Ex parte POD-NERS, L.L.C .

Informative decision only: persuasive authority, not binding precedent. When a claim to a plant variety or its seed relies on a seed deposit and the record (the patent's own statements, declarations and counsel's admissions) shows the deposited seed is genetically and phenotypically diverse, with no defined traits distinguishing the variety, the Board may find undue experimentation under the In re Wands factors and find the claims indefinite because they do not reasonably apprise those skilled in the art of their scope. The Examiner bears the initial burden, and the deposit alone does not cure the problem. No prior precedent directly addressed this issue in the text; the Board applies existing Federal Circuit enablement and definiteness law to a seed-deposit case. For an examiner or third-party requester, the decision shows that the applicant's own declarations and statements about deposit heterogeneity can carry the initial burden for § 112 rejections. For the patentee, a deposit of seeds does not by itself satisfy enablement or definiteness when the patentee has said the deposit is varied and has not identified stable traits that distinguish the variety. The analysis rests on In re Wands, 858 F.2d 731 (Fed. Cir. 1988), In re Wright, 999 F.2d 1557 (Fed. Cir. 1993), Amgen v. Chugai, 927 F.2d 1200 (Fed. Cir. 1991), Markman, 517 U.S. 370 (1996), and Hybritech, 802 F.2d 1367 (Fed. Cir. 1986). LEGAL TEST OR STANDARD: Enablement: the PTO bears an initial burden of a reasonable explanation why the claim scope is not enabled (In re Wright). Undue experimentation is weighed under Wands: "(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims." Definiteness: claims must "reasonably apprise those skilled in the art" of their scope and be "as precise as the subject matter permits," determined by claim construction (Hybritech; All Dental Prodx). TRIGGERING FACTS: Claims 1-15, 51, 52 and 56-64 covered Enola field bean seed (ATCC 209549) and a broader genus defined by Munsell seed coat color. Appellant relied on the deposit. The Conley Declaration said Enola has at least four distinct haplotypes. Counsel said at oral hearing that deposited seeds may not fall within the claims and that identifying distinguishing factors was limited to seed and hilar ring color. The patent said no variant traits were expected, and the source beans came from a mixed package from Mexico. Claims 59-64 recited a color distribution peak for a seed population "of sufficient number for purposes of ATCC deposit." KEY QUOTE: "However, we find that this "inherent disclosure" creates a "zone of uncertainty" that does not reasonably apprise those of skill in the art of the scope of claims 59-64." (p. 27) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Before relying on a biological deposit to meet enablement or definiteness, make sure declarations, remarks and hearing statements do not describe the deposit as heterogeneous. Identify stable, uniform traits that distinguish the variety, and support any claimed distribution with record evidence of what the art understood at filing.