## United States Court of Appeals for the Federal Circuit

03-1569

(Serial No. 09/664,247)

IN RE WILHELM ELSNER

[Julie W. Meder]{.underline}, Webb Ziesenheim Logsdon Orkin & Hanson,
P.C., of Pittsburgh, Pennsylvania, argued for appellant. [Russell D.
Orkin]{.underline} for appellant.

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

Appealed from: United States Patent and Trademark Office,

Board of Patent Appeals and Interferences

**United States Court of Appeals for the Federal Circuit**

03-1585

(Serial No. 09/267,559)

IN RE KEITH W. ZARY

[Kenneth S. Klarquist]{.underline}, Klarquist Sparkman, LLP, of
Portland, Oregon, argued for appellant. With him on the brief was [Kevin
M. Hayes]{.underline}.

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

[Patrick H. Ballew]{.underline}, Stratton Ballew PLLC, of Yakima,
Washington, for amicus curiae Northwest Nursery Improvement Institute,
Inc. Of counsel was [Rex B. Stratton]{.underline}, of Seattle,
Washington.

Appealed from: United States Patent and Trademark Office

> Board of Patent Appeals and Interferences

United States Court of Appeals for the Federal Circuit

03-1569

(Serial No. 09/664,247)

IN RE WILHELM ELSNER

\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--

03-1585

(Serial No. 09/267,559)

IN RE KEITH ZARY

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

DECIDED: August 16, 2004

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Before LOURIE, CLEVENGER, and BRYSON, [Circuit Judges]{.underline}.

LOURIE, [Circuit Judge]{.underline}.

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]{.underline}, 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]{.underline}, 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]{.underline}

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]{.underline}

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]{.underline},
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.]{.underline}, 303 F.3d 1294,
1301 (Fed. Cir. 2002). We review the factual findings underlying those
determinations for substantial evidence. [In re Gartside]{.underline},
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]{.underline}, 301 F.2d 929 (CCPA 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]{.underline} did not squarely address
whether a publication may be enabled through a foreign sale. The PTO
further argues that the [LeGrice]{.underline} 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]{.underline}, 766 F.2d 531, 533 (Fed. Cir. 1985); [In re
Samour]{.underline}, 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]{.underline}, 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.]{.underline} § 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]{.underline}, "there are inherent differences between
plants and manufactured articles." 301 F.2d at 935. In the case of plant
patents, the touchstone of the statutory subject matter is asexual
reproduction of a unique biological organism. When 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 of the invention that the sale combines with the publication
to erect a statutory bar. In any event, the inventor is in control of
the activities relating to his invention, and avoidance of a bar is
accomplished by making a timely filing at the PTO.

Appellants' PBR applications disclosed the claimed plant varieties, but
concededly do not, by themselves, enable the skilled artisan to practice
the claimed inventions or reproduce the plants. However, because the
public may have had access to the claimed inventions through the foreign
sales of the plants, from which the claimed plants may be reproduced, it
may fairly be said that the PBR applications are adequately enabled.
Because the published applications, combined with the foreign sales of
the plants, placed the claimed inventions in the possession of the
public, we therefore hold that they are proper § 102(b) anticipatory
references that may bar patentability.

Our predecessor court's decision in [Samour]{.underline} supports the
use of secondary references to show that a primary § 102(b) reference
was in fact enabled. In that case, the applicant claimed a small genus
of chemical compounds useful as anticonvulsant agents. The Board
affirmed a § 102(b) rejection that a printed publication by Doran
anticipated the claimed invention. The Doran reference disclosed the
structure of a compound within the claimed genus, but failed to describe
a method of preparing the compound. Although the applicant argued that
the reference was non-enabled, the Board relied on additional references
to show that the skilled artisan would have known how to prepare the
compound disclosed by Doran. The court affirmed the Board's decision,
reasoning that additional references cited in a § 102(b) rejection are
relied on "to show that the claimed subject matter, every material
element of which is disclosed in the primary reference, was in \[the\]
possession of the public." 571 F.2d at 563; [see also]{.underline}
[Donohue]{.underline}, 766 F.2d at 534 (affirming a § 102(b) rejection
wherein additional references were used to show that a primary reference
which disclosed every element of the claimed invention was enabled).
Likewise, the listings of the PBR applications filed by Elsner and Zary
were considered the primary references, and they completely disclosed
the claimed plant varieties. The Board justifiably relied on the foreign
sales to show that the public was in possession of the claimed plants
and thus that the PBR applications were enabled anticipatory references.

Appellants argue that foreign sales are not prior art and may not be
considered within the knowledge of a skilled artisan. However, the
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. Thus, foreign sales of the claimed plants may be within
the knowledge of the skilled artisan and may be considered to provide
the public with access to Appellants' inventions.

We disagree with Appellants that our holding conflicts with
[LeGrice]{.underline}. In that case, the Board had affirmed rejections
of plant patent applications based on catalogs depicting the claimed
plants. Specifically, the Board stated that a reference did not have to
be enabled to anticipate a claim. In its decision reversing the Board,
the Court of Customs and Patent Appeals discussed at length its view
that § 102(b) applies to plant patents in the same way that it applies
to utility patents, but acknowledged the distinction between plants and
other patentable subject matter. 301 F.2d at 935. The court considered
that the textual description of manufactured articles, processes, and
even chemical compositions can often enable others to practice the
invention; however, the mere description of a plant in a catalog may do
little to enable one of skill in the art to recreate that claimed plant.
[Id.]{.underline}

The court concluded that Congress had not indicated that § 102(b) should
be applied differently to plant patents than to other inventions, and
the court reiterated that "the clause 'described in a printed
publication' has been interpreted with respect to whether the
publication has in fact conveyed such knowledge of an invention to the
public as to put the public in possession of the invention."
[Id.]{.underline} at 936. Thus, the court held that

> it is sound law, consistent with the public policy underlying our
> patent law, that before any publication can amount to a statutory bar
> to the grant of a patent, its disclosure must be such that a skilled
> artisan could take its teachings [in combination with his own
> knowledge of the particular art and be in possession of the
> invention]{.underline}.

[Id.]{.underline} Accordingly, the court reversed the Board's decision
and held that a disclosure must be enabled to be a statutory bar to a
plant patent.

We agree with the PTO that [LeGrice]{.underline} 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 fact, there was no
mention of sales in the [LeGrice]{.underline} opinion. We therefore
conclude that [LeGrice]{.underline} left that issue open, and our
decision today is not inconsistent with [LeGrice]{.underline}.

Additionally, our holding is consistent with the treatment of § 112
enablement in utility patent applications. Specifically, in [In re
Argoudelis]{.underline}, 434 F.2d 1390 (CCPA 1970), the Court of Customs
and Patent Appeals held that a utility patent claiming antibiotic
compounds produced by a microorganism was enabled by depositing the
microorganism in a public depository. Importantly, the court noted that
"because of the particular area of technology involved," an applicant
may not be able to "sufficiently disclose by written word how to obtain
the microorganism starting material from nature." [Id.]{.underline} at
1392. The court acknowledged that "\[a\]ny person skilled in the art
with access to the pending application . . . can reproduce the invention
from the written disclosure as it was originally filed."
[Id.]{.underline} at 1393. The [Argoudelis]{.underline} court thus
recognized that the deposit procedures permitted public access to the
microorganism, and that such access adequately satisfied the § 112
enablement requirement. [Id.]{.underline} at 1394; [see
also]{.underline} [In re Paulsen]{.underline}, 30 F.3d 1475, 1481 n.9
(Fed. Cir. 1994) (describing the connection between

§ 112 enablement and the enablement requirement of § 102(b) prior art).
It is important to note that it was not mere possession of the
microorganism that was important in [Argoudelis]{.underline}, but such
possession that enabled one of ordinary skill to make the claimed
invention. Similarly here. Just as the public had access to the
microorganism in [Argoudelis]{.underline}, so too might the public have
had access through the foreign sales to the plant varieties that Elsner
and Zary claim.

Nevertheless, although we agree with the PTO that foreign sales may
enable an otherwise non-enabling publication, we find that factual
issues remain with respect to the accessibility of the foreign sales of
the claimed plants and the reproducibility of the plants. The Board did
not specifically address how readily one skilled in the art could have
learned of the foreign sales from the printed PBR applications. In the
present appeals, the examiners discovered the PBR applications through a
search of the relevant PBR database. They subsequently asked Appellants
to provide copies of the applications, as well as any additional
information regarding the claimed plant varieties. Both appellants
responded that the claimed plants had been on sale in foreign countries.
It is unclear, however, whether a skilled artisan would have known of
the foreign sales. The 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. [See]{.underline} [In re
Bayer]{.underline}, 568 F.2d 1357, 1361 (CCPA 1978) ("\[A\] printed
document may qualify as a 'publication' under 35 U.S.C. § 102(b) . . .
so long as accessibility is sufficient to raise a presumption that the
public concerned with the art would know of the invention." (quotation
omitted)). We have stated before with respect to prior art references
that "\[a\]ccessibility goes to the issue of whether interested members
of the relevant public could obtain the information if they wanted to."
[Constant v. Advanced Micro-Devices, Inc.]{.underline}, 848 F.2d 1560,
1569 (Fed. Cir. 1988).

Moreover, the Board did not find that, even if the interested public
would readily know of the foreign sales, those sales enabled one of
ordinary skill in the art to reproduce the claimed plants without undue
experimentation. Such a determination is critical to the question
whether the foreign sales would enable the printed publications.

We therefore remand both cases for further factual findings relating to
the accessibility of the foreign sales of the claimed plants and the
reproducibility of the claimed plants from the plants that were sold.

CONCLUSION

Because the record must be developed further with respect to the foreign
sales of Elsner's Pendec geranium and Zary's JACopper rose variety, we
vacate the Board's decisions and remand the cases for additional
proceedings.

[VACATED AND REMANDED]{.underline}.

# 

[^1]: Both appeals were heard together by the Board and decided
    concurrently, but the Board issued separate opinions. Here, because
    the cases raise the same legal issue, we resolve them in this single
    opinion. Accordingly, Elsner and Zary are referred to herein as
    "Appellants."

[^2]: Section 102 of 35 U.S.C. provides in relevant part that "\[a\]
    person shall be entitled to a patent unless . . . (b) the invention
    was patented or described in a printed publication in this or a
    foreign country . . . more than one year prior to the date of the
    application for patent in the United States."