Ex Parte Meilland

Patent Trials and Appeals Board

Sep 19, 2013

13064778 - (D) (P.T.A.B. Sep. 19, 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. MEILLAND1
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Appeal 2012-002753
Application 13/064,778
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 claims 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 on appeal (App. Br. 2). The claim reads as follows:
1. A new and distinct variety of Hybrid Tea rose plant characterized
by the following combination of characteristics:

1 Appellant identifies the real party in interest as CP DELAWARE, INC.
(App. Br. 2).
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(a) exhibits an erect growth habit,
(b) exhibits a strong vigorous growth habit,
(c) abundantly forms over substantially the entire season attractive
large double yellow blossoms that are lightly perfumed,
(d) forms decorative dark green semi-glossy foliage that contrasts well
with the yellow blossoms, and
(e) is particularly well suited for growing as attractive ornamentation
in the landscape;
substantially as herein shown and described.
Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated by
French Plant Breeder’s Rights Application No. 15434, published April 20,
1997, and European Plant Breeder’s Rights Application No. 19980100,
published April 15, 1998, in view of Appellant’s “admission that the cultivar
Meitelov was first sold in France in September 1997 . . . [and] was available
in the August 1997 catalog of Meilland Richardier” (Ans. 4-5).
Appellant argues that the applied printed publications are not enabling
and that the plant itself was not made available to the public in the United
States until less than one year prior to the effective filing date of the present
application (App. Br. 4 & 8). In addition, Appellant argues that the Federal
Circuit’s decision in In re Elsner, 381 F.3d 1125 (Fed. Cir. 2004), “is fatally
flawed as a matter of law and should not be followed” (id. at 8).
FINDINGS OF FACT
1. The present application claims the benefit of an application
filed August 28, 2000 (Sub. Spec. 1), which Appellant states is the effective
filing date of the present application (App. Br. 3).
2. The present application describes a plant variety that “has been
named the ‘Meitelov’ variety” (Sub. Spec. 3).
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3. French Plant Breeder’s Rights Application No. 15434 was
published on April 20, 1997, and European Plant Breeder’s Rights
Application No. 19980100 was published on April 15, 1998 (Ans. 4).
4. It is undisputed that each of these applications discloses, but
does not enable, Meitelov (Ans. 4-5; App. Br. 4).
5. It is also undisputed that “the cultivar Meitelov was first sold in
France in September 1997 . . . [and] was available in the August 1997
catalog of Meilland Richardier” (Ans. 4-5).
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, 939 (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 at 1128. 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
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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.
ANALYSIS
The French and European 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. 6-7). Thus, in view of In re
Elsner, we conclude that the Examiner has set forth a prima facie case that
the French and European Applications each anticipate claim 1. In addition,
Appellant’s arguments do not persuade us otherwise.
With regard to In re LeGrice, we note that the Elsner court
specifically discussed this decision, 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
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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.
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

cdc