Board of Trustees of Michigan State University

Patent Trials and Appeals Board

Aug 20, 2020

15330734 - (D) (P.T.A.B. Aug. 20, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/330,734 10/31/2016 Amy Iezzoni P11946US00 4676
22885 7590 08/20/2020
MCKEE, VOORHEES & SEASE, P.L.C.
801 GRAND AVENUE
SUITE 3200
DES MOINES, IA 50309-2721
EXAMINER
REDDEN, KAREN M
ART UNIT PAPER NUMBER
1661
NOTIFICATION DATE DELIVERY MODE
08/20/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
michelle.woods@ipmvs.com
patatty@ipmvs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte AMY IEZZONI
__________

Appeal 2020-001008
Application 15/330,734
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, RACHEL H. TOWNSEND, and
JAMIE T. WISZ, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1,2 under 35 U.S.C. § 134 involving a plant patent
application claiming a cherry tree. The Examiner has rejected the claim
under 35 U.S.C. § 161 on the basis that the claimed cherry tree was found in
an uncultivated state. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Real Party in Interest as the Board of
Trustees of Michigan State University (see Appeal Br. 3).
2 We have considered and refer to the Specification of Oct. 31, 2016
(“Spec.”); Final Action of July 23, 2018 (“Final Act.”); Appeal Brief of Apr.
22, 2019 (“Appeal Br.”); Examiner’s Answer of Sept. 20, 2019 (“Ans.”);
and Reply Brief of Nov. 19, 2019 (“Reply Br.”).
Appeal 2020-001008
Application 15/330,734

2
Statement of the Case
Background
“In the field of plant genetics, researchers conduct an extensive and
continuing plant-breeding program including the organization and asexual
reproduction of orchard trees, and of which plums, peaches, nectarines,
apricots, cherries, almonds and interspecifics are exemplary” (Spec. 1:14–
17). “The present invention relates to a new cherry tree variety” (Spec. 1:4).

The Claims
Claim 1 is on appeal and reads as follows:
1. A new and distinct variety of cherry tree substantially as
described and illustrated herein.

The Issue
The Examiner rejected claim 1 under 35 U.S.C. § 161 because the
plant was found in an uncultivated state (Ans. 3).
The Examiner finds the Specification teaches “that the claimed plant
was obtained from ‘open-pollinated Prunus seeds’ that were collected ‘in
hillsides surrounding Budapest, Hungary’” (Ans. 3, citing Spec. 1:27–28).
The Examiner finds “[t]he claimed plant originated from seeds collected in
nature . . . (i.e. an uncultivated area)” (id.). The Examiner finds “Appellant
must provide unambiguous evidence that the claimed plant is different from
the varieties of seeds that were originally collected” (id.).
Appellant asserts the “‘Lake’ rootstock results from fourteen years of
cultivation and selection for desirable and distinct traits. The first phase of
selection over years 1 – 9 was to produce plants showing desirable
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Application 15/330,734

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characteristics for (1) plant health, (2) rooting capability, and (3) disease
resistance” (Appeal Br. 8). Appellant asserts the
plants selected from this phase were then subject to a second
phase of selection spanning four years (i.e. years 9-12), where
the desired traits were (1) grafting ability, evaluated by
successful grafting with ‘Hedelfingen’ and ‘Bing’ scions; (2)
precocity (early flowering and fruiting beginning the second
year after planting); and (3) reduced tree stature measured as
trunk cross-sectional area.
(id.). Appellant asserts “[a]fter the cultivation and development process that
rejected certain plants and continued with other plants yielded a desirable
variety, ‘Lake’ was further asexually reproduced and test trees were planted
in a cultivated plot for the remaining period of time (years 12-14)” (id. at
10).
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner’s conclusion that the cherry tree
of claim 1 fails to comply with the “cultivated” requirement of 35 U.S.C.
§ 161?

Findings of Fact
1. The Specification teaches: “Open-pollinated Prunus seeds were
collected in hillsides surrounding Budapest, Hungary and the resulting
seedlings were planted in Clarksville, Michigan” (Spec. 1:27–28).
2. The Specification teaches: “Seedlings were selected as
candidate rootstocks based on overall plant growth, virus tolerance, and
rooting capabilities” (Spec. 1:28–30).
3. The Specification teaches: “Candidate rootstocks were grafted
with ‘Hedelfingen’ and ‘Bing’ scions and planted in Clarksville, Michigan.
Appeal 2020-001008
Application 15/330,734

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Further rootstock selection occurred on the basis of scion qualities as well as
rootstock virus tolerance and rooting capabilities” (Spec. 1:30 to 2:1).
4. The Specification teaches the “resulting candidate rootstocks
were asexually reproduced through conventional softwood cutting methods,
and grafted and planted with ‘Bing’ scion. The ‘Bing’ trees grafted on the
‘Cass’ rootstock were planted in Prosser, Washington” (Spec. 2:1–4).
5. The Specification teaches the “candidate rootstocks were
evaluated for scion trunk cross-sectional area (TCSA), tree height, growth
habit, flowers per node, crop yield, cropping efficiency, and fruit weight,
among other traits. Cherry tree ‘Lake’ was selected from this trial” (Spec.
2:4–7).

Principles of Law
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. § 161.
“[T]o be patentable, a new and distinct invention (including a new and
distinct plant) must be the product or result of man and his inventive
efforts.” In re Beineke, 690 F.3d 1344, 1353 (Fed. Cir. 2012). “[B]y virtue
of the 1954 amendments, Congress extended the plant patent statutes to
cover newly found seedlings, but only if they were somehow the result of
human activity (i.e., the cultivation of the land on which they originated),
and not the chance find of a plant explorer in the wild.” Id. at 1354.
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Application 15/330,734

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Analysis
The Plant Patent statute, written prior to the genetics revolution of the
late 1950s and 1960s, does not specifically address whether cultivated plants
could be genetically identical to a naturally occurring plant and be patentable
or whether the cultivated plant is required to be genetically different from
naturally occurring, i.e., uncultivated, plants to be patentable.3 Instead, the
statute requires for patentability a “distinct and new variety of plant” but
excludes from patentability those “found in an uncultivated state.” See 35
U.S.C. § 161.
The question arises, therefore, whether cultivation and selection of a
plant with desired characteristics is sufficient for patentability of that
selected cultivated plant under the statute. We conclude it is. As our
reviewing court in Beineke explains:
as initially drafted, S. 4015 would have permitted patents on
“any distinct and newly found variety of plant.” S. 4015, 71st
Cong. § 1 (as introduced by Senate, Mar. 24, 1930) (emphasis
added). This provision, however, was stricken from the bill to
“eliminate[ ] from the scope of the bill those wild varieties
discovered by the plant explorer or other person who has in no
way engaged in either 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 (emphasis added).

3 We note that because the original Prunus source for the Cherry tree was a
seed, ordinarily the progeny of two different parents, the ‘Lake’ tree is not
likely to be a genetic replica of the uncultivated trees growing on the hills in
Budapest. This situation therefore differs from In re Roslin Inst., 750 F.3d
1333, 1337 (Fed. Cir. 2014) where “Dolly herself is an exact genetic replica
of another sheep and does not possess ‘markedly different characteristics
from any [farm animals] found in nature’” (citing Diamond v. Chakrabarty,
447 U.S. 303, 310 (1980)).
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Beineke, 690 F.3d at 1351. The court also noted that “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. . . . It is obvious that
nature originally creates plants but it can not be denied that man often
controls and directs the natural processes and produces a desired result.” Id.
(quoting S. Rep. No. 71–315, at 6–7).
Thus, according to the Senate report cited by Beineke, there is a
distinction between a plant explorer, who simply discovers a wild plant, and
a person who facilitates nature by cultivating the plant to obtain a new and
desirable variety. See Beineke, 690 F.3d at 1351. The Court concluded:
In short, the provisions of the original 1930 Act, incorporated in
the present plant patent statute, provided patent protection to
only those plants (e.g., sports, mutants, and hybrids) that were
created as a result of plant breeding or other agricultural and
horticultural efforts and that were created by the inventor, that
is, the one applying for the patent.
Id. at 1352 (underlining added). Similarly, Chakrabarty also referenced the
legislative history of the Plant Patent Act, stating “the work of the plant
breeder ‘in aid of nature’ was patentable invention.” Chakrabarty, 447 U.S.
at 312.
In Ex parte Beineke, Appeal No. 2007-3882, 2008 WL 2942147
(BPAI July 30, 2008), the Board decision affirmed by Beineke, the Board
found there was no evidence that the white oak tree had been subjected to
any cultivation, noting there was no description of “any specific efforts
made by anyone to cultivate AFTO-3 (e.g., watering, staking, fertilizing, or
pruning.)” Id. at *2. Thus, the evidence at issue in Ex parte Beineke
supported a finding that the white oak tree was found in an uncultivated
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state, and that no cultivation was performed prior to, or after, the discovery
of the tree.
Unlike the situation in Beineke, we find that while the original seeds
found in Budapest were uncultivated, the selected ‘Lake’ variety represents
one of the second generation cultivated trees (FF 5). The trees grown in the
second round of selection were asexually reproduced from the trees planted
in orchards in Clarksville, Michigan (FF 3–4). There is no dispute that these
asexually reproduced trees were generated from the first generation of trees
previously undergoing cultivation and selection as rootstock (FF 2). There
is also no dispute that the ‘Lake’ variety was selected for specific
characteristics. (See Spec.at 3.)
We therefore find that the tree of the instant claim satisfies the
cultivation requirement consistent with the legislative history of the Plant
Patent Act because the inventor controlled and directed natural processes to
produce a desired result in cultivated plants.4
That is, the inventor planted and cultivated the Prunus seeds, screened
the resulting plants for health, rooting capability and disease resistance (FF
2), and then selected from these cultivated Cherry trees those with desirable
qualities (FF 3). The inventor asexually reproduced these trees, grafted them
with the ‘Bing’ scion, planted and cultivated these trees and evaluated them
for a number of different properties including tree height, crop yield,
efficiency, and fruit weight (FF 5). The claimed tree ‘Lake’ was then

4 We do not at this time address situations with less evidence for cultivation
and novelty, such as plants subjected to limited or no selection and
cultivation processes by the plant breeder.
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selected (FF 5). We conclude that the evidence shows the work of a plant
breeder in aid of nature, and that this work resulted in a patentable invention.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1 161 Plant Patent 1

REVERSED