Accessible Foreign Plant Sales May Enable Publication for 102(b) Bar

In re Elsner, slip op. 03-1569 (Fed Cir. August 16, 2004) held that evidence of the foreign sale of a claimed reproducible plant variety may enable an otherwise non-enabled printed publication disclosing that plant, thereby creating a §102(b) bar. Although the foreign sales of the Pendec geranium and the JACopper rose were not themselves §102(b) prior art against the patent applications, the court held that the foreign sale could enable a person of skill in the art to practice asexual reproduction of the disclosed plant in a manner consistent with the statute. The court went on to ststae that

[A]lthough we agree with the PTO that foreign sales may enable an otherwise non-enabling publication, we find that factual issues remain with respect to the accessibility of the foreign sales of the claimed plants and the reproducibility of the plants. The Board did not specifically address how readily one skilled in the art could have learned of the foreign sales from the printed PBR applications. In the present appeals, the examiners discovered the PBR applications through a search of the relevant PBR database. They subsequently asked Appellants to provide copies of the applications, as well as any additional information regarding the claimed plant varieties. Both appellants responded that the claimed plants had been on sale in foreign countries. It is unclear, however, whether a skilled artisan would have known of the foreign sales. The foreign sale must not be an obscure, solitary occurrence that would go unnoticed by those skilled in the art. Its availability must have been known in the art, just as a printed publication must be publicly available. See In re Bayer, 568 F.2d 1357, 1361 (CCPA 1978) (“[A] printed document may qualify as a ‘publication’ under 35 U.S.C. § 102(b) . . . so long as accessibility is sufficient to raise a presumption that the public concerned with the art would know of the invention.� (quotation omitted)). We have stated before with respect to prior art references that “[a]ccessibility goes to the issue of whether interested members of the relevant public could obtain the information if they wanted to.� Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988).

Moreover, the Board did not find 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 experimentation. Such a determination is critical to the question whether the foreign sales would enable the printed publications.

We therefore remand both cases 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.