Ex parte Beineke

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte WALTER F. BEINEKE
Appeal 2007-42 15
Application 101919,902
Technology Center 1600
Decided: July 3 1,2008
Before MICHAEL R. FLEMING, Chief Administrative Patent Judge, and
RICHARD E. SCHAFER, ERIC GRIMES, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge GRIMES.
Opinion Dissenting filed by Administrative Patent Judge LEBOVITZ, with
whom Chief Administrative Patent Judge FLEMING joins.
GRIMES, Adm inistrative Patent Judge.

Appeal 2007-42 15
Application 101919,902
DECISION ON APPEAL
This is an appeal under 35 U.S.C. 5 134 involving a plant patent
application.' 	The Examiner has rejected the claim under 35 U.S.C. 5 161 on
the basis that the claimed oak tree was found in an uncultivated state. We
have jurisdiction under 35 U.S.C. 5 6(b). We affirm.
STATEMENT OF THE CASE
The specification2 describes a "new variety of white oak tree
(Quercus alba L.) [that] was discovered by the applicant near Vallonia,
Jackson County, Indiana in a front yard of a home" (Spec. 1).
The claim reads as follows:
A new and distinct variety of white oak tree named 'AFTO-2'
substantially as illustrated and described, which has excellent timber quality,
extremely rapid growth rate, and fairly strong central stem tendency, and
produces annual acorn crops.
The Examiner has rejected the claim on the basis that AFTO-2 was
found in an uncultivated state, and therefore is not eligible for a plant patent
(Answer 4).
Appellant contends that the "claimed tree was found in a cultivated
state, in the yard of a home, on land that had been cultivated for 35 years
more than the age of the tree, and was cultivated at discovery" (Appeal Br.
4).
1 This appeal was heard at the same time as Appeal 2007-3882 (application
101919,574). The applications have the same inventor and assignee, and
they present the same issue. We have considered them together.
2 "Specification" refers to the substitute specification filed Sept. 6, 2005.

Appeal 2007-42 15
Application 	101919,902
In view of these conflicting positions, the issue in this appeal is: Was
the claimed oak tree AFTO-2 found in an uncultivated state and therefore
ineligible for patenting under 3 5 U.S.C. 5 16l ?
Findings of Fact
FF 1. 	The instant application was filed August 17, 2004.
FF2. The Specification states that Appellant discovered AFTO-2 "in
a front yard of a home" (Spec. 1 , 7 1).
FF3. The Specification states that "[blefore the house was
constructed in the 19307s,the area was a wooded pasture with many white
oak and hickory trees present" (Spec. 1,72).
FF4. The Specification states that the "U.S. government first sold the
land to a Peters family in the 1850's" (Spec. 1,72).
FF5. The Specification states that "at age 10, 'AFTO-2' seedlings
averaged 27.0 ft. tall at the first planting" (Spec. 2,73).
FF6. The Specification states that AFTO-2 was "approximately 118
years old when described at a location near Vallonia, Indiana in a cultivated
state" (Spec. 2,74).
FF7. The Specification states that "[rleal estate records show that the
land was settled and farmed for at least 35 years before the tree was started"
(Spec. 2,74).
FF8. The Specification does not describe any specific efforts made by
anyone to cultivate AFTO-2 (e.g., watering, staking, fertilizing, or pruning).
FF9. Figure 1 is said to show "the timber form of 'AFTO-2"' 	(Spec.
3,791.

Appeal 2007-42 15
Application 101919,902
FF 10. Figure 3 is said to show "the bole of 'AFTO-2"' 	(Spec. 3 , 7
11).
FF 11. Figures 1 and 3 are photographs showing a tree growing next
to a small bush in an area of low-growing vegetation in a bend of what looks
like an asphalt driveway (Figs. 1 and 3).
FF12. Figures 1 and 3 bear an apparent date stamp reading "3 2 '04"
(Figs. 1 and 3).
FF 13. Appellant has submitted a copy of a document titled "Partition
of the Real Estate among the heirs of Christian Peters Deceased" and dated
February 1875 (part of Exhibit 3 in the Evidence Appendix attached to the
Appeal Brief).
FF14. The "Partition" document describes a certain tract of land
("Lot No. 5") as being "assign[ed] and deliver[ed] unto Mary Peter [sic]"
(Evidence Appendix, Exhibit 3, third page, first full paragraph).
FF 15. Appellant has submitted a copy of a handwritten document
titled "Past Ownership of the Neal Stuckwish PropertyISection 4, T4, R4
Jackson Co. INl56.87 acres1The location of AFT-02 and AFT-03" (part of
Exhibit 3 in the Evidence Appendix attached to the Appeal Brief).
FF 16. The "Past Ownership" document states: "-1 850 land
originally purchased from the U.S. government by Christian Peters"
(Evidence Appendix, Exhibit 3).
FF17. The "Past Ownership" document states: "Mary Peters - Feb 3,
1875 - 9 1.5 acres1In 1886 and 1899 when the trees first started growth,
Mary Peters owned the l a n d (Evidence Appendix, Exhibit 3).

Appeal 2007-42 15
Application 101919,902
Discussion
We conclude that the evidence of record supports the Examiner's
position that the claimed plant does not fall within the scope of 35 U.S.C.
9 161. Section 161 reads as follows:
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.
35 U.S.C. fj 161.
Thus, "a plant found in an uncultivated state" is expressly excluded
from the scope of 5 161. The question that is central to this appeal is
whether AFTO-2 was found in an uncultivated state.
The burden is generally on the Examiner to show that a claimed
invention is unpatentable. See Hyutt v. Dudus, 492 F.3d 1365, 1369 (Fed.
Cir. 2007)("In the prosecution of a patent, the initial burden falls on the PTO
to set forth the basis of any rejection, i.e., a prima facie case."). 	We note
that 5 161 is unusual in expressly excluding certain subject matter, but we
will assume for present purposes that the Examiner bears the initial burden
of showing that AFTO-2 is outside the scope of 5 161.
The Examiner points to the Specification's statements that AFTO-2
was 118 years old when it was found, and that "before the house was
constructed the area was a wooded pasture" (Answer 4). The Examiner
concludes that "based upon consideration of all the evidence of record it is
more likely than not that the claimed plant was found in an uncultivated
state" (id.).

Appeal 2007-42 15
Application 101919,902
We conclude that the Examiner has made out a prima facie case of
unpatentability. The Specification contains data on the size of 10-year-old
AFTO-2 seedlings (FF5). The instant application was filed August 17,2004
(FF 1). In order for seedlings to have been grown for 10 years by the filing
date of the instant application, they must have been planted no later than
August 1994; thus, AFTO-2 must have been found by August 1994.
The Specification states that AFTO-2 was about 118 years old when it
was found (FF6). A tree that was 118 years old in 1994 would have started
growing in 1876.~The Specification states that the land on which AFTO-2
was found was a wooded pasture until the 19307s,when a house was built
nearby (FF3). The Specification's description thus means that AFTO-2 was
54-63 years old at the time of the first disclosed human activity that might
have affected it. The Specification does not describe any deliberate
cultivation of AFTO-2 such as watering, fertilizing, staking, or pruning
(FF8).
We agree with the Examiner that the above evidence, provided by the
Specification, supports a prima facie conclusion that AFTO-2 was found in
an uncultivated state.
Appellant argues that the "claimed tree was found in a cultivated
state, in the yard of a home" (App. Br. 4). Appellant reasons that "[als FIG.
1 of the specification illustrates, when discovered by the inventor it was in a
yard with grass clearly maintained 'by labor and attention,' . . . labor and
3 This is earlier than the 1886 date stated in Appellant's "Past Ownership"
document (FF 17) but still after the land was acquired by Mary Peter(s),
according to Appellant's "Partition" document (FF 13, FF 14).

Appeal 2007-42 15
Application 	101919,902
attention that would also benefit 'AFTO-2"' 	(id. at 6). That is, "[blecause
the tree is surrounded by the other plants and the roots of the tree extend
under the lawn, which the examiner admits is 'cultivated,' cultivation of the
lawn must necessarily reach the tree" (Reply Br. 2).
This argument does not rebut the Examiner's prima facie case. The
Specification indeed states that AFTO-2 was found "in a front yard of a
home" ( F F ~ ) . ~	But, as discussed above, the Specification itself provides
evidence that AFTO-2 was found no later than August 1994. The only
evidence of record that shows the actual state of AFTO-2 is provided by
Figures 1 and 3, which are date-stamped "3 2 '04" (FF12), which we
understand to mean March 2, 2004, nearly ten years after the latest date that
AFTO-2 could have been found according to the data in the Specification.
No evidence, provided by way of declaration or otherwise, relates the state
of the tree shown in Figures 1 and 3 to the state of the tree when it was
found in 1994 or earlier.
4 The Specification also states that AFTO-2 was found "in a cultivated state"
(FF6). However, we disagree with Appellant's position that his statement to
this effect is conclusive of the legal issue on appeal (Reply Br. 2). We also
note that the official file contains two signed Declarations under 37 C.F.R.
5 1.63, only one of which has a check in the box that states "Said plant was
found in cultivated area (check this box for newly found plant only)"
(Declarations filed March 16,2005 and Sept. 2 1,2005). The later-filed
Declaration (with the box checked) is undated, and Appellant has not
explained the basis for the conflicting statements. According to the cover
letter filed Sept. 2 1, 2005, the later-filed Declaration was submitted to
"reflect[ ] the new title of the [application] as amended from AFT-02 to
AFTO-2."

Appeal 2007-42 15
Application 	101919,902
Appellant also argues that AFTO-2 was found "on land that had been
cultivated for 35 years more than the age of the tree" (App. Br. 4) and that
"the land on which 'AFTO-2' developed was always owned and used as a
farm" (id. at 6).
This argument is unpersuasive because it is unsupported by evidence.
Appellant has provided evidence that the land on which AFTO-2 was later
found was privately owned as early as the 18507s,and was owned by a Mary
Peters (or Peter) in 1876 when AFTO-2 apparently began growing. Private
ownership, however, is not cultivation. The evidence of record does not
show that the land was cultivated at any date prior to 2004, when the
photographs of Figures 1 and 3 were apparently taken.
And even if the evidence showed that AFTO-2 was found in a mowed
lawn, that showing would not necessarily establish that it was covered by
fj 161. That statute does not refer to plants "found in an uncultivated area,"
but to plants "found in an uncultivated state." The "state" of a thing refers
to its "mode or condition of beingm5not its physical surroundings. Thus, the
condition of the environment surrounding AFTO-2 does not conclusively
determine the "cultivated" or "uncultivated state of AFTO-2 itself. In our
view, compliance with the "cultivated" requirement of fj 161 is determined
by whether the existence or condition of the found plant itself has been
affected by human activity (i.e., cultivation).
The legislative history of fj 161 supports this position. Section 161
derives from the 1930 Plant Patent Act, which amended R.S. 4886 (now 35
5 Webster's Ninth New Collegiate Dictionary 1151 (Merriam-Webster Inc.,
1990).

Appeal 2007-42 15
Application 101919,902
U.S.C. 5 101) to read as follows: "Any person who has invented or
discovered any new and useful art, machine . . . or who has invented or
discovered and asexually reproduced any distinct and new variety of plant
other than a tuber-propagatedplant, . . . may . . . obtain a patent therefor"
Imazio Nursery, Inc. v. Dania Greenhouses, 69 F.3d 1560, 1563 (Fed. Cir.
1995)(quoting R.S. 4886, alterations by the Imazio Nursery court).
"Prior to 1930, two factors were thought to remove plants from patent
protection. The first was the belief that plants, even those artificially bred,
were products of nature for purposes of the patent law." Diamond v.
Chakrabarty, 447 U.S. 303,3 11 (1980). Congress addressed this concern by
"explain[ing] at length its belief that the work of the plant breeder 'in aid of
nature' was patentable invention." Id. at 3 12.
The Chababarty Court cited the 1930 House and Senate Committee
Reports, which noted the distinction between the discovery of a new mineral
and the discovery of a new variety of plant. The Reports pointed out that
unlike formation of a mineral, "a plant discovery resulting from cultivation
is unique, isolated, and is not repeated by nature, nor can it be reproduced by
nature unaided by man." Id. at 3 13. The Court concluded that "Congress
thus recognized that the relevant distinction was not between living and
inanimate things, but between products of nature, whether living or not, and
human made inventions." Id. (emphases added).
The Committee Reports accompanying the 1930 Plant Patent Act
show that Congress did not intend that law to cover plants that arise without
any human involvement. The bill that resulted in the 1930 Act originally
covered two classes of plants: "(1) any distinct and new variety of plant or

Appeal 2007-42 15
Application 	101919,902
(2) any distinct and newly found variety of plant." 	Ex parte Foster, 90
USPQ 16, 17 (Pat. Off. Bd. App. 195I), quoting Senate Bill 401 5. The
Senate Committee on Patents amended the bill by "striking out from the bill
the words 'or (2) any distinct and newly found variety of plant,' thus
eliminating newly found plants from the scope of the bill." 	Id.
The Report accompanying S. 4015 (attached to the Appeal Brief as
Exhibit 5) confirms that
the 	committee 	has, 	by 	its 	amendment 	in 	striking 	out 	the
patenting of "newly found" varieties of plants, eliminated from
the scope of the bill those wild varieties discovered by the plant
explorer or other person who has in no way engaged either in
plant cultivation or care and who has in no other way facilitated
nature in the creation of a new and desirable variety.
S. Rep. No. 71-315, at 7 (1930). The House Committee Report (attached to
the Appeal Brief as Exhibit 6) also notes that the "exclusion of a wild
variety, the chance find of the plant explorer, is in no sense a limitation on
the usefulness of the bill to those who follow agriculture or horticulture as a
livelihood and who are permitted under the bill to patent their discoveries."
H.R. Rep. No. 71-1 129, at 4 (1930).~The legislative history of the Plant
Patent Act thus shows that it was deliberately drafted to exclude from
coverage "chance find[s]"; i.e., plants that were not subject to "plant
cultivation or care."
"In 1952, Congress revised the patent statute and placed the plant
patents into a separate chapter 15 of Title 35. . . . This was merely a
housekeeping measure that did nothing to change the substantive rights or
6 The Senate Report likely contains the same sentence, but the copy of
record is missing page 4, where the sentence would be.

Appeal 2007-42 15
Application 101919,902
requirements for a plant patent." 	J.E.M. Ag Supply Inc. v. Pioneer Hi-Bred
Int '1, 534 U.S. 124, 133 (2001).
Section 161 was amended in 1954 to its current form. The Senate
Committee Report accompanying the bill states that the amendment was
intended to "remove any doubt that the legislative intent of the Congress
clearly means that sports, mutants, hybrids, and seedlings, discovered by
persons engaged in agriculture or horticulture, should be patentable." S.
Rep. No. 83-1937 (1954), as reprinted in 1954 U.S.C.C.A.N. 3981,3981.
The Senate Report also includes a copy of a memorandum from the Patent
Office to the Secretary of Commerce, indicating that the Patent Office had
doubts about the constitutionality of allowing "the grant of a patent to one
who has merely found a plant not previously known and has contributed
nothing to producing it, provided it is found in a cultivated state." Id. at
3 9 ~ 3 . ~
The Senate Report responded that, in the Committee's opinion, the
legislation was constitutional. Id. at 3981-82. The Report concludes that
"[ilt is the considered opinion of those who have studied this matter that a
grower of plants who, through no particular efforts of his own other than
perhaps by accident, develops a new plant which is, nevertheless, due to his
activity, should be entitled to patent such plant in the same manner as though
The Patent Office memorandum also notes that "the language of the bill
would give rise to difficult questions of interpretation. It is not certain
whether the new plant itself must be the subject of cultivation, or must
merely be found in a cultivated area. Apparently the question of
patentability might sometimes be reduced to one as to which side of a fence
the plant was found on." Id. at 3984. Obviously, Congress did not resolve
this ambiguity, or we wouldn't be addressing it today.

Appeal 2007-42 15
Application 101919,902
he had deliberately planned the result achieved." Id. at 3982 (emphasis
added).
In our view, the legislative history shows that Congress did not intend
the Plant Patent Act, as amended in 1954, to encompass plants created and
growing without being the subject of human effort. Found plants were not
encompassed by the 1930 Act, whether cultivated or not. The 1954
amendment broadened the Act but expressly excluded plants found in an
uncultivated state.
The 1954 Committee Report states that the purpose of the amendment
was to "strengthen the original purpose for the . . . Plant Patent Act [by]
enhancing the incentive for achievement in plant breeding, gardening, and
horticulture." 	Id. at 398 1. The Committee could have added that another
purpose was to provide an incentive for nurserymen to search out new
varieties of plants, even those that did not owe their existence or condition to
human activity, and asexually reproduce them to preserve the new variety.
But it didn't.
Instead, it indicated that the amendment was intended to cover a new
plant developed by a plant grower "through no particular efforts of his own
other than perhaps by accident, . . . [but] which is, nevertheless, due to his
activity." Id. at 3982.
In our view, the legislative history of the 1954 amendment shows that
Congress' intent, in excluding plants found in an uncultivated state, was to
limit the scope of the Act to plants whose existence or condition is, even if
indirectly or unintentionally, the result of human effort in fields such as plant
breeding, gardening, and horticulture.

Appeal 2007-42 15
Application 	101919,902
The legislative history does not indicate that Congress intended the
Plant Patent Act to cover a tree that grew up in a wooded pasture, without
any apparent human involvement, merely because a house was later built
nearby and a lawn was grown around the tree. Surrounding a tree with a
lawn does not change the state of the tree itself. In order for a tree to be
within the scope of 35 U.S.C. 5 161, the tree itself must be cultivated;
otherwise, it falls within the excluded category of a "plant found in an
uncultivated state."
Appellant has pointed to no evidence in the record to show that
AFTO-2 was cultivated at the time it was found. Therefore, a
preponderance of the evidence of record supports the Examiner's position
that AFTO-2 was found in an uncultivated state. We affirm the rejection
under 35 U.S.C. 5 161.
Our dissenting colleagues disagree with our interpretation of 5 161.
They argue that it "would be inconsistent with the plain language of the
statute to require the plant to have been cultivated prior to its discovery . . .
since 'newly found' implies that its existence was not known up until its
actual discovery" (post at 2 1).
That position misapprehends what it means to "discover" a new plant
variety. See Ex parte Moore, 115 USPQ 145 (Pat. Off. Bd. App. 1957). The
issue in Moore was who was the true inventor of a new variety of peach tree:
The owner, who found it growing in his yard and "protected the tree from
injury and watered and fertilized it" but who "had no idea that the peach tree
in his yard was a new variety" (id. at 146), or his orchardist friend, who
"saw the peach tree in [the owner's] yard and recognized that it was a new

Appeal 2007-42 15
Application 	101919,902
variety" (id.). The Board concluded that "although one may find a plant, he
has not discovered a new variety if he has no appreciation that the plant is a
distinct and new variety" (id. at 147).
Thus, discovering a new variety of plant does not require the inventor
to be the first human to lay eyes on the plant, it only requires the inventor to
be the first to recognize the plant as a new variety. Our interpretation of
fj 161 to require that the claimed plant itself must be cultivated is not
inconsistent with the language of the statute.
The dissent also attaches significance to the statement in the House
report accompanying the 1954 amendment to fj 161 that its purpose was to
overrule Exparte Foster or a similar opinion ('post at 19-20). That purpose,
however, is not relevant to the issue here, since the plant claimed in Foster
was found in a garden (see Foster, 90 USPQ at 17) and therefore reasonably
appears to have been in a cultivated state when discovered to be a new
variety.
Finally, the dissent concludes that the Examiner has not provided a
sufficient basis for challenging the Specification's assertions that AFTO-2
was found on cultivated land (post at 23-24) and disagrees with our
conclusion that the evidence of record does not show that AFTO-2 was in a
cultivated state when it was discovered (id. at 25-26).
We disagree with both of these positions. In our view, the Examiner
provided an adequate basis for shifting the burden to Appellant to provide
evidence of the cultivated state of AFTO-2 by pointing to the lack of
"evidence of record describing cultivation of the claimed tree, e.g., planting
of the tree, or maintenance, labor or attention given the claimed tree" (Office

Appeal 2007-42 15
Application 101919,902
action mailed Jan. 27,2006, p. 5). In response, Appellant could have
provided, for example, declaratory evidence describing how the tree had
been cultivated.
An Examiner, by contrast, has no reasonable way to provide evidence
showing that a given plant had not been cultivated. In similar
circumstances, where the Examiner provides a reasonable basis on which to
conclude that a claimed product is unpatentable, the burden of proof is
properly shifted to the applicant. CJ: In re Best, 562 F.2d 1252, 1255
(CCPA 1977)("Where . . . the claimed and prior art products are identical or
substantially identical . . . the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics
of his claimed product. . . . [The] fairness [of the burden-shifting] is
evidenced by the PTO's inability to manufacture products or to obtain and
compare prior art products."). Here, as in Best, Appellant is in the best
position to provide evidence regarding cultivation and the USPTO lacks the
ability to obtain such evidence.
We also disagree with the dissent's conclusion that the record
provides sufficient evidence of cultivation. Our dissenting colleagues
assume that the area in which AFTO-2 grew was subject to "occasional
mowing as would be the case for a wooded pasture or a yard" (post at 25),
but cite to no evidence in the record of any mowing or other cultivation
activities.

Appeal 2007-42 15
Application 	101919,902
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a).
AFFIRMED

Appeal 2007-42 15
Application 	101919,902
LEBOVITZ, Administrative Patent Judge, with whom Chief Administrative
Patent Judge FLEMING joins, dissenting.
STATEMENT OF CASE
This appeal involves the patentability of an asexually reproduced
plant under 35 U.S.C. 5 161, also known as the Plant Patent Act (PPA).
Under 35 U.S.C. 5 161, a patent may be obtained for an asexually
reproduced
distinct and new variety of plant, including cultivated sports,
mutants, hybrids, and newly found seedlings, other than . . . a
plant found in an uncultivated state.
The plant for which a patent is sought in this case is a white oak tree
discovered by Appellant in the front yard of a home when it was 118 years
old (FF2, 6) and subsequently asexually reproduced and named "AFTO-2."
Claim 1 in this appeal is drawn to AFTO-2.
The Examiner's position is that AFTO-2 is not eligible for a patent
because it had not been "subject to cultivation prior to its discovery" and
therefore it is expressly excluded from the scope of 35 U.S.C. 5 161 as "a
plant found in an uncultivated state" (Ans. 8-9).
Appellant contends that the Examiner erred in requiring "that the plant
was under cultivation prior to its discovery" by its property owner (Reply
Br. 3). Appellant states that a plant discovered on cultivated land, as was
AFTO-2, can be patented under 35 U.S.C. fj 161 (App. Br. 6-7). He argues
that the "statute does not require that the instant cultivar had to be cultivated
at the time of planting, only at the time of discovery, which is the case for"
AFTO-2 (App. Br. 8).

Appeal 2007-42 15
Application 	101919,902
THE MAJORITY OPINION
The majority affirms the Examiner's rejection. Stating that the phrase
"found in an uncultivated state" as it appears in 35 U.S.C. 5 161 refers to the
state of the plant and not its physical surroundings, the majority concludes
that compliance with the statute is determined by whether "the found plant
itself has been affected by human activity (i.e., cultivation)" (Maj'y Opn.
8). The majority's opinion is based largely on the legislative history of the
1930 Plant Patent Act and the 1954 amendment to it which our colleagues
contend expressed a clear intent to exclude plants which had been created
and grown without human effort (Maj'y Opn. 11- 12). Reading the statute in
this light, the majority concludes, as did the Examiner, that Appellant did not
provide adequate evidence to establish that AFTO-2 had been "affected by
human activity" prior to its discovery and thus the plant is expressly
excluded from the scope of 35 U.S.C. 5 161 (Maj'y Opn. 8).
DISCUSSION
We dissent from the majority's interpretation of 35 U.S.C. 5 161 and
their conclusion that a plant found in "settled and farmed" land (FF7), and
subsequently asexually reproduced, is ineligible under the statute for a
patent.
The Plant Patent Act of 1930 - the progenitor of 35 U.S.C. 5 161 -
extended patent protection to asexually reproduced plants ( ~ o w l e r , ~	at 62 1).
According to its legislative history, the drafters intended to exclude
8 "Maj'y Opn." refers to the majority opinion in this Decision affirming the
Examiner's rejection.
Cary Fowler, The Plant Act of 1930: A Sociological History of its Creation,
82 J. PAT.& TRADEMARK	OFF.SOC'Y621 (2000).

Appeal 2007-42 15
Application 101919,902
"a wild variety, the chance find of the plant explorer" (S. Rep. No. 7 1-315,
at 3 (1930)) "or other person who has in no way engaged either in plant
cultivation or care and who has in no other way facilitated nature in the
creation of a new and desirable variety" (id. at 7).
In 1954, the PPA was amended to include "cultivated sports, mutants,
hybrids, and newly found seedlings, . . . other than . . . a plant found in an
uncultivated state", i.e.,
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 amendment was apparently in part a response to a ruling in which
the Patent Office had found a "chance seedling" to be excluded from the
PPA. lo The case was not specifically identified by name, but the facts
appear to be similar to those in Exparte Foster, 90 USPQ 16 (Pat. Off. Bd.
App. 195I), published several years prior to the 1954 amendment. In
Foster, the applicant had discovered two small plants growing in a garden in
Colombia, South America. Id. at 17. The owner of the garden gave the
plants to the applicant who returned to Florida where he resided. Id. The
applicant subsequently determined the plant was a new plant variety,
reproduced the plant asexually, and sought a patent for the asexually
reproduced plant under the PPA. Id. 	The Examiner rejected the claim on
the grounds that "the plant claimed is a variety of plant found in nature and
10 H.R. Rep. No. 83-1455, at 2 (Mar. 31, 1954); Donald G. Daus, Plant
patents: A potentially extinct variety, 2 1 ECONOMIC	BIOLOGY	388 (1967).

Appeal 2007-42 15
Application 	101919,902
hence excluded from the scope of' the PPA. Foster, 90 USPQ at 16. In
affirming the Examiner's rejection, an expanded panel of the Board of
Appeals asked:
What is meant by "invented or discovered" and by "new variety
of plant" in the statute? Do these words mean that the plant
must be new in fact in the sense that the plant did not exist
before, or do they include what is old and has existed before but
which has been merely newly found?
Id. at 17.
Reviewing the legislative history of the Plant Patent Act of 1930, the
Board concluded that Congress specifically intended to exclude newly found
plants as was the plant claimed by Foster. Id. at 18.
The 1954 amendment to the Plant Patent Act was apparently intended
to address Foster or a case like it. A House Report accompanying the bill
states:
This bill is made necessary because of a change in the ruling of
the Patent Office on the so-called chance seedlings. For many
years, the Patent Office considered these chance seedlings to be
patentable but about 4 years ago that Office reversed its
position and ruled that Congress did not intend that these plants
be embraced within the plant patent amendments. Thus, the
enactment of this bill will indicate clearly that plant seedlings
discovered, propagated asexually, and proved to have new
characteristics distinct from other known plants are patentable
under the patent laws of the United States.
H.R. Rep. No. 83-1455, at 2 (Mar. 31, 1954).
The Senate Report similarly states: "The purpose of the proposed
legislation is to amend section 161 . . . to indicate clearly that plant seedlings
. . . are patentable under the patent laws of the United States."
S. Rep. No. 83-1937, at 1 (Jul. 19, 1954).

Appeal 2007-42 15
Application 	101919,902
A "newly found" plant seedling would not have been the recipient of
human effort since it would have been conceived under the watch of nature
until "newly found" by the discoverer. 	It would be inconsistent with the
plain language of the statute to require the plant to have been cultivated prior
to its discovery, as concluded by our colleagues, since "newly found"
implies that its existence was not known up until its actual discovery and
therefore would not necessarily have been the direct beneficiary of human
labor or care. Similarly, "sports" and "mutants", which are eligible subject
matter, would each arise spontaneously without human effort. Imazio
Nursery, Inc. v. Dania Greenhouses, 69 F.3d 1560, 1565 (Fed. Cir. 1995).
The 1954 amendment excluded "newly found" seedling from 5 16 1 if
"found in an uncultivated state." The most logical explanation for the
exclusionary amendment was to simply make explicit that which was
already implicit from the legislative history of the 1930 Act, i.e., that a plant
variety found in the "wild" by a "plant explorer" was non-statutory subject
matter. Thus, "an uncultivated state" was intended to refer to the region or
area (the "wild") in which the plant was discovered, rather than the condition
of the plant, itself, as opined by the majority. The statutory language that a
"newly found" seedling was patentable, unless discovered in the wild,
clarified that a plant discovered in a garden, as in Foster, falls within the
scope of the PPA.
Therefore, in our view, a plant discovered on land which had been

Appeal 2007-42 15
Application 	101919,902
improved by human labor or care (i.e., cultivated)'' is within the scope of
the amended Plant Patent Act, regardless of whether it had been the recipient
of human labor prior to its discovery. This reading is consistent with the
amendment being necessary to correct Foster (or a Foster type decision)
which had found a plant in a garden to be excluded from the PPA because it
was "a thing already existing" and "newly found." Foster, 90 USPQ at 17-
18. In sum, we fundamentally disagree with the majority's reading of 35
U.S.C. 5 161 to exclude "the chance find" of a plant on cultivated land.
The majority relies on the legislative history for reaching its
conclusion "that Congress' intent, in excluding plants found in an
uncultivated state, was to limit the scope of the Act to plants whose
existence or condition is . . . the result of human effort" (Maj'y Opn. 12).
However, in the same legislative history, the Department of Agriculture
recommended "that there be inserted after the words, 'uncultivated state,'
some such phrase as 'or in a location where no effort has been made to
promote the growth of the plant."' 	S. Rep. No. 83-1937, at 2 (Jul. 19, 1954).
Apparently, this recommendation was rejected as the proposed language was
not incorporated into the amended statute. For this additional reason, we do
not agree that Congress expressed a clear and unambiguous intent to exclude
from the scope of 5 161 plants which originated without direct human effort.
Nonetheless, we cannot ignore the statutory language of 5 161 that a
patent may be obtained for the invention or discovery of "cultivated sports,
11 Unlike our colleagues (Maj'y Opn. 14), we do not draw a distinction
between a "garden", a "wooded pasture", or any other piece of improved
land as each are a cultivated state and therefore outside the statutory
exception of an "uncultivated state" as a source of a "newly found plant.

Appeal 2007-42 15
Application 	101919,902
mutants, hybrids, and newly found seedlings" (emphasis added). However,
because "sports", "mutants", and "newly found seedlings" would each arise
without human intervention, it is incompatible with the statute to read
"cultivated" as a requirement that the "new variety of plant", itself, have
been accorded human care at its inception. As stated in its legislative
history:
Under the present Plant Patent Act [of 19301, seedling
plants developed by chance, with no attention or effort by the
owner, are not subject to a patent. The enactment of this
legislation will remove any doubt that the legislative intent of
the Congress clearly means that sports, mutants, hybrids, and
seedlings, discovered by persons engaged in agriculture or
horticulture, should be patentable.
S. Rep. No. 83-1937, at 1 (Jul. 19, 1954). Evidently, it was Congress' intent
that human "attention" or "effort" would not be necessary to obtain a patent
on "seedling plants developed by chance." Id. In this light, we would
understand "cultivated" to be a requirement that the plant be the recipient of
human labor only after its discovery.
In sum, a newly found seedling that came into existence and which
was subsequently discovered on cultivated land is eligible for a patent under
35 U.S.C. 5 161. The issue in this case, which we now turn to, is whether
the white oak tree from which AFTO-2 is derived, came into existence and
was discovered on cultivated land.
The burden of establishing a prima facie case of unpatentability rests
with the Examiner. The Examiner contends that there is no evidence "that
the property owner had cultivated the tree itself' and that the "[d]iscovery of
a tree on land that was once a 'wooded pasture' is not sufficient to support a
conclusion that the tree was under cultivation" (Ans. 5).

Appeal 2007-42 15
Application 	101919,902
The Examiner has not met the burden of establishing unpatentability.
Under 35 U.S.C. 5 161, a plant eligible for a patent must have arisen and
been discovered on cultivated land. Thus, we first look to the issue of
whether the AFTO-2's progenitor came into being on land that was
improved by human labor or care.
With respect to the state of the land, we take note of the following
findings of fact (Maj'y Opn. 3):
FF2. The Specification states that Appellant discovered AFTO-2 "in
a front yard of a home" (Spec. 1 , 7 1).
FF3. The Specification states that "[blefore the house was
constructed in the 19307s,the area was a wooded pasture with many white
oak and hickory trees present." (Spec. 1,72.)
FF7. The Specification states that "[rleal estate records show that the
land was settled and farmed for at least 35 years before the tree was started"
(Spec. 2,74).
The Examiner does not appear to have challenged these facts, but
instead argues that discovering a plant on a "wooded pasture" does not make
an asexually reproduced plant eligible for a patent because it does not
establish that the tree "was under cultivation" (Ans. 5). As explained above,
the Examiner improperly read the statute to require that the new variety of
plant, itself, was the subject of human cultivation, which is wholly
inconsistent with it being "newly found." Instead, the question is whether a
plant "started" on land "settled and farmed for at least 35 years" (FF7) and
then found "in a front yard of a home" (FF2) is excluded from 35 U.S.C. 5
161 as being found in an "uncultivated state."

Appeal 2007-42 15
Application 	101919,902
In affirming the Examiner, the majority states that the "evidence of
record does not show that the land was cultivated at any date prior to 2004,
when the photographs of Figures 1 and 3 were apparently taken" (Maj'y
Opn. 8). We do not agree. The Specification states that the land was
"settled and farmed . . . before the tree was started" (FF7), had been in a
wooded pasture (FF3), and that the tree was discovered in a "front yard" of a
house subsequently built on the pasture (FF2). Thus, there are statements by
the inventor that the land upon which the tree initiated and continued its
growth was under human care. The amount of human effort necessary to
establish an area as "cultivated" would be understood to mean the ordinary
care and labor commensurate with the purpose for which the land is held,
e.g., occasional mowing as would be the case for a wooded pasture or a
yard.
The majority finds the evidence that Appellant discovered AFTO-2
"in a front yard of a home" (Spec. 1 , l 1; FF2) insufficient because the
accompanying photographs that show the state of the tree were taken "nearly
ten years after the latest date that AFTO-2 could have been found according
to the data in the Specification" (Maj'y Opn. 7). They conclude: "No
evidence, provided by way of declaration or otherwise, relates the state of
the tree shown in Figures 1 and 3 to the state of the tree when it was found in
1994 or earlier" (id.). The problem with this conclusion is that it is the
PTO's burden to show unpatentability which, in this case, means to show
that the oak tree was found in an "uncultivated state," an express exclusion
to eligibility under 35 U.S.C. 5 161.

Appeal 2007-42 15
Application 101919,902
When Appellant has made clear statements in the Specification that
the tree came into existence on settled and farmed land (FF7), was once in a
wooded pasture (FF3), and was discovered in a front yard of a house (FF2),
in our opinion, the PTO must have a clear reason to doubt these assertions12
that together establish the land as cultivated and outside the statutory
exclusion. Our colleagues have identified nothing on the face of these
statements, nor have they found an inconsistency in the record, which would
have led persons of ordinary skill in the art to doubt their veracity.
In sum, on this record, we would conclude that Examiner has not met
the burden of showing that the subject matter of claim 1 is ineligible for a
patent under 35 U.S.C. 5 161.
cdc
BARNES & THORNBURG LLP
P.O. BOX 2786
CHICAGO IL 60690-2786
12 It is well-established that assertions made in a specification disclosure are
presumptively correct. In re Branu, 5 1 F.3d 1560, 1566 (Fed. Cir. 1995).
The majority's reference to In re Best, 562 F.2d 1252 (CCPA 1977) as a
rationale for requiring Appellant to prove that the claimed plant was found
in a "cultivated state" (Maj'y Opn. 15) is beside the point since evidentiary
statements were made in the Specification and no basis was provided to
doubt these presumptively correct assertions.