152
Breyer, J., dissenting
(explaining that varieties that "resul[t] from seedlings of cross pollenization of two species" were patentable under the Act); Plant Patent Nos. 1-2, 5-6, 8-11 (roses); Plant Patent Nos. 7, 15 (peach trees).
Given these characteristics, the PPA is incompatible with the claim that the Utility Patent Statute's language ("manufacture, or composition of matter") also covers plants. To see why that is so, simply imagine a plant breeder who, in 1931, sought to patent a new, distinct variety of plant that he invented but which he has never been able to reproduce through grafting, i. e., asexually. Because he could not reproduce it through grafting, he could not patent it under the more specific terms of the PPA. Could he nonetheless patent it under the more general Utility Patent Statute language "manufacture, or composition of matter?"
Assume the court that tried to answer that question was prescient, i. e., that it knew that this Court, in Chakrabarty, 447 U. S., at 311-312, would say that the Utility Patent Statute language ("manufacture," or "composition of matter") in principle might cover "anything under the sun," including bacteria. Such a prescient court would have said that the Utility Patent Statute did cover plants had the case reached it in 1929, before Congress enacted the more specific 1930 law. But how could any court decide the case similarly in 1931 after enactment of the 1930 amendment? To do so would virtually nullify the PPA's primary condition—that the breeder have reproduced the new characteristic through a graft—reading it out of the Act. Moreover, since the Utility Patent Statute would cover, and thereby forbid, reproduction by seed, such a holding would also have read out of the statute the PPA's more limited list of exclusive rights. Consequently, even a prescient court would have had to say, as of 1931, that the 1930 Plant Patent Act had, in amending the Utility Patent Statute, placed the subject matter of the PPA—namely, plants—outside the scope of the words "manufacture, or composition of matter." See United States
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