Ex Parte Meilland

Patent Trial and Appeal Board

Feb 4, 2013

12929715 (P.T.A.B. Feb. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ALAIN A. MEILLAND
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Appeal 2012-001480
Application 12/929,715
Technology Center 1600
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Before MELANIE L. McCOLLUM, ERICA A. FRANKLIN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving a claim to a rose
plant variety. The Examiner has rejected the claim as anticipated. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claim 1 is pending and on appeal (App. Br. 2). Claim 1 reads as
follows:
1. A new and distinct variety of Hybrid Tea rose plant
characterized by the following combination of characteristics:
(a) exhibits semi-erect growth habit,
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(b) abundantly forms on a continuous basis attractive double
yellow suffused with red blossoms having a very strong
fragrance,
(c) forms very dense dark green foliage having a glossy aspect that
contrasts well with the blossom coloration, and
(d) is particularly well suited for growing as attractive
ornamentation in parks and gardens;
substantially as herein shown and described.
Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated by
French Breeder’s Right Application No. 0171375 and EC Breeder’s Right
Application No. 1990287 in view of Appellant’s admission that
“Meibderos” was publically available in France as early as September 1999
(Ans. 4).
FINDINGS OF FACT
1. The present application claims the benefit of an application
filed April 3, 2002 (Spec. 1).
2. The present application describes a plant variety that “has been
named the ‘Meibderos’ variety” (id. at 3).
3. It is undisputed that both French Breeder’s Right Application
No. 0171375 and EC Breeder’s Right Application No. 1990287 are prior art
under 35 U.S.C. § 102(b) (Ans. 4; App. Br. 3).
4. It is also undisputed that each of these applications discloses,
but does not enable, Meibderos (Ans. 4; App. Br. 4).
5. Appellant admits that “[p]lants of the ‘Meibderos’ variety are
understood to have been first placed in the hands of the public in France . . .
during September 1999” (Page 4 of the Oct. 14, 2003 Response in parent
Application No. 10/114,445).
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PRINCIPLES OF LAW
As with utility patents, “only an ‘enabling’ publication is effective as
a bar [under 35 U.S.C. § 102(b)] to a subsequent [plant] patent.” In re
LeGrice, 301 F.2d 929, 1138 (CCPA 1962). However, “evidence of [a]
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). In
particular,
[w]hen 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.
“[T]he precise focus of the analysis is not whether the foreign sales
are themselves § 102(b) prior art, but whether the publication has placed the
claimed invention in the possession of the public before the critical date.”
Id. at 1129-30. In this regard, the Elsner court explained that “[t]he 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, just
as a printed publication must be publicly available.” Id. at 1131. In
addition, the Elsner court explained that, “even if the interested public would
readily know of the foreign sales, those sales [must] enable[ ] one of
ordinary skill in the art to reproduce the claimed plants without undue
experimentation.” Id.
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ANALYSIS
The French and EC Applications, which were each published more
than a year before the effective filing date of the present application, each
disclose the plant recited in claim 1 (Findings of Fact (FF) 1-4). In addition,
this plant was publically available (in France) more than a year before the
effective filing date of the present application (FF 5). Moreover, the
Examiner finds, and Appellant does not dispute, that possession of the plant
would enable one of ordinary skill in the art to reproduce the claimed plant
without undue experimentation (Ans. 6). Thus, in view of In re Elsner, we
agree that the Examiner has set forth a prima facie case that the French and
EC Applications each anticipate claim 1. In addition, Appellant’s arguments
do not persuade us otherwise.
With regard to In re LeGrice, we do not agree that the Elsner court
overlooked this precedent (App. Br. 5). On the contrary, the Elsner court
specifically discussed LeGrice, noting that the LeGrice court recognized that
“there are inherent differences between plants and manufactured articles.”
In re Elsner, 381 F.3d at 1129 (quoting In re LeGrice, 301 F.2d at 935). In
addition, as stated in Elsner:
LeGrice decided only the narrow issue whether a printed
publication of a plant patent that is not enabled is a statutory
bar. That decision 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.
In re Elsner, 381 F.3d at 1130. Thus, we agree with the Examiner that
Elsner is controlling.
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CONCLUSION
The evidence supports the Examiner’s conclusion that claim 1 is
anticipated. We therefore affirm the anticipation rejection.
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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