Ex Parte Boeder

Board of Patent Appeals and Interferences

Sep 25, 2009

10782794 (B.P.A.I. Sep. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/782,794 02/23/2004 Mark Roland Boeder 28967.0178 6789
27890 7590 09/25/2009
STEPTOE & JOHNSON LLP
1330 CONNECTICUT AVENUE, N.W.
WASHINGTON, DC 20036
EXAMINER
HWU, JUNE
ART UNIT PAPER NUMBER
1661
MAIL DATE DELIVERY MODE
09/25/2009 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARK ROLAND BOEDER
__________

Appeal 2009-003289
Application 10/782,794
Technology Center 1600
__________

Decided: September 25, 2009
__________

Before TONI R. SCHEINER, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving a plant patent
application. The Examiner has rejected the claim as anticipated by a foreign
publication which was shown to be enabled by a foreign sale of the claimed
plant. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
The Specification describes a chrysanthemum plant named
“Cetwotone Pink” (Spec. 1). The claim on appeal reads as follows:
1. A new and distinct variety of chrysanthemum plant as described
and illustrated.

As evidence of unpatentability, the Examiner relies on the following:
UPOVROM Plant Variety Database for European Plant Breeder’s
Right, application number 011850 for chrysanthemum plant named
“Cetwotone Pink” (Feb. 15, 2002).
Royal Horticultural Society Dictionary of Gardening, Vol. 1, pp. 614-
618 (1992).
M. Z. Karim et al., “Rapid Multiplication of Chrysanthemum
morifolium through in vitro culture,” 5 Pakistan Journal of Biological
Sciences 1170-1172 (2002).
EconPort, “Dutch Auction,” http://www.econport.org:8080/econport/
request?page=man_auctions-dutchauction, retrieved Aug. 22, 2005.
Chrysanthemum Breeders Assoc., Sales, http://www.cba-nv.nl/
index.cfm?act=Agenten.default, retrieved Aug. 22, 2005.

ANTICIPATION
Issue
The Examiner has rejected the claim under 35 U.S.C. § 102(b)
as being anticipated by the European Plant Breeder’s Right
(PBR) application number 011850 published on February 15,
2002, more than one year prior to the filing date of the instant
application in view of Applicant’s admission that the instant
cultivar was first sold in August 2002 at a flower auction in the
Netherlands (reply dated January 24, 2005) and the Royal
Horticultural Society Dictionary of Gardening 1992, vol. 1
(RHS) describing how to asexually propagate a chrysanthemum
plant.
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(Ans. 3-4.)
The Examiner cites EconPort as evidence that the “sale of the plant
was not a single solitary occurrence and one of ordinary skill in the art
would have been able to obtain the plant” (id. at 4). The Examiner
concludes that “this rejection meets the criteria set out by In re Elsner [381
F.3d 1125 (Fed. Cir. 2004)] that the sale [was not] an isolated occurrence
and that one of ordinary skill would have known how to propagate the
instant plant” (id. at 5).
Appellant contends that the Elsner court remanded the application
involved there to the PTO for further fact-finding related to the accessibility
of the foreign sales, and that the “relevant accessibility under §102(b) should
be accessible in the United States” (Appeal Br. 8). Appellant contends that
the rejection should be reversed because “there is no evidence on this record
that sales in the Netherlands any time more than one year before the filing
date of the present application in fact resulted in, or could have resulted in,
possession in the United States of plant material ‘to practice asexual
reproduction of the plant’ as claimed herein” (id., underlining omitted).
The issue with respect to this rejection is: Has Appellant shown that
the Examiner erred in finding that, according to the controlling case law, the
evidence of record shows that the claimed plant was anticipated by a foreign
publication and foreign sale?
Findings of Fact
1. The application on appeal was filed February 23, 2004.
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2. The chrysanthemum denominated “CETWOTONE PINK” was
disclosed February 15, 2002 in the UPOVROM Plant Variety Database for
European Plant Breeder’s Right, application number 011850.
3. “[T]he first sale of ‘Cetwotone Pink’ to the public took place in the
Netherlands in August 2002, when flowers were offered at the Flower
Auction. The trade designation of this variety is ‘Twotone Pink.’”
(Appellant’s Response filed Jan. 24, 2005, page 3.)
4. “‘Cetwotone Pink’ is usually grown as a cut mum. Flowering
stems, including flowers and foliage in this product group, are sold at the
Dutch auction” (Appellant’s response filed June 2, 2005, page 2).
5. “[S]ale has occurred regularly in the Netherlands under the
commercial name ‘Twotone Pink’” (id.).
6. In 2002, Dutch flower auctions sold €3.4 billion in cut flowers and
potted plants; that year, the Aalsmeer Flower Auction alone had more than
€1.5 billion in sales, 1,375 buyers and 6,734 sellers (EconPort at 1).
7. “Outdoor-flowering chrysanthemums are invariably propagated
from softwood basal growths in late winter or early spring” (Royal
Horticultural Society Dictionary of Gardening 614, left col.).
8. The Royal Horticultural Society Dictionary of Gardening provides
detailed guidance on asexually reproducing chrysanthemums via cuttings
(id.).
Principles of Law
“A person shall be entitled to a patent unless – . . . (b) the invention
was patented or described in a printed publication in this or a foreign country
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or in public use or on sale in this country, more than one year prior to the
date of the application for patent in the United States.” 35 U.S.C. § 102(b).
“[B]efore any publication can amount to a statutory bar to the grant of
a patent, its disclosure must be such that a skilled artisan could take its
teachings in combination with his own knowledge of the particular art and
be in possession of the invention.” In re LeGrice, 301 F.2d 929, 936 (CCPA
1962).
A rejection under 35 U.S.C. § 102(b) based on a single prior art
reference can rely on additional references as evidence that a method of
making the claimed subject matter would have been known to persons of
ordinary skill in the art. See In re Samour, 571 F.2d 559, 562-63 (CCPA
1978).
“[E]vidence of the foreign sale of a claimed reproducible plant variety
may enable an otherwise non-enabled printed publication disclosing that
plant, thereby creating a § 102(b) bar.” In re Elsner, 381 F.3d 1125, 1128
(Fed. Cir. 2004).
When a publication identifies the plant that is invented or
discovered and a foreign sale occurs that puts one of ordinary
skill in the art in possession of the plant itself, which, based on
the level of ordinary skill in the art, permits asexual
reproduction without undue experimentation, that combination
of facts and events so directly conveys the essential knowledge
of the invention that the sale combines with the publication to
erect a statutory bar.
Id. at 1129.
For a foreign sale to enable the printed publication, the “foreign sale
must not be an obscure, solitary occurrence that would go unnoticed by
those skilled in the art. Its availability must have been known in the art.” Id.
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at 1131. In addition, the evidence must show that the foreign sale “enabled
one of ordinary skill in the art to reproduce the claimed plant without undue
experimentation.” Id.
Analysis
The claimed plant was identified in an application for European Plant
Breeder’s Right (PBR) on February 15, 2002 (FF 2). The claimed plant was
first sold to the public in August 2002 (FF 3). Both the publication and the
sale occurred more than one year before the filing date in the United States
of the present application (FF 1).
The Examiner has provided evidence that a sale of flowers at the
Dutch flower auction is not an isolated or solitary event that would go
unnoticed by those of ordinary skill in the art (FF 6). The Examiner has also
provided evidence that those of ordinary skill in the art knew how to
asexually reproduce chrysanthemums (FF 7, FF 8).
The facts of this case thus show a publication identifying the plant and
a foreign sale that put those skilled in the art in possession of the plant,
permitting its asexual reproduction without undue experimentation. Under
the standard set out in In re Elsner, therefore, the sale combines with the
publication to erect a statutory bar to patentability.
Appellant argues that the foreign publication itself was not enabling
(Appeal Br. 3) and that the foreign sale does not qualify as prior art under
any part of 35 U.S.C. § 102 (id. at 4). Both of these arguments were made
and answered in Elsner, see 381 F.3d at 1128 and 1129-30, and therefore
cannot form the basis for a different outcome here.
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Appellant also argues that the holding in Elsner conflicts with the
precedent set in In re LeGrice, 301 F.2d 929 (CCPA 1962) (Appeal Br. 7)
and that “the Federal Circuit in Elsner[ ] erroneously treated §161 plant
patent applications differently from patent applications claiming other
subject matter” (id. at 9).
The Elsner court, however, concluded that its holding was not in
conflict with LeGrice. See 381 F.3d at 1130 (LeGrice “did not address the
manner in which a publication may be enabled, and it did not decide whether
other evidence such as the availability of an invention through foreign sales
may be considered in determining whether a printed publication enables a
skilled artisan to reproduce a claimed plant”). Therefore, Elsner is
controlling law on the issue on appeal.
Finally, Appellant points out that the court in Elsner remanded the
application to the USPTO for further fact-finding relating to the accessibility
of the foreign sales, and argues that the “relevant accessibility under §102(b)
should be accessible in the United States” (Appeal Br. 8, emphasis omitted).
Appellant argues that there is no evidence in the record to show that the
foreign sales of the claimed plant resulted in possession of the plant in the
United States (id.) and that such possession would not have been possible
because plant material entering the United States is subject to a six-month
quarantine (id. at 4-5).
This argument is also unpersuasive. Section 102(b) bars patentability
for an invention described in a foreign publication more than a year before
the patent application was filed. The courts have held that a document must
be accessible to the interested public in order to be considered a
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“publication” under § 102(b). See In re Bayer, 568 F.2d 1357, 1361 (CCPA
1978) (“[A] printed document may qualify as a ‘publication’ under 35
U.S.C. § 102(b), notwithstanding that accessibility thereto is restricted to a
‘part of the public,’ so long as accessibility is sufficient ‘to raise a
presumption that the public concerned with the art would know of [the
invention].’” (citation omitted, alteration in original)); Constant v. Advanced
Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988) (“The statutory
phrase ‘printed publication’ has been interpreted to mean that before the
critical date the reference must have been sufficiently accessible to the
public interested in the art; dissemination and public accessibility are the
keys to the legal determination whether a prior art reference was
‘published.’”).
The courts have also held that a publication bars patentability if a
person of ordinary skill in the art can combine the written description of the
invention with their own knowledge of the field and (in this case) asexually
reproduce the plant described in the publication. See LeGrice, 301 F.2d at
936.
Importantly, however, none of the cases cited above that interpret the
text of § 102(b) held that a claimed invention must be possessed or practiced
in the United States in order for the statutory bar of § 102(b) to apply.
Appellant has pointed us to no other cases holding that § 102(b) requires
accessibility in the United States.
In re Elsner does not support Appellant’s position. The Elsner court
directed the USPTO to determine whether the foreign sale of the plant at
issue in that case was “an obscure, solitary occurrence that would go
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unnoticed by those skilled in the art.” Elsner, 381 F.3d at 1131. The court,
however, did not state or imply that the foreign sales would not be
considered enabling if the plant could not have been possessed in the United
States prior to the critical date.
The Elsner court did not, for example, direct the USPTO to determine
if the foreign sale put the plant in the possession of a skilled worker in the
United States. Nor did the court state or imply that the scope of the inquiry
into accessibility should be limited to buyers in the United States. Rather,
the court held that the claimed plant’s “availability must have been known in
the art, just as a printed publication must be publicly available.” Id. As
discussed above, the cases addressing availability of printed publications do
not hold that availability in the United States is the test of whether a printed
publication is “publicly available.”
Conclusion of Law
Appellant has not shown that the Examiner erred in finding that,
according to the controlling case law, the evidence of record shows that the
claimed plant was anticipated by a foreign publication and foreign sale.
SUMMARY
We affirm the rejection of claim 1 as anticipated by PBR 011850 with
evidence of enablement provided by the admitted public sale of the claimed
variety in August 2002 and the disclosure by the Royal Horticultural Society
of Gardening that chrysanthemums were commonly reproduced asexually at
the time of the prior art publication.
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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

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