Ex Parte Ibes - Page 2



                  Appeal No. 2004-0447                                                                                        Page 2                      
                  Application No. 09/733,020                                                                                                              

                  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 outside the United States on or about March 1, 1999" as evidence that                                                   
                  PBR 981669 (European Union) is enabled.  Examiner’s Answer, page 4.  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,                                                      
                  solitary occurrence that would go unnoticed by those skilled in the art” and (2) would                                                  
                  enable one to reproduce the plant without undue experimentation.                                                                        
                                                            VACATED; REMANDED                                                                             


                                                      William F. Smith                             )                                                      
                                                      Administrative Patent Judge                  )                                                      
                                                                                                   )                                                      
                                                                                                   ) BOARD OF PATENT                                      
                                                                                                   )                                                      
                                                      Donald E. Adams                              )                                                      
                                                      Administrative Patent Judge                  )   APPEALS AND                                        
                                                                                                   )                                                      
                                                                                                   ) INTERFERENCES                                        
                                                                                                   )                                                      
                                                      Eric Grimes                                  )                                                      
                                                      Administrative Patent Judge                  )                                                      




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