Ex Parte Beineke

Board of Patent Appeals and Interferences

Mar 14, 2011

10919574 (B.P.A.I. Mar. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WALTER F. BEINEKE
__________

Appeal 2010-011045
Application 10/919,574
Technology Center 1600
__________

Before RICHARD E. SCHAFER, SALLY G. LANE, ERIC GRIMES,
RICHARD M. LEBOVITZ, and JEFFREY N. FREDMAN, Administrative
Patent Judges.

Opinion for the Board filed by Administrative Patent Judge GRIMES.

Opinion Concurring filed by Administrative Patent Judge SCHAFER.

Opinion Dissenting filed by Administrative Patent Judge LEBOVITZ.

GRIMES, Administrative Patent Judge.

Appeal 2010-011045
Application 10/919,574

2
DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving a plant patent
application.2 The Examiner has rejected the claim under 35 U.S.C. § 161 on
the basis that the claimed oak tree was found in an uncultivated state. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
This application was the subject of an earlier appeal (Appeal 2007-
3882, decided July 30, 2008). Appellant resumed prosecution and provided
additional declaratory evidence. The Examiner again rejected the claim
under 35 U.S.C. § 161 and this appeal followed.
We adopt the fact-finding (pages 3-4), reasoning supporting the
conclusion of prima facie unpatentability (pages 5-6), and statutory
interpretation (pages 8-13) set out in the 2007-3882 opinion. For
convenience, that opinion is included as an attachment to this opinion.
Following the decision in Appeal 2007-3882, Appellant submitted
declaratory evidence to establish that the evidence of record accurately
shows the state of the claimed tree when it was found.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
2 This appeal was heard at the same time as Appeal 2010-011047
(application 10/919,902). The applications have the same inventor and
assignee, and they present the same issue. We have considered them
together.
Appeal 2010-011045
Application 10/919,574

3
Findings of Fact
1. Appellant has submitted a declaration under 37 C.F.R. § 1.132 of
Walter Beineke (“Beineke Declaration,” executed June 22, 2009).
2. Dr. Beineke declared that acorns were collected from the AFTO-3
tree (among others) in the fall of 1980, and that the acorns were planted and
progeny trees were cultivated and observed (Beineke Declaration, ¶ 2).
3. Dr. Beineke declared that it became clear that AFTO-3 was
genetically superior about twenty years after the acorns were collected (id. at
¶ 3).
4. Dr. Beineke declared that the tree was on a lawn during the time
period from 1980 until the filing date of the patent application on appeal (id.
at ¶¶ 4, 5).
5. Dr. Beineke declared that the “lawn was characteristic of a
cultivated lawn” (id. at ¶ 7) and he “observed grass seeds planted at the base
of the tree – it is well known, that it is difficult to grow grass under the trees,
so that part of the lawn was watered and fertilized to stimulate the grass
seeds to grow. Tree roots under the ground would have benefited from that
treatment.” (Id. at ¶ 8.)
6. Dr. Beineke concluded that “the tree was not ‘found in an
uncultivated state’” (id. at ¶ 6).
7. Appellant has submitted a declaration under 37 C.F.R. § 1.132 of
Mark Coggeshall (“Coggeshall Declaration,” executed Jan. 12, 2009).
8. Dr. Coggeshall declared that “by 1980 the tree was growing on the
lawn as shown in the figure in the patent application” (Coggeshall
Declaration, ¶ 4).
Appeal 2010-011045
Application 10/919,574

4
9. Dr. Coggeshall declared that “the tree was in a cultivated state” (id.
at ¶ 5).
Analysis
Appellant has provided declaratory evidence to show that the
photographs of record accurately represent the state of the claimed tree at the
time it was found (FFs 1-4, 7, 8). The Examiner accepts the evidence of
record as showing the state of AFTO-3 when it was found. (See Answer 8:
“Appellant has provided evidence that the tree was discovered in a location
where other, nearby plants were being cultivated.”). We agree with the
Examiner that a preponderance of the evidence of record supports
Appellant’s position that the photographs of record accurately show the state
of AFTO-3 when it was found.
We also agree with the Examiner that the evidence of record does not
show that the claimed tree was in a cultivated state at the time it was found.
As discussed in the 2007-3882 opinion, the evidence shows that AFTO-3
began growing in a pasture (2007-3882, page 3), and was 41-50 years old
before a house was built nearby (id. at 6). The evidence thus shows that
AFTO-3 was not planted as a result of human activity, and Appellant has
provided no evidence that anyone ever cultivated AFTO-3 by, for example,
watering, staking, fertilizing, or pruning the tree (id. at 3).
Dr. Beineke and Dr. Coggeshall declared that AFTO-3 was not found
in an uncultivated state (FFs 6, 9). Those statements are merely the opinions
of the declarants, however, and are inadequate to settle the legal issue in
dispute without a sufficient factual basis. See In re Reuter, 670 F.2d 1015,
1023 (CCPA 1981) (expert’s opinion on ultimate legal issue entitled to no
Appeal 2010-011045
Application 10/919,574

5
weight); In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992) (opinion
evidence in declarations has little value without factual support).
Dr. Coggeshall provided no factual basis for his opinion, which is
therefore unpersuasive. Dr. Beineke declared that he observed grass seeds
planted at the base of AFTO-3 and concluded that the grass under the trees
had been watered and fertilized, treatments that also would have benefited
the roots of AFTO-3 (FF 5).
The Beineke Declaration provides inadequate factual basis to support
Dr. Beineke’s opinion that AFTO-3 was not found in an uncultivated state.
The declaration speculates on the way in which the lawn surrounding
AFTO-3 may have been cultivated, but it presents no factual evidence
showing that the lawn was in fact watered or fertilized, much less that any
watering or fertilization had any effect on the state of AFTO-3, which is the
only cultivation that matters for the claim on appeal.
In any case, we previously concluded that, based on the legislative
history of § 161,
Congress’ intent, in excluding plants found in an uncultivated
state, was to limit the scope of the Act to plants whose
existence or condition is, even if indirectly or unintentionally,
the result of human effort in fields such as plant breeding,
gardening, and horticulture.
The legislative history does not indicate that Congress intended
the Plant Patent Act to cover a tree that grew up in a wooded
pasture, without any apparent human involvement, merely
because a house was later built nearby and a lawn was grown
around the tree. Surrounding a tree with a lawn does not
change the state of the tree itself. In order for a tree to be
within the scope of 35 U.S.C. § 161, the tree itself must be
cultivated; otherwise, it falls within the excluded category of a
“plant found in an uncultivated state.”
Appeal 2010-011045
Application 10/919,574

6
(2007-3882 opinion, pages 12-13.) The evidence of record shows only that
AFTO-3 was surrounded by a lawn when it was found which, as previously
discussed, is inadequate to show that it was not found in an uncultivated
state.
Appellant argues that the age of the tree at the time it was found is not
relevant to whether it was found in an uncultivated state because “[t]here is
no statutory exclusion for age” (Appeal Br. 3). We agree that plants are not
excluded from the scope of the Plant Patent Act because of their age; the age
of AFTO-3 is relevant to the issue on appeal, however, because it shows that
the tree began growing decades before any houses were built nearby. The
evidence therefore supports a conclusion that the acorn that grew into
AFTO-3 was unlikely to have been planted by a human being.
Appellant also argues that “since progeny tests from the set of acorns
from AFTO-3 demonstrated desirable results, grafts of AFTO-3 were taken
and asexual reproduction was performed to produce genetic copies of
AFTO-3. This is part of the ‘hand of man’ conferring patentability
(Chakrabarty, 1980), that is, working to produce genetically superior trees
that are clones of AFTO-3.” (Appeal Br. 8.) Along the same line, Appellant
argues that “as in the Diamond v. Chakrabarty (US Sup. Ct.) 206 USPQ 193
case that declared anything ‘made by the hand of man,’ patentable, human
interaction was required for patentability of a plant-either in creating or
reproducing the plant” (Appeal Br. 10).
This argument is unpersuasive. The Plant Patent Act states:
“Whoever invents or discovers and asexually reproduces any distinct and
new variety of plant . . . other than . . . a plant found in an uncultivated state,
Appeal 2010-011045
Application 10/919,574

7
may obtain a patent therefor.” 35 U.S.C. § 161. Thus, if a plant is found in
an uncultivated state, asexually reproducing it does not make it eligible for a
plant patent.
Appellants also argue that “[t]o continue to require details on ‘how
AFTO-3 was cultivated’ is a position not supportable by case law or statute,
and has not been required of other Plant Patent applications” (Appeal Br. 9).
This argument is unpersuasive. The Specification provides evidence
that the claimed plant began growing in a pasture (2007-3882, page 6) and
neither the Specification nor Appellant’s declarations describe any
cultivation of the plant, before or after a house was built nearby (id.). The
evidence of record therefore supports a prima facie conclusion that AFTO-3
was found in an uncultivated state. In similar circumstances, the courts have
held that it is appropriate to shift the burden of proof to the applicant. See In
re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“[W]here the Patent Office has
reason to believe that a functional limitation . . . may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.”); In re Wright, 999 F.2d 1557,
1561-62 (Fed. Cir. 1993) (“[T]he PTO bears an initial burden of setting forth
a reasonable explanation as to why it believes that the scope of protection
provided by that claim is not adequately enabled. . . . If the PTO meets this
burden, the burden then shifts to the applicant to provide suitable proofs
indicating that the specification is indeed enabling.”).
Appeal 2010-011045
Application 10/919,574

8
Conclusion of Law
The evidence of record shows that the claimed oak tree was found in
an uncultivated state and is therefore unpatentable under 35 U.S.C. § 161.
SUMMARY
We affirm the rejection of the claim on appeal under 35 U.S.C. § 161.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

Appeal 2010-011045
Application 10/919,574

9
SCHAFER, Administrative Patent Judge, concurring.
I join with the majority decision that the Examiner’s rejection under
35 U.S.C. § 161 should be affirmed. In my view, the new declaration
testimony describing the surroundings of the tree, in this case a lawn, many
years after the tree came into existence is simply irrelevant to resolving the
§ 161 threshold determination.
In my view, the touchstone activity that removes distinct and new
plant varieties from the “uncultivated state” exclusion of § 161 is that the
parent plant came into existence as the result of man’s cultivation. In other
words, there must have been some activity by man that resulted in the
creation of the parent plant that was subsequently asexually reproduced.
Applicant’s written description provides a factual basis for inferring that the
parent oak tree sprung up wild in a pasture. Nature, not man, created the
parent tree. Activities by man, such as planting a lawn or growing crops in
the areas adjacent the tree, many years after nature’s creation, can not, in my
view, transform the wild parent tree from an uncultivated state to a
cultivated state. Appellant’s declaration testimony does not address the
creation of the parent tree. Testimony showing the environment surrounding
the tree many years after it sprung to life wild in a pasture from an acorn is
not relevant to showing that “the hand of man” made a contribution to the
creation of the parent tree.

Appeal 2010-011045
Application 10/919,574

10
LEBOVITZ, Administrative Patent Judge, dissenting.
In the earlier appeal (Appeal 2007-3882) involving this same
application, I dissented from the majority’s interpretation of 35 U.S.C.
§ 1613 and their conclusion that a plant found in “settled and farmed” land
(FF 74), which was subsequently asexually reproduced, is ineligible under
the statute for a patent.
Under 35 U.S.C. § 161, “a plant found in an uncultivated state” cannot
be patented. The majority construed the statutory phrase “found in an
uncultivated state” as a reference to the state of the plant and not its physical
surroundings (Maj’y Opn.5 12-13). Based on this interpretation, the majority
concluded that compliance with the statute is determined by whether “the
found plant itself has been affected by human activity (i.e., cultivation)”
(Maj’y Opn. 8). The majority adopts this same interpretation in this appeal,
as does the concurring opinion.
In my dissenting opinion, I wrote:
“an uncultivated state” was intended to refer to the region or
area (the “wild”) in which the plant was discovered, rather than
the condition of the plant, itself, as opined by the majority. The
statutory language that a “newly found” seedling was
patentable, unless discovered in the wild, clarified that a plant
discovered in a garden, as in Foster, falls within the scope of
the PPA.

3 Also known as the “Plant Patent Act” (PPA).
4 The factual findings referred to in the opinion are those set forth in the
Decision of Appeal 2007-3882.
5 “Maj’y Opn.” refers to the majority opinion in this Decision affirming the
Examiner’s rejection.
Appeal 2010-011045
Application 10/919,574

11
(2007-3882 dissenting opinion, page 21.) The reason for construing the
statute in this way was based on legislative history of § 161 and its
progenitors. The new facts presented in this appeal do not change my view
of how § 161 is properly interpreted. Accordingly, I adopt the statutory
interpretation set out in the 2007-3882 dissenting opinion.
For the reasons set forth in the 2007-3882 dissenting opinion, I do not
agree that a newly found plant, such as the oak tree which is subject of this
appeal, requires deliberate planting or cultivation, or must have been the
recipient of human labor prior to its discovery, to fall within the scope of
§ 161. Otherwise the statutory protection for a “newly found seedling”
would make no sense.
Nevertheless, my interpretation does not mean that every newly found
plant is entitled to protection under § 161. The Plant Patent Act was
specifically tailored to exclude plants found in the wild by a plant explorer
(2007-3882 dissenting opinion, page 21). Thus, a seedling, sport, or mutant
must be discovered on land which is cultivated (id. at 23). “The amount of
human effort necessary to establish an area as ‘cultivated’ would be
understood to mean the ordinary care and labor commensurate with the
purpose for which the land is held, e.g., occasional mowing as would be the
case for a wooded pasture or a yard.” (Id. at 25.) In the instant case, the
facts show that the tree arose in “wooded pasture” on “land . . . settled and
farmed for at least 35 years before the tree was started.” (FF 3 & FF 7). The
tree did not initiate growth in the wild, but rather developed on a homestead,
a place of residence, and therefore is entitled to patent protection under 35
U.S.C. § 161.
Appeal 2010-011045
Application 10/919,574

12

lp

BARNES & THORNBURG LLP
P.O. Box 2786
CHICAGO IL 60690-2786