Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE C
Appeal No. 92-0393
September 28, 1992
Application for Patent Novel Soybean Variety X
B et al. for appellant
Supervisory Patent Examiner--Elizabeth C. Weimar
Before Goldstein, Goolkasian, McCandlish, Lynch and J. Smith
This is an appeal from the examiner's final rejection of claims 5 through 8, which are all the claims remaining in the application.
Claims 5 through 8 read as follows:
5. A method of producing X comprising self-pollinating an X soybean plant.
6. A soybean plant designated X
7. Seed, which upon germination produces the plant of claim 6.
8. Seed produced by the plant of claim 6.
The references relied on by the examiner are:
Russell, Studies In The Agricultural And Food Sciences, "Plant Breeding for Pest and Disease Resistance," Butterworths Press, 1978, pages 36-41.
SNB 112 Germplasm Resources Information Network release date of cultivar Pella 1979.
Keeling, Plant Disease, "A New Physiologic Rase of Phytophthora megasperma f. sp. glycinea," Vol. 68, No. 7, 1984, pages 626-627.
Athow, World Soybean Research Conference III, "Phytophithora Root Rot Of Soybean," Westview Press, 1985, pages 575-581.
PI 88447 Germplasm Resources Information Network, date available from USDA-ARS soybean collection 1986.
This invention concerns a novel variety of soybean plant, seeds produced therefrom, and a method of producing the seeds by self-pollinating the soybean plant. The novel variety, named X, was developed by appellant and is a cross between a commercial soybean known as X and a known variety available from Iowa State University and identified in the specification as 'Pella.'
Appellant seeks utility patent protection under 35 U.S.C. § 101. [FN1] Appellant's assignee, a seed producer, considers utility patent protection more desirable than protection under the Plant Variety Protection Act (PVP) because the PVP has a loophole therein known as the "farmer's exemption" which allows farmers to save and sell seeds in competition with the developer of the novel variety.
Appellant's specification does not follow the standard format set forth in section 608.01(a) of the Manual of Patent Examining Procedure (M.P.E.P.). The specification is somewhat cryptic and provides little more detail than would be provided in a specification submitted to the Department of Agriculture under the Plant Variety Protection Act. There is no section therein explaining "the nature and gist of the invention or the inventive concept." (See the suggestion set forth in M.P.E.P. § 608.01(a), Form Paragraph 6.02). Importantly, the specification has little specific language which distinguishes the claimed soybean variety from other soybean varieties and does not explain the significance of any differences in attributes between the novel variety and varieties that are old in the art. See 37 CFR § 1.71(b). [FN2]
*2 A problem has arisen during prosecution because, not knowing the nature and gist of the invention and what appellant regards as the inventive concept, the examiner has had considerable difficulty examining the application, especially with regard to formulating a conclusion of obviousness. On this point, the examiner notes that while appellant's soybean variety is a cross between two different varieties, appellant's specification does not advise the reader as to (1) the characteristics possessed by each parent variety, (2) which of these characteristics were expected to be passed on to progeny plants, and (3) what inheritable characteristics (goals) were sought in the progeny. The examiner also complains that the specification does not reveal what important characteristics were needed, but lacking, in prior varieties of soybeans and whether the claimed crossbreed (hybrid) fulfilled the need. In other words, the examiner is of the opinion that the instant specification lacks the specific technological "background" information necessary for the examiner to assess whether or not the claimed invention meets the statutory prerequisites for the grant of a patent.
Appellant's specification has been "objected to" by the examiner because, in her words, the specification fails "to provide (a) full written description, and (b) enablement and best mode of practicing the claimed invention." The claims are also "rejected" under 35 U.S.C. § 112, first paragraph, for the same reasons.
There are significant legal and procedural distinctions between an "objection" and a "rejection." An "objection" to the specification indicates that the specification is not satisfactory to the examiner because it does not conform to certain criteria established by (a) the patent statute, (b) the Patent and Trademark Office rules of practice, or (c) conventions and customary practices which have evolved over the years. A "rejection" constitutes an adverse decision by the examiner denying the grant of a patent for the subject matter claimed on the ground that the invention as set forth in the claims does not meet the requirements imposed by Congress in the patent statute.
In this case, that part of the examiner's "objection" which centers on description, enablement and best mode concerns the correspondence of the specification to the statutory requirements set forth in 35 U.S.C. § 112 and is within the jurisdiction of this Board. However, that part of the "objection" which relates to the examiner's desire for information concerning (a) an explanation of the "gist" of the invention, (b) the phenotypic characteristics of the parent plants and the inheritability thereof, and (c) the goals sought to be achieved by the inventors, relates solely to the ease and accuracy of the examination process and the ability of the examiner to obtain sufficient information therefrom to effectively examine the application. It concerns either the rules of practice or established customs and practices. It is outside the jurisdiction of this Board. [FN3]
*3 When the specification is "objected to" and the claims are "rejected" for the same reasons, consideration of the propriety of the objection is usually held in abeyance because the Board's decision may well be dispositive of both the "objection" and the "rejection." "New Matter" questions often fall into this category. In this instance, however, the examiner's "objection" and "rejection" cover somewhat different territory and our decision with regard to the examiner's "rejections" may not be dispositive of all "objections."
We consider first the examiner's rejection under 35 U.S.C. § 112, first paragraph. It is the examiner's position that the claims are based on a disclosure which does not enable one skilled in the art to make the claimed X variety of soybean plant and seeds and does not set forth the best mode of carrying out the invention. More specifically, it is the examiner's position that the description of "how to make" the invention by crossing two varieties omits significant information concerning the breeding process, the selection pressures for disease resistance, the methods of measuring and testing resistance, etc. In the examiner's opinion, one of ordinary skill in the art could not independently develop the X plant and seed claimed herein following the general procedures set forth in the specification.
Appellant urges that even if exacting directions for crossbreeding and selection were detailed, one could not follow the directions to obtain the same X variety but, rather, would arrive at a substantially similar but yet different variety of plant. Appellant has offered to deposit seeds of the X soybean variety in the American Type Culture Collection (ATCC), a public depository recognized by the United States Patent and Trademark Office. Appellant urges that planting the deposited seed is the best mode of making new plants and seed.
There is no question that one having X seeds available through the ATCC depository would be enabled to grow a X plant and produce additional seeds therefrom. The procedure to be used by appellant to deposit seeds of the plant does not differ from that used to deposit a culture of microorganism as sanctioned by the Court of Customs and Patent Appeals in In re Argoudelis, 434 F.2d 1390, 168 USPQ 99 (CCPA 1970) and accepted by the Patent and Trademark Office in Section 608.01(p) of the M.P.E.P. as an alternative procedure for meeting the requirements of 35 U.S.C. § 112 for "biological material". We see little difference between the concept of screening a microorganism to develop a desired strain, which was before the court in Argoudelis, and the concept of screening plants to develop a desired variety which is before us now. Appellant has disclosed the parent varieties crossed and provided a general description of the selection process. An exacting description relating to how to select for the desired plant could only detail an experimental screening program which would not necessarily result in the exact same plant being obtained but, rather, would result in one which, though different, would have virtually the same characteristics. We are in agreement with appellant that upon deposit of the seeds in the ATCC the specification satisfies the enablement and best mode requirements of 35 U.S.C. § 112.
*4 We consider next the examiner's rejection under 35 U.S.C. § 112 for lack of description. This rejection has two aspects. In its first aspect, the examiner notes that certain language used by appellant to describe the plant variety is considered as inherently so indefinite that one skilled in the art is unable to identify the plant variety and distinguish it from other species. The particular language of concern relates to (a) the plant variety's susceptibility to disease, (b) its peroxidase content, and (c) its allegedly "superior yield."
The examiner's concern with the language of the specification cannot serve to substantiate the rejection of the claims under the first paragraph of 35 U.S.C. § 112. Appellant's specification sets forth a reasonable description of the characteristics of the seed and plant including, flower color, plant type, maturity group, bacterial resistance, nematode resistance, etc. The specification also names the parent plants used to obtain the claimed cross. As noted by appellant on pages 3 and 4 of the Reply Brief, there is sufficient information of record to establish that the language objected to is accepted by the art as descriptive of the characteristics of a soybean variety. We reverse with regard to this first aspect of the rejection under 35 U.S.C. § 112.
In its second aspect, the examiner asserts that the written description set forth in the specification fails to adequately describe the invention or breeding goals in terms that make the invention searchable as a whole. The examiner states unequivocally that she would want to know additional information concerning each of the parent varieties which were crossed to obtain the claimed plant. She indicates that traits which were known features of the parent lines directly relate to the obviousness issue because many of these traits may well be expected to occur in the progeny. The examiner wishes to be apprised of the selection procedure used by appellant because she wants to know whether the particular traits or characteristics of the claimed variety were expectations based on known characteristics of the parents or fortuitous variations observed in a selection procedure designed to select for something other than what was achieved. The examiner also wants to know why the varieties 'Pella' or 'Pella 86' are considered by appellant to be closest to that claimed. In other words, the examiner's concern is that appellant's specification does not serve to distinguish the invention from other things before known and used such that a proper examination and consideration of the obviousness issue may be made.
Appellant urges, on the other hand, that a disclosure must be considered adequate if it meets the requirements of 35 U.S.C. § 112. Appellant urges, "[T]here is no requirement that an application must be drafted in order that an Examiner can formulate a search" (Reply Brief, page 2).
*5 We are in agreement with appellant that there is nothing in 35 U.S.C. § 112 which supports a rejection, on the ground that the specification does not provide enough information for the examiner to formulate a search and examine the application.
The examiner has pointed to no case law which indicates that a disclosure which describes an invention and enables the practice of that invention in accord with 35 U.S.C. § 112, in this case by depositing in a public depository the seed necessary for the practice of the invention, must also include additional information to assist in the examination process and make easier the examiner's search and patentability determination. The claimed soybean is described in the specification to the extent that there is no question that appellant was in possession of the invention as of the time the instant application was filed. Because seed is to be deposited in a public depository, the specification is enabling and sets forth the best mode of carrying out the invention. While the examiner may want to possess additional information regarding the inventive process, in this case the inheritable characteristics of parent species of plants and the particular procedure used to select for the claimed plant, in order to carry out a thorough examination, there is nothing in the statute which commands its inclusion in the specification.
There is no question, however, that the description, enablement, and best mode requirements of 35 U.S.C. § 112 are but the bare minimum mandated by the statute and "are not the maximum that can be demanded in an application." In re Davies, 475 F.2d 667, 177 USPQ 381, 385 (CCPA 1973). As stated by the court of Customs and Patent Appeals in In re Argoudelis, supra, 434 F.2d 1393, 168 USPQ at 102, the disclosure of a patent application must not only be sufficient "to preclude the possibility that a patent could issue without any person skilled in the art being thenceforth enabled to make and use the invention," but also must be sufficient "to permit a thorough examination by the Patent [and Trademark] Office. [FN4] " (We note, for example, that the Patent and Trademark Office rule which relates to the deposit of biological materials specifically requires the specification to include sufficient description of the deposited material not only to specifically identify it but also "to permit examination.") [FN5]
Though there is nothing in the patent statutes which mandates inclusion in the specification of information which the examiner considers important (a) with regard to distinguishing the claimed invention from other inventions and from what is old, and (b) with regard to whether to allow the application to issue as a patent, there is nothing in the patent statutes which precludes the examiner's requiring such information be included. Such a requirement, however, must be made by way of "objection" and is not within the jurisdiction of this Board. Because it is outside our jurisdiction, we reverse pro forma that aspect of the rejection under 35 U.S.C. § 112 (first paragraph) which pertains to the searchability of the invention described in the specification.
*6 Claims 5 through 8 stand rejected under 35 U.S.C. § 103 as obvious over the soybean varieties described in the documents identified as GRIN accession numbers SNB112 ('Pella') or P188447 (Chinese soybean), each in view of the combined teachings of Athow, Russell and Keeling. It is the examiner's position that although the prior art 'Pella' and Chinese soybean plants differ from the claimed plant in pod color, pubescence color and Phythophthora root rot resistance, the claimed invention would has been obvious, nevertheless, because (a) the color differences fall within the known range of variation for the soybean species, and (b) the secondary references make obvious the breeding of Phythophthora rot resistance into the plants.
We have carefully considered all of appellant's arguments but, nevertheless, are unpersuaded of error in the examiner's basic position and, accordingly, we affirm the rejection.
The claimed plant does not appear to differ significantly from the prior art plants as measured by numerous characteristics. Both the claimed plant and the prior art plant, SNB112 ('Pella'), are similar in color. Each has purple flowers and yellow seeds. 'Pella' has tan pod color versus brown pod color for the claimed plant. Both plants differ slightly in pubescence color and hila color, but both belong to maturity group III and has approximately the same oil yield. The Chinese soybean plant is even more similar in color and has similar oil yield and protein content.
As noted by the examiner, the secondary references teach that it is well known to breed root rot resistance into a plant by crossing the plant with other varieties having resistance to root rot. Accordingly, we are in complete agreement with the examiner that it would has been obvious to modify the soybean varieties of the primary references in order to impart root rot resistance to the plants. That this is so is evidenced by an admission made by appellant in the Petition to the Commissioner dated January 22, 1991, wherein appellant advises that the soybean variety 'Pella 86' is a version of 'Pella' having rot resistance conferred thereto using back crossing techniques in association with non-resistant 'Pella' and, necessarily, a variety having root rot resistance.
Appellant urges that the declaration of C reveals that the claimed variety is unobvious because it outyields 'Pella 86' and is "shorter than 'Pella 86' " and more resistant to brown stem rot and to charcoal rot.
We have reviewed the data and the declaration but are unpersuaded of patentability because there is nothing of record which explains why the differences between the claimed variety and a rot resistant variety such as 'Pella 86' are so significant and unexpected that they should weigh more heavily than the numerous similarities between the claimed variety and the varieties of the cited prior art.
We remind appellant that in submitting evidence asserted to establish differences and/or unobvious results sufficient to dissipate a prima facie case of obviousness, there is a burden on the patent applicant to establish not only that the differences in results achieved are in fact "unexpected and unobvious" but also to establish that the differences are of practical significance. See In re Merck, 800 F.2d 1091, 231 USPQ 375 (Fed.Cir.1986); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed.Cir.1985); In re Klosak, 455 F.2d 1077, 173 USPQ 14 (CCPA 1972); In re D'Ancicco, 439 F.2d 1244, 169 USPQ 303 (CCPA 1971) and In re Freeman, 573 F.2d 1237, 197 USPQ 464 (CCPA 1978). See also the recent decision of this Board in Ex parte Gelles, 22 USPQ2d 1318 (BPAI 1992).
*7 We note, for instance, that it may not be unexpected that the claimed cross is shorter than 'Pella 86.' It must be borne in mind that root rot resistance was introduced into the claimed variety by breeding 'Pella' with Y. The materials submitted by appellant on March 26, 1990 include a plant variety protection application for Y describing it as a variety specifically bred for its rot resistance. The data therein indicates that the plant height of Y is only 71 cm. It is not necessarily unexpected that the breeding of 'Pella' with the shorter variety Y would not only impart rot resistance but also result in shorter progeny.
With regard to the rejection over Chinese soybean, appellant urges that there is a difference in the flowering and maturity dates but presents no evidence on this point. It is well settled that in order to overcome a prima facie case of obviousness, there is a necessity for "clear and convincing evidence" of unobvious results. In re Lohr, 458 F.2d 1013, 137 USPQ 548 (CCPA1963). Counsel's unsupported arguments and allegations cannot take the place of that evidence. In re Greenfield 571 F.2d 1185, 197 USPQ 227 (CCPA1978).
We has carefully reviewed appellant's specification and find nothing therein which establishes a base for judging whether the differences asserted by appellant are, in fact, significant and unexpected. The specification says nothing regarding the significance and relative importance of such criteria as maturity date, shortness of plant, flower color and flowering date. The specification offers nothing regarding whether or not each parent variety crossed to develop the claimed variety was possessed of desirable characteristics or, alternatively, known to have recessive genes for the desirable characteristics, which genes would be expressed in the progeny upon crossing. Accordingly, we are unable to ascertain whether or not the particular features attributed to the claimed ??Illegible Text?? variety and relied on by appellant for patentability are sufficiently significant and unexpected to dissipate the examiner's prima facie case.
In a somewhat analogous situation, the Court of Customs and Patent Appeals in In re Davies, 475 F.2d 667, 177 USPQ 381 (CCPA1973) noted that "the public will derive the most benefit from a patent when it discloses on its face those properties or utilitarian advantages which were ultimately persuasive on the question of nonobviousness" (emphasis added). In the case before us, appellant's specification places no more emphasis on shortness of plant and bacterial resistance than on flowering date, flower color or hila color. Absent an explanation of relative significance in either the specification or the submitted declaration, it is virtually impossible for the decision maker to conclude that the dissimilarities argued by appellant outweigh the similarities proffered by the references.
*8 Claim 5, which is directed to the specific process of producing ?? Illegible Text?? seed by "self-pollinating" AN ??Illegible Text?? soybean plant, has been separately rejected as directed to a pollination process which, albeit performed by novel soybeans, was well-known in the art and in use long before the instant invention was made. The examiner relies on In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed.Cir.1985) and has taken the position that despite the novelty of the plant and the seed, the claimed process is an old one and, accordingly, is unpatentable.
Appellant urges that the claimed process is "a process of using" a new variety of soybean plant and is patentable as a "process of using" under the rule espoused in In re Pleuddemann, 910 F.2d 823, 15 USPQ2d 1738 (Fed.Cir.1990) and In re Mancy, 499 F.2d 1289, 182 USPQ 303 (CCPA1974). This argument has been countered by the examiner who notes that the preamble of claim 5 designates the process as a "method of producing," i.e., "making" seeds.
We affirm the examiner's rejection. For reasons set forth above, we are in agreement with the examiner that the claimed X variety of plant and, accordingly, the claimed process inherent in the ordinary use of that plant, would have been obvious to one of ordinary skill in the art at the time the invention was made.
PUBLIC USE OR ON SALE
Claims 5 through 8 stand rejected under 35 U.S.C. § 102(b) on the grounds that the invention was "in public use," or "on sale," more than one year prior to the filing of the instant application.
The "public use or on sale" rejection was engendered by an Information Disclosure letter submitted by appellant on June 25, 1990 (Paper No. 7). This letter advised the examiner that it is standard practice in the soybean art to transfer seedstock of a new plant variety to "growers" who are paid a fee to plant the seedstock and increase the inventory of seed available for sale when the new variety of seed is announced via publication in a seed catalog. The letter also advises that the growers pay applicants' assignee a fee for use of the seed and the grower returns all the harvested seed for subsequent sale to farmers. The Information Disclosure letter indicates that applicants' assignee retains title to all seed produced by the grower, the grower returns all the harvested seed to the assignee and the grower, by contract, does not have the right to sell, dispose of, use or otherwise encumber the seed or permit another to sell, dispose of, use or otherwise encumber the seed. A copy of a blank contract was attached to the Information Disclosure letter.
The examiner's rejection has two aspects, "public use" and "on sale." We consider first the "on sale" aspect of the rejection. We affirm the examiner's rejection noting that there are clauses in the contract which trigger the "on sale" bar.
*9 Clause 1, on the back of the blank contract, indicates that title to the seed does not normally vest in the grower and that applicants' assignee remains the owner of the seed and the crop produced therefrom. Because title does not leave the assignee and does not vest in the grower, it would appear that Clause 1 negates interpretation of the contract as one of "sale." As noted by the examiner, however, there are certain unnumbered paragraphs of the contract relating to "quality" and "acceptance and payment" which contain special provisions (conditions) therein which, if activated, cause title to vest immediately in the grower. Accordingly, because the grower has paid for the seed, a sale may be accomplished under the contract when and if the special contract provisions are activated. The contract may properly be viewed as one of "conditional sale."
More specifically, the contract has an "acceptance and payment" clause which has a blank space therein which sets the percentage of the "growers contracted production" of soybeans which will be accepted by the company. Any amount of total production not accepted by the company is deemed "rejected for seed use" such that the terms of paragraph 8 apply to that seed. Paragraph 8 specifically states that title to "rejected seed" immediately vests in the grower and the rejected seed constitutes the growers entire compensation thereunder. Should the blank of the acceptance and payment clause be filled in with any number less than 100%, an actual sale would occur as of the date the contract is entered into because a predetermined quantity of "rejected seed" may be considered as constituting payment for the growers' services. The grower has the right to use rejected seed for purposes other than planting.
The soybean contract also includes a "quality" clause which indicates that the company is not obligated to accept any portion of the contracted production which does not comply with the quality standards established regarding moisture content, "clean out" and germination, or is denied "certification" for any reason. The "quality" clause establishes conditions which relieve the company of obligation to accept any portion of the contracted production as seed. Necessarily, that portion not accepted will be considered "rejected" seed covered by clause 8 of the contract. Title to said rejected seed vests immediately in the grower. We are in agreement with the examiner that should the "quality" clause be activated, the contract would clearly evidence a sale. More importantly, during the life of the contract the assignee was never obligated to accept rejected seed, and at all times during performance of the contract there was a distinct possibility that title could change hands. This is sufficient to trigger the "on sale" bar. [FN6] 35 U.S.C. § 102(b) does not require an actual sale but only that the material be "on sale." We affirm the examiner's rejection.
*10 We consider next the public use aspect of the invention. As best we understand this rejection, it is the examiner's position that the use of seed by the grower, a third party, to produce and accumulate assignee's inventory of seeds, for eventual sale in the ordinary course of business, constitutes sufficient commercial activity to establish a "public use" of the claimed seed.
Appellant urges that there was no "public use" because the seed, although being produced and inventoried for sale, was not "on sale" at the time the seed was being produced. Appellant also argues that title to the seed did not pass to the grower and that the grower was heavily restricted regarding what could be done with the seed. We are unpersuaded by these arguments.
The fact situation before us is somewhat unique. The invention claimed herein was completed long prior to the filing date of the instant application (about 3 years prior). In this regard, the PVP certificate application indicates that the claimed soybean variety was developed by 1986 and that breeder seed was grown in 1987. Appellant has admitted that the use of the seed by growers was to produce and acquire seed for sale. Appellant has also admitted that the X variety was eventually advertised, the seed was sold in the due course of business and that the amount of seed required to supply the market is "literally millions of pounds" (Brief, pages 12, 13). The growers contract does not contain a secrecy clause.
"Public use" of a claimed invention under section 102(b) has been defined as any use of that invention by a person other than the inventor who is under no limitation, restriction or obligation of secrecy to the inventor. Egbert v. Lippmann, 104 U.S. 333, 336 (1881); In re Smith, 714 F.2d 1127, 218 USPQ 976 (Fed.Cir.1983). In the case before us the claimed seeds and plants were used by the growers to produce new plants and seeds. There is no evidence of record of a secrecy agreement between the grower and appellant. A prima facie case of public use has been made out.
The Federal Circuit recognizes four underlying policies behind the section 102(b) bar. These policies are set forth in King Instrument Corporation v. Otari Corporation, 767 F.2d 853, 226 USPQ 402 (Fed.Cir.1985) as follows:
(1) discouraging removal of inventions from the public domain which the public justifiably comes to believe are freely available.
(2) favoring prompt and widespread disclosure of inventions;
(3) giving the inventor a reasonable amount of time following the sales activity to determine the value of a patent; and,
(4) prohibiting an extension of the period for exploiting the invention.
Policies (2) and (4) are applicable herein.
Even if there was an obligation of secrecy and confidentiality this does not necessarily avoid the public use bar. See T.P. Laboratories, Inc. v. Professional Positioners, Inc., 724 F.2d 965, 220 USPQ 577 (Fed.Cir.1984). Indeed, in D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 219 USPQ 13 (Fed.Cir.1983), the court indicated that the statutory scheme of 35 U.S.C. § 102(b) was to preclude attempts by the inventor or his assignee to profit from commercial use of an invention for more than a year before an application for patent is filed. The public use proscription in 35 U.S.C. § 102(b) prohibits "commercial activity," i.e., the competitive exploitation of the invention by the inventor or his assigns after it is ready for patenting; the reason being that "it is part of the consideration for a patent that the public shall as soon as possible begin to enjoy the disclosure." See Metallizing Engineering Co. Inc. v. Kenyon Bearing & Auto Parts, Inc., 153 F.2d 516, 68 USPQ 54, 58 (2nd Cir.1946).
*11 As noted by the examiner, the grower was an independent contractor under no obligation of secrecy. The grower paid for the seed and suffered all risk of damage to a loss of the crop. Title to poor quality seed or unpurchased seed was to vest in the grower. We are of the opinion that on the facts of this case, use of the seed, by growers, with no special requirements for secrecy and confidentiality constituted commercial activity towards a competitive advantage. In this regard see Bourne v. Jones, 114 F.Supp. 413, 98 USPQ 206 (S.D.Fla.1951), wherein similar activity involving the growing of seed cane by growers was considered to be a "definite commercial use in that the growers were expanding available seed to full scale production." We recognize that the growers of Bourne were (a) independent of the inventor, (b) not subject to the inventor's control, (c) unaware of any restrictions at the time of their use, and (d) made use of the canes for their own purposes. Nevertheless, in this case it is "commercial activity", i.e., use of the seed by third party growers to produce large quantities of seed for eventual sale, coupled with the "on sale" aspects of the grower's contract and the apparent lack of secrecy and confidentiality requirements which constitutes the proscribed public use. We affirm the examiner's rejection.
The examiner's rejections of claims 5 through 8 under 35 U.S.C. § 112 (first paragraph) are reversed.
The examiner's rejections of claims 5 through 8 under 35 U.S.C. § 103 are affirmed.
The examiner's rejections of claims 5 through 8 under 35 U.S.C. § 102(b) (public use and on sale) are 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
Harrison E. McCandlish
Thomas E. Lynch
FN1. The patentability of plants and seeds under 35 U.S.C. § 101 has been confirmed by this Board in Ex parte Hibberd, 227 USPQ 443 (BPAI 1985).
FN2. 37 CFR 1.71(b) reads as follows:
(b) The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.
FN3. 35 U.S.C. § 134, which provides the right of appeal, refers only to the appeal of rejections of claims and, accordingly, restricts the jurisdiction of the Board of Patent Appeals and Interferences to considering the propriety of "rejections." The propriety of "objections" and other procedural requirements is solely within the jurisdiction of the Commissioner of Patents. In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971). See also In re Haas, 486 F.2d 1053, 179 USPQ 623 (CCPA 1971). See also In re Haas, 486 F.2d 1053, 179 USPQ 623 (CCPA 1973) regarding "objections" which are de facto rejections.
FN4. See also Judge Baldwin's concurring opinion in Argoudelis, supra, 434 F.2d at 1395, 168 USPQ at 104, wherein it is stated:
Practical necessity, of course, requires that an application disclosure be intelligible and capable of evaluation before the issue date. The examining bodies of the Patent Office must be able to understand what a claimed invention is, how it works, what utility it might possess, before they can adequately determine whether such invention merits the grant of a patent.
FN5. 37 CFR § 1.809(d)(3) reads as follows:
(d) For each deposit made pursuant to these regulations, the specification shall contain:
(3) a description of the deposited biological material sufficient to specifically identify it and to permit examination.
FN6. Appellant argues that the "quality" clause was never activated and that all seed was accepted by the assignee. Arguments by counsel cannot take the place of factual evidence. In re Greenfield, 571 F.2d 1185, 197 USPQ 227 (CCPA 1978). Moreover, the assignee was never under an obligation to accept seed which was of poor quality. This lack of obligation to accept poor quality seed converted the contract into a "conditional sales" contract.
*12 Melvin Goldstein
I agree with the majority with respect to its decision of the appeal of every appealable rejection. I disagree, however, with the majority's apparent acceptance of appellant's assertion that "[t]here is no requirement that an application must be drafted in order that an examiner can formulate a search." In my opinion, there is such a requirement. It is found in the second paragraph of 35 U.S.C. 112, and a rejection under that paragraph of Section 112 would have been appropriate.
With regard to the second paragraph requirement for "particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention," it has been stated that the "essence of that requirement is that the language of the claims must make it clear what subject matter they encompass." In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970). This has been frequently stated in a shortened form as a requirement that the claims set forth the "metes and bounds" of their coverage. See, merely for example, In re Venezia, 530 F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976); In re Goffe, 526 F.2d 1393, 1397, 188 USPQ 131, 135 (CCPA 1975); In re Watson, 517 F.2d 465, 477, 186 USPQ 11, 20 (CCPA 1975); In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486, 492 (CCPA 1973). This requirement has usually been viewed from the perspective of a potential infringer, "so that they may more readily and accurately determine the boundaries of protection involved and evaluate the possibility of infringement and dominance." 427 F.2d at 1382, 166 USPQ at 208. However, there is authority to support the proposition that the second paragraph requirement is also for the purpose of enabling comparison of the claimed subject matter with the prior state of the art, i.e., enabling examination.
In In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 was formally reversed. In suggesting that the claims should "be reviewed to insure compliance with 35 U.S.C. 112," the court pointed out that, before claimed subject matter can properly be compared to the prior art, it "is essential to know what the claims do in fact cover" (emphasis supplied). The same proposition can be found to be at least strongly implicit in the decisions in In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971), and In re Merat, 519 F.2d 1390, 186 USPQ 471 (CCPA 1975). The decision in the former case stated that, if upon analysis the claims were found to be indefinite under the second paragraph of 35 U.S.C. 112, they could not even be analyzed under the first paragraph of 35 U.S.C. 112, because that analysis of the claims could not be carried out unless one was able "to determine exactly what subject matter they encompass[ed]." This reasoning would clearly apply equally well to an analysis of the claims with regard to the prior state of the art. In the latter case, the court stated that its affirmance of the 35 U.S.C. 112, second paragraph, rejection rendered it "unnecessary to discuss the other grounds of rejection," which included a rejection under 35 U.S.C. 103 based on the prior state of the art. Of course, the portion of the concurring opinion in Argoudelis quoted in footnote 3 of the majority opinion here, albeit it is from a concurring opinion, is at least further evidence that the proposition set forth here is correct.
*13 In the event of further prosecution of this subject matter before the examiner, I firmly recommend that a rejection be made under the second paragraph of 35 U.S.C. 112 on the basis of the issue raised by the examiner in objecting to the specification, i.e., that the claims read in light of the specification could not be examined with regard to the prior state of the art. When the issue has been raised under the proper paragraph of Section 112, it may be more readily developed and, in the event of a subsequent appeal, more appropriately briefed.
John D. Smith
The majority affirms the examiner's "on sale" rejection of the appealed claims under 35 U.S.C. § 102(b) in part on the grounds that at all times during performance of the contract there was a distinct possibility that title could change hands. Although I concur with the result reached by the majority with respect to this rejection, I am aware of no legal precedent, nor have appellants or the majority cited any, which holds that a patent defeating "sale" under 35 U.S.C. § 102(b) requires a transfer of title of the property.
A "sale" has been broadly defined as a contract between parties to give and to pass rights of property for consideration which the buyer pays or promises to pay to the seller for the thing bought or sold, 77 C.J.S. Sales § 1 (1952), and this broad definition has been applied to a "sale" as defined by 35 U.S.C. § 102(b). In re Caveney, 761 F.2d 671, 226 USPQ 1 (Fed.Cir.1985). Here, the contract requires the grower to purchase seed from applicant's assignee in exchange for a valuable property right, the right to use the seed by planting it for the purpose of producing a new plant which produces more seed. Although the grower cannot use any rejected seed for planting purposes, the implied right to plow under the new plant produced to fertilize the grower's acreage is itself a valuable "right of property." Moreover, as noted by the majority, the grower has the right to use rejected seed for purposes other than planting. Thus, in my view, any purchasing of seed by a grower constitutes an actual "sale" under 35 U.S.C. § 102(b).
With the exception noted above, I agree with the majority with respect to its decision of the appeal and its reasoning regarding all other rejections.
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