In Re Bergy

596 F.2d 952 (1979)

Purchase the Printed Copy at bsmsphd.com

Nature of the Case

To access this section all you need to do is click here and register.

Facts

Bergy's claim in part is that he invented a new and improved process. The invention was, therefore, claimed as a process. The process is the use of the culture; it is the microorganism culture which makes the lincomycin. Without the culture, the process does not exist. Bergy's invention might be said to 'reside in' the culture which he made of the microorganism he discovered. Another way of defining his invention in a claim was to define the culture, as either the 'manufacture' or the 'composition of matter' category of §101. Bergy's invention, when defined as a process, is patentable because it meets all of the requirements and conditions of the patent statutes, then why is it not patentable when defined as the manufacture or the composition of matter? That is the sole problem posed by Bergy's appeal. Chakrabarty's invention is in the relatively new and highly complex field of cellular or genetic engineering or microbial genetics. Like Bergy's invention, Chakrabarty's is concerned with microorganisms. Unlike Bergy's, which manufactured antibiotics, Chakrabarty's were engineered to solve another one of man's practical needs, getting rid of oil spills. This they do by breaking down or 'degrading' the components of the oil into simpler substances which serve as food for aquatic life whereby the oil, assumed to be floating on the sea, is absorbed into it. Prior to the instant invention, biological control of oil spills had involved the use of a mixture of bacterial strains, each capable of degrading a single component of the oil complex. When a mixed culture of hydrocarbon-degrading bacteria are deposited on an oil spill the bulk of the oil often remains unattacked for a long period of time (weeks) and is free to spread or sink. Chakrabarty invented new strains of Pseudomonas having the new capability within themselves of degrading several different components of oil with the result that degradation occurs more rapidly. The central core of the invention is a new strain or strains of bacteria, and that part of the invention is a process of combating oil spills. Comparison of claim 30 with rejected claims 7 and 21, shows that it differs from them in substance only in adding to the bacterium of claim 7 or the inoculum of claim 21 a 'carrier' which will float on water and absorb oil. The significance of this is that the PTO obviously has no hesitation in issuing a patent on the living bacterium or inoculum when applied to or mixed with straw, which combination it must consider to be a manufacture or a composition of matter under §101, but refuses to issue a patent on the new bacterium or inoculum itself which is Chakrabarty's real contribution to the technological arts. The PTO Board of Appeals said the examiner rejected the appealed claims as not within §101 for two reasons: (1) the claimed microorganisms are 'products of nature' and (2) the claims 'are drawn to live organisms.'