Ex Parte Elsner

Board of Patent Appeals and Interferences

Jan 10, 2005

09753976 (B.P.A.I. Jan. 10, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WILHELM ELSNER
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Appeal No. 2004-0167
Application No. 09/753,976
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VACATUR AND REMAND
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Before WILLIAM F. SMITH, ADAMS, and GRIMES, Administrative Patent Judges.
WILLIAM F. SMITH, Administrative Patent Judge.
This appeal involves plant patent Application No. 09/753,976. The question
raised in this appeal involves whether evidence of foreign sales of the claimed
reproducible plant variety may enable an otherwise non-enabled printed publication
disclosing the plant, thereby creating a bar under 35 U.S.C. § 102(b). The Court of
Appeals for the Federal Circuit considered that issue in In re Elsner, 381 F.3d 1125,
72 USPQ2d 1038 (Fed. Cir. 2004), and held in the affirmative. Id. at 1128, 72 USPQ2d
at 1041. In so holding, the court stated that “[t]he foreign sale must not be an
Appeal No. 2004-0167
Application No. 09/753,976
Page 2
obscure, solitary occurrence that would go unnoticed by those skilled in the art.” Id. at
1131, 72 USPQ2d at 1043. The court also stated that the record did not establish that
“even if the interested public would readily know of the foreign sales, those sales
enabled one of ordinary skill in the art to reproduce the claimed plants without undue
experimentation.” Id. Thus, the court vacated the Board’s decision and remanded the
case for “further factual findings relating to the accessibility of the foreign sales of the
claimed plants and the reproducibility of the claimed plants from the plants that were
sold.” Id.
In this case, the examiner is relying upon applicant’s admission that the claimed
plant “was first offered for sale in Europe in October 1998" as evidence that European
Community Plant Breeder’s Rights Application No. 98/1018 is enabled. Examiner’s
Answer, page 3. However, there is no evidence whether the sales were of the type that
would be noticed by those of skill in the art. Nor has the other issue raised by the
Federal Circuit in Elsner, whether the sales would enable one skilled in the art to
reproduce the claimed plant without undue experimentation, been addressed.
Accordingly, we vacate the examiner’s rejection and remand the case to the
examiner to determine whether the sales of the claimed plant (1) were “an obscure,
Appeal No. 2004-0167
Application No. 09/753,976
Page 3
solitary occurrence that would go unnoticed by those skilled in the art” and (2) would
enable one to reproduce the plant without undue experimentation.
VACATED; REMANDED
William F. Smith )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
Donald E. Adams )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Eric Grimes )
Administrative Patent Judge )
Appeal No. 2004-0167
Application No. 09/753,976
Page 4
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