Appeal No. 2004-0167 Page 2
Application No. 09/753,976
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 first offered for sale in Europe in October 1998" as evidence that European
Community Plant Breeder’s Rights Application No. 98/1018 is enabled. Examiner’s
Answer, page 3. 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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