Application of Bergy

Decision Date29 March 1979
Docket NumberAppeal No. 76-712,77-535.
Citation596 F.2d 952
PartiesApplication of Malcolm E. BERGY, John H. Coats, and Vedpal S. Malik. Application of Ananda M. CHAKRABARTY.
CourtU.S. Court of Customs and Patent Appeals (CCPA)

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Roman Saliwanchik, Kalamazoo, Mich., for appellants; Malcolm E. Bergy, John H. Coats, and Vedpal S. Malik, John Kekich, Kalamazoo, Mich., of counsel.

Leo I. MaLossi, Schenectady, N. Y., for appellant Ananda M. Chakrabarty; Joseph B. Forman, Arlington, Va., Joseph T. Cohen, Schenectady, N. Y., of counsel.

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

Donald L. Reidhaar, Berkeley, Cal., Mary Helen Sears, Lorance L. Greenlee, Washington, D. C., Iron & Sears, Washington, D. C., for amicus curiae, The Regents of the University of California.

Tom Arnold, Houston, Tex., Arnold, White & Durkee, Houston, Tex., for amicus curiae, the American Patent Law Association; William F. Eberle, Bruce M. Collins, New York City, Karl F. Jorda, Ardsley, N. Y., Bernard F. Leon, Nutley, N. J., Donald R. Dunner, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE, and MILLER, Judges.

RICH, Judge.

Introduction

These appeals are from decisions of the Board of Appeals (board) of the United States Patent and Trademark Office (PTO) under 35 U.S.C. § 141 by dissatisfied applicants for patents. We reverse.

These two cases come before us for the second time under the circumstances hereinafter detailed. Since our first decisions, they have been to the United States Supreme Court and back without any decision by that Court. They are separate appeals, not formally consolidated, but on this second round they were heard together on November 6, 1978, and are now decided together because, as will appear, they involve only the same single question of law.

The question before us is a limited one of statutory construction, not whether appellants have made and disclosed patentable inventions. The PTO has already determined that both applicants are entitled to patents; in technical patent law terms, unappealed claims to their respective inventions have been allowed to each appellant and, whatever the final disposition of these appeals, patents will issue if the applicants choose to pay their fees and take them out. Thus, there is no question of this court having "extended the scope of the patent laws" as the Bergy petition for certiorari asserted (p. 6). Deciding a case of first impression is not necessarily an "extension" of the law, it is a determination of what it means.

The real question before us is whether appellants are to be allowed to define their inventions — already determined to be patentable — in a certain way in "claims" pursuant to 35 U.S.C. § 112, second paragraph.1 This question, which is the same in each case, involves the construction and application of 35 U.S.C. § 101, more particularly the meaning to be given to the words "manufacture" and "composition of matter" in that section, 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 therefor, subject to the conditions and requirements of this title. Emphasis ours.

The PTO has raised no issue in either case, as to any aspect of the inventions, about compliance with the "conditions and requirements of this title," that is to say the basic Title 35 requirements for patentability, which are utility, novelty, and nonobviousness (35 U.S.C. §§ 101, 102, and 103), or any other statutory condition or requirement such as adequacy of disclosure (35 U.S.C. § 112, first paragraph). The sole issue, as the PTO chooses to view it, is whether an invention, otherwise patentable under the statute, is excluded from the categories of subject matter which may be patented, set forth in § 101, because it is "alive." As we shall show, the PTO does not appear to us to have been altogether consistent in its position on this question. First, however, we review the history of this litigation to show the posture of the cases as they are now before us again.

Procedural Background

In re Bergy, 563 F.2d 1031, 195 USPQ 344 (Cust. & Pat.App.1977), vacated sub nom. Parker v. Bergy, 438 U.S. 902, 98 S.Ct. 3119, 57 L.Ed.2d 1145 (June 26, 1978), 198 USPQ 257 (1978), hereinafter "Bergy," was decided by us October 6, 1977. We reversed a 2-to-1 decision of the board, 197 USPQ 78 (Bd.App.1976), which affirmed the final rejection by the PTO examiner of claim 5 of Bergy's application for patent serial No. 477,766, filed June 10, 1974.

The real party in interest in Bergy is the assignee of the application, The Upjohn Company, Kalamazoo, Michigan.

In re Chakrabarty, 571 F.2d 40, 197 USPQ 72 (Cust. & Pat.App.), cert. dismissed, ___ U.S. ___, 99 S.Ct. 44, 58 L.Ed.2d 94 (1978), hereinafter "Chakrabarty," was decided by us March 2, 1978. We reversed the decision of the board (unreported) which affirmed the final rejection by the PTO examiner of claims 7-9, 13, 15, 17, 21, and 24-26 of Chakrabarty's application for patent serial No. 260,563, filed June 7, 1972.

The real party in interest in Chakrabarty is the assignee of the application, General Electric Company.

In the PTO, Chakrabarty was the first of the two cases to be decided, the decision of the board being dated May 20, 1976. An entirely different panel of the board decided Bergy on June 22, 1976, one member dissenting with an extensive opinion. A long passage of the Chakrabarty board opinion was copied verbatim by the Bergy board majority. Due to delay caused by a request for reconsideration in the PTO in Chakrabarty, the Bergy appeal was the first to reach this court.

Having decided the sole question involved in Bergy, by our opinion dated October 6, 1977, when the identical question was presented to us in Chakrabarty in December of that year, we decided it on the basis of our Bergy decision as a controlling precedent in this court. Our opinion in Chakrabarty was published March 2, 1978.

On April 20, 1978, a petition for a writ of certiorari in Bergy was filed in the Supreme Court by the Solicitor General on behalf of Lutrelle F. Parker, Acting Commissioner of Patents and Trademarks. The Court granted the petition June 26, 1978, and on the same day issued the following order:

THIS CAUSE having been submitted on the petition for writ of certiorari and response thereto,
ON CONSIDERATION WHEREOF, it is ordered and adjudged by this Court that the judgment of the United States Court of Customs and Patent Appeals in this cause is vacated; and that this cause is remanded to the United States Court of Customs and Patent Appeals for further consideration in light of Parker v. Flook, 437 U.S. 584 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978). 198 USPQ 193.

Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451, 198 USPQ 193 (1978), hereinafter "Flook", was a case from this court (In re Flook, 559 F.2d 21, 195 USPQ 9 (Cust. & Pat.App.1977), reversed sub nom. Parker v. Flook, supra), involving a computerized method of updating alarm limits by application of a mathematical formula. It was decided by the Supreme Court, three Justices dissenting, on June 22, 1978, four days before the date of the foregoing order in Bergy.

Meanwhile, in Chakrabarty, an extension of time to file a petition for a writ of certiorari requested by the Solicitor General had been granted by the Chief Justice on May 26, 1978, extending the time to July 30, 1978. The petition, No. 78-145, was filed on July 26, 1978.

August 3, 1978, the Commissioner of Patents and Trademarks, by his solicitor, petitioned this court to vacate its decision in Chakrabarty, recall its mandate, and enter a new decision affirming the PTO board in view of the Supreme Court's order in Bergy. The solicitor argued that the action taken in Parker v. Flook showed that our decision in Chakrabarty "was demonstrably wrong." Chakrabarty, on August 11, opposed the petition, pointing out that in the Supreme Court's order in Bergy "there is no hint that this Court's decisions in Bergy and Chakrabarty were `demonstrably wrong'." We granted the petition to the extent of vacating our judgment.

Perceiving the foregoing situation and being mindful of the similarities as well as the differences of the Bergy and Chakrabarty cases and of the fact they involved the same single issue, we issued orders in Bergy on August 8 and in Chakrabarty on August 11, 1978, restoring both cases to the calendar, setting times for filing supplementary briefs directed solely to the effect, if any, of Parker v. Flook on our decisions, and setting the cases for hearing together on November 6, 1978.

Counsel for Chakrabarty and the Solicitor General then stipulated, pursuant to Rule 60(1) of the Supreme Court, that Chakrabarty's petition for a writ of certiorari be dismissed in view of this court's order vacating our judgment and recalling our mandate, and the petition was so dismissed on August 25, 1978.

Prior to the oral argument, this court received amicus curiae briefs on behalf of The Regents of the University of California, The American Patent Law Association, Genentech, Inc. (a California Corporation located in South San Francisco), and Cornell D. Cornish, patent attorney, on behalf of himself and the Village of Belle Terre, Long Island, New York.

The Genentech brief, furthermore, called to our attention three resolutions, Nos. 30-32, adopted by the Section of Patent, Trademark and Copyright Law of the American Bar Association at its August 1978 Annual meeting directed to the issue in these appeals and supportive of our prior decisions herein. (1978 Summary of Proceedings, Section of Patent, Trademark and Copyright Law, A.B.A. 31.)

Appellants in both cases and the PTO appeared by counsel on November 6, 1978, and presented oral argument,...

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