In Re Beineke, 690 F.3d 1344

Beineke appeals Board of Patent Appeals and Interferences decisions affirming examiner rejections under 35 U.S.C. § 161 of two plant patent applications for oak trees AFTO-2 and AFTO-3.
The Plant Patent Act amendments (1930 and 1954) are central to the interpretation of § 161 and the patentability of plants found or developed.
Beineke discovered two mature white oaks in a non-owned yard, observed progeny traits, and asexually reproduced the trees.
The examiner rejected the applications, asserting the trees were found in an uncultivated state and thus non-patentable; Beineke argued cultivation at discovery sufficed.
The Board affirmed, and Beineke timely appealed; this court reviews de novo the statutory construction of § 161.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Is the oak trees patentable under the 1930 Plant Patent Act as plants created by invention or discovery and asexually reproduced?	Beineke contends § 161 does not require human creation of the plant.	PTO contends patentability requires plant creation by human invention; mature found plants are not covered.	No; trees are not patentable under the 1930 Act as they were not created by the inventor.
Are the trees eligible under the 1954 amendments as newly found seedlings found on cultivated land?	Beineke argues 1954 amendments cover newly found seedlings on cultivated land.	The trees are not newly found seedlings and thus not within § 161 as amended.	Not patentable under 1954 amendments; mature trees do not fit newly found seedling category.
Did Congress intend Foster and the 1954 amendments to broaden patentability to chance finds on cultivated land?	Beineke relies on amendments to cover cultivated discoveries.	Congress rejected broadening to chance wild finds; amendments limited to seedlings with cultivation.	Amendments do not extend protection to mature found trees; Foster overruled only to the extent of newly found seedlings.

In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010) (statutory de novo interpretation of § 161; plant patent scope)
Imazio Nursery, Inc. v. Dania Greenhouses, 69 F.3d 1560 (Fed. Cir. 1995) (§ 161 and 1954 amendments; newly found seedlings context)
Chakrabarty, 447 U.S. 303 (Sup. Ct. 1980) (plants found in the wild are not patentable; nature vs. human-made invention distinction)
J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124 (S. Ct. 2001) (plaint patents; extent of plant patent protection within § 161)
Thompson v. Boisselier, 114 U.S. 1 (Sup. Ct. 1885) (invention/discovery requirement for patentability)