Ex parte Beineke

Informative decision only: persuasive authority, not binding precedent. Under 35 U.S.C. § 161, which excludes "a plant found in an uncultivated state," the Board held that the "state" refers to the condition of the plant itself and not its physical surroundings, so a plant is within § 161 only if its existence or condition has been affected by human activity (cultivation). Where the examiner shows a reasonable basis to find the plant uncultivated, the burden shifts to the applicant to show cultivation of the plant itself, and private ownership or a cultivated setting alone does not suffice. No prior precedent directly addressed this issue; the majority relied on the legislative history and on Ex parte Foster, 90 USPQ 16 (Pat. Off. Bd. App. 1951), which it distinguished as a garden-found plant. For the examiner, the decision allows a § 161 rejection on a showing that the specification describes no cultivation of the plant itself, such as the plant's age and prior wooded pasture, and the examiner need not prove a negative. For the applicant, it means the application must record or be backed by declaration evidence of planting, maintenance, labor or attention given to the plant, because finding it in a yard, or on owned or farmed land, is not enough. The majority cited Hyatt v. Dudas, 492 F.3d 1365 (Fed. Cir. 2007), for the examiner's initial burden, and In re Best, 562 F.2d 1252 (CCPA 1977), by analogy for burden shifting, while the dissent would have required the PTO to have a clear reason to doubt the specification. LEGAL TEST OR STANDARD: Section 161 excludes "a plant found in an uncultivated state." The Board held that "state" means the plant's "mode or condition of being," not its surroundings. Compliance with the cultivated requirement turns on whether the existence or condition of the found plant itself has been affected by human activity, even indirectly or unintentionally, in fields such as plant breeding, gardening, and horticulture. The Board assumed the examiner bears the initial burden, and that burden shifts to the applicant once the examiner gives a reasonable basis for finding the plant uncultivated. TRIGGERING FACTS: A white oak tree was discovered in a home's front yard when about 105 years old. The specification said the area was previously a wooded pasture, the land had been privately owned since the 1850s, and the tree started 45 years after settlement and farming began. It described no specific efforts to cultivate the tree itself (watering, staking, fertilizing, pruning). The examiner pointed to the lack of evidence of planting, maintenance, labor or attention given to the tree. The record did not show the land was cultivated before 2004, and the applicant offered no declaration of cultivation of the tree. KEY QUOTE: "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)." (p. 8) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The decision discusses Ex parte Foster, 90 USPQ 16 (Pat. Off. Bd. App. 1951), as part of the legislative history, and treats the 1954 amendment's purpose as irrelevant here because the Foster plant was found in a garden. It follows Diamond v. Chakrabarty, 447 U.S. 303 (1980), on the Act's purpose, and draws on Hyatt v. Dudas, 492 F.3d 1365 (Fed. Cir. 2007), and In re Best, 562 F.2d 1252 (CCPA 1977), on burdens. PRACTICE TIP: In a plant application or appeal brief, do not rely on the plant having been found on owned, farmed or yard land. Put evidence in the specification or a declaration showing human activity affecting the found plant itself, such as planting, maintenance, labor or attention, and tie it to the plant's condition at discovery.