Ex parte RAULSTON et al. - Page 7




                 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).                                                                                                                   
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