||Referenced Items (94, 95, 96, 97, 98, 99, 100, 101, 102, 103, 104, 105, 106, 107, 108, 109, 110, 111, 112, 113, 114, 115, 116)
(116) Animals - Patentability
A decision by the Board of Patent Appeals and Interferences in
Ex parte Allen, USPQ (Bd. App. & Int. April 3, 1987), held
that claimed polyploid oysters are nonnaturally occurring manufactures
or compositions of matter within the meaning of 35 U.S.C. 101. The
Board relied upon the opinion of the Supreme Court in Diamond v.
Chakrabarty, 447 U.S. 303, 206 USPQ 193 (1980) as it had done in
Ex parte Hibberd, 227 USPQ 443 (Bd. App. & Int., 1985), as
controlling authority that Congress intended statutory subject matter
to "include anything under the sun that is made by man." The Patent
and Trademark Office now considers nonnaturally occurring non-human
multicellular living organisms, including animals, to be patentable
subject matter within the scope of 35 U.S.C. 101.
The Board's decision does not affect the principle and
practice that products found in nature will not be considered to be
patentable subject matter under 35 U.S.C. 101 and/or 102. An article of
manufacture or composition of matter occurring in nature will not be
considered patentable unless given a new form, quality, properties or
combination not present in the original article existing in nature in
accordance with existing law. See e.g. Funk Bros. Seed Co. v.
Kalo Inoculant Co., 333 U.S. 127, 76 USPQ 280 (1948);
American Fruit Growers v. Brogdex, 283 U.S. 1, 8 USPQ 131
(1931); Ex parte Grayson, 51 USPQ 413 (Bd. App. 1941).
A claim directed to or including within its scope a human being
will not be considered to be patentable subject matter under 35 U.S.C.
101. The grant of a limited, but exclusive property right in a human
being is prohibited by the Constitution. Acordingly, it is suggested
that any claim directed to a non-plant multicellular organism which
would include a human being within its scope include the limitation
"non-human" to avoid this ground of rejection. The use of a
negative limitation to define the metes and bounds of the claimed
subject matter is a permissable form of expression. In re
Wakefield, 422 F.2d 897, 164 USPQ 636 (CCPA 1970).
Accordingly, the Patent and Trademark Office is now examining
claims directed to multicellular living organisms, including animals.
To the extent that the claimed subject matter is directed to a
non-human "nonnaturally occurring manufacture or composition of
matter - a product of human ingenuity" (Diamond v.
Chakrabarty), such claims will not be rejected under 35 U.S.C. 101
as being directed to nonstatutory subject matter.
April 7, 1987 DONALD J. QUIGG
Assistant Secretary and
Commissioner of Patents and Trademarks
[1077 OG 24]