Application of Bergy

• Decision Date: 23 November 1977
• Docket Number: Patent Appeal No. 76-712.
• Citation: 563 F.2d 1031
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: In the Matter of the APPLICATION OF Malcolm E. BERGY, John H. Coats, and Vedpal S. Malik.

563 F.2d 1031

In the Matter of the APPLICATION OF Malcolm E. BERGY, John H. Coats, and Vedpal S. Malik.

Patent Appeal No. 76-712.

United States Court of Customs and Patent Appeals.

October 6, 1977.

Rehearing Denied November 23, 1977.

Roman Saliwanchik, Kalamazoo, Mich., attorney of record, for appellant; John Kekich, Kalamazoo, Mich., of counsel.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Gerald H. Bjorge, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, RICH, BALDWIN and MILLER, Judges, and SHIRO KASHIWA, Judge, United States Court of Claims.

RICH, Judge.

This appeal is from the majority decision of the divided Board of Appeals (board) of the United States Patent and Trademark Office (PTO) affirming the rejection of claim 5 of application serial No. 477,766, filed June 10, 1974. We reverse.

The Invention

The subject of the application, which, when filed, had the noncommittal title "Process," is made clear from the Abstract of the Disclosure, which reads:

Microbiological process for preparing the antibiotic lincomycin at temperatures ranging from 18°C. to 45°C. using the newly discovered microorganism Streptomyces vellosus. The subject process advantageously results in the preparation of lincomycin without the concomitant production of lincomycin B (4'-depropyl-4'-ethyllincomycin). The absence of lincomycin B production results in increased lincomycin recovery efficiency.

On demand of the examiner, the title was later changed to "Process for Preparing Lincomycin." The application was filed with four claims to such a process which the examiner allowed. By a preliminary amendment, filed before any action on the application but not reached by the examiner until his second action, claim 5 was added together with the attorney's statement that "Basis for claim 5 can be found throughout the disclosure." That claim reads:

5. A biologically pure culture of the microorganism Streptomyces vellosus, having the identifying characteristics of NRRL 8037, said culture being capable of producing the antibiotic lincomycin in a recoverable quantity upon fermentation in an aqueous nutrient medium containing assimilable sources of carbon, nitrogen and inorganic substances.

The designation "NRRL 8037" in claim 5 is elucidated by the following statement in the specification:

The Microorganism

The novel actinomycete used according to this invention for the production of lincomycin is Streptomyces vellosus. One of its strain characteristics is the production of lincomycin without the concomitant production of lincomycin B. Another of its strain characteristics is the production of comparable titers of lincomycin at a temperature of 28°C. and 45°C. A subculture of this living organism can be obtained upon request from the permanent collection of the Northern Regional Research Laboratories, Agricultural Research Services, U. S. Department of Agriculture, Peoria, Illinois, U.S.A. Its accession number in this repository is NRRL 8037.

The specification continues:

The microorganism of this invention was studied and characterized by Alma Dietz of the Upjohn Research Laboratory.

What follows that statement is an elaborate, highly technical, detailed description of the microorganism, including its type designation as "Streptomyces vellosus Dietz, sp.n.," occupying over ten pages of the printed specification, followed by exemplary descriptions of the production of lincomycin therefrom by fermentation processes and the recovery of the lincomycin produced by the fermentation.

The Rejection

No references have been cited against claim 5 because the novelty and unobviousness of the biologically pure culture claimed are not questioned. Neither has utility been questioned.

The examiner's sole ground of rejection of claim 5, as stated in his final rejection, was:

Claim 5 is rejected under 35 USC 101 as non-statutory subject matter. Claim 5 claims a product of nature (Streptomyces vellosus NRRL 8037). See In re Mancy et al. 499 F.2d 1289 182 USPQ 303 at page 306, second sentence before 4.

Appellants responded with a request to reconsider this rejection supported by affidavits of three Upjohn microbiologists, Dr. Joseph E. Grady, Dr. Thomas L. Miller, and "the well-known microbial taxonomist Alma Dietz," pointing out that the microorganism did not exist as a biologically pure culture in nature and asserting that such a culture is a "manufacture" under § 101, which reads:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent thereof, subject to the conditions and requirements of this title.

In so arguing, appellants made the point that the pure culture is "a product of a microbiologist." The examiner adhered to his position and appeal was taken to the board.

Since the only ground given by the examiner in support of his nonstatutory-subject-matter rejection was that the culture was a product of nature, that was the only point argued by appellants in their brief before the board, in which they cited a number of precedents for holding that a pure product could be patentable over a known impure product of similar kind.

The Examiner's Answer—only two pages of the printed record—merely summarized his product-of-nature position and cited two cases in addition to In re Mancy, supra, previously cited by him, namely, Guaranty Trust Co. of New York v. Union Solvents Corp., 54 F.2d 400, 12 USPQ 47 (D.Del.1931), aff'd, 61 F.2d 1041, 15 USPQ 237 (CA 3 1932), and Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 68 S.Ct. 440, 92 L.Ed. 588, 76 USPQ 280 (1948). With reference to the cases cited by appellants as precedents for patenting pure materials, the examiner noted that they were all pure chemical compounds "as contrasted with the instant microorganism." He noted that the cases cited by him all "involve isolated or biologically pure microorganisms." Appellants replied briefly, taking exception to the last-quoted statement of the examiner

* * * since (1) none of the decisions cited, nor any known decision, has held that a "biologically pure culture" is unpatentable, and (2) there is no evidence that a "biologically pure culture" was in issue in any of the cited decisions.

On the issue thus framed, the case went to the board.

The Board Opinions

The opinion of the majority of the board is quite out of the ordinary. While it affirms the "decision" of the examiner, that is to say his rejection of claim 5, it wholly disregards his reason for rejecting it to the point of expressly declining to consider it. Instead, the board majority decided that claim 5 is not directed to statutory subject matter within the meaning of § 101 because it is for "a living organism," an issue entirely new to the application at bar, so far as the record shows. The dissenting board member's opinion confirms in its first paragraph that that is, strictly, the basis of the majority's decision. Without stating a new ground of rejection was being made (cf. 37 CFR 1.196(b)), the majority opinion commences its explanation of its reasoning as follows:

We have extensively researched prior court decisions for guidance to the question of whether or not a microorganism, being a living thing, is or is not within the realm of statutory patentable subject matter, but, other than possibly non-controlling dicta, have not found any case directly in point.

It is our view that 35 U.S.C. 101 must be strictly construed and, when so interpreted, precludes the patenting of a living organism. We reach this conclusion on the basis that only those categories of subject matter specifically enumerated in the statute are patentable and a living organism does not fall within the scope of any of those categories listed. An analogous result has been reached by the courts with respect to non-patentability of mental processes, printed matter or methods of doing business none of which are also expressly excluded by the indicated section of the statute, but neither can they be said or have been held to be included thereby.

The board majority opinion then makes two points in support of its conclusion that § 101 precludes patenting anything living. The first is based on this court's decision in In re Arzberger, 112 F.2d 834, 27 CCPA 1315, 46 USPQ 32 (1940), that bacteria are not included in the plant patent provision of former Title 35 (then part of § 4886 of the Revised Statutes, since 1952 separately treated in 35 U.S.C. §§ 161-164), notwithstanding that they may be scientifically classified as plants, because Congress plainly did not intend them to be when, in 1930, it enacted the Plant Patent Act (46 Stat. 376). The case was concerned only with the plant patent statute and this court did not have before it any other issue, such as inclusion of bacteria in any other statutory category, appellant having applied for a "plant patent" on a bacterium. The second aspect of the board majority's supporting reasoning is fully stated in the following paragraph:

If we were to adopt a liberal interpretation of 35 U.S.C. 101 new types of insects, such as honeybees, or new varieties of animals produced by selective breeding and cross-breeding would be patentable. Moreover, those plants which are excluded from the scope of 35 U.S.C. 161, such as tuber propagated plants or plants which can be reproduced only sexually, would be patentable under 35 U.S.C. 101. We do not believe that Congress intended 35 U.S.C. 101 to encompass any living organism, whether they be plants or microorganisms.

The dissenting board member, stating that he had reviewed all of the precedents cited by either side and others as well, many of which he discussed in detail, expressed these views:

* * * I do not believe that the fact that plants and bacteria have some properties in common is sufficient basis for holding that bacteria are to be excluded from patent coverage. * * *

* * * I do

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