In re Chakrabarty

MILLER, Judge,

dissenting.

I do not agree that appellant’s claimed microorganisms are within the scope of 35 U.S.C. § 101, and I join in the statement of the board—

We do not believe that Congress intended 35 U.S.C. 101 to encompass living organisms whether they be plants, modified microorganisms (such as bacteria), or modified multicellular organisms (such as mammals).

In In re LeGrice, 49 C.C.P.A. 1124, 1139, 301 F.2d 929, 939, 133 USPQ 365, 374 (1962), this court recognized that, under the Act of May 23, 1930, Pub.L. No. 245, 46 Stat. 376—

The patent law, as shown by the Committee Reports, was extended to plant patents in order to stimulate interest in the breeding and commercial development of new and valuable plant species. [Emphasis added.]

Both the Senate and House committee reports to which the court referred (S.Rep. No. 315, 71st Cong., 2d Sess. 1 (1930); H.R.Rep. No. 1129, 71st Cong., 2d Sess. 1 (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, 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.

The House Report, id. at 2, added:

No one has advanced a just and logical reason why reward for service to the *46public should be extended to the inventor of a mechanical toy and denied to the genius whose patience, foresight, and effort have given a valuable new variety of fruit or other plant to mankind.

Thus, the legislative history clearly shows Congressional understanding that, under the patent law in- effect prior to the Plant Patent Act of 1930, reward for service to the public in developing new varieties of plants had not been extended to inventors. See Bobsee Corp. v. United States, 411 F.2d 231, 237 n.18 (CA 5 1969).1

As pointed out in my dissenting opinion in In re Bergy, 563 F.2d 1031, 195 USPQ 344 (Cust. & Pat.App.1977), if, prior to the 1930 Act, living organisms had been within the scope of the terms “manufacture” and “composition of matter” (as the majority and concurring opinions must assume), the 1930 Act would have been superfluous. There is a basic presumption in statutory construction that Congress does not legislate unnecessarily. 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. & Pat.App.1976); Skovgaard v. The M/V Tungus, 252 F.2d 14, 17 (CA 3 1957), aff’d 358 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 C.C.P.A. 1, 5, C.A.D. 626 (1956). Neither the majority nor the concurring opinion is able to point to anything to rebut that presumption. If, after nearly two hundred years, it is desired to interpret the basic patent statute, for the first time, to cover living matter, the presumption poses a formidable and yet unrebutted challenge. Although advancement of technology would naturally 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. & 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 judge-made law only under the gravest and most- impelling circumstances.

As also pointed out in my dissenting opinion in Bergy, if, prior to the 1930 Act, plants had been within the scope of the patent statutes (as the majority and concurring opinions must assume), a plant patent would have had to comply fully with what is now 35 U.S.C. § 112; but, under the 1930 Act, a plant patent for asexually reproduced plants need not do so (since such a patent could not be declared invalid if its description “is made as complete as is reasonably possible” — see section 2 of the 1930 Act). This would have constituted a repeal of the full-compliance requirement in the case of such patents without any Congressional discussion thereof. Repeal by implication is not favored statutory construction. F.T.C. 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.

As further pointed out in my dissenting opinion in Bergy, coverage of plants under the Patent Act of 1952 was considered by Congress to be limited to plants falling under Chapter 15 of 35 U.S.C., and 35 U.S.C. § 101 was not considered to extend to any plants whatsoever, thus making it necessary to enact the Plant Variety Protection Act (1970), 7 U.S.C. § 2321 et seq.

Finally, the board made the following point:

We realize that 35 U.S.C. 101 does not expressly exclude patents on living or*47ganisms, but neither does it expressly exclude patents on mental processes, printed matter or methods of doing business.

This point was fully developed in my dissenting opinion in Bergy, where it was observed that claims directed to a process of using an algorithm to operate a system have been held to constitute patentable subject matter, while claims directed to the algorithm per se (or to methods of calculating, using the algorithm) do not.

Other points made by the majority in its opinion in Bergy, to which it refers here, are fully answered by my dissenting opinion in that case.2

The decision of the board should be affirmed.

. Each of the above-cited committee reports, at page 3, quotes Thomas A. Edison that—

Nothing that Congress could do to help farming would be of greater value and permanence than to give to the plant breeder the same status as the mechanical and chemical inventors now have through the patent law.

. I am also persuaded by the point so well made in Judge Baldwin’s dissenting opinion.