Ex Parte White - Page 2



                Appeal No. 2003-2162                                                                            Page 2                   
                Application No. 09/939,491                                                                                               


                obscure, solitary occurrence that would go unnoticed by those skilled in the art.” Id. at                                
                1131, 72 USPQ2d at 1043.  The court also stated that the record did not establish 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.” Id.  Thus, the court vacated the Board’s decision and remanded the                                     
                case 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.”  Id.                                                                                                              
                        In this case, the examiner is relying upon applicant’s admission that the claimed                                
                plant “was sold in the United Kingdom in the fall of 1998" as evidence that “European                                    
                Community Plant Breeder’s Rights grant no. 4711" is enabled.  Examiner’s Answer,                                         
                page 2.  However, there is no evidence whether the sales were of the type that would                                     
                be noticed by those of skill in the art.  Nor has the other issue raised by the Federal                                  
                Circuit in Elsner, whether the sales would enable one skilled in the art to reproduce the                                
                claimed plant without undue experimentation, been addressed.                                                             
                        Accordingly, we vacate the examiner’s rejection and remand the case to the                                       
                examiner to determine whether the sales of the claimed plant (1) were “an obscure,                                       














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