In re Elsner

• Decision Date: 16 August 2004
• Docket Number: No. 03-1585.,No. 03-1569.,03-1569.,03-1585.
• Citation: 381 F.3d 1125
• Parties: In re Wilhelm ELSNER. In re Keith W. Zary.
• Court: U.S. Court of Appeals — Federal Circuit

381 F.3d 1125

In re Wilhelm ELSNER.

In re Keith W. Zary.

No. 03-1569.

No. 03-1585.

United States Court of Appeals, Federal Circuit.

DECIDED: August 16, 2004.

Julie W. Meder, Webb Ziesenheim Logsdon Orkin & Hanson, P.C., of Pittsburgh, PA, argued for appellant. Russell D. Orkin for appellant.

John M. Whealan, Solicitor, United States Patent and Trademark Office, of Arlington, VA, argued for appellee. With him on the brief were Stephen Walsh and Linda Moncys Isacson, Associate Solicitors.

Kenneth S. Klarquist, Klarquist Sparkman, LLP, of Portland, OR, argued for appellant. With him on the brief was Kevin M. Hayes.

John M. Whealan, Solicitor, United States Patent and Trademark Office, of Arlington, VA, argued for the Director of the United States Patent and Trademark Office. With him on the brief were Stephen Walsh and Linda Moncys Isacson, Associate Solicitors.

Patrick H. Ballew, Stratton Ballew PLLC, of Yakima, WA, for amicus curiae Northwest Nursery Improvement Institute, Inc. Of counsel was Rex B. Stratton, of Seattle, WA.

Before LOURIE, CLEVENGER, and BRYSON, Circuit Judges.

LOURIE, Circuit Judge.

Wilhelm Elsner appeals from the decision of the United States Patent and Trademark Office ("PTO") Board of Patent Appeals and Interferences affirming the rejection of claim 1 of United States plant patent application 09/664,247 as anticipated under 35 U.S.C. § 102(b). Ex Parte Elsner, No.2003-0841 (Bd. Pat. Apps. & Interfs., Mar. 26, 2003). Similarly, Keith Zary appeals from the decision of the Board affirming the § 102(b) rejection of the sole claim of United States plant patent application 09/267,559. Ex Parte Zary, No.2003-0703 (Bd. Pat. Apps. & Interfs., Mar. 26, 2003).¹ The Board determined that Appellants' published Plant Breeder's Rights applications anticipated their claims in view of the foreign sales of the claimed plants. We agree that the publication of the applications coupled with foreign sales of the plants may constitute a § 102(b) bar to patentability. However, because the record is silent on the extent to which the foreign sales were known to the public, and because the Board did not adequately address the degree to which availability of the plants through foreign sales enabled the preparation of the claimed plants, we vacate the Board's decisions in both cases and remand for further proceedings.

BACKGROUND

I. The Elsner Application

Mr. Wilhelm Elsner is a plant breeder who resides in Germany and whose botanical products include various varieties of geraniums. In September 1997, he filed an application for a Community Plant Variety Rights ("CPVR") Certificate, or Plant Breeder's Rights ("PBR"), at the Community Plant Variety Office ("CPVO") in Europe for a type of geranium named "Pendec." The variety originated as a mutation of a parent geranium plant named "Pendresd." Elsner's application, designated EU 97/0950, was listed in the CPVO Official Gazette that was published in December 1997. That listing disclosed the names and addresses of the breeder and its representative, a statement of botanical classification, and a provisional denomination for the plant. In July 1998, a sale of the Pendec geranium occurred in Germany. Elsner withdrew the application in May 1999, and it did not therefore mature into a CPVR certificate.

In September 2000, Elsner filed a plant patent application at the PTO claiming the Pendec geranium. The patent examiner rejected the only claim in the application as anticipated under 35 U.S.C. § 102(b), on the ground that the EU 97/0950 listing had been published more than one year before the effective filing date of Elsner's U.S. application. She concluded that the listing disclosed the invention and that the sales placed the skilled artisan in possession of the invention. Elsner appealed to the Board, which affirmed the rejection, and Elsner appeals to this court.

II. The Zary Application

In March 1995, Dr. Keith Zary filed a PBR application in South Africa that claimed a variety of rose plant named "JACopper," a cross between two other rose varieties. The application was published in April of that same year, and it listed information concerning how the breeder, as well as the breeder's South African agent, could be contacted. The JACopper plant was thereafter sold in South Africa and Zambia as early as October 1996.

In March 1999, Zary filed a plant patent application at the PTO claiming the JACopper rose plant. The examiner issued a rejection under § 102(b), stating that the published PBR application was a printed publication that enabled the invention and placed the skilled artisan in possession of the invention because of the public availability of JACopper in South Africa and Zambia. Upon Zary's appeal, the Board affirmed the examiner's rejection, holding that the description of the JACopper plant in a printed publication, combined with the foreign public availability of that plant more than one year before Zary's filing date, constituted a statutory bar. Zary now appeals to this court.

We have jurisdiction over both appeals pursuant to 28 U.S.C. § 1295(a)(4).

DISCUSSION

We review legal determinations of the Board, including whether a printed publication is enabled, without deference. In re Kollar, 286 F.3d 1326, 1329 (Fed.Cir.2002). "Whether a prior art reference is enabling is a question of law based upon underlying factual findings." Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed.Cir.2002). We review the factual findings underlying those determinations for substantial evidence. In re Gartside, 203 F.3d 1305, 1316 (Fed.Cir.2000).

On appeal, Elsner and Zary argue that the Court of Customs and Patent Appeals held in In re LeGrice, 49 C.C.P.A. 1124, 301 F.2d 929 (1962), that foreign activity cannot cause a non-enabled publication to constitute a statutory bar under § 102(b).² The appellants further assert that, because foreign sales are not prior art under the patent statute, they may not be considered within the knowledge of one of skill in the art and cannot be used to enable an otherwise non-enabled publication. They claim that the published PBR applications are not enabled because it is impossible to recreate the claimed plants from the textual descriptions alone, and they assert that the published applications are therefore not effective as § 102(b) references.

The PTO asserts that LeGrice did not squarely address whether a publication may be enabled through a foreign sale. The PTO further argues that the LeGrice court adopted a "possession" test as a measure of enablement of a publication and that the Board properly applied that test to Elsner's and Zary's applications. The correct inquiry, the PTO argues, is whether the printed publication put the public in possession of the claimed invention before the critical date. That is the fundamental policy behind § 102(b), the PTO urges, and it supports the rejection of the claims over the published PBR applications in view of the foreign sales.

The particular question thus before us is whether evidence 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. On that issue of first impression, we hold in the affirmative.

Prior art under § 102(b) must sufficiently describe a claimed invention to have placed the public in possession of that invention. In re Donohue, 766 F.2d 531, 533 (Fed.Cir.1985); In re Samour, 571 F.2d 559, 562 (CCPA 1978). The proper test of a publication as a § 102(b) bar is "whether one skilled in the art to which the invention pertains could take the description of the invention in the printed publication and combine it with his own knowledge of the particular art and from this combination be put in possession of the invention on which a patent is sought." LeGrice, 301 F.2d at 939. In particular, one must be able to make the claimed invention without undue experimentation.

It is undisputed that the PBR applications were published more than one year prior to the effective filing dates of Appellants' respective applications and that the applications fully disclose the claimed plants. It is also clear that the foreign sales of the Pendec geranium and the JACopper rose are not themselves § 102(b) prior art against the applications; that is, those foreign sales themselves do not constitute an on-sale bar. Ordinarily, foreign sales of an invention in combination with a publication will not constitute a bar because such a result would circumvent the established rules that neither non-enabling publications nor foreign sales can bar one's right to a patent. What sets this case apart is that it deals with plant patents, which may be granted to "[w]hoever invents or discovers and asexually reproduces any distinct and new variety of plant...." 35 U.S.C. § 161 (2000). The grant accompanying a plant patent includes "the right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts. . . ." Id. § 163. The PTO asserts that when a publication is combined with a foreign sale which results in possession of the plant by one of skill in the art, it is that possession alone which is capable of enabling the publication. That is not correct. Only when possession derived in this manner enables a person of skill in the art to practice asexual reproduction of the plant in a manner consistent with the statute can a non-enabling publication and foreign sale act as a § 102(b) bar.

Because we perceive a difference between plants and statutorily distinct inventions, we disagree with Appellants' contention that this holding will operate to create a printed publication bar whenever a non-enabling publication and a foreign sale are involved. As our predecessor court noted in LeGrice, "there are inherent differences between plants and manufactured articles." 301 F.2d at 935. In the case...