After 8 ½ years, Yellow beans are obvious…. Eligibility not mentioned

In 1994, Patentee purchased a mixed bag of beans containing, among others, yellow beans (P).  Patentee planted and harvested the beans and their producing plants. After three annual planting-harvesting cycles (P–>F1–>F2–>F3), Patentee applied for and was issued U.S. Pat. no. 5,894,079 (“the ‘079 patent”), the infamous yellow-bean patent, containing claims covering, among other things, F3’s yellow “Enola” beans and claims covering non-Enola yellow-beans.

After a reexamination was filed in 2000 (a reissue application was subsequently filed), the PTO examined the claims with its version of “special dispatch.”  After 8 ½ years, each claim was held obvious in a CAFC’s nonprecedential, per curium split-opinion in which one judge, believe it or not, merely concurred in the result without comment.  In re Pod-ners, Slip op. 2008-1492 (July 10, 2009, Fed. Cir.). The opinion’s reasoning, I forgot, because I became distracted.  

Why is a purchased bean’s great-grandchild not a product of nature and thus eligible for patenting?  Well, here, the theory is that the beans were not products of Darwin’s natural selection but were man-made through selective cultivation and/or breeding.  More specifically, the ‘079 patent stated that the yellow beans were “cultivars,” a group of cultivated plants the members of which have been selected for desirable, reproducible characteristics which differentiate it from otherwise similar groups of plants of the same species. In this case, the ‘079 specification states that the reproducible characteristic that differentiates the “Enola” beans from other beans is its particular yellow color.

Yet quite a few claims embraced non-Enola beans that produce seeds having a “seed coat that is yellow in color….”  These claims embraced more subject matter than the Enola cultivar members and seemingly would embrace natural products that just happened, through random genetics and/or epigenetics, to possess the recited phenotype.  Of course claims embracing natural products are ineligible subject matter for patenting.

And even the Enola bean claims, whose parent’s origin was practically unknown or undisclosed, present a difficult question of eligibility.  More specifically, a cultivar could be discovered in the wild, i.e., a cultivar could be a product of nature.  So, in a situation where one purchased or otherwise comes into possession of parent seeds (P) that have an unknown origin, one might want to test whether or not the parent seeds (P) represent a natural cultivar.  After several planting-harvesting cycles (P–>F1–>F2–>F3 …–>Fx), there should be a distinguishable, reproducible difference between the phenotype of P and Fx to show that the phenotype is not the product of nature.  Otherwise Fx is merely a product of nature and ineligible subject matter for patenting.

At this point you should also test your assumptions, which I suspect might include that your parent seeds (P) from the previous paragraph represent members of one and only one cultivar or of a random variety.  Let’s assume there’s a mixture of both.  More specifically, assume that you bought a mixed bag of seeds of unknown origin and only God knows that the mixed seeds include members of a first parent cultivar (Pyellow) and members of random varieties (Pj, Pk, etc.).  Importantly, you merely self-pollinate each seed and after three cycles of self-pollination and harvesting, voila, you have your “new cultivar.”  Yet how do you know that your cultivar is not a product of nature distinguishable from Pyellow, a product of nature?  How will you convince someone that your self-pollination did more than selectively weed out the varieties Pj, Pk,etc. in favor of Pyellow, a product of nature?  You merely self-pollinated a mixed bag of seeds and selected plants from your cultivation. 

After these points sink in, read the ‘079 patent’s description.

Special thanks to –<E for all her comments and discussions.