Ex parte Beineke

Informative decision only: persuasive authority, not binding precedent. When an applicant seeks a plant patent under 35 U.S.C. § 161 for a plant discovered in a cultivated-looking setting such as a yard, the Board will read the exclusion for "a plant found in an uncultivated state" as turning on whether the found plant itself, not its surroundings, had its existence or condition affected by human activity, so the plant itself must be cultivated. Once the examiner gives a reasonable basis to conclude the plant was uncultivated, the burden shifts to the applicant to produce evidence of cultivation of the plant. No prior Board precedent is named as being overruled. The decision follows Ex parte Moore and distinguishes Ex parte Foster, and it treats the 1954 amendment as not reaching plants created and growing without human effort. For the examiner, it means a § 161 rejection can rest on the applicant's own specification (age of the tree, prior wooded pasture, no described cultivation), and the examiner need not prove a negative. For the applicant, evidence that the land or yard was cultivated is not enough: the applicant must show, with declarations or other evidence, cultivation of the plant itself at the time it was found, and a bare statement in the specification that the plant was found in a cultivated state is not conclusive. The Board relied on Imazio Nursery v. Dania Greenhouses, Diamond v. Chakrabarty and J.E.M. Ag Supply v. Pioneer Hi-Bred for the history of the Act, and on In re Best (CCPA) by analogy for burden shifting. Two judges dissented. LEGAL TEST OR STANDARD: Section 161 excludes "a plant found in an uncultivated state." The Board held that the "state" of a thing is its "mode or condition of being," not its physical surroundings, so compliance with the "cultivated" requirement "is determined by whether the existence or condition of the found plant itself has been affected by human activity (i.e., cultivation)." The Board assumed the examiner bears the initial burden. A prima facie case shifts the burden to the applicant, and the decision is by a preponderance of the evidence of record. TRIGGERING FACTS: A white oak tree was discovered in a front yard. The specification said it was about 118 years old when found and that the area was a wooded pasture until a house was built in the 1930s. It described no watering, staking, fertilizing or pruning (FF8). Seedling data fixed discovery no later than August 1994. The only evidence of the tree's actual state was photographs date-stamped March 2, 2004, with nothing tying them to the tree's state when found. Land ownership and farming of the land were not shown to be cultivation of the tree. KEY QUOTE: "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."" (p. 13) PRIOR PRECEDENT AFFECTED: Follows Ex parte Moore, 115 USPQ 145 (Pat. Off. Bd. App. 1957), on what it means to discover a new variety. Distinguishes Ex parte Foster, 90 USPQ 16 (Pat. Off. Bd. App. 1951), because the plant there was found in a garden and so reasonably appears to have been in a cultivated state. Cites In re Best, 562 F.2d 1252 (CCPA 1977), by analogy ("Cf.") for burden shifting. No prior Board decision is overruled. PRACTICE TIP: In a plant patent application where the plant was found rather than bred, do not rely on the cultivated condition of the yard, farm or land. Build a record, such as a declaration, showing human cultivation or care of the plant itself (planting, watering, pruning, maintenance) as of the time it was found, and make sure the specification and oath statements are consistent.