Appeal No. 1996-3887
Application 07/883,434
“manufacture, or composition of matter;” a form of the organism that does not exist in
nature. Accordingly, the rejection of claims 16 through 22, 42, 43, 46 and 47 under 35
U.S.C. § 101 is reversed.
35 U.S.C. § 102(b)
According to the examiner, the composition of claims 16 through 19, 21, 22, 42, 43,
46 and 47 is anticipated by:
the soil in a field in the lower Rio Grande Valley which soil contains the
indigenous nematodes of S. riobravis where the soil (composed of solid
particles) which is an inert carrier and contains water when wet (another
carrier in which one or more of the nematodes are suspended in a water
puddle which puddle also a different and isolated environment from an
environment such as a lake compared to soil on arable land or a water
puddle on arable land). . . the nematodes are naturally occurring in the soils
of the lower Rio Grande river valley and [] these nematodes were noticed at
the time of excavation which was carried out in 1986 according to [Raulston]2
where 1986 is prior to appellant’s filing . . . This is also evidenced by the
present specification page 13 at lines 10-15 which indicates that the “soil
was collected from a corn field where this nematode occurs naturally . . .
(specification, pages 16 and 17, footnote added)
The examiner acknowledges that the claims recite that the nematodes are isolated from
the environment and combined with an inert carrier. Nevertheless, the examiner believes
that these limitations fail to distinguish the claimed composition from the nematode as it
exists in nature:
2J.R. Raulston, et al., “Prepupal and Pupal Parasitism of Helicoverpa zea and
Spodoptera frugiperda (Lepidoptera: Noctuidae) by Steinernema sp. In Cornfields in the
Lower Rio Grande Valley,” Journal of Economic Entomology, Vol. 85, No. 5, pp.1666-
1670 (October 1992).
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007