Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE NORMAN J.P. THOMSON
Appeal No. 92-0384
April 29, 1992
Application for Patent filed November 9, 1987, Serial No. 07/118,129. Cotton Cultivar.
Waddell A. Biggart et al. for appellant
Supervisory Patent Examiner--Elizabeth C. Weimar
Before Goldstein, Goolkasian and Kimlin
This is an appeal from the final rejection of claims 1-3, 5 and 6. Claims 7 and 8, the only other claims remaining in the present application, have been withdrawn from consideration as being directed to a non-elected invention. Claims 1 and 2 are illustrative:
1. A cotton cultivar having the designation Siokra (ATCC 40405).
2. Seeds of the cotton cultivar according to Claim 1.
In the rejection of the appealed claims, the examiner relies upon the following references:
Luckett et al. (Luckett), New Zealand Agronomy Society Special Publication No. 5, Quality Requirements and Cotton Breeding in Australia, pages 276-277 (1986).
Duff, California-Arizona Cotton, Australia's Siokra Cotton, pages 10 and 14 (1986).
Thomson, Xerox Telecopier 495, Breeding and Performance Aspects of Siokra, pages 6-8 (1987).
Appellant's claimed invention is directed to a cotton cultivar having the designation Siokra. According to appellant, Siokra "possesses the okra leaf character in combination with a high yield, high ginning out turn, good quality fiber and with resistance to 18 common races of the wide spread disease, bacterial blight." (page of principal Brief). In addition, it is said that Siokra provides a good yield under a range of environmental conditions.
As noted by the examiner, appellant has not separately argued the patentability of the appealed claims with any reasonable specificity. Accordingly, all the appealed claims are considered to stand or fall together. In re Nielson, 816 F.2d 1567, 2 USPQ2d 1525 (Fed.Cir.1987).
Appealed claims 1-3, 5 and 6 stand rejected under 35 USC 102(b) as being clearly anticipated by either Luckett or Duff in light of Thomson.
We have thoroughly reviewed the entire record before us, which includes the well-articulated positions presented by both appellant and the examiner. In so doing, we concur with the examiner that the claimed subject matter was described in a printed publication under circumstances whereby it was in the possession of the public more than one year prior to the filing date of the present application. Accordingly, we will sustain the examiner's rejection for essentially those reasons expressed in the Answer, and add the following.
There is certainly no dispute that the claimed cotton cultivar, seeds of the cultivar, etc. are disclosed in each of the applied references, i.e., Luckett, Duff and Thomson. Each discloses the commercial growth of the claimed Siokra. There is also agreement that the applicable law governing the propriety of rejections under 35 USC 102(b) is articulated in In re Donohue, 766 F.2d 531, 226 USPQ 619 (Fed.Cir.1985) which explains:
*2 It is well settled that prior art under 35 USC 102(b) must sufficiently describe the claimed invention to have placed the public in possession of it. ... Such possession is effected if one of ordinary skill in the art could have combined the publication's description of the invention with his own knowledge to make the claimed invention. ... Accordingly, even if the claimed invention is disclosed in the printed publication, that disclosure will not suffice as prior art if it was not enabling.
It is appellant's position that inasmuch as at least 12 breeding steps are necessary to arrive at the claimed Siokra cultivar, and not one of the applied references provides sufficient disclosure of such breeding steps, the references are non-enabling for the skilled artisan and, therefore, cannot anticipate the claimed invention within the meaning of 35 USC 102. On the other hand, while the examiner acknowledges that the cited references do not disclose appellant's breeding steps, the examiner maintains that the references do disclose that the claimed Siokra, at least in Australia, was commercially available to the skilled artisan for more than one year prior to the present filing date. Therefore, the examiner concludes that both Duff and Luckett are enabling disclosures since "[I]n the absence of evidence to the contrary, it is self-evident that the public was already in possession of the invention such that a person of skill in the art could obtain and reproduce the invention by seed germination without experimentation." (page 5 of Answer).
In upholding the examiner's rejection, we think it important to focus upon both the subject matter being claimed and the knowledge that can be reasonably attributed to one skilled in the relevant art at the time of filing the present application. In the present case, the claims on appeal are not directed to the process of breeding a specific cotton cultivar. Rather, the appealed claims define particular agricultural products, such as the cotton cultivar Siokra, as well as the seed, plants and pollen thereof. Thus, keeping in perspective the nature of the claimed subject matter, the question becomes would the skilled artisan, armed with the disclosures of the cited articles, have had the requisite knowledge to make the claimed invention, viz., the Siokra cultivar and its seeds, plants and pollen.
Stated as such, we are convinced that the skilled cotton grower would have had the wherewithal, upon reading the publicly disseminated reference articles, to purchase the commercially available Siokra seeds, and employ conventional techniques to plant and nurture the seeds to maturity in order to obtain the claimed invention, i.e., Siokra plants, seeds and pollen. As pointed out by the examiner, appellant has proffered no objective evidence on this record that the claimed Siokra seeds were unavailable to the skilled artisan, or that undue experimentation would have been required to reproduce Siokra by germination of the commercially available seeds. In the absence of such evidence, the examiner's position is reasonable and in accordance with current patent jurisprudence.
*3 Appellant contends that the examiner's position amounts to an improper and impermissible combination of the two separate and distinct bars to patentability recited in section 102(b), namely that 1) the invention was patented or described in a printed publication in this or a foreign country or 2) in public use or on sale in this country. Appellant urges that the printed publication bar is not available because the publication is not enabling, and that the "on sale" bar is not available because the on sale activities occurred in a foreign country. However, we concur with the examiner that the applied rejection does not rely upon or incorporate the public use or on sale bar of the statute. As explained above, we are satisfied that the material disclosed in each of Luckett, Duff and Thomson, when considered in conjunction with the knowledge of the skilled cotton grower, would have enabled such a skilled artisan to make the claimed Siokra cultivar, along with its seeds, plants, pollen, etc., by purchase and planting of the requisite seeds. That is why the Thomson declaration under 37 CFR 1.132, stating "that I am not aware of any public use or sale of the cultivar Siokra in the United States by others or by myself as applicant" is not relevant to the rejection at hand. The issue is not whether the cultivar Siokra was on public use or sale in the United States but, rather, whether Siokra seeds were available to a skilled artisan anywhere in the world such that he/she could attain them and make/reproduce the Siokra cultivar disclosed in the cited publications. To emphasize the evident commercial availability of Siokra, we will quote from the cited publications. Duff writes "[t]aking the better part of 10 years to develop, Siokra was introduced to the market place for the 1985-86 growing season" and that a Michael Thomas explained that " 'the whole industry switched to DPL90' or Siokras for the 1985-86 growing season." Luckett states "SIOKRA is, we believe, the first okra leaf commercial variety that has been accepted by growers for large-scale growing." In an article dated February-April 1986, the present inventor, M.J. Thomson, states:
One of the two new cottons being grown this season is our (CSIRO) variety, Siokra. Although Siokra was made available to Cotton Seed Distributors (CSD) for seed increase three seasons ago, and is now being grown commercially on substantial areas, its formal release by the Federal Member for Parliament, the Honourable Tom McVeigh, has only recently (24-2-86) taken place.
Manifestly, it is reasonable to conclude that, at the time the cited articles were published, skilled artisans throughout the world would have found Siokra seeds readily available on the open market. Again, there is no evidence of record to the contrary.
*4 Appellant relies heavily upon the holding of our predecessor review court in In re LeGrice, 301 F.2d 929, 133 USPQ 365 (CCPA 1962). However, we do not find LeGrice controlling for more than one reason. For one, the following quote from LeGrice is by now axiomatic: "Each case must be decided on its own particular facts in determining whether, in fact, the description in the printed publication is adequate to put the public in possession of the invention and thus bar patentability of a plant under the conditions stated in § 102(b)." The Court went on to caution:
While the present knowledge of plant genetics may mean as a practical matter, that the descriptions in such general publications as are here involved cannot be relied upon as a statutory bar under § 102(b), we must be mindful of the scientific efforts which are daily adding to the store of knowledge in the fields of plant heredity and plant eugenics7 which one skilled in this art will be presumed to possess.
In the footnote the Court recognized, even then, contemporaneous advancements in plant eugenics, and further explained "Current studies 'to break the chromosome code' may also add to the knowledge of plant breeders so that they may some day secure possession of a plant invention by a description in a printed publication as is now possible in other fields of inventive effort." Consequently, to whatever extent LeGrice may be viewed as casting doubt on the enabling quality of the cited publications of record here, we are persuaded that the "particular facts" of the present case support the conclusion that the genetic technology of "someday" is here. There is simply no evidence of record that raises any doubt that the skilled artisan would be able to grow the claimed Siokra cultivar.
Secondly, we must agree with the examiner that there is no indication that LeGrice had in evidence the facts supporting commercial availability that are present here. While appellant contends at page 16 of the principal brief that LeGrice "held that a photograph of a hybrid rose in a catalog indicating commercially (sic) availability in a foreign country (i.e., England) did not constitute an adequate description of that rose such as would bar issuance of a patent," the court, in fact, made no such holding. The court actually held "that descriptions in printed publications of new plant varieties, before they may be used as statutory bars under 35 USC 102(b), must meet the same standards which must be met before a description in a printed publication becomes a bar in non-plant patent cases. ... When so considered the descriptions in the printed publications here in issue do not meet the requirement of an 'enabling' description, as the statute as been interpreted in numerous cases." (emphasis added). Manifestly, the court's holding was based on the specific "printed publications" before it, and no indication was given that the "prior catalogue publication" before it evidenced commercial availability in a readily enabling form. The court simply stated that the prior catalogue publication "includes a color picture of the rose clear enough to establish identity in appearance between the rose illustrated and applicant's variety."
*5 In the present case there is ample evidence, indeed, not any dispute, that seeds of the claimed cotton cultivar described in the cited publications were commercially available more than one year prior to appellant's filing date. Unlike the seeds of the asexually reproduced roses of LeGrice, which would not produce the claimed rose, the sexually reproduced seeds of the Siokra cultivar do reproduce the claimed Siokra cultivar. [FN1] Hence, the commercially available seeds themselves enable reproduction of the claimed cotton cultivar. We find it significant that for enablement purposes the descriptive words of the specification herein do not differ substantially from the disclosures of the cited publications. Appellant's specification is rendered enabling by virtue of the availability of the claimed seeds deposited in the American Type Culture Collection (ATCC accession number 40405), while the enabling quality of the cited publications is assured by the public availability of the same cotton seeds. Such public accessibility to the claimed seeds would have enabled the skilled artisan to make and use the claimed cotton cultivar, its seeds, etc.
In conclusion, based on the foregoing and the reasons expressed in the Answer, the examiner's decision rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).
BOARD OF PATENT APPEALS AND INTERFERENCES
John T. Goolkasian
Edward C. Kimlin
FN1. Another point of distinction is that whereas LeGrice concerned a plant patent, appellant seeks a utility patent, which affords a broader scope of protection.