concurring.
Although I agree with portions of the majority opinion, I do not subscribe to the view stated therein that the Supreme Court’s opinion in Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451, 198 USPQ 193 (1978), has no bearing on these appeals. It is only after reconsidering the subject matter of these appeals in the light of the precedents cited in the Flook opinion that I modify my former position and now concur in the result reached by the majority
The words of 35 U.S.C. § 101, in defining areas of patentable subject matter, are quite clear on their face. This statute, while not as sweeping as its constitutional basis, is expansive in its scope. Indeed, the words of both the Senate and House Reports on the Act indicate that § 101 is to “include anything under the sun that is made by man.”1 Complementary to this concept is the fact that the Patent Act was intended to be, generally, a codification of the law as it existed in 1952.2 In the context of § 101, the law was not drawn on a clean slate. Although this section pertains to any invention belonging to one of the listed classes of subject matter, decisions of the Supreme Court preclude a literal interpretation of the section.
These Supreme Court decisions have noted certain categories of subject matter that, although falling within the dictionary definitions of process, manufacture or composition of matter, nonetheless do not comprise statutory subject matter. The Court’s opinion in Parker v. Flook, supra, explores the rationales behind these judicially-created exceptions and provides citations to other decisions of the Court which are particularly germane to the appeals before us. These cases include O’Reilly v. Morse, 56 U.S. (15 How.) 61, 14 L.Ed. 601 (1853); Le Roy v. Tatham, 55 U.S. (14 How.) 156, 14 L.Ed. 367 (1852); Tilgham v. Proctor, 102 U.S. 707, 26 L.Ed. 279 (1880); Eibel Process Co. v. Minnesota and Ontario Paper Co., 261 U.S. 45, 43 S.Ct. 322, 67 L.Ed. 523 (1923); Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 59 S.Ct. 427, 83 L.Ed. 506 (1939); and, Funk Brothers Seed Co. v. Ralo Inoculant Co., 333 U.S. 127, 68 S.Ct. 440, 92 L.Ed. 588 (1948).
Although many of these decisions are far removed in time, and involve crude technologies when compared to those of Bergy and Chakrabarty, the opinions supporting these decisions voice a concern of the Supreme Court that a patentee not obtain an effective monopoly over that which is called, for the lack of a more precise term, “a principle or phenomenon of nature.” The common thread throughout these cases is that claims which directly or indirectly preempt natural laws or phenomena are proscribed, whereas claims which merely utilize natural phenomena via explicitly recited manufactures, compositions of matter or processes to accomplish new and useful end results define statutory inventions.
In tracing this common thread, I will present not only extensive quotations from the bodies of the Court’s opinions, but also the respective claims and avowed inventions. This assures that the Court’s explanations are not taken out of context and are read with full knowledge of the fact patterns facing the Court in each case.
One of the first Supreme Court opinions to consider this concept of phenomena of nature was O’Reilly v. Morse, supra, which arose from Morse’s claim to be the first inventor of the telegraph. The portion of the Court’s long opinion which is relevant here is its consideration of the validity of Morse’s 1840 patent which had been reis*989sued in 1848. The reissued patent contained eight claims; the first, third and eighth claims are as follows:
“First. Having thus fully described my invention, I wish it to be understood that I do not claim the use of the galvanic current, or current of electricity, for the purpose of telegraphic communications, generally; but what I specially claim as my invention and improvement, is making use of the motive power of magnetism, when developed by the action of such current or currents, substantially as set forth in the foregoing description of the first principal part of my invention, as means of operating or giving motion to machinery, which may be used to imprint signals upon paper or other suitable material, or to produce sounds in any desired manner, for the purpose of telegraphic communication at any distances.
“The only ways in which the galvanic currents had been proposed to be used, prior to my invention and improvement, were by bubbles resulting from decomposition, and the action or exercise of electrical power upon a magnetized bar or needle; and the bubbles and deflections of the needles, thus produced, were the subjects of inspection, and had no power, or were not applied to record the communication. I therefore characterize my invention as the first recording or printing telegraph by means of electro-magnetism.
“There are various known modes of producing motion by electro-magnetism, but none of these had been applied prior to my invention and improvement, to actuate or give motion to printing or recording machinery, which is the chief point of my invention and improvement.
“Third. I also claim, as my invention and improvement, the combination of machinery herein described, consisting of the generation of electricity, the circuit of conductors, the contrivance for closing and breaking the circuit, the electro-mag-net, the pen or contrivance for marking, and the machinery for sustaining and moving the paper, altogether constituting one apparatus of telegraphic machinery, which I denominate the American Elec-tro-Magnetic Telegraph.
“Eighth. I do not propose to limit myself to the specific machinery, or parts of machinery, described in the foregoing specifications and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for making or printing intelligible characters, letters, or signs, at any distances, being a new application of that power, of which I claim to be the first inventor or discoverer.” [Emphasis ours. Id. 56 U.S. (15 How.) at 84-5.]
The Court perceived a clear distinction between claim 8, wherein Morse attempted to escape any apparatus limitations on his invention, and the preceding seven claims, and stated:
We perceive no well-founded objection to the description which is given of the whole invention and its separate parts, nor to his right to a patent for the first seven inventions set forth in the specification of his claims. The difficulty arises on the eighth.
sfc ¡fc jfc $ * $
It is impossible to misunderstand the extent of this claim. He claims the exclusive right to every improvement where the motive power is the electric or galvanic current, and the result is the marking or printing intelligible characters, signs, or letters at a distance.
If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we now know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff’s specification. His invention may be less complicated — less liable to get out of order — less expensive in construction, and in its operation. But yet if it is covered by this patent the inventor could not use it, nor the public have the benefit of it without the permission of this patentee.
*990Nor is this all, while he shuts the door against inventions of other persons, the patentee would be able to avail himself of new discoveries in the properties and powers of electro-magnetism which scientific men might bring to light. For he says he does not confine his claim to the machinery or parts of machinery, which he specifies; but claims for himself a monoply in its use, however developed, for the purpose of printing at a distance. New discoveries in physical science may enable him to combine it with new agents and new elements, and by that means attain the object in a manner superior to the present process and altogether different from it. And if he can secure the exclusive use by his present patent he may vary it with every new discovery and development of the science, and need place no description of the new manner, process, or machinery, upon the records of the patent office. And when his patent expires, the public must apply to him to learn what it is. In fine he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent. The court is of opinion that the claim is too broad, and not warranted by law. [Footnotes omitted. Id. at 112-3.]
Although the Court did not use the words “phenomenon of nature,” it is apparent that claim 8 was held improper because by disclaiming all apparatus limitations, Morse was attempting to define the limits of his invention in terms of the natural phenomenon of electromagnetism and would, therefore, preempt the use of this phenomenon. The remaining claims, however, defined particular manufactures which employed this same phenomenon to accomplish .new and useful end results. The Court voiced no objection to these claims.
Preceding O’Reilly v. Morse, the Court decided Le Roy v. Tatham, supra. The invention in Le Roy concerned the manufacture of lead pipes. Evidently, at the time of Le Roy’s invention, lead pipes were made by casting the pipe in pieces and then welding the pieces together. Pipes manufactured in this manner had the undesirable characteristic of leaking at the welds. The pipe made by Le Roy differed in that it was wrought by heat, pressure and constriction from solidified metal and not by casting in a mold. Le Roy and his coinventor claimed their invention as follows:
“We do not claim as our invention and improvement, any of the parts of the above-described machinery, independently of its arrangement and combination above set forth. What we do claim as our invention, and desire to secure, is, the combination of the following parts above described, to wit: the core and bridge, or guide-piece, with the cylinder, the piston, the chamber and the die, when used to form pipes of metal, under heat and pressure, in the manner set forth, or in any other manner substantially the same.” [Id. 55 U.S. (14 How.) at 172.]
The controversy before the Court arose from an alleged infringement of the claim, and specifically at issue was the following instruction by the lower court to the jury:
[T]he originality [of Le Roy’s invention] did not consist in the novelty of the machinery, but in bringing a newly discovered principle into practical application, by which a useful article of manufacture is produced, and wrought pipe made as distinguished from cast pipe. [Id. at 174.]
In discussing the claim in view of the jury instruction, the Court made the following statements concerning why natural phenomena, per se, are not proper subjects for patents and then discoursed on the types of discoveries and inventions that are properly subject to patenting:
The word principle is used by elementary writers on patent subjects, and sometimes in adjudications of courts, with such a want of precision in its application, as to mislead. It is admitted, that a principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, *991should one be discovered in addition to those already known. Through the agency of machinery a new steam power may be said to have been generated. But no one can appropriate this power exclusively to himself, under the patent laws. The same may be said of electricity, and of any other power in nature, which is alike open to all, and may be applied to useful purposes by the use of machinery.
In all such cases, the processes used to extract, modify, and concentrate natural agencies, constitute the invention. The elements of the power exist; the invention is not in discovering them, but in applying them to useful objects. Whether the machinery used be novel, or consist of a new combination of parts known, the right of the inventor is secured against all who use the same mechanical power, or one that shall be substantially the same.
A patent is not good for an effect, or the result of a certain process, as that would prohibit all other persons from making the same thing by any means whatsoever. This, by creating monopolies, would discourage arts and manufacturers, against the avowed policy of the patent laws.
A new property discovered in matter, when practically applied, in the construction of a useful article of commerce or manufacture, is patentable; but the process through which the new property is developed and applied, must be stated, with such precision as to enable an ordinary mechanic to construct and apply the necessary process. This is required by the patent laws of England and of the United States, in order that when the patent shall run out, the public may know how to profit by the invention. It is said, in the case of the Househill Company v. Neilson, 1 Webs. Pat. Cas., 683, “A patent will be good, though the subject of the patent consists in the discovery of a great, general, and most comprehensive principle in science or law of nature, if that principle is by the specification applied to any special purpose, so as thereby to effectuate a practical result and benefit not previously attained.” [Id. at 174—5.]
The Court held that the jury instruction was erroneous because a combination of machinery was indeed claimed, and “[t]he question whether the newly-developed property of lead, used in the formation of pipes, might have been patented, if claimed as developed, without the invention of machinery, was not in the case.” Id. at 176. Thus, although the Court recognized that Le Roy’s invention was based upon and implemented a newly discovered but naturally occurring phenomenon of lead, the claim did not directly or indirectly preempt the phenomenon because it was expressly limited to the claimed apparatus.
The Supreme Court next addressed the patentability of a natural phenomenon in Tilghman v. Proctor, supra. This case concerned an alleged infringement of Tilgh-man’s patent for a process of separating fats and oils into their component parts. In particular, Tilghman had discovered that a desirable separation could be accomplished by mixing the fats and oils with water and then subjecting the mixture to high pressures at high temperatures. Tilghman’s patent claim reads as follows:
Having now described the nature of my said invention, and the manner of performing the same, I hereby declare that I claim, as of my invention, the manufacturing of fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure. [Id. 102 U.S. at 709.]
The accused infringer argued that Tilgh-man’s patent was invalid because it claimed a natural phenomenon, i. e., that heat, water and pressure can dissolve fat.
In addressing this argument, the Court distinguished between Tilghman’s discovery and his claims:
What did Tilghman discover? And what did he, in terms, claim by his patent? He discovered that fat can be dissolved into its constituent elements by the use of water alone under a high degree of heat and pressure; and he patented the proc*992ess of “manufacturing fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure.” [Id. at 721. Emphasis in original.]
The Court next considered the proper interpretation of O’Reilly v. Morse, supra, and the effect of that decision on the patenta-bility of machines and processes which employ natural phenomena to produce new and useful results. The Court stated:
We think that a careful examination of the judgment in that case will show that nothing adverse to patents for processes is contained in it. The eighth claim of Morse’s patent was held to be invalid, because it was regarded by the court as being not for a process, but for a mere principle. It amounted to this, namely, a claim of the exclusive right to the use of electro-magnetism as a motive power for making intelligible marks at a distance; that is, a claim to the exclusive use of one of the powers of nature for a particular purpose. It was not a claim of any particular machinery, nor a claim of any particular process for utilizing the power; but a claim of the power itself, — a claim put forward on the ground that the pat-entee was the first to discover that it could be thus employed. This claim the court held could not be sustained. [Id. at 726-7. Emphasis in original.]
The Court continued by quoting the Morse opinion as follows:
After reviewing the statutes and decisions bearing upon the subject, the Chief Justice makes a summary conclusion of the whole matter, as follows: “Whoever discovers that a certain useful result will be produced, in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact that any one skilled in the science to which it appertains can, by using the means he specifies, without any addition to or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy, known or unknown before his invention; or by machinery acting altogether upon mechanical principles. In either case, he must describe the manner or process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from those described.” [Id. at 727 quoting 15 How. at 118-9. Emphasis in original.]
In applying these principles to Tilghman’s claim, the Court stated:
In the first place, the claim of the patent is not for a mere principle. The chemical principle or scientific fact upon which it is founded is, that the elements of neutral fat require to be severally united with an atomic equivalent of water in order to separate from each other and become free. This chemical fact was not discovered by Tilghman. He only claims to have invented a particular mode of bringing about the desired chemical union between the fatty elements and water. He does not claim every mode of accomplishing this result. [Id. at 729.]
Since the Court did not find the claim to monopolize the natural phenomenon, the claim was held valid.
In Eibel Process Co. v. Minnesota & Ontario Paper Co., supra, the Court considered the validity of a patent for an improved apparatus for making newspaper stock. The patentee, Eibel, discovered that the speed of a well-known papermaking machine could be significantly increased by employing the force of gravity. This was accomplished by elevating one end of the device so that the flow rate of the stock would be increased by causing it to flow downhill. Claim 1 is representative of the claims in the patent, and reads:
1. A Fourdrinier machine having the breast roll end of the paper-making wire *993maintained at a substantial elevation above the level, whereby the stock is caused to travel by gravity, rapidly, in the direction of movement of the wire, and at a speed approximately equal to the speed of the wire, substantially as described. [Id. 261 U.S. at 50, 43 S.Ct. at 324.]
The validity of the claims was not challenged on the grounds that they improperly monopolized the natural phenomenon of gravity and the case is often cited approvingly as an example of the proper use of a natural phenomenon to produce a new and useful end result. See Parker v. Flook, supra.
The Court next considered a patent based upon a natural phenomenon in Mackay Radio & Telegraph Co. v. Radio Corp. of America, supra, which concerned the alleged infringement of a number of patents. One of the patents alleged to be infringed was for an antenna system which utilized principles of electro-magnetic wave propagation and the phenomenon of standing waves to produce new and useful results. The phenomenon was describable by a mathematical formula which appeared in the claims as follows:
15. An antenna comprising a pair of relatively long conductors disposed with respect to each other at an angle substantially equal to twice
degrees, ¡ being the length of the wire and A the operating wave length in like units, and means in circuit with said antenna for exciting the conductors in phase opposition whereby standing waves of opposite instantaneous polarity are formed on the conductors throughout their length. [Id. 306 U.S. at 96, n. 4, 59 S.Ct. at 431-2 n. 4.]
The formula expressed the physical relationship of two conductors in the assembled antenna. That the Court considered this to be a proper claim to the use of a natural phenomenon and not a preemption of the phenomenon itself, is evident from the following passage from the opinion:
While a scientific truth, or the mathematical expression of it, is not patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be. * * * We assume * * * that this advance was invention even though it was achieved by the logical application of a known scientific law to a familiar type of antenna. But it is apparent that if this assumption is correct the invention was a narrow one, consisting of a structure conforming to the teachings of the Abraham formula as to angle and wire length relative to wave length, and is to be strictly construed with regard both to prior art and to alleged infringing devices. [Id. at 94, 59 S.Ct. at 431.]
In Funk Brothers Seed Co. v. Kalo Inocu-lant Co., supra, the Court considered the validity of a patent to one Bond and the alleged infringement of a number of the patent’s product claims. The subject matter involved certain naturally occurring bacteria of the genus Rhizobium which infect the roots of leguminous plants and form nodules thereon hence enabling the plants to transform atmospheric nitrogen into organic nitrogenous compounds necessary for plant growth. It was well known that each species of these naturally occurring bacteria would only infect certain species of leguminous plants. Attempts (prior to Bond’s work) to produce a useful mixture of bacteria, which farmers could use upon planting more than a single variety of plant, were unsuccessful. When mixed, different species of Rhizobium bacteria exhibited a mutually inhibiting effect and no suitable mixture had, therefore, been produced. Bond discovered that certain strains of the bacteria were not mutually inhibitive and he produced mixtures of the Rhizobium bacteria which mixtures were capable of inoculating multiple varieties of plants. Bond was granted a patent on his discovery. The Supreme Court found the following claim to be representative of Bond’s invention:
An inoculant for leguminous plants comprising a plurality of selected mutual*994ly non-inhibitive strains of different species of bacteria of the genus Rhizobium, said strains being unaffected by each other in respect to their ability to fix nitrogen in the leguminous plant for which they are specific. [Id. 333 U.S. at 128, n. 1, 68 S.Ct. at 440.]
Justice Douglas, speaking for a majority of the Court, said the following about Bond’s claimed invention:
We do not have presented the question whether the methods of selecting and testing the non-inhibitive strains are patentable. We have here only product claims. Bond does not create a state of inhibition or of non-inhibition in the bacteria. Their qualities are the work of nature. Those qualities are of course not patentable. For patents cannot issue for the discovery of the phenomena of nature. See Le Roy v. Tatham, 14 How. 156, 175. The qualities of these bacteria, like the heat of the sun, electricity, or the qualities of metals, are part of the storehouse of knowledge of all men. They are manifestations of laws of nature, free to all men and reserved exclusively to none. He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. It there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end. See Telephone Cases, 126 U.S. 1, 532-533 [8 S.Ct. 778, 780, 781, 31 L.Ed. 863]; DeForest Radio Co. v. General Electric Co., 283 U.S. 664, 684-685 [51 S.Ct. 563, 568, 569, 75 L.Ed. 1339]; Mack-ey Radio & Tel. Co. v. Radio Corp., 306 U.S. 86, 94 [59 S.Ct. 427, 431, 83 L.Ed. 506]; Cameron Septic Tank Co. v. Sarato-ga Springs [2 Cir.,] 159 F. 453, 462-463. The Circuit Court of Appeals thought that Bond did much more than discover a law of nature, since he made a new and different composition of non-inhibitive strains which contributed utility and economy to the manufacture and distribution of commercial inoculants. But we think that that aggregation of species fell short of invention within the meaning of the patent statutes.
Discovery of the fact that certain strains of each species of these bacteria can be mixed without harmful effect to the properties of either is a discovery of their qualities of non-inhibition. It is no more than the discovery of some of the handiwork of nature and hence is not patentable. The aggregation of select strains of-the several species into one product is an application of that newly-discovered natural principle. But however ingenious the discovery of that natural principle may have been, the application of it is hardly more than an advance in the packaging of the inoculants. Each of the species of root-nodule bacteria contained in the package infects the same group of leguminous plants which it always infected. No species acquires a different use. The combination of species produces no new bacteria, no change in the six species of bacteria, and no enlargement of the range of their utility. Each species has the same effect it always had. The bacteria perform in their natural way. Their use in combination does not improve in any way their natural functioning. They serve the ends nature originally provided and act quite independently of any effort of the pat-entee. [id. at 130-1, 68 S.Ct. at 441-2. Emphasis added.]
The Court held that “the product claims do not disclose an invention or discovery within the meaning of the patent statute.” Id. at 132, 68 S.Ct. at 442. This holding appears to arise, in part, from Bond’s manner of claiming his invention, i. e., in terms of its property — non-inhibition—instead of claiming the precise constituent elements of his mixtures. The effect is an indirect, but nonetheless effective, monopoly over the phenomenon because the test for inclusion of a strain within the claim limits is the existence of the phenomenon.3
*995Although the Supreme Court has considered the question of patentable subject matter in other cases both before and after the 1952 Act, see e. g., Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 USPQ 673 (1972), the cases cited above comprise the ' precedential background of the Court’s decision in Parker v. Flook, supra, and they trace the development of the judicial proscription on the patentability of purely natural phenomenon.
In Flook, the applicant presented claims to a method for computing and updating certain alarm limits critical to the catalytic conversion process of hydrocarbons. The essential feature of the process as claimed was a new mathematical formula for computing the values of the alarm limits from certain input quantities. The Court indicated that a formula is similar to a principle or law of nature and it quoted from the Benson opinion:
“A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.” Le Roy v. Tatham, 14 How. 156, 175 [14 L.Ed. 367.] Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work. [437 U.S. at 589 [98 S.Ct. 2522, 2525], 198 USPQ at 197, quoting 409 U.S. at 67 [93 S.Ct. 253, 255], 175 USPQ at 675.]
The Court in Flook continued its analysis by stating that “[t]he rule that the discovery of a law of nature cannot be patented rests, not on the notion that natural phenomena are not processes, but rather on the more fundamental understanding that they are not the kind of “discoveries” that the statute was enacted to protect.” 437 U.S. at 593, 98 S.Ct. at 2527, 198 USPQ at 198. The Court did, however, identify certain circumstances wherein claims encompassing natural phenomena define statutory subject matter when it stated “[e]ven though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.” Id. at 594, 98 S.Ct. at 2528, 198 USPQ at 199.
The invention under consideration in Flook is exemplified by claim 1:
1. A method for updating the value of at least one alarm limit on at least one process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons wherein said alarm limit has a current value of
Bo + K
wherein Bo is the current alarm base and K is a predetermined alarm offset which comprises:
(1) Determining the present value of said process variable, said present value being defined as PYL;
(2) Determining a new alarm base Bi, using the following equation:
Bi = Bo(1.0-F) + PVL(F)
where F is a predetermined number greater than zero and less than 1.0;
*996(3) Determining an updated alarm limit which is defined as Bj + K; and thereafter
(4) Adjusting said alarm limit to said updated alarm limit value.
[Id. at 596-7, 98 S.Ct. at 2529, 198 USPQ at 200.]
Examining this claim in view of the Court’s statements in Flook and the cases discussed above makes it clear that the Court considered the allowance of such a claim to be a preemption of the formula or natural principle recited therein because the non-computation steps merely gather values necessary for the computation or employ the computed results in the only manner in which they are useful. The result would be a patent on the principle, i. e., the formula or method of calculation and the Court held that such a method of calculation was not a process within the meaning of 35 U.S.C. § 101. Id. at 595, n. 18, 98 S.Ct. 2522, 198 USPQ at 199, n. 18.
In each of the aforementioned cases, the Supreme Court centered its analysis on the phenomenon which made the invention valuable to the inventor and then proceeded to determine whether or not the inventor attempted to preclude others from using those bare phenomena.
So, in the appeals at hand, the initial consideration should be into the respective discoveries and the natural phenomena involved, followed then by an assessment of the scope of the claims with regard to those phenomena.
Considering, first, the Bergy appeal: The invention therein centers on the discovery that certain microorganisms have the distinctly useful property of producing the antibiotic lincomycin. The phenomena involved in making the invention valuable to the inventor are those only dimly understood, but nevertheless existing, metabolic processes leading to the noted drug. Do Bergy and his coinventors attempt to preempt all others from the biological production of lincomycin? I think it clear that they do not. The claim in issue:
A biologically pure culture of the microorganism Streptomyces vellosus, having the identifying characteristics of NRRL 8037, said culture being capable of producing the antibiotic lincomycin in a recoverable quantity upon fermentation in an aqueous nutrient medium containing assimilable sources of carbon, nitrogen and inorganic substances,
is limited to but a single microorganism, which, in its claimed form,4 does not even occur in nature. Indeed, the Bergy et al. patent application specifically discloses at least four other microorganisms used to biologically produce the drug.
The invention of Chakrabarty revolves around the abilities of certain bacteria to digest or metabolize various hydrocarbon components of crude oil. Again, these capabilities are natural phenomena and occur via complex metabolical processes.
Chakrabarty’s broadest claims:
7. A bacterium from the genus Pseu-domonas containing therein at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway.
21. An inoculum for the degradation of a pre-selected substrate comprising a complex or mixture of hydrocarbons, said inoculum consisting essentially of bacteria of the genus Pseudomonas at least some of which contain at least two stable energy-generating plasmids, each of said *997plasmids providing a separate hydrocarbon degradative pathway,
do not preempt the biological metabolism of hydrocarbons. As in the Bergy et al. application, the microorganisms as claimed by Chakrabarty cannot be found in nature, and the results producible with the claimed microorganism are not duplicated in nature. Also, Chakrabarty points out that a number of the members of the genus Pseudomonas have the ability to metabolize specific types of hydrocarbons, and, thus, provide other available means capable of providing (albeit, not as effectively) similar functions.5
In sum, it seems quite clear that the claims in both of these appeals do not reach out to encompass natural phenomena as did Morse’s claim 8 or the claims in Funk, but rather recite only non-naturally occurring compositions of matter that are but single tools for utilizing natural phenomena in producing new and useful end results.
Having completed the task suggested by the Supreme Court in its remand, a few general comments are in order.
The PTO argues6 that “without a ‘clear and certain’ signal that it [Congress] intended living organisms — not to mention microorganisms — to be patentable subject matter under 35 USC 101,” we should not attempt to extend the scope of that section. As should be apparent from my earlier comments, supra n. 1 and accompanying text, I do not view the patenting of microorganisms 7 as an extension of the broadly intended § 101 as long as the scope of the patent monopoly does not fall within the areas proscribed by the Supreme Court in the cases discussed above.
Finally, the Plant Patent Act appears to voice both the recognition and the reaction of Congress to the fact that some new varieties of plants were no longer merely products of nature, but were also the products of man. The House Report on the Plant Patent Act evidences this Congressional recognition in stating:
[A] plant discovery resulting from cultivation is unique, isolated, and is not repeated by nature, nor can it be reproduced by nature unaided by man, and such discoveries can only be made available to the public by encouraging those who own the single specimen to reproduce it asexually and thus create an adequate supply.
It is obvious that nature originally creates plants but it can not be denied that man often controls and directs the natural processes and produces a desired result. In such cases the part played by nature and man can not be completely separated or weighed or credited to one or the other. Nature in such instances, unaided by man, does not reproduce the new variety true to type.[8]
A memorandum from the Commissioner of Patents, then Thomas E. Robertson, to the Secretary of Commerce, R. P. Lamont, shows that it was this difficulty in providing sufficient description of to-be-patented plants, and not the fact that plants are alive *998which precluded their patenting under the then-current statute:
Further, and more important, there at once arises the difficulty of defining in a written document which must be printed, both as constituting part of the patent and as constituting a publication available for search and distribution, the differences which identify a new variety from previously known varieties. For example, if that difference exists only in the color of the bloom, then in order to describe that difference it would seem that a colored print of some sort would have to constitute a part of the patent.
If it is not possible by ordinary description of the physical qualities of the plant, or the fruit, or the bloom, or all three, to so accurately define this new variety that it can be differentiated from all known varieties and from all subsequently created new varieties, then it is difficult to see how a patent to be granted would comply with the other provisions of the statutes, namely, that the inventor must describe his invention in full, clear, concise, and exact terms. (R.S. 4888.)
In other words, section 4888, Revised Statutes, requires one who obtains a patent to file in the Patent Office “a written description of the same, and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains * * * to make, construct, compound, and use the same.”
In many instances (if not all) it may be found that no description could be written that would enable any one to identify so as to reproduce from that description (without the extraneous aid of physical cuttings or slips grafted in accordance with the usual methods) the new variety, as the only way asexually reproduced varieties can be reproduced is from a physical cutting or slip from the new variety itself. To state the matter in another way, if after the new variety were produced, and then reproduced asexually, an application for patent was filed with the most explicit description that it is possible to furnish, and all the plants containing such a new species were destroyed, as for example by fire, then there would be no way whatever of reproducing this new species. The written, description filed in the Patent Office would be useless and hence could not satisfy the conditions of section 4888, Revised Statutes.[9]
The reaction of Congress was the relaxation of the description requirement as a means for constitutionally “promoting” the “useful art” of plant breeding. The bill, as passed, included the provision “[n]o plant patent shall be declared invalid on the ground of noncompliance with this section [§ 4888 — 35 USC 33 (1930)] if the description is made as complete as is reasonably possible.”
Additionally, both the Senate and the House directly considered the question of the constitutionality of granting patents on plants and both concluded:
[T]he amendments to the patent laws proposed by the bill fall within the legislative power of Congress under Article I, section 8, of the Constitution—
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There can be no doubt that the grant of plant patents constitutes a promotion of “the progress of science and useful arts” within the meaning of the constitutional provision.!10!
In sum, the legislative history of the Plant Patent Act, and its virtual lack of constitutional challenge throughout the following 50 years demonstrate that living things are patentable under the Constitution. The intended breadth of § 101 provides a similar conclusion under the Patent Act of 1952 if the statutory description requirements can be satisfied. Finally, my examination of the claimed inventions re*999veals them to be exterior to the judicially defined areas of un patentable subject matter. Accordingly, I would reverse the decisions of the board.
. See H.R. Rep. No. 1923, 82d Cong., 2d Sess. 6 (1952); S.Rep. No. 1979, 82d Cong., 2d Sess. 5 (1952), U.S.Code Cong. & Admin.News 1952, p. 2399.
. See generally, the Supreme Court’s discussion in Graham v. John Deere, 383 U.S. 1, 3, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPQ 459, 461 (1966). Additionally, Chairman Bryson’s comments (discussing, inter alia, § 101 and inventions involving principles of nature) in Patent Law Codification and Revision: Hearings on H.R. 3760 before Subcomm. No. 3 of the House Comm, on the Judiciary, 82d Cong., 1st Sess. 121 (1951), specifically noted that “[t]here is no intention to change the law as it is presently written; the purpose is just to make it clearer.”
. Both Funk and Cameron Septic Tank Co. v. Saratoga Springs, 159 F. 453 (2d Cir. 1908), (cited approvingly in Funk, 333 U.S. at 130, 68 S.Ct. 440), concerned patents which involved living bacteria. The fact that the bacteria were alive was not raised as a grounds for invalidity *995in either case. In both cases, however, the patents were challenged on the basis that they improperly monopolized natural phenomena. The identified phenomenon in each case was that which made the claimed bacteria valuable to the patentees. In Funk, the phenomenon was the mutual non-inhibition of certain bacteria and in Cameron the phenomenon was the effect of the bacteria on effluent.
It might be observed that paragraph three of 35 U.S.C. § 112 currently provides for “means plus function” elements as part of so-called “combination” claims. Although Bond used such a claim form in his patent, the Supreme Court considered the claims to effectively preempt the complete “non-inhibitive” biological function which Bond had discovered in nature. Clearly “means plus function” claims can be patentable even when the function is a naturally occurring one — note Morse’s claims 1 and 3, supra — but care must be taken so as not to preclude all of the natural phenomenon utilized by the “means” in those claims.
. As adequately demonstrated in affidavits submitted by appellants, this microorganism, in the condition as it is found in Arizona soil, does not produce lincomycin.
Parenthetically, the PTO follows well-established case law in dropping the product-of-nature rejection regarding this claim. Several courts, including this one, have considered the patentability of purified naturally occurring products and found them generally to be within the purview of § 101 or its predecessors. See In re Bergstrom, 427 F.2d 1394, 57 CCPA 1240, 166 USPQ 256 (1970) (prostaglandin compounds); Merck v. Olin Mathieson Chemical, 253 F.2d 156, 116 USPQ 484 (4th Cir. 1958) and Merck v. Chase Chemical, 273 F.Supp. 68, 155 USPQ 139 (D.N.J.1967) (Vitamin B-12); Sterling Drug v. Watson, Comr. Pats., 135 F.Supp. 173, 108 USPQ 37 (D.C.D.C.1955) (1-arterenol); Parke-Davis v. Mulford, 196 F. 496 (2d Cir. 1912) (adrenalin).
. Chakrabarty discloses that bacterial mixtures have been used to metabolize crude oils. However, because of the disparate nutritional requirements and growth rates of the component single-plasmid species, the effectiveness of these mixtures was not exceptional. By providing multiple plasmids in the single microorganism, Chakrabarty obviates these problems.
This improvement in effectiveness and my view that living things are patentable (see n. 3, supra) now lead me to the conclusion that even under the analysis provided in American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 51 S.Ct. 328, 75 L.Ed. 801, 8 USPQ 131 (1930), the claimed microorganism is a “manufacture” within the meaning of the statute.
. Supplemental brief of the PTO, citing Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 531, 92 S.Ct. 1700, 32 L.Ed.2d 273, 173 USPQ 769, 774 (1972).
. As a practical matter, I do not foresee the patenting of higher forms of life because of the inherent difficulty in complying with the en-ablement provisions of 35 U.S.C. § 112, paragraph one. Microorganisms are probably a special case because of their ease of description, see In re Argoudeiis, 434 F.2d 1390, 58 CCPA 769, 168 USPQ 99 (1970), and the apparent availability of samples of the microorganisms, themselves, from one of the various culture depositories.
. H.R.Rep.No. 1129, 71st Cong., 2d Sess. 7 (1930).
. A Bill to Provide for Plant Patents: Hearings on H.R. 11372 before the Comm, on Patents, 71st Cong., 2d Sess. 7 (1929-30) (statement of Hon. Fred S. Purnell).
. H.R.Rep.No. 1129, 71st Cong., 2d Sess. 7 (1930); S.Rep.No.315, 71st Cong., 2d Sess. 6 (1930).