In re Bergy

MILLER, Judge,

dissenting, with whom BALDWIN, Judge, joins.

I do not agree that a biologically pure culture of microorganisms is within the scope of 35 U.S.C. § 101 intended by Congress.

The board majority concluded—
[35 U.S.C. 101] does not specifically proscribe patents on plants, yet it was found necessary to enact a special section in order to reward horticulturalists and agriculturalists (35 U.S.C., Chapter 15, Sections 161-164). If 35 U.S.C. 101 were to be broadly construed there would clearly not have been any necessity for Chapter 15 of 35 U.S.C.
We are especially impressed by the legislative history of R.S. 4886 (U.S.C. Title 35, Section 31), the predecessor of the present Chapter 15 of 35 U.S.C. We believe that the legislative history reveals a clear Congressional intent that plants were not covered by the predecessor of 35 U.S.C. 101. . . .
Based upon the legislative history . we do not believe that the terms “manufacture” or “composition of matter,” as employed in 35 U.S.C. 101, were intended to encompass any living organism, whether plants or the microorganism appellants are claiming here. [Emphasis added.]

The response of the majority opinion here is simply:

Nor are we influenced by the legislative history of the Plant Patent Act of 1930 [ch. 312, 46 Stat. 376] in the course of which nobody had anything to say about patent protection for microorganisms

It then attempts to distinguish between microorganisms and more-complex living things, such as those included within the common meaning of “plants,” saying:

The nature and commercial uses of biologically pure cultures of microorganisms like the one defined in claim 5 are much more akin to inanimate chemical compositions such as reactants, reagents, and catalysts than they are to horses and honeybees or raspberries and roses.

Such a distinction is purely gratuitous and clearly erroneous. The nature of organisms, whether microorganisms, plants, or other living things, is fundamentally different from that of inanimate chemical compositions. For example, both the microorganisms claimed herein and honeybees are alive, reproduce, and act upon other materials to form technologically useful products (lincomycin and honey, respectively). This cannot be said of chemical compositions. The weakness of the majority’s position is further apparent from its failure to advance any rationale for distinguishing between different types of living things — particularly between a biologically pure culture *1040of a microorganism and plants — for purposes of 35 U.S.C. § 101.

I agree with the board majority that 35 U.S.C. § 161, et seq., whose original precursor was the Plant Protection Act of 1930 (1930 Act), and the legislative history of the 1930 Act support the conclusion that living organisms (e. g., plants and biologically pure cultures of microorganisms) were not intended by Congress to be within the scope of 35 U.S.C. § 101.

That Congress believed it necessary to enact a statute extending patent protection to certain plants (see In re LeGrice, 301 F.2d 929, 939, 49 CCPA 1124, 1139, 133 USPQ 365, 374 (1962)) and to continue this protection in a separate provision of the present law demonstrates that Congress never intended that plants or other organisms be within the scope of the terms “manufacture” and “composition of matter.” If, indeed, organisms were within the scope of such terms, the 1930 Act would have been superfluous. Presumably the 1930 Act was not superfluous, and the majority opinion here contains nothing to rebut that presumption. See Platt v. Union Pacific Railroad, 99 U.S. 48, 58, 25 L.Ed. 424 (1878); In re Finch, 535 F.2d 70, 71, 190 USPQ 64, 65 (Cust.Ct. & Pat.App.1976); Skovgaard v. The M/V Tungus, 252 F.2d 14, 17 (CA 3 1957), aff’d, 458 U.S. 588, 79 S.Ct. 503, 3 L.Ed.2d 524 (1959); United States v. Korpan, 237 F.2d 676, 680 (CA 7 1956), rev’d on other grounds, 354 U.S. 271, 77 S.Ct. 1099, 1 L.Ed.2d 1337 (1957); United States v. C. J. Tower & Sons, 44 CCPA 1, 5, C.A.D. 626 (1956).

Moreover, the Senate committee report accompanying the bill which became the Plant Patent Act of 1930 (S.Rep.No.315, 71st Cong., 2d Sess. (1930)) stated:

The purpose of the bill is to afford agriculture, so far as practicable, the same opportunity to participate in the benefits of the patent system as has been given industry . . . . The bill will remove the existing discrimination between plant developers and industrial inventors. [Id. at 1.]

This underscores Congressional understanding that plants were not patentable subject matter under the law then in effect, since, if they were, agriculture would already have been afforded “the same opportunity to participate in the benefits of the patent system.” See Bobsee Corp. v. United States, 411 F.2d 231, 237 n.18 (CA 5 1969).

If, prior to the 1930 Act, plants had been within the scope of the patent statutes, as the majority opinion apparently assumes, a plant patent would have had to comply fully with what is now 35 U.S.C. § 112; but after the 1930 Act, a plant patent for certain plants need not do so (since a plant patent could not be declared invalid if its description “is made as complete as is reasonably possible” — see section 2 of the Plant Protection Act of 1930, 46 Stat. 376). This would have constituted a repeal of the full-compliance requirement in the case of such plants without any Congressional discussion thereof. Repeal by implication is not favored statutory construction. FTC v. A.P.W. Paper Co., 328 U.S. 193, 202, 66 S.Ct. 932, 90 L.Ed. 1165, 69 USPQ 215, 219 (1946). The conclusion follows that, prior to the 1930 Act, plants were not within the scope of the patent statutes.

The Plant Variety Protection Act, 7 U.S.C. § 2321 et seg., although enacted long after the original use of the terms “manufacture” and “composition of matter” appearing in 35 U.S.C. § 101, further supports the conclusion that Congress did not intend organisms to be included within the scope of such terms. Both the Senate Judiciary Committee report (S.Rep.No.91-1246, 91st Cong., 2d Sess. 3 (1970)) and the House Committee on Agriculture report (H.R.Rep. No.91-1605, 91st Cong., 2d Sess. 1 (1970), U.S.Code Cong. & Admin.News 1970, pp. 5082, 5083) accompanying the bill (S.3070) which became the Plant Variety Protection Act stated:1

*1041Under patent law, protection is presently limited to those varieties of plants which reproduce asexually, that is, by such methods as grafting or budding. No protection is available to those varieties of plants which reproduce sexually, that is, generally by seeds. Thus, patent protection is not available with respect to new varieties of most of the economically important agricultural crops, such as cotton or soybeans. [Emphasis added.]

Thus, the Patent Act of 1952 was considered to be limited to plants falling under 35 U.S.C. § 161, and 35 U.S.C. § 101 was not considered to cover any plants whatsoever.

The majority, in holding that the biologically pure culture of a microorganism defined by claim 5 constitutes patentable subject matter, relies heavily on the fact that processes of using the microorganism constitute patentable subject matter, saying:

It seems illogical to us to insist that the existence of life in a manufacture or composition of matter in the form of a biologically pure culture of a microorganism removes it from the category of subject matter which can be patented while the functioning of a living organism and the utilization of its life functions in processes does not affect their status under § 101.

However, this court has pointed out that claims directed to processes of using an algorithm to operate a system constitute patentable subject matter while claims directed to the algorithm per se (or to methods of calculating using the algorithm) do not. See In re Waldbaum, 559 F.2d 611, 616, 194 USPQ 465, 470 (Cust.Ct. & Pat. App.1977) (Waldbaum II). Compare In re Richman, 563 F.2d 1027, 1028 (Cust.Ct. & Pat.App.1977) with In re Flook, 559 F.2d 21 (Cust.Ct. & Pat.App.1977). Similarly here, the fact that claims directed to a process of using microorganisms constitute patentable subject matter does not logically compel the conclusion that claims to biologically pure cultures of microorganisms are patentable.2

Moreover, by emphasizing the microorganism portion of a claim to the process of using the microorganism, the majority opinion is taking an approach rejected by this court in cases such as In re Chatfield, 545 F.2d 152, 158, 191 USPQ 730, 736 (CCPA 1976), cert. denied, U.S., 46 U.S.L.W. 3203 (October 4, 1977), and In re Deutsch, 553 F.2d 689, 691 n.3, 193 USPQ 645, 647 n.3 (Cust.Ct. & Pat.App.1977), namely dissecting the claim and concentrating on one portion of the claim in determining the issue of patentable subject matter.

The majority opinion says “it is in the public interest to include microorganisms within the terms ‘manufacture’ and ‘composition of matter’ in § 101.” Although such a statement might be of interest to an appropriate committee of Congress, it has no relevance to the court’s responsibility for determining Congressional intent. As noted by Chief Judge Markey in his concurring opinion in In re McKellin, 529 F.2d 1324, 1333, 188 USPQ 428, 437 (Cust.Ct. & Pat. App.1976):

[T]he patent law is statutory. Our representative form of government requires that the enactments of its Congress must always be, at the very least, the starting point. There being no common law of patents, we should take care to fill the Holmesian interstices of the statute with *1042judge-made law only under the gravest and most impelling circumstances.

The majority opinion, after stating that “[w]e consider the product-of-nature issue . no longer in the case,” then finds the issue “wholly lacking in merit.” Since the culture defined in claim 5 is not a “manufacture” or a “composition of matter” and since we do not have the view of the board majority on the product-of-nature issue, I would not reach that issue on this appeal.

In view of the foregoing, the decision of the board should be affirmed.

. The bill was also reported on by the Senate Committee on Agriculture and Forestry (S.Rep. No.91-1138, 91st Cong., 2d Sess. (1970)), which included a letter from the Under Secretary of Agriculture stating that the proposed legislation would provide the “incentive for private *1041enterprise to undertake the research and development required to produce novel varieties of sexually produced plants.”

. The majority also says that the claimed culture “is an industrial product used in an industrial process — a useful or technological art if there ever was one. See In re Waldbaum, 457 F.2d 997, 59 CCPA 940, 173 USPQ 430 (1972) [Waldbaum /].” However, the question is not whether the claimed culture is in a technological art, but whether the claimed subject matter was intended by Congress to be within the scope of 35 U.S.C. § 101. Cf. Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 USPQ 673 (1972). Further, it is to be noted that claims in the Waldbaum application were rejected by the PTO after this court’s decision in Waldbaum I, supra, based on the Supreme Court’s reasoning in Benson, which rejection was affirmed by this court in Wald-baum II, supra.