The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BERNARD TICKNER
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Appeal No. 2004-1268
Application No. 09/944,932
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VACATUR AND REMAND
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Before WILLIAM F. SMITH, ADAMS, and GRIMES, Administrative Patent Judges.
WILLIAM F. SMITH, Administrative Patent Judge.
This appeal involves plant patent Application No. 09/944,932. The question
raised in this appeal involves whether evidence of foreign sales of the claimed
reproducible plant variety may enable an otherwise non-enabled printed publication
disclosing the plant, thereby creating a bar under 35 U.S.C. § 102(b). The Court of
Appeals for the Federal Circuit considered that issue in In re Elsner, 381 F.3d 1125,
72 USPQ2d 1038 (Fed. Cir. 2004), and held in the affirmative. Id. at 1128, 72 USPQ2d
at 1041. In so holding, the court stated that “[t]he foreign sale must not be an
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
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