The issue on these consolidated appeals is whether appellant is entitled under 35 U.S.C. 161
Resolution of the issue on these appeals requires us to determine whether as a matter of law, the English publications constitute, within the meaning of 35 U. S.C. § 102(b), a bar to appellant's right to patents on said applications.
The applicable portion of 35 U.S.C. § 102(b) reads:
The express provision of 35 U.S.C. § 161 permits the granting of patents on the particular classes of plants therein enunciated which include "Rosa Floribunda Plants" disclosed in the applications on appeal. Grant of such a patent is, however, "subject to the conditions and requirements" of Title 35 "except as otherwise provided." Thus, appellant's right to patents on his applications is subject to the bar stated in 35 U.S.C. § 102(b), if the publications in issue meet the legal requirements necessary to establish such a bar.
The particular question of law to be here decided is presented on stipulated facts which, insofar as they relate to the issue, are here quoted from the record:
The unique aspects of plants which are the subject of plant patents have posed numerous problems to various tribunals charged with the application of basic patent law concepts thereto. A review of all the reported decisions dealing with plant patents
35 U.S.C. § 161 is based on an amendment, effective May 23, 1930, to R.S. 4886, (Sec. 31 of former title 35 U.S.C.), which originated in House Bill 11372 of the Second Session of the 71st Congress. The Committee on Patents which reported the bill filed a report stating:
The report expresses the hope that the bill "will afford a sound basis for investing capital in plant breeding and consequently stimulate plant development through private funds". It then goes on to state:
An identical report was filed by the Senate Committee on Patents.
The unique nature of a plant patent was recognized by the Patent Office Board of Interference Examiners in Dunn v. Ragin v. Carlile, 50 USPQ 472 (1941) where at p. 474 it was recognized "The mere filing of an application for a patent
35 U.S.C. § 161 engrafts the Plant Patent Act onto the basic patent law, which requires us to apply thereto all the rules, regulations and provisions of the basic patent law except that, by the express provision of 35 U.S.C. § 162, a plant patent cannot be declared invalid if its description "is as complete as is reasonably possible."
As indicated by the Committee reports and as provided in the statutory provisions, the law of plant patents is so inextricably bound up with the earlier general patent law that the former cannot be understood without consideration of the latter, and as provided in 35 U.S.C. § 161, the provisions of Title 35 "relating to patents for inventions shall apply to patents for plants, except as otherwise provided."
It appears, therefore, to have been the intent of Congress that plant patents and patents for other inventions should be subject to the same statutory provisions "except as otherwise provided."
Thus in determining the meaning of 35 U.S.C. § 102(b) as it applies to patents for plants, the first consideration is that Congress did not provide any exception thereto, so it should be presumed that Congress intended that it should be applied to patents for plants as it had been previously applied to patents for other inventions. In other words, we think Congress, by enacting no exception to 35 U.S.C. § 102(b) with respect to patents for plants, intended that it be interpreted the same for plant patents as it has been interpreted in relation to patents for other inventions. Otherwise a "discrimination" would continue to exist "between plant developers and industrial inventors," which, as indicated in the Committee Reports, Congress intended to eliminate by passage of the Plant Patent provisions.
Since there has been no interpretation of 35 U.S.C. § 102(b) as applied to plant patents, we turn to the prior decisions dealing with its application to patents on other inventions. In these decisions, we find 35 U.S.C. § 102(b) and its predecessor statutes have been interpreted as requiring that the description of the invention in the publication "must be sufficient to put the public in possession of the invention." Curtis on Patents, 3rd ed., Sec. 378; Seymour v. Osborne, 11 Wall. 516, 555, 20 L.Ed. 33.
Robinson on Patents, Sec. 325, entitled "Prior Publication: its Essential Requisites," summarizes the long recognized requirements of a "Prior Publication" as follows:
It is Robinson's 5th characteristic of a prior publication with which we are here concerned. This characteristic is further elaborated in Sec. 330 of Robinson on Patents entitled "Prior Publication: Publication Must Fully Communicate the Invention to the public," which states the rule as follows:
Walker on Patents, Deller Edition at p. 271, states:
The underlying public purpose of the patent law, recognized by Congress in enacting the plant patent provisions, is to add to the public store of useful knowledge. This concept is more fully stated in Sec. 36, Robinson on Patents, as follows:
As pointed out in the Committee Reports, supra, prior to passage of the plant patent provisions, plant breeding and research was dependent, in large part, upon Government funds to Government experiment stations, or to the limited efforts of the amateur breeder. The Committee Report expresses the hope that the bill "will afford a sound basis for investing capital in plant breeding and consequently stimulate plant development through private funds." The Committee Report then continues:
The way in which a plant patent advances the public purpose and achieves the result which Congress appears to have intended is stated in Appellant's brief as follows:
Before passing to an analysis of the case law with respect to the meaning of "described in a printed publication," as this term is used in 35 U.S.C. § 102(b), it must be borne in mind that there are inherent differences between plants and manufactured articles. Should a plant variety become extinct one cannot deliberately produce a duplicate even though its ancestry and the techniques of cross-pollination be known. Manufactured articles, processes, and chemical compositions when disclosed are, however, susceptible to man-made duplication.
Appellant in his brief points out:
In the case of manufactured articles, processes and chemical compositions, a different situation prevails. Written descriptions and drawings in publications can often enable others to manufacture the article, practice the process or produce the chemical composition. Thus, with respect to publications in these fields, there is a valid basis in public policy for 35 U.S.C. § 102(b) which bars the granting of patents on inventions "described in a printed publication in this or a foreign country * * * more than one year prior to the date of the application for patent in the United States."
The knowledge thus made available to the public must, if it is to anticipate an invention, be practical and complete. As stated in Sec. 227 of Robinson on Patents:
In view of the foregoing considerations, it would appear that if section 102 (b) was to be given a different interpretation as to plant patents, it should have been expressly qualified by Congress so that descriptions of plants in printed publications would have been judged by different standards than those so long recognized by leading text writers and the courts. Since no such qualification exists we must, under 35 U.S.C. § 161, apply to the descriptions in the instant publications the same requirements as have been applied to the descriptions in publications in cases dealing with patents on other inventions.
The public purpose of section 102(b) is clear enough, and has been enunciated or assumed in the very considerable body of decisional law in which the clause "described in a printed publication" has been interpreted with respect to whether the publication has in fact conveyed such knowledge of an invention to the public as to put the public in possession of the invention.
The briefs of the parties in the instant case support their opposed conclusions by reference to the ample case law, which sets forth particular standards as to what constitutes a "publication." We think the controlling view here is that stated in Seymour v. Osborne, 11 Wall. 516, at page 555, 78 U.S. 516, at page 555, 20 L.Ed. 33 (1870), where the court said:
See also, Wisconsin Alumni Research Foundation v. George A. Breon and Company, Inc., C.C.A. 8, 85 F.2d 166, cert. denied 299 U.S. 598, 57 S.Ct. 191, 81 L. Ed. 441 (1936), Downton v. Yeager Milling Co., 108 U.S. 466, 3 S.Ct. 10, 27 L.Ed. 789; Eames v. Andrews, 122 U.S. 40, 66, 7 S.Ct. 1073, 30 L.Ed. 1064.
We think it is sound law, consistent with the public policy underlying our patent law, that before any publication can amount to a statutory bar to the grant of a patent, its disclosure must be such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention. Such a doctrine is in accord with that expressed by the Supreme Court when it held patent No. 137,893 invalid in Cohn v. United States Corset Co., 93 U.S. 366, 23 L.Ed. 907. The court stated (p. 377):
It is the position of appellant that the publications relied upon by the examiner and the Board of Appeals in rejecting his applications, are not "enabling" publications, i. e., the published information therein is not sufficient to enable anyone of ordinary skill in the art of plant breeding to practice the invention and produce the disclosed varieties of rosa floribunda plants. The validity of appellant's position can be appraised only after one understands the general techniques by
Commercial rose-breeders, particularly in this country and England, continually strive to develop new varieties with characteristics of interest to commercial and amateur rose growers. A few of these characteristics are color, fragrance, freedom from various diseases, abundant foliage, firmness, size and shape of flower, number and frequency of blooms, etc. Each of these characteristics is a sex-linked characteristic and as such is subject to the applicable principles of plant heredity and the transmission of inheritable characteristics. The Encyclopedia Britannica (1957), states that the number of hybridized roses introduced commercially each year is over one hundred. Roses have been cultivated for so many centuries and have been hybridized so extensively that it is difficult to refer the cultivated forms to wild prototypes. To facilitate grouping varieties with similar characteristics, a horticultural classification has evolved which is complicated and often inconsistent, since there is considerable overlapping and mergence of classes as the result of intensive interbreeding. A comprehensive list given in J. H. McFarland's Modern Roses IV, 1952, includes some 6,150 names which represents only a small proportion of the roses hybridized and named during the preceding 250 years. Due to the number of variable characteristics, no two varieties, even if from identical parentage, are exactly alike. It has aptly been said by Florence Coates in "The Poetry of Earth" that:
After determining the characteristics desired in a new rose, the rose breeder selects the parent plants for certain of their known characteristics. By the process of cross-pollination a seed is formed in one of the parent plants as the result of the union of each pair of sex cells contributed by the parent plants. Propagation from the resulting seeds is "sexual propagation", which is to be distinguished from "asexual propagation", in that in "sexual propagation" the parent plants each contribute to the formation of the embryo that will develop in the seed and eventually give rise to a plant which differs from either of the parent plants as well as from other plants produced from other seeds resulting from the same cross-pollination. In "asexual propagation," however, the plant is propagated by divisions or cuttings to form clones, each of which is identical to the parent plant and to all other cuttings or clones taken from the parent.
The rose breeder strives to produce by sexual progagation a rose having the desired characteristics, after which this particular rose with the desirable characteristics is further propagated by asexual methods in which all of the characteristics of that one rose plant, and only that plant, are transmitted to the new plants derived by cutting, etc.
The rosa floribunda plants described in the two applications on appeal and in the publications were produced by sexual propagation as the result of the chance arrangement of the almost infinite number of variables arising from the particular chromosomes of the parent plants. The parentage of the "Dusky Maiden" rose is not disclosed in the publications. The parentage of the "Charming Maid" rose is given in the Rose Annual of 1954 as "Dainty Maiden x Mrs. Sam McGredy." To those skilled in the art of rose breeding this indicates that the parent "Dainty Maiden" is the seed parent, i. e., that this parent was selected by the breeder to bear and develop the seeds which result from pollination of its emasculated flowers with pollen taken
The production of seeds by cross-pollination does not assure the plant breeder that he has produced a true new plant variety having the characteristics desired. At this step, the principles of heredity and plant genetics introduce such variables that no two seeds from the parent cross can be expected to produce identical plants.
The functions of the chromosomes and genes in transmitting inheritable properties from parents to offspring in plant breeding are brought into play only when the nuclei from different parent plants fuse together to form, in the seed, the nucleus of the new plant. Differences in composition of the fusing nuclei produce an organism which differs from either parent. These differences may be due, for example, to the presence of a duplicated chromatin granule (gene) in one, which may be represented singly or not at all in the other.
While man can and does assist nature by the cross-pollination of selected parent plants, the actual creation of the new plant, because of the almost infinite number of possible combinations between the genes and chromosomes, is not presently subject to a controlled reproduction by act of man. While those skilled in this art now understand the mechanics of plant reproduction and the general principles of plant heredity, they are not presently able to control the factors which govern the combinations of genes and chromosomes required to produce a new plant having certain predetermined desired properties. The plant breeder must time and again recall the lines of Tennyson's "Flower in the Crannied Wall," after he has completed cross-pollination of the parent stock and awaits the new offspring:
It is not until the rose breeder has germinated the sexually produced rose seeds from the selected parents and raised plants therefrom to blooming size that he can make the final selections of the individual plant or plants which are to be multiplied by asexual reproduction.
The rosa floribunda plants here in issue thus appear to be something more than Gertrude Stein may have observed when she wrote in "Sacred Emily" that "a rose is a rose is a rose is a rose".
In holding that the publications here in issue constitute a legal bar to a granting of patents on the rosa floribunda plants described in the applications here on appeal, we think the examiner and the Board of Appeals disregarded what we have found to be the legally imposed limitations on the meaning of the clause "described in a printed publication" in section 102(b) in the prior cases in which the courts have interpreted the clause in determining whether a particular description in a publication will constitute a statutory bar to the grant of a patent. We think the board and the examiner
We do not agree with the examiner and the board that this creates an "anomaly" when dealing with plant patents which requires that "plant publications must be totally ignored as printed publications." In view of the long line of cases dealing with other types of inventions antedating 1930, we think Congress, by failing to provide otherwise, intended that the provisions of section 102 (b), as applied to plant patents, should not be interpreted otherwise than they had been with respect to other inventions, i. e., that only an "enabling" publication is effective as a bar to a subsequent patent. We do not agree with the view expressed by the examiner that this necessarily requires that plant publications be "totally ignored." Instead, it requires that the facts of each case be carefully considered to determine whether the description in the printed publication in question does in fact place the invention in the possession of the public. Each case must be decided on its own particular facts in determining whether, in fact, the description in the printed publication is adequate to put the public in possession of the invention and thus bar patentability of a plant under the conditions stated in section 102(b). While the present knowledge of plant genetics may mean as a practical matter, that the descriptions in such general publications as are here involved cannot be relied upon as a statutory bar under section 102(b), we must be mindful of the scientific efforts which are daily adding to the store of knowledge in the fields of plant heredity and plant eugenics
The patent law, as shown by the Committee Reports, was extended to plant patents in order to stimulate interest in the breeding and commercial development of new and valuable plant species. To erect technical barriers to the grant of such patents by a strict and literal interpretation of the clause "described in a printed publication" in section 102(b) as was done by the examiner and Board of Appeals, apparently without consideration of the public purpose underlying the plant patent provisions, seems to us will defeat the purpose of the act by creating conditions for barring plant patents which are different from the long recognized conditions for barring patents on other inventions.
The decision of the board cites numerous decisions as support for its affirmance
The board relies heavily on Cohn v. United States Corset Co., supra, which in the solicitor's brief has been characterized as "the landmark case on this aspect of the law," and is relied upon as support for the assertion that "the overwhelming weight of authority supports the proposition that a clear naked description in a prior publication is sufficient under the law to bar a subsequent inventor from obtaining a patent on the identical thing."
The Cohn case involved a suit for infringement of the Cohn patent on a corset which contained the following claim:
The defense of invalidity of the Cohn patent was predicated, under a statute which corresponds to 35 U.S.C. § 102(a), on an English provisional specification of one John Henry Johnson as a prior publication which was asserted to disclose the Cohn invention. The pertinent part of the Johnson disclosure stated:
Referring to the Johnson disclosure, the court stated (p. 370):
The court further stated (p. 373):
The crux of the Cohn decision as we see it is:
It is in the light of these comments by the court that the true significance of its statements, which the Patent Office and numerous cases quote as to the holding in the Cohn case, can be determined. The court said (p. 377):
The court throughout its opinion in the Cohn case directly referred to those skilled in the art, and the knowledge which they possessed. We think it is because of this knowledge, and only because of this knowledge, that the court said "the important inquiry, therefore, is, whether the prior publication described the article."
The solicitor also cites in support of the board's position, the decision of the District Court of Maryland in One-Piece Bifocal Lens Co. v. Bisight Co., 246 F. 450, mod. 259 F. 275 (CCA 4), cert. den. 249 U.S. 606, 39 S.Ct. 288, 63 L.Ed. 799. At page 457, of 246 F. the Court stated:
Prior to this statement the District Court discussed the Cohn case and, basing its analysis of that decision upon the language on page 377 last quoted supra, stated on page 456:
In view of our analysis of the Cohn case, supra, we answer the District Court's question in the affirmative. The standard for publications applied by the
The case of General Electric Co. v. De Forest Radio Co., 17 F.2d 90 (D.C.Del.), mod. 28 F.2d 641 (CCA 3), cert. den. 278 U.S. 656, 49 S.Ct. 180, 73 L.Ed. 565, is also cited in the solicitor's brief. In the General Electric case, the court stated in essence that a publication which evidences conception of an idea would be enough to "destroy the product claims in suit upon the ground that they are wanting in invention." As its authority, the court cited the Bifocal case, which, as we have previously discussed, based its decision on what we think is an erroneous interpretation of the Cohn case. We therefore decline to accept the statement in the General Electric case as controlling.
The Patent Office also relies upon several additional decisions of this court which are alleged to support its position. Among these cases are: In re Marden and Rentschler, 48 F.2d 428, 18 CCPA 1119; In re Attwood, 253 F.2d 234, 45 CCPA 824; In re Von Bramer et al., 127 F.2d 149, 29 CCPA 1018; In re Crosley et al., 159 F.2d 735, 34 CCPA 882; In re Fink, 62 F.2d 103, 20 CCPA 716; In re Stoll et al., 161 F.2d 241, 34 CCPA 1058; In re Michalek, 162 F.2d 229, 34 CCPA 1124; In re Shackell, 194 F.2d 720, 39 CCPA 847; In re Kebrich, 201 F.2d 951, 40 CCPA 780; In re Inman, 228 F.2d 229, 43 CCPA 709; In re Baranauckas et al., 228 F.2d 413, 43 CCPA 727.
In none of these decisions do we find any support for the position taken by the Patent Office nor anything inconsistent with our position in the instant case.
The Attwood case concerned use, as a reference, of a prior patent which was said by the appellant to cover an inoperative disclosure. The court based its decision on the Marden and Rentschler and Von Bramer cases. The Marden and Rentschler case cited the Cohn case and, erroneously interpreting that decision, merely stated on page 429 of 48 F.2d, on page 1121 of 18 CCPA that:
The Von Bramer case also concerned a rejection based on a reference patent alleged to disclose an inoperative invention. The court held that "It is not necessary that a reference patent for a device or chemical compound disclose an operative process for reproducing the article or product." Authority cited for this proposition was the Cohn, Marden, Bifocal and other cases.
Implicit in all of these cases is the concept of a certain degree of knowledge possessed by one skilled in the arts involved concerning the disclosure of the prior publication and the concept which was sought to be patented, to the end that this knowledge taken with the disclosure of the printed publications, was sufficient to place the disclosed invention in the possession of the public. To the extent, if any, that these decisions may conflict with this analysis of the Cohn case, we disagree with them and do not find them conclusive of the issue here.
In the Michalek case, the court stated that skilled workers would, as a matter of course, be able to utilize the process disclosed by the reference to get results within the limits of the product claims of the application at bar. We think this fact situation is sufficient to distinguish this case.
The Board of Appeals cited Merck and Co., Inc. v. Marzall, 91 U.S.App.D.C. 50, 197 F.2d 206. Contrary to the Board of Appeals' position, this case is believed to substantiate the conclusions we have
In 197 F.2d at page 208, the court in footnote 2 sets forth the knowledge which existed at the time the invention was made. It is therein stated:
We think the Merck case must be read in the light of the fact that the knowledge of chemists skilled in producing the compound there in issue was such that a mere disclosure of the chemical constitution of the compound was enough to allow such chemists to produce the disclosed compound. Even in the chemical art, however, where the knowledge of skilled artisans is great, there are limitations on the availability of disclosures in printed publications as bars under section 102 (b).
In the Baranaukas case, this court said, after considering several of the above cases, "we feel constrained to point out that there are limits to the doctrine of those cases * * *. Certainly they do not extend so far as to permit publication of theoretical lists of hundreds or thousands of possible compounds to deny patent protection on such compounds to those who actually discovered them later."
In Shell Development Co. v. Watson, D.C., 149 F.Supp. 279, affirmed 102 U.S. App.D.C. 297, 252 F.2d 861, which the Patent Office further cites to support its position, the court relied on the Merck case and stated further:
The court in the Shell case cited the Merck case as its authority. It is therefore in this light that we must construe the court's use of the word comprehend. So construed, the Shell case holds that the publication in the light of the knowledge possessed by those skilled in the art was sufficient to bar the grant of a patent. We do not find this to be inconsistent with our holding based on contrary facts in the case at bar.
Finally, there is the decision of In re Decker, 1911 C.D. 274, 36 App.D.C. 104, 162 O.G. 999. In this case, as in others which we have previously discussed, the holding of the Cohn case is believed to have been erroneously construed because of an incomplete analysis of the entire opinion of the court. In the Decker case the court said "the [Cohn] court held a
We therefore hold that descriptions in printed publications of new plant varieties, before they may be used as statutory bars under 35 U.S.C. § 102(b), must meet the same standards which must be met before a description in a printed publication becomes a bar in non-plant patent cases. 35 U.S.C. § 161 does not contain any limitation on this interpretation of the clause "described in a printed publication," and Congress has not "otherwise provided." When so considered, the descriptions in the printed publications here in issue do not meet the requirement of an "enabling" description, as the statute has been interpreted in numerous cases.
The Board of Appeals stated in its decision below that "it is no more absurd to use a disclosure which is not enabling as a bar than it is to grant a patent on such a disclosure; the disclosure in the specifications of these applications are admittedly just as unenabling as the disclosures of the publications." The answer to this apparent anomaly lies in 35 U.S.C. § 162 in which Congress "otherwise provided" by specifically allowing for such a description in plant patent applications. No such allowance has been made in 35 U.S.C. § 102(b) with reference to the sufficiency of the description of new plant varieties in printed publications.
Another answer to this apparent "anomaly" is implicit in 35 U.S.C. § 163. The plant patent grant differs from that given with respect to other inventions. Infringers must be shown to have asexually reproduced or sold or used the plant on which the patent was granted. Cf. Cole v. Youdath, supra, Kim Bros. v. Hagler, supra, and Armstrong Nurseries, Inc. v. Smith et al., supra. This section implicitly recognizes there is no possibility of producing the plant from a disclosure as 35 U.S.C. § 112 contemplates. Therefore, there is no requirement for any how-to-make disclosure in the application for a plant patent.
The mere description of the plant is not necessarily an "enabling" disclosure. Such descriptions, just as in the case of other types of inventions, in order to bar the issuance of a patent, must be capable, when taken in conjunction with the knowledge of those skilled in the art to which they pertain, of placing the invention in the possession of those so skilled.
The descriptions of the new roses in the instant publications,
The decision of the Board of Appeals is reversed.
MARTIN, J., sat but did not participate because of illness.
United States Senior District Judge for the Eastern District of Pennsylvania, designated to participate in place of Judge O'Connell, pursuant to provisions of Section 294(d), Title 28, United States Code.
Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title.
The provisions of this title relating to patents for inventions shall apply to patents for plants, except as otherwise provided. (July 19, 1952, ch. 950, 66 Stat. 804; Sept. 3, 1954, c. 1259, 68 Stat. 1190.)
Dream Navel Orange — Nicholson v. Bailey, D.C., 182 F.Supp. 509.
Nectarine — Kim Bros. v. Hagler, D.C., 167 F.Supp. 665.
Roses — Armstrong Nurseries, Inc. v. Smith et al.; Same v. Hood et al.; The Conard-Pyle Company v. Smith et al.; Jackson & Perkins Company v. Smith et al.; Same v. Hood et al., D.C., 170 F.Supp. 519.
Upright Barberry — Cole Nursery Co. v. Youdath Perennial Gardens, Inc. et al., D.C., 17 F.Supp. 159.
Bacteria — In re Arzberger, 112 F.2d 834, 27 CCPA 1315.
Pineapple Orange — Dunn v. Ragin v. Carlile, 50 USPQ 472.
Syngomium Plant — Ex Parte Foster, 90 USPQ 16.
Peach Tree — Ex Parte Moore, 115 USPQ 145.
"The emasculated flower is then covered with a paper bag to keep unwanted pollen from reaching the stigma. In a day or two the stigma is covered with a sticky substance called stigmatic fluid. It is now receptive. Remove the bag, and place the pollen collected from the desired parent plant on the stigma with a camel's hair brush. The paper bag is replaced, and, if the cross-pollination is successful, a seed pod soon starts to form."
"That a picture or drawing without printed text is not a publication, see New Process Fermentation Co. v. Koch (C.C.1884), 21 F. 580; 29 O.G. 535; Reeves v. Keystone Bridge Co. (1872), Fed.Cas.No.11,660, 1 O.G. 466, 5 Fish. Pat.Cas. 456, 9 Phila. 368; Judson v. Cope (1860), Fed.Cas.No.7,565, 1 Bond 327, 1 Fish.Pat.Cas. 615."