Application of LeGrice, Patent Appeals No. 6727

• Citation: 301 F.2d 929
• Decision Date: 11 July 1962
• Docket Number: Patent Appeals No. 6727,6728.
• Parties: Application of Edward Burton LeGRICE.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

301 F.2d 929 (1962)

Application of Edward Burton LeGRICE.

Patent Appeals Nos. 6727, 6728.

United States Court of Customs and Patent Appeals.

May 4, 1962.

Rehearing Denied July 11, 1962.

John H. Leonard, Cleveland, Ohio (Spencer B. Michael, Smith, Michael & Gardiner, Washington, D. C., of counsel), for appellant.

Clarence W. Moore, Washington, D. C. (Joseph Schimmel, Washington, D. C., of counsel), for the Commission of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

SMITH, Judge.

The issue on these consolidated appeals is whether appellant is entitled under 35 U.S.C. 161¹ to a patent on each of his applications serial numbers 709,127 and 709,128, filed January 15, 1958, each entitled "Rosa Floribunda Plant." The Patent Office Board of Appeals affirmed the final rejection of both applications under 35 U.S.C. § 102(b) on the ground that the inventions had been described in printed publications in England more than one year prior to the dates of filing of the said applications. The publications occur in the National Rose Society Annual of England and in catalogues. The Annual describes appellant as having raised the roses described and the catalogues show color pictures of these roses. There is no dispute that the publications relate to and picture the identical roses which were originated by appellant and which he now seeks to patent.

Resolution of the issue on these appeals requires us to determine whether as a matter of law, the English publications constitute, within the meaning of 35 U. S.C. § 102(b), a bar to appellant's right to patents on said applications.

The applicable portion of 35 U.S.C. § 102(b) reads:

"A person shall be entitled to a patent unless — * * * (b) the invention was * * * described in a printed publication * * * more than one year prior to the date of the application for patent in the United States, * * *."²

Thus, the statute expressly prohibits the granting of a patent on an invention or discovery which has been "described in a printed publication * * * more than one year prior to the date of the application for patent in the United States." Long prior to the inclusion of this provision in 35 U.S.C. § 102(b), the courts had construed earlier provisions and had interpreted them with regard to what must be described in a printed publication in order for the publication to be a bar to the grant of a patent. The underlying concept on which the courts permitted such a bar is that the description of the invention in the printed publication was sufficient to give possession of the invention to the public.

The express provision of 35 U.S.C. § 161 permits the granting of patents on the particular classes of plants therein enunciated which include "Rosa Floribunda Plants" disclosed in the applications on appeal. Grant of such a patent is, however, "subject to the conditions and requirements" of Title 35 "except as otherwise provided." Thus, appellant's right to patents on his applications is subject to the bar stated in 35 U.S.C. § 102(b), if the publications in issue meet the legal requirements necessary to establish such a bar.

The particular question of law to be here decided is presented on stipulated facts which, insofar as they relate to the issue, are here quoted from the record:

"4. Each application was accompanied by the conventional formal oath containing the statement that the applicant did not believe the variety of plant was described in any printed publication in any country more than one year prior to his application, but adding the following additional recitations:

"(a) In Serial No. 709,127, — Charming Maid `that certain information relative to the new variety was published in the National Rose Society Annual, of England, for 1954 on pages 156 and 157 and like information was published more than one year prior to the date hereof in catalogues, but he believes that such information cannot enable anyone to practice the invention by producing the present variety.\'; and

"(b) In Serial No. 709,128, — Dusky Maiden `that certain information relative to a new variety was published in the National Rose Society Annual, of England, in 1949 on page 155, and like information was published more than one year prior to the date hereof in catalogues, but he believes that such information cannot enable anyone to practice the invention by producing the variety\'.

"5. (a) The disclosures in the Rose Annual of 1949, page 155, insofar as pertinent, is sic as follows:

"`The Gold Medal Award was made to: — (Here follows the list of roses, including Dusky Maiden) —

"`— Dusky Maiden (Hy. Poly.) raised and exhibited by E. B. LeGrice, North Walsham. — Glowing dark scarlet with dusky velvety sheen. Single blooms carried in large trusses. Size when open 3-in. in diameter. Very fragrant. Vigorous. Foliage dark green and abundant. Bedding. Trial Ground Certificate, 1945. Prune 34.\'

"(b) The disclosure in the Rose Annual of 1954, pages 156 and 157, is as follows:

"`The Trial Ground

"`List of Trial Ground Awards, 1953

"`(To which is appended the Show Awards in 1953.)

"`(Here follows a list of roses, including Charming Maid) —

"`— Charming Maid (Flor.). Trial Ground No. 624. Reg. No. 269. Dainty Maiden x Mrs. Sam McGredy.

Raiser and Distributor E. B. LeGrice, North Walsham. Vigorous growing variety with deep glossy green foliage 16. Freedom from disease 16. Large single flowers borne in small clusters. Colour pink shaded gold 16. Freedom of flowering 16. General effect 6. Fragrance 5. Gold Medal Provincial Show, 1953.\'

"6. In each case, the prior catalogue publication referred to in the oath includes a color picture of the rose clear enough to establish identity in appearance between the rose illustrated and the applicant\'s variety, and the catalogue publication with the picture establishes that the rose described and illustrated is the variety described and claimed in the application, and the rose so described and illustrated is, in fact, the variety so described and claimed in the application."

The unique aspects of plants which are the subject of plant patents have posed numerous problems to various tribunals charged with the application of basic patent law concepts thereto. A review of all the reported decisions dealing with plant patents³ establishes that the present case presents a legal problem of first impression on which there are no controlling precedents.

35 U.S.C. § 161 is based on an amendment, effective May 23, 1930, to R.S. 4886, (Sec. 31 of former title 35 U.S.C.), which originated in House Bill 11372 of the Second Session of the 71st Congress. The Committee on Patents which reported the bill filed a report stating:

"The purpose of the bill is to afford agriculture, so far as practicable, the same opportunity to participate in the benefits of the patent system as has been given industry, and thus assist in placing agriculture on a basis of economic equality with industry. The bill will remove the existing discrimination between plant developers and industrial inventors. * * *"

The report expresses the hope that the bill "will afford a sound basis for investing capital in plant breeding and consequently stimulate plant development through private funds". It then goes on to state:

"No one has advanced a just and logical reason why reward for service to the public should be extended to the inventor of a mechanical toy and denied to the genius whose patience, foresight, and effort have given a valuable new variety of fruit or other plant to mankind.

"This bill is intended not only to correct such discrimination, but in doing so it is hoped the genius of young agriculturists of America will be enlisted in a profitable work of invention and discovery of new plants that will revolutionize agriculture as inventions in steam, electricity, and chemistry have revolutionized those fields and advanced our civilization."

An identical report was filed by the Senate Committee on Patents.

The unique nature of a plant patent was recognized by the Patent Office Board of Interference Examiners in Dunn v. Ragin v. Carlile, 50 USPQ 472 (1941) where at p. 474 it was recognized "The mere filing of an application for a patent for a new variety of plant would not enable anyone to reproduce such a plant."

35 U.S.C. § 161 engrafts the Plant Patent Act onto the basic patent law, which requires us to apply thereto all the rules, regulations and provisions of the basic patent law except that, by the express provision of 35 U.S.C. § 162, a plant patent cannot be declared invalid if its description "is as complete as is reasonably possible."

As indicated by the Committee reports and as provided in the statutory provisions, the law of plant patents is so inextricably bound up with the earlier general patent law that the former cannot be understood without consideration of the latter, and as provided in 35 U.S.C. § 161, the provisions of Title 35 "relating to patents for inventions shall apply to patents for plants, except as otherwise provided."

It appears, therefore, to have been the intent of Congress that plant patents and patents for other inventions should be subject to the same statutory provisions "except as otherwise provided."

Thus in determining the meaning of 35 U.S.C. § 102(b) as it applies to patents for plants, the first consideration is that Congress did not provide any exception thereto, so it should be presumed that Congress intended that it should be applied to patents for plants as it had been previously applied to patents for other inventions. In other words, we think Congress, by enacting no exception to 35 U.S.C. § 102(b) with respect to patents for plants, intended that it be interpreted the same for plant patents as it has been interpreted in relation to patents for other inventions. Otherwise a "discrimination" would continue to exist "between plant developers and industrial inventors," which, as indicated in the...