On July 10, 2009, the Court of Appeals for the Federal Circuit in In re Pod-Ners, Appeal No. 2008-1492, affirmed the Board’s rejection of all of the claims of U.S. Pat. No. 5,894,079. The Board had rejected as obvious claims to, inter alia, a pinto bean plant producing yellow beans of a certain color, as well as claims to the beans themselves, which had been deposited in the ATTC. The claims were rejected over a publication argued to disclose the same yellow bean, in view of another non-prior art publication relied upon as demonstrating that the claimed bean and the “well known” yellow bean are gentically identical.
While only six pages long, and eminently predictable given the fact that the Mexican government had alleged theft of their biological heritage, the decision feels muddled. To begin with, the panel clearly would have preferred to invalidate the patent as anticipated by the “well-known” yellow bean, “Azufrado Peruano 87.” The law is well-settled that non-prior art publications can be relied upon to show that a prior art reference is, in fact, anticipatory. But whether anticipated by, or obvious in view of, the prior art publication, it seems that the panel should have acknowledged that the prior art publication which, after all, disclosed a plant variety, was enabling. Historically, a printed publication could not per se place a plant variety in the possession of the public; the public was believed to, in fact, need to have access to the plant. This gap was simply filled by the panel by noting that the older variety was “well known.” This is getting pretty exotic, but I seem to recall a decision which held that evidence of the commercial sale of a plant described in a printed publication was sufficient to render the publication enabling. This decision validated the PTO’s examination policy then in effect. Does anyone but me remember that decision?
Finally, the decision has an odd anti-biotech air about it that I don’t think I am imagining. In April, the Fed. Cir. overturned In re Dueul and In re Bell finding a previously unisolated and unexpressed cDNA sequence obvious, primarily because it would have been obvious to use known techniques to isolate the “gene” and to express it as a protein that was known to exist, but had not itself been isolated. In re Pod-Ners, the panel concluded:
“The Board correctly held that the subject matter of the ‘079 patent – yellow beans, the plants they produced and a method for reproducing such plants by cross-breeding – would have been obvious to one [of] ordinary skill in what POD-NERS identifies as the “breeder-grower” art. … [Appelant] does not contend that he devised or applied new or unexpected techniques in reproducing the beans.”
Now substitute “cDNA encoding the NAIL protein, the NAIL protein produced thereby and a method for cloning the DNA” for the description of the holding of the Board given above, and you have the Kubin decision. The patentee in fact had isolated yellow beans (the DNA sequence) from a bag of beans of various colors (the genome) and bred (“cloned”) them so that they became a unique cultivar.
The panel affirmed the invalidity of the claims to the cultivar, which was recited to have a “yellow coat described as within a narrow range of shades of yellow on a particular color chart” without ever stating that the “prior art” bean was the same color. In fact, the panel conceded that the beans may only have been “substantially the same”. If patentee had obtained a Plant Patent instead of a utility patent, the opponents and the court would have had to find that the cultivars were indistinguishable in appearance in order to invalidate the patent. However, Plant Patents are not available for plants that reproduce via seed. My comment is becoming as long as the decision, as I try to turn it into a fable, but it is adamantly not “Jack and the Beanstalk.” These beans did not bring their owner a pot of gold. In the end, the patent wasn’t worth a hill o’ beans.