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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