COMMISSIONER'S DECISION
Non-Statutory Subject Matter - Seeds coated with Herbicides
Claims to a new herbicide were accepted by the examiner, but he refused
claims to seeds coated with the herbicides as being directed to non-
statutory subject matter. The inventive factor in the rejected claims
is the herbicide, although the seeds per se as lining matter, are
unpatentable per se. The claims to the seeds coated with the herbicides
were held to be directed to statutory subject matter.
Final Action: Reversed.
***********************
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated February 3, 1977, on application
139,060 (Class 71-7.2). The application was filed on April 6, 1972, in
the name of Ferenc M. Pallos et al, and is entitled "Thiolcarbamate Herbicides
Containing Nitrogen Containing Antidote." The Patent Appeal Board conducted
a Hearing on June 14, 1978, at which Mr. W. Mace represented the applicant.
The application is directed to novel Thiolcarmabate Herbicides, an anti-
dote for the herbicides, and to seed coated with that substance. The antidote
serves to protect crop plants from herbicidal injury without altering the
activity of the herbicides on weed plants. The composition may be applied
directly to the soil or they may be used to treat seeds prior to planting.
In the Final Action the examiner rejected claims 45 and 46 "for being directed
to unstatutory subject matter...." These claims are directed to crop seed
treated with an active herbicide and an antidote therefor. The examiner
went on to say (in part):
...
It is the examiners contention that no matter how or with what
the seed is treated, the claim remains directed to a seed, and
a seed is deemed to [be] living matter. The mere coating of a seed,
regardless of the fact that the coating process per se or the
coating composition per se might be inventive, fails to confer
patentability on the coated seed per se.
...
In response to the Final Action the applicant said:
...
In considering Section 2 of the Patent Act and particularly the
definition of the term "invention", such specifies as follows:
" 'invention' means any new and useful art,
process, machine, manufacture or composition
of matter, or any new and useful improvement
in any art, process, machine, manufacture or
composition of matter".
Restrictions on shat may he patented are set forth in Sections
28(3), 29(2) and 41 of the Patent Act. In addition. the
Commissioner is empowered to refuse to grant a patent under the
provisions of Sections 42 and 43 of the Act. Applicant has
made a very careful review of each of these Sections and can
find nothing that either suggests or indicates that the new and
useful composition as defined by claims 45 and 46, presently
on file, would be unpatentable. It is submitted that such
claims do not have an illicit object in view nor are they for
any mere scientific principle or abstract theorem, applicant
believes that the novelty requirements have been met and
furthermore the provisions of Section 41 as well as Section 43
would not apply. Section 42, in applicant's opinion, does not
apply as applicant does not believe that by law he should not
be entitled to be granted a patent on this subject matter.
Turning to Section 2 of the Patent Act, it is submitted that claims 45
and 46 are directed to a new and useful composition of matter;
thus within the strict wording of Section 2 and the definition of
"invention ", claims 45 and 46 fully comply. It could be apparent
that the Examiner is thus relying on his interpretation of this
Section of the Patent Act and applicant respectfully submits that
the Examiner has erred in his interpretation of Section 2 of
the Act.
In attempting to arrive at the Examiner's interpretation, it is
presumed that he is following current Canadian Patent Office policy
on the subject, which is as expressed in Chapter 12 of the Manual
of Patent Office Practice. On careful review of the prerequisites
of a patentable invention as outlined in Section 12.03 of the
Manual, no specific direction can be found which would assist the
Examiner in his interpretation on which to base his rejection. As
outlined previously by applicant, claims 45 and 46 meet all of the
prerequisites specified in Chapter 12 in that the subject matter
of such claims relate to a useful art, the subject matter is
operable, controllable and reproducible and furthermore the subject
matter has practical application in commerce. As previously
submitted, such claims do not have an illicit object in view, nor are
such claims directed to a mere scientific principle or abstract
theorem. It is further submitted that claims of the nature of
claims 45 and 46 would be found to have a beneficial effect for the
public. It is thus submitted that the Manual of Patent Office
Practice will not provide any substantiation for the Examiner's
interpretation of Section 2 of the Patent Act.
...
Applicant respectfully submits that the Examiner has provided
no substantiation for his basis of rejection other than a
misinterpretation, in applicant's opinion, of the scope of
Section 2 of the Patent Act with respect to the definition of
the term "invention". Applicant respectfully submits that
claims 45 and 46 comply fully with all requirements of the
Patent Act, as well as the Rules under the Patent Act, which
would include Section 2 of such Act. In addition, there is
no pertinent jurisprudence which would provide a different
interpretation with respect to the scope of claim 2, and in
view that "living matter" has apparently been found acceptable
to the Patent Office as outlined in the numerous recently issued
Canadian Patents, applicant believes that he should be entitled
to claims of the nature of claims 45 and 46, and the Examiner's
rejection should be withdrawn.
The question before the Board is whether or not claims 45 and 46 are directed
to "unstatutory subject matter." Claim 45 reads:
Crop seed treated with an effective amount of a compound
having the formula:
(see formula I)
wherein R is haloalkyl and R1 and R2 are alkenyl; said effective
amount being substantially non-phytotoxic and sufficient to
improve the resistance of the crop to an active herbicide com-
pound selected from the group consisting of thiolcarbamates,
herbicidally active acetanalides, thiolcarbamates in combination
with herbicides selected from the group consisting of triazines,
2,4-D and 2(4 chloro-6-ethyl-amino-5-triazine-2yl-amin o)-2-
methyl propionitrile.
Mr. Mace argued strongly at the Hearing that claims 45 and 46 do indeed
define patentable subject matter. He maintains that there is nothing in the
Patent Act or Rules that "teach or suggest" that claims 45 and 46 are directed
to unpatentable subject matter. He also stated that he failed to find any
jurisprudence holding that the subject matter defined by these claims
would not be patentable. He went on to say that "he should be entitled to
protect his concept in a manner which would prevent potential infringers
ready access to the invention."
To begin with, we are satisfied that fruit, seeds and other growing crops
per se, are not the result of a process which is a manner of manufacture,
even though the hand of man may have be involved in planting and cultivating
them (sec National Research Development Corporation's Application, 1961
RPC 147).
On the other hand, we have come to the conclusion that a process of coating
a seed may properly be viewed as a manner of manufacture. Where the coating
is novel, the result of the process - "the coated seed" - is, by virtue of
the novel coating, a novel article or composition of matter. What we would
then have is a new result produced by the hand of man.
The specific concern of the examiner was of course to what extent living
matter may be involved in patentable inventions. In considering that point
we refer first to J.R. Short Milling Co. (Canada) Limited v George Weston
Bread and Cakes Ltd. et al (1941) Ex. C.R. at 69, and (1942) Supreme Court
Reports at 187. In it methods devised for the extraction of a bleaching
substance and for the preservation of its activity, making it applicable
effectively in the manufacture of bread, were held patentable, as was the
product bleaching agent produced by that process. The use of the enzyme
in the process is a manifestation of man's control over the use of that
enzyme.
In American Cyanamid v. Frosst (1965) 2 Ex. C.R. 355, the claims in dispute
were for a process involving the use of living matter, and although numerous
defences were raised by the alleged infringes, the patentability of the anti-
biotic produced by that process was not in contest. The decision of Mr.
Justice Noel describes at length the production of antibiotics made by
processes including living matter, but whether such is proper subject matter
for a patent was not questioned.
In Parke Davis v. Laboratoire Pentagone, S.C.C. (196S) 37 Fox Pat. C. 12,
the Supreme Court of Canada also considered an appeal dealing with the in-
fringement of a patent for an antibiotic which was produced by a living
micro-organism known as Streptomyces venezuela. Again, there was no question
as to the patentability of such subject matter.
In the famous Banting patent for insulin the use of a hormone was protected
by a patent.
There is also British case law confirming that microbiological processes are
patentable subject matter. See, for example, Commercial Solvents Corp. v
Synthetic Products Co, Limited (1926) 43 RPC 185, where the patent related to
the production of acetone and alcohols by fermentation processes using a
particular bacteria to produce large yields of acetone and butyl alcohol.
See also Virginia-Carolina Chemical Corporation's application, (1958)
RPC 351, where Mr. Justice Lloyd-Jacob said: "... at one time it seems to
have been thought that any operation which involved living organism was excluded
from the definition of invention. That this was unjustified is apparent from
the judgement in Commercial Solvents Corp. v Synthetic Products Co. Limited
[supra] and from the considerable number of patents granted in respect to the
preparation of antibiotics. The increasing use of naturally occurring
organisms for inhibiting or controlling or modifying manufacturing operations
has fully outmoded as a rule of thumb guide a restriction of patentability to
inanimate matter."
In the case of Standard Oil Development Company's application (1951) 68 RPC
at 114, a test was given which is useful, namely, to look at the end product
of the alleged invention. If in this case the invention involved the
production of seeds, which in turn involved the operation of natural laws, the
applicant could not have claimed to have invented it, nor the means of producing
it. We believe, however, that the invention defined in claims 45 and 46
had nothing to do with the "natural laws," because it is not the seed
itself which is being claimed. The seed was produced before the advance
in the art took place, and is distinctly separate therefrom.
We think this case differs from A.D. Goldhaft's application (1957)
RPC at 276 where a method of treating an egg to affect the sex of chicks
to be hatched was found not to be a manner of manufacture. The reason
being that in that case "the fertilisation of the ovum, the production
of the egg, its incubation and the hatching of the chick are steps in a
process of nature, in a natural phenomenon." The claims in question here
are neither concerned with a method per se nor are they directed to the
product of a natural process per se.
In the human Liver Cell Line case (In Re Kostadin, Patent Office Record
January 4, 1977) we raised a question as to whether "living matter" is
patentable. We believe this case distinguished from the prior one, however,
in that here the point of invention is not the living matter, the seed, but
the coating upon the seed. Seeds being a staple product of commerce, and
there being no invention in the seeds per se, we believe it is proper to
allow claims directed to the treated seed where the invention resides in the
coating given to them. In this case the treatment does not alter the life
process of the seed and there is no new living matter.
Claim 45 is directed to crop seeds, unpatentable themselves, when treated
with a composition fond patentable in other claims of this application.
We are satisfied that it should not be refused as being directed to "unstatutory
subject matter." That conclusion applied equally to claim 46. We therefore
recommend that the decision in the Final Action to refuse claims 45 and 46 on
the ground that they are directed to unstatutory matter be withdrawn.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have studied the prosecution of this application and have carefully
reviewed the recommendation of the Patent Appeal Board. In the circum-
stances I endorse the Board's recommendation and withdraw the Final
Action. The application is returned to the examiner for resumption
of prosecution.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 16th, day of October, 1978
Agent for Applicant
Gowling & Henderson
Box 466, Terminal A
Ottawa, Ont.