  United States Court of Appeals
      for the Federal Circuit
               __________________________

           (Serial Nos. 10/919,574, 10/919,902)
             IN RE WALTER F. BEINEKE
               __________________________

                    2011-1459, -1460
               __________________________

   Appeals from the United States Patent and Trade-
mark Office, Board of Patent Appeals and Interferences.
              ___________________________

                 Decided: August 6, 2012
              ___________________________

    ALICE O. MARTIN, Barnes & Thornburg, LLP, of Chi-
cago, Illinois, argued for appellant. With her on the brief
were JAMES R. BURDETT and RICHARD B. LAZARUS.

    RAYMOND T. CHEN, Solicitor, Office of the Solicitor,
United States Patent and Trademark Office, of Alexan-
dria, Virginia, argued for appellee. With him on the brief
were AMY J. NELSON and NATHAN K. KELLEY, Associate
Solicitors.
                __________________________

    Before DYK, SCHALL, and REYNA, Circuit Judges.
DYK, Circuit Judge.
    Walter F. Beineke (“Beineke”) appeals from the deci-
sions of the Board of Patent Appeals and Interferences
IN RE BEINEKE                                              2


(“Board”) affirming the examiner’s rejection of two plant
patent applications under 35 U.S.C. § 161. Ex parte
Beineke (“2011-1459 Final Decision”), No. 2010-011045
(B.P.A.I. Mar. 16, 2011); Ex parte Beineke (“2011-1460
Final Decision”), No. 2010-011047 (B.P.A.I. Mar. 16,
2011). We affirm.
                       BACKGROUND
   The plant patent amendments of 1954 revised what is
now 35 U.S.C. § 161 to provide, as it does today, that
    [w]hoever invents or discovers and asexually re-
    produces any distinct and new variety of plant, in-
    cluding cultivated sports, mutants, hybrids, and
    newly found seedlings, other than a tuber propa-
    gated plant or a plant found in an uncultivated
    state, may obtain a patent therefor, subject to the
    conditions and requirements of this title.
Act of Sept. 3, 1954, Pub. L. No. 83-775, 68 Stat. 1190.
     This appeal concerns two plant patent applications
filed under section 161 by Beineke for new and distinct
oak trees. In the fall of 1980, Beineke noticed two white
oak trees (“AFTO-2” and “AFTO-3”) in the front yard of a
home (not Beineke’s own residence) that appeared to
display superior genetic traits as compared to other white
oak trees, such as excellent timber quality and strong
central stem tendency. When first identified by Beineke,
AFTO-2 was approximately 118 years old and AFTO-3
was approximately 105 years old. Both trees were 65 feet
tall. Beineke planted acorns from each of the trees and,
over the next few years, observed the progeny trees. After
observing the same superior traits in the progeny trees,
Beineke asexually reproduced the trees and found that
the reproductions ran true to the originally discovered
trees and to each other in all respects. Having concluded
3                                              IN RE BEINEKE



that he had discovered two new and distinct varieties,
Beineke applied for plant patents on both trees.
    The examiner initially rejected both applications be-
cause, inter alia, in his view the statute required that the
trees not have been “found in an uncultivated state,” and
the trees did not satisfy that requirement. In response,
Beineke argued to the examiner that the land on which
the trees were found was cultivated at the time of discov-
ery, and that was sufficient to meet the requirements of
section 161. The examiner then issued final rejections,
finding that Beineke did not provide sufficient “factual
support for the assertion that the instant tree[s] w[ere] ‘in
a cultivated state,’” such as “evidence of record describing
cultivation of the claimed tree[s], e.g., planting of the
tree[s], or maintenance, labor or attention given the
claimed tree[s].” 2011-1459 J.A. 129-132; 2011-1460 J.A.
202-205.
    A divided Board affirmed the rejection of both applica-
tions. After reviewing the legislative history of the stat-
ute, the majority focused on the “cultivated” language and
concluded that “compliance with the ‘cultivated’ require-
ment of § 161 is determined by whether the existence or
condition of the found plant itself has been affected by
human activity (i.e., cultivation).” Ex parte Beineke
(“2011-1459 Initial Decision”), No. 2007-3882, 2008 WL
2942147, at *4 (July 30, 2008); Ex parte Beineke (“2011-
1460 Initial Decision”), No. 2007-4215, 2008 WL 2951696,
at *4 (July 31, 2008). 1 The Board found that the land on
which the trees grew had been obtained from the U.S.
government in the 1850s but had existed as a wooded


    1  Because the Board’s initial and final decisions in
both appeals are identical in all material respects, this
opinion will hereinafter cite only to the 2011-1459 deci-
sions.
IN RE BEINEKE                                              4


pasture until a house was constructed around 1930, long
after the trees began growing. The Board also found that
there was no evidence that human activity contributed to
the creation of the trees, nor was there any evidence of
specific efforts made to cultivate the trees after the trees
first began to grow. Thus, because “[s]urrounding a tree
with a lawn does not change the state of the tree itself,”
the majority found that the evidence supported the exam-
iner’s position that the trees were found in an unculti-
vated state.      2011-1459 Initial Decision, 2008 WL
2942147, at *7. Two judges dissented from the majority’s
interpretation of section 161, stating that they “under-
stand ‘cultivated’ to be a requirement that the plant be
the recipient of human labor only after its discovery,” and
that they would have found the trees patentable because
the trees were cultivated when Beineke discovered them.
Id. at *13 (dissenting opinion).
    Following the decisions, Beineke filed a request for
continued examination, and submitted two declarations
under 37 C.F.R. § 1.132 to establish that the lawn on
which the trees were found “was characteristic of a culti-
vated lawn,” and thus “the tree[s] [were] not ‘found in an
uncultivated state.’” 2011-1459 J.A. 390; 2011-1460 J.A.
470. After considering the declarations, the examiner
again refused to allow the applications, and Beineke
appealed to the Board.
    An enlarged panel of the Board affirmed the rejec-
tions. The majority reiterated that “[t]he evidence . . .
supports a conclusion that the acorn[s] that grew into [the
trees were] unlikely to have been planted by a human
being,” and that “neither the Specification[s] nor Appel-
lant’s declarations describe any cultivation of the plant[s],
before or after a house was built nearby.” 2011-1459
Final Decision, slip op. at 6-7. Indeed, even with the
declarations, there was no “evidence showing that the
5                                              IN RE BEINEKE



lawn was in fact watered or fertilized, much less that any
watering or fertilization had any effect on the state of [the
trees].” Id. at 5. Thus, “[t]he evidence of record show[ed]
that the claimed oak tree[s] [were] found in an unculti-
vated state and [were] therefore unpatentable under 35
U.S.C. § 161.” Id. at 8. One judge concurred in the result,
but argued that section 161 was even narrower in that
“there must have been some activity by man that resulted
in the creation of the parent plant” for a plant to be pat-
entable. Id. at 9 (concurring opinion). One judge dis-
sented on the same grounds as in the previous Board
appeal, explaining that he thought the majority was
incorrect “that a newly found plant . . . requires deliberate
planning or cultivation, or must have been the recipient of
human labor prior to its discovery, to fall within the scope
of § 161.” Id. at 11 (dissenting opinion). In his view, the
trees were patentable because “[t]he tree[s] did not initi-
ate growth in the wild, but rather developed on a home-
stead, a place of residence, and therefore [are] entitled to
patent protection under 35 U.S.C. § 161.” Id.
   Beineke timely appealed from both Board decisions.
We consolidated the two appeals. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(4)(A).
                        DISCUSSION
    This case presents an issue as to the proper interpre-
tation of 35 U.S.C. § 161. As noted above, this provision
permits plant patents to be granted to anyone who “in-
vents or discovers and asexually reproduces any distinct
and new variety of plant, including cultivated sports,
mutants, hybrids, and newly found seedlings, other than
a tuber propagated plant or a plant found in an unculti-
vated state.” We review de novo the Board’s statutory
construction. In re Giacomini, 612 F.3d 1380, 1382 (Fed.
Cir. 2010).
IN RE BEINEKE                                            6


    It is settled that an applicant for a patent under sec-
tion 161 must establish that the inventor has “recognized
[the plant’s] uniqueness and difference,” Yoder Bros., Inc.
v. Cal.-Fla. Plant Corp., 537 F.2d 1347, 1382 (5th Cir.
1976), and has “take[n] the step of asexual reproduction,”
Imazio Nursery, Inc. v. Dania Greenhouses, 69 F.3d 1560,
1566 (Fed. Cir. 1995) (quoting Yoder Bros., 537 F.2d at
1380). The parties do not dispute these requirements.
But in other respects, the parties offer quite different
interpretations of the statute. Beineke argues that sec-
tion 161 does not require that the alleged inventor (or
other human) have played any role in the creation of the
plant, and that finding a new variety of mature plant
qualifies the plant for patent protection, assuming post-
find cultivation, recognition, and asexual reproduction.
The PTO, on the other hand, contends that no plant is
patentable unless human activity played a role in the
creation of the plant; in the PTO’s view, the statute
protects only the work of plant breeders who create new
varieties of plants either intentionally or by accident. As
will be seen, we conclude that neither party is entirely
correct, though the PTO’s reading of the statute is closer
to the correct reading.
    We consider first whether the trees are patentable
under the language of the original 1930 Plant Patent Act
(“1930 Act”), incorporated in the present statute, and
second whether they are patentable under the 1954
additions to the plant patent statutes, which have been
carried forward in the present statute.
                             I
    As we discuss in detail below, under the 1930 Act, in
addition to post-find cultivation, recognition, and asexual
reproduction, two things were necessary for an applicant
to obtain plant patent protection: (1) the plant must have
7                                             IN RE BEINEKE



been created in its inception by human activity, i.e., it
must be the result of plant breeding or other agricultural
or horticultural efforts; and (2) the plant must have been
created by the “inventor,” i.e., the person seeking the
patent must have contributed to the creation of the plant
in addition to having appreciated its uniqueness and
asexually reproduced it. Beineke has not demonstrated
that he fulfills either of these requirements.
    In 1930, Congress enacted the Plant Patent Act to
provide that “[a]ny person . . . who has invented or discov-
ered and asexually reproduced any distinct and new
variety of plant, other than a tuber-propagated plant, . . .
may . . . obtain a patent therefor.” Act of May 23, 1930,
Pub. L. No. 71-245, ch. 312, 46 Stat. 376. We must inter-
pret the 1930 Act in light of the “contemporary legal
context” in which it was enacted—that is, against the
historical backdrop of the patent laws and the existing
understanding of the language used in the act at the time.
Cannon v. Univ. of Chicago, 441 U.S. 677, 698-99 (1979)
(holding that the Court’s “evaluation of congressional
action in 1972 must take into account its contemporary
legal context”); see also Merrill Lynch, Pierce, Fenner &
Smith, Inc. v. Curran, 456 U.S. 353, 378 (1982) (holding
that in interpreting a statute, the “focus must be on the
state of the law at the time the legislation was enacted”
and that a court “must examine Congress’[s] perception of
the law that it was shaping or reshaping”); Imazio Nurs-
ery, 69 F.3d at 1564 (holding that “section 161 engrafts
the Plant Patent Act onto the basic patent law, which
requires us to apply thereto all the rules, regulations, and
provisions of the basic patent law” (internal quotation
marks omitted)).
    Significantly, the 1930 Act crafted the plant patent
provisions onto the pre-existing utility patent statute
IN RE BEINEKE                                               8


which included the “invents or discovers” requirement. 2
The 1930 Act’s requirement that the applicant must
“invent or discover” had an established meaning at the
time. The “invents or discovers” language appeared in the
first patent act in 1790, see Act of Apr. 10, 1790, ch. 7, 1
Stat. 109, 110, and appeared in all subsequent patent
statutes. 3 Prior to 1930, the Supreme Court in construing
the “invents or discovers” language consistently empha-
sized that
    [t]he beneficiary [of a patent] must be an inventor
    and he must have made a discovery. . . . [I]t is not
    enough that a thing shall be new, in the sense that
    in the shape or form in which it is produced shall
    2   The 1930 act provided:

    Any person who has invented or discovered any
    new and useful art, machine, manufacture, or
    composition of matter, or any new and useful im-
    provements thereof, or who has invented or dis-
    covered and asexually reproduced any distinct and
    new variety of plant, other than a tuber-
    propagated plant, . . . may . . . obtain a patent
    therefor.

Act of May 23, 1930, Pub. L. No. 71-245, ch. 312, 46 Stat.
376 (1930 Plant Patent Act additions emphasized). While
the plant patent provisions were separated from the
utility provisions in the Patent Act of 1952 to create 35
U.S.C. § 161, see Pub. L. No. 82-593, ch. 15, 66 Stat. 804
(1952), Congress made clear that this did not change the
meaning of the statute, see S. Rep. No. 82-1979, at 24
(1952) (explaining, with respect to section 161, only that
“[t]he provision relating to plants in the corresponding
section of the existing statute is made a separate sec-
tion”). See also J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred
Int’l, Inc., 534 U.S. 124, 133 (2001).
     3   See, e.g., Act of July 4, 1836, ch. 357, § 6, 5 Stat.
117, 119 (applying to “any person or persons having
discovered or invented any new and useful” invention).
9                                             IN RE BEINEKE



    not have been before known, and that it shall be
    useful, but it must, under the constitution and the
    statute, amount to an invention or discovery.
Thompson v. Boisselier, 114 U.S. 1, 11 (1885) (emphasis
added). In other words, the statute required some “exer-
cise of the inventive faculty.” See Singer Mfg. Co. v.
Cramer, 192 U.S. 265, 276 (1904); Pearce v. Mulford, 102
U.S. 112, 118 (1880) (holding that to be entitled to a
patent, an improvement “must be the product of some
exercise of the inventive faculties”); Brown v. Piper, 91
U.S. 37, 41 (1875); see also Dann v. Johnson, 425 U.S.
219, 225 (1976) (“As a judicial test, ‘invention’—i.e., ‘an
exercise of the inventive faculty,’—has long been regarded
as an absolute prerequisite to patentability.” (internal
citations omitted)). Other federal courts had also recog-
nized that a patent could not be granted for “mere naked
discovery.” 4
    Prior to 1930, this view of the invention requirement
suggested that plants, being products of nature, were not
patentable at all. Judicial decisions reflected a “belief
that plants, even those artificially bred, were products of
nature for purposes of the patent law.” Diamond v.
Chakrabarty, 447 U.S. 303, 311 (1980); see also Imazio
Nursery, 69 F.3d at 1563 (explaining that prior to the
enactment of the Plant Patent Act, there was a “belief


    4   In re Kemper, 14 F. Cas. 286, 288 (D.C. Cir. 1841)
(“[N]o discovery will entitle the discoverer to a patent
which does not in effect amount to the contrivance or
production of something which did not exist before; or, in
other words, to an invention.”); see also Morton v. N.Y.
Eye Infirmary, 17 F. Cas. 879, 881 (C.C.S.D.N.Y. 1862)
(“In its naked ordinary sense, a discovery is not pat-
entable. . . . It is only where the explorer has gone beyond
the mere domain of discovery . . . that he can secure the
exclusive control of it under the patent laws.”).
IN RE BEINEKE                                              10


that plants, even those bred by man, were products of
nature and therefore not subject to patent protection”).
As recognized in Chakrabarty, at the time of the 1930 Act,
decisions of the Commissioner of Patents also reflected
this view. See 447 U.S. at 311. For example, an 1889
decision by the Commissioner of Patents in Ex parte
Latimer, 1889 Dec. Comm’r Pat. 123, exemplified the
then-prevailing understanding of the patentability of
natural products. In rejecting a patent application on the
fiber from pine needles, the Commissioner explained that
   [i]t cannot be said that the applicant in this case
   has made any discovery, or is entitled to patent
   the idea, or fact, rather, that fiber can be found in
   [pine needles] . . . because the mere ascertaining
   of the character or quality of trees that grow in
   the forest and the construction of the woody fiber
   and tissue of which they are composed is not a
   patentable invention, recognized by the statute,
   any more than to find a new gem or jewel in the
   earth would entitle the discoverer to patent all
   gems which should be subsequently found . . . .
   Otherwise it would be possible for an element or a
   principle to be secured by patent, and the pat-
   entee would obtain the right, to the exclusion of
   all other men, of securing by his new process from
   the trees of the forest . . . the fiber which nature
   has produced and which nature has intended to be
   equally for the use of all men. The result would be
   that . . . patents might be obtained upon the trees
   of the forest and the plants of the earth, which of
   course would be unreasonable and impossible.
Id. at 125-26 (emphasis added). The Commissioner
concluded by explaining that he was “not aware of any
instance in which it has been held that a natural product
is the subject of a patent, although it may have existed
11                                            IN RE BEINEKE



from creation without being discovered.” Id. at 127; see
also Harold C. Thorne, Relation of Patent Law to Natural
Products, 6. J. Pat. Off. Soc’y 23, 27 (1923) (summarizing
cases that “[p]roducts of nature are not subject to protec-
tion of patents for invention in the United States or in
foreign countries”).
    Congress in 1930 sought to change the existing rule
that no plants could be patented while preserving the rule
that plants found in nature were not patentable. Plants
created by plant breeders were viewed as an “exercise of
the inventive faculty” and thus deserving of patent pro-
tection. In making this change to protect plant breeders,
the 1930 Act also incorporated another fundamental
tenant of patent law: that only the “inventor” could secure
a patent application based on his own inventive efforts.
All early patent statutes reflected the fact that a patent
was only available to the true inventor. For example, the
very first patent act provided a patent could be granted
“upon the petition of any person or persons . . . setting
forth, that he, she, or they, hath or have invented or
discovered” something new and useful. Act of Apr. 10,
1790, ch. 7, 1 Stat. 109, 110 (permitting patents to be
granted to anyone who had “invented or discovered”
something that was “sufficiently useful and important”);
see also Act of July 4, 1836, ch. 357, § 6, 5 Stat. 117, 119
(applying to “any person or persons having discovered or
invented any new and useful” invention). The patent act
of 1793 required “[t]hat every inventor, before he can
receive a patent, shall swear or affirm that he does verily
believe, that he is the true inventor or discoverer.” Act of
Feb. 21, 1793, ch. 11, § 3, 1 Stat. 318, 321. The Supreme
Court likewise emphasized the requirement that the
inventor must be the one seeking the patent, and that
“[n]o one is entitled to a patent for that which he did not
IN RE BEINEKE                                             12


invent.” Agawam Woolen Co. v. Jordan, 74 U.S. 583, 602
(1868). 5
    The legislative history of the 1930 Act confirms its
limited scope. The Senate and House Committee Reports
indicated that one of the primary purposes of the bill was
to stimulate plant breeding by providing a financial
incentive for plant breeders to engage in their work. S.
Rep. No. 71-315, at 1-2 (1930); H.R. Rep. No. 71-1129, at
1-2 (1930). Indeed, the reports speak mainly in terms of
work to be done by “plant breeders” and “plant develop-
ers.” See S. Rep. No. 71-315; H.R. Rep. No. 71-1129. It is
true that the reports do mention in multiple places “dis-
covery” of plants but, as can be seen from various
amendments to the bill that ultimately became the 1930
Plant Patent Act (S. 4015, 71st Cong. (1930)), such refer-
ences refer to a plant breeder’s discovery resulting from
his own work, and not a “chance find” or discovery of a
plant explorer. S. Rep. No. 71-315, at 3-4.
   Although not explicitly stated in the statute, Congress
was clear that only “cultivated sports, mutants, and
hybrids [were] included in the bill.” 6 S. Rep. No. 71-315,

    5    See also Pointer v. Six Wheel Corp., 177 F.2d 153,
157 (9th Cir. 1949) (“[I]t has been held repeatedly that a
valid patent can only be granted to the real inventor [and]
that the original and first inventor must make the appli-
cation . . . .”); Milwaukee v. Activated Sludge, 69 F.2d 577,
587 (7th Cir. 1934) (holding that “[a] valid patent can be
granted only to an actual inventor” and that “[t]he appli-
cation must be made by the original and first inventor”).
    6    At the time of the 1930 Plant Patent Act, a “new
and distinct variety” necessarily fell into one of three
classes: sports, mutants, and hybrids. Imazio Nursery, 69
F.3d at 1565 (“[U]pon passage of the Plant Patent Act, a
patentable variety could be either a sport, mutant, or
hybrid.”). Sports result from bud variation and not seed
variation. It occurs when a plant or portion of a plant
13                                          IN RE BEINEKE



at 3 (emphasis added); H.R. Rep. No. 71-1129, at 4. This
reference to cultivation reemphasized Congress’s under-
standing that patent protection was available only for
plants resulting from human creative efforts by the pat-
ent applicant, and not for found plants. Indeed, Congress
specifically rejected provisions that would have accorded
patent protection to found plants. Before S. 4015 was
introduced in 1930, two legislative measures on plant
patents, one in each the Senate and House, were intro-
duced the same year. See S. 3530, 71st Cong. (1930); H.R.
9765, 71st Cong. (1930). Each of these bills would have
included in the plant patent statute language stating
explicitly that “the words ‘invented’ and ‘discovered’ as
used in this section, in regard to asexually reproduced
plants, shall be interpreted to include invention and
discovery in the sense of finding a thing already existing
and reproducing the same as well as in the sense of
creating.” S. 3530, 71st Cong. (1930) (emphasis added);
H.R. 9765, 71st Cong. (1930) (emphasis added). Both of
these bills were rejected and this language did not make
its way into S. 4015.
    So too, as initially drafted, S. 4015 would have per-
mitted patents on “any distinct and newly found variety of
plant.” S. 4015, 71st Cong. § 1 (as introduced by Senate,
Mar. 24, 1930) (emphasis added). This provision, how-
ever, was stricken from the bill to “eliminate[] from the
scope of the bill those wild varieties discovered by the
plant explorer or other person who has in no way engaged


suddenly assumes a new appearance or characteristic.
Mutants result from seedling variation by self-
pollenization. Hybrids result from seedlings of cross-
pollenization of two different species. Because these
sports, mutants, and hybrids will not reproduce true to
type on their own, asexual reproduction is necessary to
preserve them. S. Rep. No. 71-315, at 3.
IN RE BEINEKE                                              14


in either plant cultivation or care and who has in no other
way facilitated nature in the creation of a new and desir-
able variety.” S. Rep. No. 71-315, at 7 (emphasis added).
The Senate Report accompanying S. 4015 noted that S.
4015 was “substantially the same as” the previous draft of
the bill in the Senate, “except for the elimination of pat-
ents for certain newly found plants.” S. Rep. No. 71-315,
at 3. It was confirmed by the Committee that the final
bill “exclu[ded] . . . a wild variety, the chance find of the
plant explorer.” Id. New and distinct plants were pat-
entable only if man “control[led] and direct[ed] the natu-
ral processes [to] produce[] a desired result.” Id. at 6;
H.R. Rep. No. 71-1129, at 7.
    In rejecting the “newly found” language, the Senate
and House Committees were clear that, in accordance
with the principles of “invention” as understood at the
time, there was a difference between newly found plants
and plants created or developed by plant breeders because
the plant breeder supplied the necessary inventive fac-
ulty. It was explained that
    [t]here is a clear and logical distinction between
    the discovery of a new variety of plant and of cer-
    tain inanimate things, such, for example, as a new
    and useful natural mineral. The mineral is cre-
    ated wholly by nature unassisted by man and is
    likely to be discovered in various parts of the
    country; and, being the property of all those on
    whose land it may be found, its free use by the re-
    spective owners should of course be permitted.
    On the other hand, a plant discovery resulting
    from cultivation is unique, isolated, and is not re-
    peated by nature, nor can it be reproduced by na-
    ture unaided by man . . . . It is obvious that
    nature originally creates plants but it can not be
15                                            IN RE BEINEKE



     denied that man often controls and directs the
     natural processes and produces a desired result.
S. Rep. No. 71-315, at 6-7 (emphasis added); H.R. Rep.
No. 71-1129, at 7 (emphasis added). The reports go on to
analogize the work of a plant breeder to a chemist in that
both take advantage of natural principles but nonetheless
should be rewarded for the fruits of their labor because
they have assisted nature by producing something that
nature had not done on its own. S. Rep. No. 71-315, at 7;
H.R. Rep. No. 71-1129, at 7-8. The same could not be said
for a plant explorer discovering a new and distinct plant
in the wild.
    This history demonstrates that the 1930 Act was not
meant to include plants discovered by chance by plant
explorers and the like. See INS v. Cardoza-Fonseca, 480
U.S. 421, 442-43 (1987) (“Few principles of statutory
construction are more compelling than the proposition
that Congress does not intend sub silentio to enact statu-
tory language that it has earlier discarded in favor of
other language.” (internal quotation marks omitted));
Gulf Oil Corp. v. Copp Paving Co., 419 U.S. 186, 200
(1974) (explaining that a statute should not be interpreted
to implicitly include language rejected by Congress).
    In short, the provisions of the original 1930 Act, in-
corporated in the present plant patent statute, provided
patent protection to only those plants (e.g., sports, mu-
tants, and hybrids) that were created as a result of plant
breeding or other agricultural and horticultural efforts
and that were created by the inventor, that is, the one
applying for the patent. Beineke meets neither of these
requirements. Beineke does not argue that the oak trees
were in any way the result of his creative efforts or indeed
anyone’s creative efforts, and thus they do not fall within
the scope of those plants protected by the 1930 Act.
IN RE BEINEKE                                            16


                            II
    Neither is Beineke able to demonstrate that the oak
trees are eligible for patent protection under the provi-
sions added by the 1954 amendments to the plant patent
statutes. Beineke contends that section 161 covers the
mature oak trees because Beineke “found” them and they
were being cultivated by the owner of the property at the
time they were found. But the 1954 amendments only
extended patent protection to “newly found seedlings” and
did not otherwise alter the scope of plant patent protec-
tion for other plant categories. Because Beineke concedes
that the oak trees are not newly found seedlings under
section 161, Oral Argument at 3:59, available at
http://www.cafc.uscourts.gov/oral-argument-
recordings/2011-1459/all, they are not eligible for patent
protection.
    The amendments to the Plant Patent Act in 1954 re-
vised section 161 to provide, as it does today, that
   [w]hoever invents or discovers and asexually re-
   produces any distinct and new variety of plant, in-
   cluding cultivated sports, mutants, hybrids, and
   newly found seedlings, other than a tuber propa-
   gated plant or a plant found in an uncultivated
   state, may obtain a patent therefor, subject to the
   conditions and requirements of this title.
35 U.S.C. § 161 (emphasis added). As we explained in our
earlier decision in Imazio Nursery, in the 1954 amend-
ments Congress “added another class of plants, newly
found seedlings,” but made them “subject to the exception
that such seedlings found in an uncultivated state cannot
be patented.” 69 F.3d at 1565.
    One of the primary purposes of this amendment was
to overrule the Patent Office Board of Appeals decision in
17                                             IN RE BEINEKE



Ex parte Foster, 90 U.S.P.Q. 16 (1951). See H.R. Rep. No.
83-1455, at 1-2 (1954). In Foster, the Board rejected a
patent on a new and distinct variety of syngonium plant
(apparently a seedling) discovered by a professional plant
breeder in a cultivated garden in Colombia. 90 U.S.P.Q.
at 17. The Board began by recognizing that “subject
matter for patent must be something new in fact, as far as
the inventor or discoverer is concerned, in that it must
have been created or produced by the inventor or discov-
erer.” Id. After reviewing the legislative history of the
1930 Act, the Board concluded that “since Congress in
passing the act providing for the patenting of plants
specifically intended to exclude plants found or discovered
as was the claimed plant, the claim must be rejected.” Id.
at 18.
    By legislatively overruling Foster, which Congress
viewed as a case involving a seedling, Congress sought to
extend the statute to provide that “newly found seedlings”
found in a cultivated state by the applicant were pat-
entable. These seedlings did not need to have been cre-
ated by a plant breeder so long as they were discovered by
the applicant on cultivated land (such as the garden in
Foster).     The apparent assumption underlying this
amendment was that an exception was warranted for
newly found seedlings because, the plant having been a
seedling at the time of its discovery, it could be assumed
that it was cultivated in its inception and that the cultiva-
tion of the land by man contributed to its creation. 7

     7  Neither the statute nor the legislative history
made clear whether the original cultivator of the land was
a co-inventor of the new plant with the individual who
identified it as a new variety. In Ex parte Moore, 115
U.S.P.Q. 145 (1957), the Board deemed it unnecessary to
speculate as to whether the discoverer of the seedling and
the land owner were joint inventors.
IN RE BEINEKE                                               18


    To be sure, the 1954 amendments also introduced the
“cultivated sports, mutants, [and] hybrids” language from
the 1930 Act committee reports into section 161. This
amendment, however, merely made explicit what was
previously implicit—that the 1930 Act protected “sports,
mutants, [and] hybrids” “cultivated,” that is, created, by
the inventor. There is no indication in the text of the
amendments or in the legislative history that Congress
intended to ignore the longstanding view that, to be
patentable, a new and distinct invention (including a new
and distinct plant) must be the product or result of man
and his inventive efforts. In fact, in 1954, Congress
continued to reject the position that a plant that was
developed in nature, with no efforts or activity by man, is
patentable. Specifically, the Committee Reports conclude
by stating that
   [i]t is the considered opinion of those who have
   studied this matter that a grower of plants who,
   through no particular efforts of his own other than
   perhaps by accident, develops a new plant which
   is, nevertheless, due to his activity, should be enti-
   tled to patent such plant in the same manner as
   though he had deliberately planned the result
   achieved.
S. Rep. No. 83-1937, at 2 (1954) (emphasis added); see also
H.R. Rep. No. 83-1455, at 1-2. The committee reports also
emphasized that the plant patent provisions were in-
tended to cover plants “discovered by persons engaged in
agriculture and horticulture.” S. Rep. No. 83-1937, at 1
(emphasis added); see also H.R. Rep. No. 83-1455, at 2..
Thus, by virtue of the 1954 amendments, Congress ex-
tended the plant patent statutes to cover newly found
seedlings, but only if they were somehow the result of
human activity (i.e., the cultivation of the land on which
they originated), and not the chance find of a plant ex-
19                                          IN RE BEINEKE



plorer in the wild. 8 Supreme Court decisions after the
1954 amendments have confirmed this view of the pat-
entability of plants found in nature. As the Supreme
Court noted in Chakrabarty, “a new mineral discovered in
the earth or a new plant found in the wild is not pat-
entable subject matter.” 447 U.S. at 309 (emphasis
added). “Congress thus recognized that the relevant
distinction was not between living and inanimate things,
but between products of nature, whether living or not,
and human-made inventions.” Id. at 313. The trees, by
Beineke’s own admission, were not “newly found seed-
lings,” and the trees in question do not fall within the
broadened protection of the 1954 amendments.
    Because Beineke does not meet the other require-
ments of section 161 either as originally enacted or as
amended in 1954, we need not reach the question of what
is meant by “found in an uncultivated state”—that is, we
need not determine what level of human cultivation of the
area in which a seedling was found at its inception is
necessary to satisfy the statute. The Board correctly
determined that the mature oak trees found by Beineke in
the front yard of a home were not entitled to plant patent
protection under section 161.
                      AFFIRMED
                         COSTS
     No costs.




     8   The 1954 amendments not only made seedlings
found on other people’s land patentable, but they also
established that a seedling found by an applicant on his
own land can be patentable even though he did not spe-
cifically create it.
