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2121.03 MANUAL OF PATENT EXAMINING PROCEDURE<br />
2121.03 Plant Genetics - What<br />
Constitutes'Enabling Pri<strong>or</strong> Art<br />
THOSE OF ORDINARY SKILL MUST BE<br />
ABLE TO GROW AND CULTIVATE THE<br />
PLANT<br />
When the claims are drawn to plants, the reference,<br />
combined with knowledge in the pri<strong>or</strong> art.i.must<br />
enable one of <strong>or</strong>dinary skill in the art to reproduce the<br />
plant. In reLeGrice, 301 F.2d 929, 133 USPQ 365<br />
(CCPA 1962) (National Rose Society Annual of<br />
England and varions other catalogues showed col<strong>or</strong><br />
pictures of the claimed roses and disclosed that applicant<br />
had raised the roses. <strong>The</strong> publications were published<br />
m<strong>or</strong>e than I year bef<strong>or</strong>e applicant's filing date.<br />
<strong>The</strong> court held that the publications did not place the<br />
rose in the public domain. Inf<strong>or</strong>mation on the grafting<br />
process reqnired to reproduce the rose was not<br />
included in the publications and such .inf<strong>or</strong>mation was<br />
necessary f<strong>or</strong> those of <strong>or</strong>dinary skill in the art (plant<br />
breeders) to reproduce the rose.), Compare Ex parte<br />
Thomson, 24 USPQ2d 1618 (Bd. Pat. App. & Inter.<br />
1992) (Seeds were commercially available m<strong>or</strong>e than<br />
1 year pri<strong>or</strong> to applicant's filing date.One of <strong>or</strong>dinary<br />
skill in the art could grow the claimed cotton cultivar<br />
from the commercially available seeds. Thus, the publications<br />
describing the cotton cultivar had "enabled<br />
disclosures." <strong>The</strong> Board distinguished In re LeGrice<br />
by finding that the catalogue picture of the rose of In<br />
re LeGrice was the only evidence in that base. <strong>The</strong>re<br />
was no evidence of commercial availability in<br />
enabling f<strong>or</strong>m since the asexually reproduced rose<br />
could not be reproduced from seed. <strong>The</strong>ref<strong>or</strong>e, the<br />
public would not have possession of the rose by its<br />
picture alone, but the public would havepossession of<br />
the cotton cultivar based on the publications and the<br />
availability of the seeds.).<br />
2121.04 Apparatus and Articles - What<br />
Constitutes Enabling Pri<strong>or</strong> Art<br />
PICTURES MAY CONSTITUTE AN "ENA<br />
BLING DISCLOSURE"<br />
Pictures and drawings may be sufficiently enabling<br />
to put the public in the possession of the article pictured.<br />
<strong>The</strong>ref<strong>or</strong>e, such an enabling picture may be<br />
used to reject claims to the article. However, the pic-<br />
August 2001 2100-60<br />
ture must show all the claimed structural features and<br />
how they are put together. Jockmus v. Leviton, 28 F.2d<br />
812 (2d Cir. 1928). See also M!'EP § 2125 f<strong>or</strong> a discussion<br />
of drawings as pri<strong>or</strong> art.<br />
2122 Discussion of Utility in.the<br />
Pri<strong>or</strong> Art<br />
UTILITYNEED NOT BE DISCLOSED IN REF<br />
ERENCE<br />
In <strong>or</strong>der to constitute anticipat<strong>or</strong>y pri<strong>or</strong> art, a reference<br />
mustidentically disclose the claimed compound,<br />
but no utility need be disclosed by the reference. In re<br />
Schoenwald, 964 F.2d 1122, 22 USPQ2d 1671 (Fed.<br />
Cir. 1992) (<strong>The</strong> application claimed compounds used<br />
in ophthalmic compositions to treat dry eye syndrome.<br />
<strong>The</strong> examiner found a printed publication<br />
which disclosed the claimed compound but did not<br />
disclose a use f<strong>or</strong> the compound. <strong>The</strong> court found that<br />
the claim was anticipated since the compound and a<br />
process of making it was taught by the reference; <strong>The</strong><br />
court explained that "no utility need be disclosed f<strong>or</strong> a<br />
reference to be anticipat<strong>or</strong>y of a claim to an old compound."<br />
964 F.2d at 1124, 22USPQ2d at 1673. It is<br />
enough that the claimed compound is taught by the<br />
reference.).<br />
2123 Rejection Over Pri<strong>or</strong> Art's Broad<br />
Disclosure Instead of Preferred<br />
Embodiments<br />
PATENTS ARE RELEVANT AS PRIOR ART<br />
FOR ALL THEY CONTAIN<br />
"<strong>The</strong> use of patents as references is not limited to<br />
what the patentees describe as their own inventions <strong>or</strong><br />
to the problems with which they are concerned. <strong>The</strong>y<br />
are part of the literature of the art.relevant f<strong>or</strong> all they<br />
contain." In re Heck, 699 F.2d 1331, 1332-33,<br />
216 USPQ 1038,1039 (Fed. Cir. 1983) (quoting In<br />
re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275,<br />
777 (CCPA 1968».<br />
A reference may be.relied upon f<strong>or</strong> all that it would<br />
have reasonably suggested to one having <strong>or</strong>dinary<br />
skill the art, including nonpreferred embodiments.<br />
Merck & Co. v. Biocraft Lab<strong>or</strong>at<strong>or</strong>ies, 874 F.2d 804,<br />
10 USPQ2d 1843 (Fed. Cir.), cert.denied, 493 U.S,<br />
975 (1989). See also Celeritas Technologies Ltd. v.<br />
Rockwell International C<strong>or</strong>p., 150 F.3d 1354, 1361,