Appeal No. 1999-1763
Application No. 08/834,931
In the present application, appellant is claiming a
machine which utilizes, in a practical and useful fashion, a
naturally occurring phenomenon, i.e., worms. Unlike in
Grayson, which addresses solely a living organism, appellant
is claiming an apparatus that utilizes attributes of a living
organism in a useful manner in the apparatus to achieve a
desired end result, and as such, in our opinion appellant’s
claims are directed to statutory subject matter. In
determining the eligibility of appellant’s claimed subject
matter for patent protection the examiner may not dissect the
claim into individual limitations and treat those limitations
separately, instead the examiner must consider each claim as a
whole and determine eligibility under 35 U.S.C. § 101 on that
basis. The mere fact that appellant’s claim 1 may include
some form of non-statutory material does not automatically
mean that appellant’s apparatus violates the strictures of 35
U.S.C. § 101. See, for example, In re Abele, 684 F.2d 902,
214 USPQ 682 (CCPA 1982); Diamond v. Diehr, 450 U.S. 175, 209
USPQ 1 (1981); and In re Noll, 545 F.2d 141, 191 USPQ 721
(CCPA 1976), wherein claims were held to be directed to
statutory subject matter even though they included a
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