COMMISSIONER'S DECISION
Section 2 of the Patent Act - Insecticidal Composition
The Bacillus thuringiensis, which is living matter, was used in a new
and inventive composition. The living matter per se is not the inventive
factor of the claimed invention and has not offended Section 2 of the
Patent Act.
Final Action: Reversed
*****************
Patent application 226,382 (Cl. 167-2), was filed on May 6, 1975 for an
invention entitled "Insecticidal Composition of Bacillus Thuringiensis
Admixed with Pyrethrum." The inventor is Edward B. Westall, assignor to
Nutrilite Products, Ins. The Examiner in charge of the application took
a Final Action on November 29, 1977 refusing to allow it to proceed to
patent,
This application is directed to an improved insecticidal composition where
Bacillus thuringiensis, Berliner is admixed with the natural botanical
insecticide Pyrethrum in a ratio (by weight) from about 12 to 1 to about 1
to 20. The "improved insecticide is particularly useful in the control
of insects and larvae."
In the Final Action the Examiner refused the claims because these claims are
directed to "living matter" which, in his view, is not included in the
definition of the invention in Section 2 of the Patent Act. Claim 1 reads:
An improved insecticidal composition comprising Bacillus
thuringiensis, Berliner admixed with the natural botanical
insecticide Pyrethrum in a weight ratio of Bacillus thur-
ingiensis, Berliner to Pyrethrum of from about 12 to 1 to
about 1 to 20.
In response to the Final Action the applicant argued that his "invention
lies in the discovery that certain mixtures of Bacillus thuringiensis,
Berliner and Pyrethrum within a particular range of defined proportions,
as stated in claim 1, have a synergistic effect" and thus patentable.
It is clear from the disclosure that Bacillus thuringiensis, Berliner "is
well known ...." It is also clear that the applicant is not attempting
to claim the Bacillus thuringiensis per se as a living micro-organism
for a particular new use. He argues that his invention is in a new and
unobvious mixture, Which mixture has a synergistic effect and is particularly
useful in the control of certain insects: We have no reason to disagree
with these statements.
We are satisfied then that, at least, where the living matter per se is not
the inventive factor of the subject matter defined in the claim it is not
objectionable under Section 2 of the Patent Act. In our view we need not
persue this point further at this time.
We recommend that the decision in the Final Action refusing the claims be
withdrawn.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have reviewed the prosecution of this application and concur with recommen-
dation of the Patent Appeal Board. Accordingly, I return the application to
the examiner for resumption of prosecution.
J.H A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 16th. day of May, 1979