In re Arzberger

• Decision Date: 24 June 1940
• Docket Number: Patent Appeal No. 4351.
• Citation: 112 F.2d 834
• Parties: In re ARZBERGER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

112 F.2d 834 (1940)

In re ARZBERGER.

Patent Appeal No. 4351.

Court of Customs and Patent Appeals.

June 24, 1940.

John Boyle, Jr., of Washington, D. C. (F. M. Crawford and Stuart W. Scott, both of Terre Haute, Ind., of counsel), for appellant.

Howard S. Miller, of Washington, D. C., for the Commissioner of Patents.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.

LENROOT, Associate Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office affirming a decision of the examiner rejecting the single claim of appellant's application for a plant patent under the provisions of section 4886, Revised Statutes as amended, 35 U.S.C.A § 31.

The grounds of rejection, as stated by the examiner, were: "The claim on appeal is rejected on two grounds: Firstly, that the subject matter of this claim is not within the plant patent provision of R.S. 4886 (U.S.C. title 35, section 31, 35 U.S.C. A. § 31), above quoted; and secondly, that said subject matter is lacking in invention."

The Board of Appeals affirmed the decision of the examiner upon both grounds of rejection.

The appealed claim reads as follows: "1. Bacteria herein described and designated as Clostridium saccharo-butyl-acetonicum-liquefaciens."

The references relied upon are as follows:

Arzberger, 2,139,108, December 6, 1938.

Textbook of Bacteriology, Zinsser et al., 7th Ed. 1935, pages 22, 156 and 157.

General Bacteriology, Jordan, 11th Ed. 1935, page 125.

Agricultural and Industrial Bacteriology, Buchanan, 1930, pages 11 and 12.

Manual of Determinative Bacteriology, Berger; 1934, p. 13.

Senate Report No. 315 on Plant Patents; 71st Congress, 2d Session, April 2, 1930, to accompany Bill S. 4015, 11 pages.

House of Representatives Report No. 1129, 71st Congress, 2d Session, April 10, 1930, to accompany Bill H. R. 11372, 11 pages.

Gardener's Assistant, Thompson, 1878, pages 291-294, 297, 304 and 313.

Bacteriology, Tanner, 3d Ed. 1938, page 28.

The First Plant Patents, Allyn, 1934, pages 67 to 71, 77 to 83, relating to Congressional Hearings taken from the Congressional Record.

Journal of the Patent Office Society, Vol. XIII, 1931, p. 20.

Journal of the Patent Office Society, Vol. XVI, 1934, pages 184, 185, 252, 253, 254 and 255.

U. S. Daily, June 18, 1930, Article by Taylor, page 4.

In view of the conclusion we have reached, we find it necessary to discuss only the first ground of rejection.

The alleged invention is described by the examiner in his statement to the Board of Appeals as follows:

"This application relates to a species of bacteria. This species of bacteria is named by applicant Clostridium saccharo-butyl-acetonicum-liquefaciens and cultured by him from Louisiana cane field soil. These bacteria are useful for producing butyl alcohol, acetone, and ethyl alcohol when grown in a suitable nutrient carbohydrate medium. Reproduction of these bacteria is asexual, by binary fission.

"The drawings illustrate applicant's species of bacteria and show vegetative cells (Fig. 1); vegetative cells showing flagella (Fig. 2); and sporangia and free spores (Fig. 3). It is pointed out that these bacteria are not distinguishable on a solely morphological basis from other closely related bacteria, but that their novelty resides in a combination of these morphological characteristics and the cultural and physiological characteristics described in accordance with the Descriptive Chart of the Society of American Bacteriologists. This description is found on pages 2 to 8 in the specification.

"This application is filed under the statutory provision for plant patents, R.S. 4886 (U.S.C. title 35, section 31), which reads:

"`* * * invented or discovered and asexually reproduced any distinct and new variety of plant other than a tuber-propagated plant * * *'"

The question before us upon the first ground of rejection is whether the bacteria recited in the claim are patentable under the plant provision of section 4886, supra, assuming that said bacteria are novel.

In holding that said bacteria are not plants within the meaning of said provision the examiner held that the scientific classification of bacteria in the living kingdom is in doubt, stating that: "The scientific classification of bacteria in the living kingdom is in doubt. The authorities recognize that bacteria are not plants in the strict sense. Applicant has submitted numerous references to authorities on the subjects of botany and bacteriology which state that bacteria are classified as plants and that plants include bacteria. It is not intended to take issue with these authorities. Notwithstanding, however, it is pointed out that a distinction is drawn between this authoritative classification and the fact that bacteria are midway between plants and animals, i. e, possessing both plant and animal characteristics. This classification is optional and based upon the observations that bacteria have a preponderance of plant characteristics. * * *"

The examiner in his statement then quoted from numerous publications cited as references. After these quotations and some discussion of them, the examiner further stated:

"In view of these authorities it is thought clear that there is reason to question that bacteria are plants. To bring the claim on appeal within the statutory provision aforesaid there should be no doubt that bacteria are plants.

"Further, if bacteria are plants, it seems clear that they are not within the plant statute for the reason that it was obviously not intended by Congress to include them as plants. Congressional intent may hardly be disregarded.

"The cited Reports of the Senate and House committees with regard to the Plant Patents Law indicate clearly that the subject matter relates to plants in the ordinary and accepted sense. In fact, the term bacteria does not appear in these reports. The purpose of the bill to provide for plant patents is expressed in each of the reports, as follows:

"`* * * to afford agriculture, so far as practicable, the same opportunity to participate in the benefits of the patent system as has been given industry, and thus assist in placing agriculture on a basis of economic equality with industry. The bill will remove the existing discrimination between plant developers and industrial inventors. To these ends the bill provides that any person who invents or discovers a new and distinct variety of plant shall be given by patent an exclusive right to propagate that plant by asexual reproduction; that is, by grafting, budding, cuttings, layering, division, and the like, but not by seeds.'

"It is noted that asexual reproduction is defined in the Reports as by grafting, budding, cutting, layering, division, and the like. For definition of these methods of plant propagation, attention is drawn to the Thompson publication, Pages 291 to 294, 297, 304, and 313. If bacteria were within Congressional intent it is not seen how the above methods of asexual reproduction could be applied thereto.

"The Reports state that the intent of the plant patent is to offer adequate financial incentive to the plant breeder so that the farmers and general public that buy plants will be able promptly to obtain new improved plants at a more moderate cost. Those further suggested as beneficiaries under the plant patent are nurserymen, horticulturalists, and individual growers. Also:

"`The farmers and general public that buy plants will be able promptly to obtain new improved plants at a more moderate cost.'

"Certainly, the House Committee on Patents did not have bacteria in mind when it made the above statement. Further, Pages 1 to 5 of each of the Reports are replete with statements indicating that bacteria were not intended to be included under the Plant Patent Act. It is concluded from a careful consideration of these Reports that it was not in any sense contemplated in the drafting of the plant patent statute to afford patent protection for bacteria used in the production of butyl alcohol, ethyl alcohol, and acetone.

* * *

"Because the Plant Patent Act is intended to benefit agriculture, and bacteria are in some instances a benefit to agriculture does not mean that bacteria are within the intendment of the Plant...