Ex parte RAULSTON et al. - Page 4




              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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