Appeal No. 2007-0317 Page 3
Application No. 09/944,932
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, the rejection of record was vacated and the application was
remanded “to the [E]xaminer 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.” ’05 Decision, page 2.
In response, the Examiner issued a communication to Appellant under
37 CFR § 1.105 requiring Appellant to provide:
a) a copy of any publications or advertisements relating to sales,
offers for sale, or public distributions of the claimed plant variety
anywhere in the world if the sale, offer for sale, or public distribution
occurred prior to the filing date of this application;
b) any public information available regarding sales, offers for sale,
or public distributions of the claimed plant variety anywhere in the
world that occurred prior to the filing date of this application,
including the date(s) and location(s) as well as information
pertaining to whether this was an obscure, solitary occurrence that
would go unnoticed by those skilled in the art;
c) any information relating to the accessibility or non-accessibility of
the claimed plant that one of ordinary skill in the art could have
derived from the printed PBR document; [and]
d) Applicant is also invited to submit any information that would
indicate that one of ordinary skill in the art would not have known
how to successfully reproduce the plant.
See Paper, mailed March 18, 2005.
In response, Appellant asserted that “[n]o advertising was undertaken
prior to the application date of the application; that “Euphorbia Charam was
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: September 9, 2013