Appeal No. 2007-0317 Page 5
Application No. 09/944,932
methods of asexual propagation. Office Action, mailed August 31, 2005, pages
3-4.
According to the Examiner, the foreign sale is not obscure because “[o]ne
of ordinary skill in the art would have been able to check the availability of the
claimed plant and where to purchase that plant as well as under what name it
was sold.” Office Action, mailed August 31, 2005, page 4.
Appellant’s appeal of this rejection is now before this Merits Panel. Under
the provisions of 37 CFR § 41.50(d),2 we require Appellant to address the
following matters:
I. The public use and availability of a plant variety outside of the United States:
Appellant asserts that “[t]he public use and availability of the subject plant
variety outside of the United States is not material to a determination of ‘plant
patentability’ of a plant variety in the United States under [§] 102[(]b[)].” Brief,
page 10. This assertion is inconsistent with the conclusion in Elsner, 381 F.3d at
1126, 72 USPQ2d at 1039-1040 that “published Plant Breeder’s Rights
applications . . . coupled with foreign sales of the plants may constitute a
[§] 102(b) bar to patentability.”
As the Elsner court explains, “the precise focus of the analysis is not
whether the foreign sales are themselves § 102(b) prior art, but whether the
publication has placed the claimed invention in the possession of the public
before the critical date. Thus, foreign sales of the claimed plants may be within
2 “The Board may order appellant to additionally brief any matter that the Board considers to be of
assistance in reaching a reasoned decision on the pending appeal. Appellant will be given a non-
extendable time period within which to respond to such an order.” 37 CFR § 41.50(d).
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