Appeal No. 1996-3887
Application 07/883,434
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.
All of the claims stand rejected under this section of the statute. According to the
examiner, “the composition as claimed consists of the naturally occurring nematodes
Steinernema riobravis as naturally occurring in the fields . . . in combination with soil.” If we
understand the examiner’s position correctly, it is that the claimed invention is a product of
nature, and therefore, “is not new and not novel;” nor is it “an article of manufacture,” that is,
the invention is not among the statutory categories of subject matter which may be
patented. Examiner’s Answer, paper no. 15, pages 13 and 14.
As explained in In re Bergy, 596 F.2d 952, 960-61, 201 USPQ 352, 361 (CCPA
1979):
Section 101 states three requirements: novelty, utility, and statutory subject
matter. The understanding that these three requirements are separate and
distinct is long-standing and has been universally accepted . . . Of the three
requirements stated in §101, only two, utility and statutory subject matter, are
applied under §101 . . . [I]n 1952 Congress voiced its intent to consider the
novelty of an invention under §102 where it is first made clear what the
statute means by “new”, notwithstanding the fact that this requirement is first
named in §101.
Thus, for purposes of deciding the propriety of this rejection, we need not concern
ourselves with whether the claimed compositions are novel. “The question here, as it has
always been, is: are the inventions claimed of a kind contemplated by Congress as
possibly patentable if they turn out to be new, useful, and unobvious within the meaning of
those terms as used as in the statute.” Id., at 963-64, 201 USPQ at 365.
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