In re Chakrabarty

RICH, Judge. This appeal by an applicant for a patent, assignor to General Electric Company, is from a decision by the United States Patent and Trademark Office (PTO) Board of Appeals (board) affirming the rejection of claims 7-9, 13, 15, 17, 21, and 24-26 of application serial No. 260,563, filed June 7, 1972, entitled “Microorganisms Having Multiple, Compatible Degradative Energy-Generating Plasmids and Preparation Thereof.” We reverse. The Invention In view of the legal issue presented, it is unnecessary to describe in detail the subject matter of the appealed claims, which is described in complicated biological terminology and is of a highly technical nature involving the modification of bacteria to solve man’s practical needs. In this instance, the immediate need is the important one of controlling oil spills, as one example, by the degradation of complex hydrocarbons such as crude oil and “Bunker C” oil through the action of microorganisms. Microorganisms, that is to say bacteria, are modified for this purpose by what is sometimes referred to as “genetic engineering,” a term appearing in appellant’s specification. It is also disclosed therein that prior to appellant’s invention microbial strains were known that can decompose individual components of crude oil, any given strain degrading only a particular component of the oil. For this reason biological control of oil spills had involved the use of a mixture of strains on the theory that the cumulative degradative actions would consume the oil and convert it into a cell mass which, in turn, serves as food for aquatic life. However, in the use of such a mixture there was ultimate survival of but a portion of the initial collection of bacterial strains with the result that the bulk of the oil spill remained unattacked for a long period. Appellant’s invention involves the creation of a new strain of bacteria by the incorporation in a single cell, by transmission thereinto of a plurality of compatible “plasmids,” of a capacity for simultaneously degrading several different components of crude oil with the result that degradation occurs more rapidly. To make this nontechnical description somewhat more intelligible we quote from the specification but two of its many definitions: Extrachromosomal element ... a hereditary unit that is physically separate from the chromosome of the cell; the terms “extrachromosomal element” and “plasmid” are synonymous; when physically separated from the chromosome, some plasmids can be transmitted at high frequency to other cells, the transfer being without associated chromosomal transfer. Degradative pathway . . . a sequence of enzymatic reactions (e. g. 5 to 10 enzymes are produced by the microbe) converting the primary substrate [i. e., oil] to some simple common metabolite, a normal food substance for microorganisms. This sketchy background, it is hoped, will give some idea of the nature of the invention at bar as defined in illustrative claim 7 which reads: 7. A bacterium from the genus Pseudomonas containing therein at least two stable energy-generating plasmids, each [42] of said plasmids providing a separate hydrocarbon degradative pathway.1 The specification disclosure contains examples of bacterial strains with four hydrocarbon degradative pathways and the statement: “If there is an upper limit to the number of energy-generating plasmids that will be received and maintained in a single cell, this limit is yet to be reached.” The PTO, speaking through the examiner as well as the board, has not questioned that appellant has invented and adequately disclosed strains of bacteria, within the definitions of his rejected claims, which are new, useful, and unobvious. Neither has any question beeri raised by the PTO about the inventions of the rejected claims being in the useful or technological arts so that their protection for a limited time by patent would be an implementation of the Constitutional purpose of promoting progress in the “useful arts.” Art. I, sec. 8, clause 8. The Rejection and the Board’s Decision The decision and opinion of the board are quite similar to its action and reasoning in the recent case of In re Bergy, 563 F.2d 1031, 195 USPQ 344 (Cust. & Pat.App.1977), wherein we reversed the decision of the board (subsequent to its decision herein). In the present case, the board first pointed out that the examiner had rejected the appealed claims only under 35 U.S.C. § 1012 “on the ground that they are not encompassed by the provisions” thereof, advancing two reasons therefor: (1) that the claimed microorganisms are “products of nature” and (2) that they are drawn to “live organisms.” The board reversed the examiner on point (1), agreeing with appellant that the claimed bacteria are not naturally occurring. This decision was expressed in a single sentence and the rest of the board’s opinion was devoted to a discussion of the legal effect of the fact that the claimed bacteria are alive. The board first discussed a number of cases which it had considered and concluded that there is “no case dealing directly with the point here in issue,” including, possibly as of first importance, the Supreme Court’s opinion in Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 68 S.Ct. 440, 92 L.Ed. 588 (1948). (In Bergy, supra, the board also stated that it had “not found any case directly in point.”) The board then pursued exactly the same line of reasoning it did in Bergy, in large part in the same words, to reach the same conclusion it expressed in Bergy, that § 101 “does not include living organisms.” The board’s opinion that § 101 does not include any living organism was expressed in the form of its belief that Congress did not so intend. As in Bergy, this view was deduced from the enactment of the Plant Patent Act of 1930, citing' this court’s opinion in In re Arzberger, 27 CCPA 1315, 112 F.2d 834, 46 USPQ 32 (1940).3 Responsive to the initial opinion of the board, appellant filed an extensive petition for reconsideration pointing out that the examiner had first raised the “living organism” question in his Answer to appellant’s brief on his appeal to the board, wherefore appellant had not had an opportunity to [43] present argument directed to the significance of the passage of the Plant Patent Act as an indication of the intent of Congress with respect to all living things, and argued that there was good reason to pass a special act for plants, other than the fact they are alive. That reason was that plants cannot be so described in a patent specification as to enable the reader to produce them, as was required of other inventions by R.S. 4888, the predecessor of 35 USC 112, first paragraph, for which reason special legislation relaxing that requirement in the case of plants was necessary. Thus, appellant argued, the passage of the Plant Patent Act is not to be taken as “an expression of any sort of Congressional intent with respect to the patentability of living organisms.” The board’s opinion on the petition reiterated that it knew of “no case dealing with the point here in issue,” stating, more specifically, that “microorganisms per se have not squarely been ruled either eligible or ineligible for product patent coverage in any reported court or Patent Office decision,” and adhered to its original opinion and decision. Appeal to this court was thereupon filed. OPINION Appellant’s reply brief succinctly sums up the issue before us in these words: In the instant appeal, appellants [sic] are seeking protection for a new bacterium, admittedly alive, in which such changes have been effected as to produce in this bacterium new capabilities. The Board of Appeals has agreed that this organism is not a “product of nature”. If it be accepted that all things in our world are either products of nature or things produced by man, then by the process of elimination the Board of Appeals has agreed with appellant’s contention that his new bacterium is a thing produced by man, i. e. a manufacture. It should follow, therefore, that * * * appellant has already met the requirements of Section 101. The PTO has advanced but a single reason to support its contention that this is not so, namely, that the new bacterium is a live. That is precisely the single issue we had to pass on in Bergy. The decision of the board herein was rendered and the main briefs of the parties hereto were filed before we handed down our Bergy decision. Thereafter we invited the parties to file briefs on the bearing of the Bergy decision on this case. Appellant opined that “the Bergy decision appears to be controlling precedent * * *The PTO brief said Bergy “might be considered dispositive of the issue presented [herein] if that decision remains a viable precedent.” It then pointed to the fact that in Bergy the claim was directed to a “biologically pure culture” and that we had made it clear in our Bergy opinion that we were not deciding anything other than the question whether that claimed invention was a manufacture or a composition of matter within § 101, adding that “the Commissioner is uncertain whether Bergy has any bearing at all” in view of the fact that no claim here involved is so limited. We do not consider the differences between the claims here and the claim in Bergy to be of any significance on the issue before us. In both cases the claims are directed to microorganisms and in both the only asserted objection to their patentability is that the microorganisms are alive and, for that reason alone, not within the § 101 categories of inventions which may be patented. We dealt fully with that identical issue and with the identical PTO arguments in Bergy. Nothing in the facts of this case requires that we add anything to what we there said. Bergy is, in this court at least, a controlling precedent. The decision of the board is reversed. REVERSED. Footnotes [1] As a matter of general interest, the assignee of appellant’s invention has been granted British patent 1,436,573 containing this and other claims to the bacterium. [2] 35 U.S.C. § 101 reads: § 101. Inventions patentable 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. [3] Although Bergy reached this court and was decided before the instant appeal (Chakrabarty), the latter was the first to be decided by the board. The two cases were clearly pending in the board at the same time and were decided by entirely different 3-man panels. Chakrabarty was decided May 20, 1976, and Bergy June 22, 1976. Bergy appealed forthwith but Chakrabarty filed a petition for reconsideration which was decided October 19, 1976. Bergy was argued in this court on March 3, 1977, and Chakrabarty on December 5, 1977. Any common language found in the board’s two opinions — and there is much — presumably originated in the Chakrabarty case.