2. PLANT PATENTS-PATENTABILITY-PRINTED PUBLICATION-35 U.S.C. 161 AND 35 U.S.C. 102(b). "The express provision of 35 U.S.C. 161 permits the granting of patents on the particular classes of plants therein enunciated which include 'Rosa Floribunda Plants' disclosed in the applications on appeal. Grant of such a patent is, however, ‘subject to the conditions and requirements' of Title 35 ‘except as otherwise provided.' Thus, appellant's right to patents on his applications is subject to the bar stated in 35 U.S.C. 102(b), if the publications in issue meet the legal requirements necessary to establish such a bar." 3. SAME-SAME-PLANT PATENT APPLICATION DOES NOT ENABLE REPRODUCTION. "The unique nature of a plant patent was recognized by the Patent Office Board of Interference Examiners in Dunn v. Ragin v. Carlile, 50 USPQ 472 (1941) where at p. 474 it was recognized "The mere filing of an application for a patent for a new variety of plant would not enable anyone to reproduce such a plant.'" 4. SAME-APPLICATION-DISCLOSURE-DESCRIPTION OF PLANT-35 U.S.C. 161 AND 162. "35 U.S.C. 161 engrafts the Plant Patent Act onto the basic patent law, which requires us to apply thereto all the rules, regulations and provisions of the basic patent law except that, by the express provision of 35 U.S.C. 162, a plant patent cannot be declared invalid if its description 'is as complete as is reasonably possible.'" 5. SAME-PATENTABILITY-GENERAL PATENT STATUTE APPLICABLE TO PLANT PATENTS. "It appears * * to have been the intent of Congress that plant patents and patents for other inventions should be subject to the same statutory provisions 'except as otherwise provided. " 6. SAME-SAME-PRINTED PUBLICATION-35 U.S.C. 102(b). Held that "*** in determining the meaning of 35 U.S.C. 102(b) as it applies to patents for plants, the first consideration is that Congress did not provide any exception thereto, so it should be presumed that Congress intended that it should be applied to patents for plants as it had been previously applied to patents for other inventions." 7. SAME-SAME-SAME-SAME. "Since there has been no interpretation of 35 U.S.C. 102(b) as applied to plant patents, we turn to the prior decisions dealing with its application to patents on other inventions. In these decisions, we find 35 U.S.C. 102(b) and its predecessor statutes have been interpreted as requiring that the description of the invention in the publication 'must be sufficient to put the public in possession of the invention.'" 8. PATENTABILITY-PRINTED PUBLICATION. Held, with respect to printed publications, that "The knowledge thus made available to the public must, if it is to anticipate an invention, be practical and complete." 9. PLANT PATENT-PATENTABILITY-PRINTED PUBLICATION-35 U.S.C. 161. With respect to the printed publications cited in appellant's applications for plant patents, Held that "*** we must, under 35 U.S.C. 161, apply to the descriptions in the instant publications the same requirements as have been applied to the descriptions in publications in cases dealing with patents on other inventions." 10. PATENTABILITY-PRINTED PUBLICATION-35 U.S.C. 102(b). "Basically, section 102(b) requires that an inventor, who has placed his invention in the public domain, file his application within one year thereafter or within a year of the time when anyone else may have made it available to the public. Section 102(b) is a recognition that early publication of inventions is to be encouraged and thus does not bar the granting of a patent if the application therefor be filed within one year from the date of the printed publication." 11. SAME-SAME-SAME. "The public purpose of section 102(b) is clear enough, and has been enunciated or assumed in the very considerable body of decisional law in which 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." 12. SAME-SAME-SAME. "We think 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." 13. SAME-SAME-SAME. Held that the proper test of a description in a publication as a bar to a patent as the clause "described in a printed publication" is used in section 102(b) "requires a determination of 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" and that "Unless this condition prevails, the description in the printed publication is inadequate as a statutory bar to patentability under section 102(b)." 14. PLANT PATENT-PATENTABILITY-PRINTED PUBLICATION-"ENABLING" PUBLICATION-35 U.S.C. 161 AND 102(b). "In view of the long line of cases dealing with other types of inventions antedating 1930, we think Congress, by failing to provide otherwise, intended that the provisions of section 102(b), as applied to plant patents, should not be interpreted otherwise than they had been with respect to other inventions, i.e., that only an 'enabling' publication is effective as a bar to a subsequent patent. We do not agree with the view expressed by the Examiner that this necessarily requires that plant publications be 'totally ignored.' Instead, it requires that the facts of each case be carefully considered to determine whether the description in the printed publication in question does in fact place the invention in the possession of the public. 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 section 102(b)." 15. SAME-SAME-SAME-SAME-35 U.S.C. 161, 162 AND 102(b). “We * * * hold that descriptions in printed publications of new plant varieties, before they may be used as statutory bars under 35 U.S.C. 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. 35 U.S.C. 161 does not contain any limitation on this interpretation of the clause 'described in a printed publication,' and Congress has not 'otherwise provided.' When so considered, the descriptions in the printed publications here in issue do not meet the requirement of an ‘enabling' description, as the statute has been interpreted in numerous cases." 16. SAME-SAME-SAME-SAME-SAME. "The Board of Appeals stated in its decision below that 'it is no more absurd to use a disclosure which is not enabling as a bar than it is to grant a patent on such a disclosure; the disclosure in the specifications of these applications are admittedly just as unenabling as the disclosures of the publications.' The answer to this apparent anomaly lies in 35 U.S.C. 162 in which Congress 'otherwise provided' by specifically allowing for such a description in plant patent applications. No such allowance has been made in 35 U.S.C. 102(b) with reference to the sufficiency of the description of new plant varieties in printed publications." 17. SAME-APPLICATION-DISCLOSURE-INFRINGEMENT-35 U.S.C. 162 AND 163. "The plant patent grant differs from that given with respect to other inventions. Infringers must be shown to have asexually reproduced or sold or used the plant on which the patent was granted. *** This section [35 U.S.C. 163] implicitly recognizes there is no possibility of producing the plant from a disclosure as 35 U.S.C. 112 contemplates. Therefore, there is no requirement for any how-to-make disclosure in the application for a plant patent." 18. SAME-PATENTABILITY-PRINTED PUBLICATION-35 U.S.C. 161 AND 102(b). "The mere description of the plant [in a printed publication] is not necessarily an 'enabling' disclosure. Such descriptions, just as in the case of other types of inventions, in order to bar the issuance of a patent, must be capable, when taken in conjunction with the knowledge of those skilled in the art to which they pertain, of placing the invention in the possession of those so skilled." 19. SAME-SAME-PARTICULAR SUBJECT MATTER "ROSA FLORIBUNDA PLANT." The decisions of the Board of Appeals, affirming the final rejections of plant patent applications entitled "Rosa Floribunda Plant" as unpatentable over prior printed publications, are reversed. APPEALS from the Patent Office. Serial Nos. 709,127 and 709,128. REVERSED. John H. Leonard (Spencer B. Michael, Smith, Michael & Gardiner, of counsel) for appellant. Clarence W. Moore (Joseph Schimmel of counsel) for the Commissioner of Patents. Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Associate Judges, and Judge WILLIAM H. KIRKPATRICK, United States Senior District Judge for the Eastern District of Pennsylvania SMITH, J., delivered the opinion of the court. The issue on these consolidated appeals is whether appellant is entitled under 35 U.S.C. 1611 to a patent on each of his applications Serial Numbers 709,127 and 709,128, filed January 15, 1958, each entitled "Rosa Floribunda Plant." The Patent Office Board of Appeals affirmed the final rejection of both applications under 35 U.S.C. 102(b) on the ground that the inventions had been described in printed publi 1 Sec. 161. Patents for plants. Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title. The provisions of this title relating to patents for inventions shall apply to patents for plants, except as otherwise provided. (July 19, 1952, ch. 950, 66 Stat. 804; September 3, 1954, ch. 1259, 68 Stat. 1190.) cations in England more than one year prior to the dates of filing of the said applications. The publications occur in the National Rose Society Annual of England and in catalogues. The annual describes appellant as having raised the roses described and the catalogues show color pictures of these roses. There is no dispute that the publications relate to and picture the identical roses which were originated by appellant and which he now seeks to patent. Resolution of the issue on these appeals requires us to determine whether as a matter of law, the English publications constitute, within the meaning of 35 U.S.C. 102(b), a bar to appellant's right to patents on said applications. The applicable portion of 35 U.S.C. 102(b) reads: "A person shall be entitled to a patent unless *** (b) the invention was * described in a printed publication * * * more than one year prior to the date of the application for patent in the United States, * * [1] Thus, the statute expressly prohibits the granting of a patent on an invention or discovery which has been "described in a printed publication * * * *** more than one year prior to the date of the application for patent in the United States." Long prior to the inclusion of this provision in 35 U.S.C. 102(b), the courts had construed earlier provisions and had interpreted them with regard to what must be described in a printed publication in order for the publication to be a bar to the grant of a patent. The underlying concept on which the courts permitted such a bar is that the description of the invention in the printed publication was sufficient to give possession of the invention to the public. [2] The express provision of 35 U.S.C. 161 permits the granting of patents on the particular classes of plants therein enunciated which include "Rosa Floribunda Plants" disclosed in the applications on appeal. Grant of such a patent is, however, "subject to the conditions and requirements" of Title 35 "except as otherwise provided." Thus, appellant's right to patents on his applications is subject to the bar stated in 35 U.S.C. 102(b), if the publications in issue meet the legal requirements necessary to establish such a bar. The particular question of law to be here decided is presented on stipulated facts which, insofar as they relate to the issue, are here quoted from the record: 4. Each application was accompanied by the conventional formal oath containing the statement that the applicant did not believe the variety of plant was described in any printed publication in any country more than one year prior to his application. but adding the following additional recitations: (a) In Serial No. 709,127 [Charming Maid], "that certain information relative to the new variety was published in the National Rose Society Annual, of England, for 1954 on pages 156 and 157 and like information was published 2 This section is derived from 35 U.S.C. (1946 ed.) 31, R.S. 4886, Act of March 3, 1897, c. 391, which was derived from Act on July 8, 1870, c. 230, sec 24, 16 Stat. 201. The Act of 1836, c. 357, 5 Stat. 117, sec. 7, referred to "printed publications." while the Act of 1793, c. 11, 1 Stat. 318, sec. 6, referred to being "described in some public work." more than one year prior to the date hereof in catalogues, but he believes that such information cannot enable anyone to practice the invention by producing the present variety"; and (b) In Serial No. 709,128 [Dusky Maiden], "that certain information relative to a new variety was published in the National Rose Society Annual, of England, in 1949 on page 155, and like information was published more than one year prior to the date hereof in catalogues, but he believes that such information cannot enable anyone to practice the invention by producing the variety." 5. (a) The disclosures in the Rose Annual of 1949, page 155, insofar as pertinent, are as follows: "The Gold Medal Award was made to (here follows the list of roses, including Dusky Maiden): Dusky Maiden (Hy. Poly.) raised and exhibited by E. B. Le Grice, North Walsham. Glowing dark scarlet with dusky velvety sheen. Single blooms carried in large trusses. Size when open 3-in. in diameter. Very fragrant. Vigorous. Foliage dark green and abundant. Bedding. Trial Ground Certilcate, 1945. Prune 34." (b) The disclosure in the Rose Annual of 1954, pages 156 and 157, is as follows: The Trial Ground List of Trial Ground Awards, 1953 (to which is appended the Show Awards in 1953). (Here follows a list of roses, including Charming Maid): Charming Maid (Flor.). Trial Ground No. 624. Reg. No. 269. Dainty Maiden x Mrs. Sam McGredy. Raiser and Distributor E. B. Le Grice, North Walsham. Vigorous growing variety with deep glossy green foliage 16. Freedom from disease 16. Large single flowers borne in small clusters. Colour pink shaded gold 16. Freedom of flowering 16. General effect 6. Fragrance 5. Gold Medal Provincial Show, 1953. 6. In each case, the prior catalogue publication referred to in the oath includes a color picture of the rose clear enough to establish identity in appearance between the rose illustrated and the applicant's variety, and the catalogue publication with the picture establishes that the rose described and illustrated is the variety described and claimed in the application, and the rose so described and illustrated is, in fact, the variety so described and claimed in the application. The unique aspects of plants which are the subject of plant patents have posed numerous problems to various tribunals charged with the application of basic patent law concepts thereto. A review of all the reported decisions dealing with plant patents establishes that the present case presents a legal problem of first impression on which there are no controlling precedents. 3 Sugar Cane-Bourne v. Jones, 114 F. Supp. 413, 98 USPQ 206. Dream Navel Orange-Nicholson v. Bailey, 182 F. Supp. 509, 125 USPQ 157. Roses-Armstrong Nurseries, Inc. v. Smith et al.; Same v. Hood et al.; The Conard- Upright Barberry-Cole Nursery Co. V. Youdath Perennial Gardens, Inc., et al., 17 F. Supp. 159, 31 USPQ 95. Bacteria-In re Arzberger, 27 CCPA 1315, 112 F.2d 834, 46 USPQ 32. Pineapple Orange-Dunn v. Ragin v. Carlile, 50 USPQ 472. Syngomium Plant-Ex parte Foster, 90 USPQ 16. Peach Tree-Ex parte Moore, 115 USPQ 145. |