Ex Parte Meilland

Patent Trial and Appeal BoardSep 19, 2013

12923898 (P.T.A.B. Sep. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte ALAIN A. MEILLAND1 __________ Appeal 2012-004592 Application 12/923,898 Technology Center 1600 __________ 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 Floribunda rose plant characterized by the following combination of characteristics: 1 Appellant identifies the real party in interest as CP DELAWARE, INC. (App. Br. 2). Appeal 2012-004592 Application 12/923,898 2 (a) forms on an abundant basis clusters of attractive double lightly fragrant blossoms that are of a very stable pink coloration, (b) exhibits a regular, compact and bushy growth habit, (c) forms attractive very dense dark green semi-glossy foliage, and (d) is particularly well suited for growing as 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 Plant Breeder’s Rights No. 0163551, published Apr. 10, 1997, or Swiss Plant Breeder’s Rights Application No. 90-27-1504, published May 31, 1999, or European Plant Breeder’s Rights Application No. 980700, published Aug. 17, 1998, each in view of “the admission that ‘Plants of the ‘Meizebul’ variety were made available to the public in France during September 1998’, . . . the MEILLAND RICHARDIER catalog excerpt (August 1998) . . . , which per applicant’s admission ‘was made available to others in France and identifies the ‘Meizebul’ variety,” and Saxton2 (Ans. 4- 5). Appellant argues that the applied printed publications are not enabling and that the plant itself was not placed on sale in the United States until after 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). 2 Saxton’s Cottage and Farm Library, The American Rose Culturist: Being a Practical Treatise on the Propagation, Cultivation, and Management of The Rose 45-61 (1859). Appeal 2012-004592 Application 12/923,898 3 FINDINGS OF FACT 1. The present application claims the benefit of an application filed September 7, 2001 (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 ‘Meizebul’ variety” (Sub. Spec. 3). 3. French Plant Breeder’s Rights No. 0163551 was published on April 10, 1997, Swiss Plant Breeder’s Rights Application No. 90-27-1504 was published on May 31, 1999, and European Plant Breeder’s Rights Application No. 980700 was published on August 17, 1998 (Ans. 4-5). 4. It is undisputed that each of these applications discloses, but does not enable, Meizebul (Ans. 4-5; App. Br. 4). 5. It is also undisputed that “Plants of the ‘Meizebul’ variety were made available to the public in France during September 1998” (Ans. 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 Appeal 2012-004592 Application 12/923,898 4 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. ANALYSIS The French, Swiss, 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. 7). Thus, in view of In re Elsner, we conclude that the Examiner has set forth a prima facie case that the French, Swiss, and European Applications each anticipate claim 1. In addition, Appellant’s arguments do not persuade us otherwise. Appeal 2012-004592 Application 12/923,898 5 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 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