plant Application 

 1604-Applicant, Oath or Declaration 

 1605-Specification and Claim 

 1606-Drawings 

 1607-Specimens 

 1608-Examination 

 1609-Report of Agricultural Research Service 

 1610-The Action 

 1611-Issue 

 1612-UPOV Convention 

 1613-Right of Priority Based upon Application for Plant Breeder’s Rights 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:49:27