1 - Funk Brothers Seed Co. v. Kalo Inoculant Co. 333 U.S.

127

Syllabus

1. Certain product claims of Bond Patent No. 2,200,532, on certain mixed cultures
of root-nodule bacteria capable of inoculating the seeds of leguminous plants
belonging to several cross-inoculation groups, heldinvalid for want of invention.
Pp.  333 U. S. 128-132.

2. Discovery of the fact that certain strains of each species of these bacteria can be
mixed without harmful effect on the properties of either is not patentable, since it
is no more than the discovery of a phenomenon of nature. P.  333 U. S. 131.

3. The application of this newly discovered natural principle to the problem of

packaging inoculants was not invention or discovery within the meaning of the
patent laws. Pp.  333 U. S. 131-132.

161 F.2d 981, reversed.

In a patent infringement suit, the District Court held certain product claims invalid
for want of invention. The Circuit Court of Appeals reversed. 161 F.2d 981. This
Court granted certiorari. 332 U.S. 755.  Reversed, 132.

MR. JUSTICE DOUGLAS delivered the opinion of the Court.

This is a patent infringement suit brought by respondent. The charge of

infringement is limited to certain product claims [Footnote 1] of Patent No.
2,200,532 issued to Bond on May 14, 1940. Petitioner filed a counterclaim asking for
a declaratory judgment that the entire patent be adjudged invalid. [Footnote 2] The
District Court held the product claims invalid for want of invention, and dismissed
the complaint. It also dismissed the counterclaim. Both parties appealed. The
Circuit Court of Appeals reversed, holding that the product claims were valid and
infringed and that the counterclaim should not have been dismissed. 161 F.2d 981.
The question of validity is the only question presented by this petition for certiorari.

Through some mysterious process, leguminous plants are able to take nitrogen
from the air and fix it in the plant for conversion to organic nitrogenous
compounds. The ability of these plants to fix nitrogen from the air depends on the
presence of bacteria of the genus Rhizobium 

Page 333 U. S. 129

which infect the roots of the plant and form nodules on them. These root nodule
bacteria of the genus Rhizobium fall into at least six species. No one species will
infect the roots of all species of leguminous plants. But each will infect well defined
groups of those plants. [Footnote 3] Each species of root nodule bacteria is made
up of distinct strains which vary in efficiency. Methods of selecting the strong
strains and of producing a bacterial culture from them have long been known. The
bacteria produced by the laboratory methods of culture are placed in a powder or
liquid base and packaged for sale to and use by agriculturists in the inoculation of
the seeds of leguminous plants. This also has long been well known.
It was the general practice, prior to the Bond patent, to manufacture and sell
inoculants containing only one species of root nodule bacteria. The inoculant could
therefore be used successfully only in plants of the particular cross-inoculation
group corresponding to this species. Thus, if a farmer had crops of clover, alfalfa,
and soybeans, he would have to use three separate inoculants. [Footnote 4] There
had been a few mixed cultures for field legumes. But they had proved generally
unsatisfactory because the different species of the Rhizobia bacteria produced an
inhibitory effect on each other when mixed in a common base, with the result that
their efficiency 

Page 333 U. S. 130

was reduced. Hence, it has been assumed that the different species were mutually
inhibitive. Bond discovered that there are strains of each species of root nodule
bacteria which do not exert a mutually inhibitive effect on each other. He also
ascertained that those mutually noninhibitive strains can, by certain methods of
selection and testing, be isolated and used in mixed cultures. Thus, he provided a
mixed culture of Rhizobia capable of inoculating the seeds of plants belonging to
several cross-inoculation groups. It is the product claims which disclose that mixed
culture that the Circuit Court of Appeals had held valid.

We do not have presented the question whether the methods of selecting and
testing the noninhibitive strains are patentable. We have here only product claims.
Bond does not create state of inhibition or of noninhibition in the bacteria. Their
qualities are the work of nature. Those qualities are, of course, not patentable. For
patents cannot issue for the discovery of the phenomena of nature.  See  Le Roy v.
Tatham, 14 How. 156,  55 U. S. 175. The qualities of these bacteria, like the heat of
the sun, electricity, or the qualities of metals, are part of the storehouse of
knowledge of all men. They are manifestations of laws of nature, free to all men
and reserved exclusively to none. He who discovers a hitherto unknown
phenomenon of nature has no claim to a monopoly of it which the law recognizes.
If there is to be invention from such a discovery, it must come from the application
of the law of nature to a new and useful end.  See Telephone Cases, 126 U. S. 1,  126
U. S. 532-533; De Forest Radio Co. v. General Electric Co., 283 U. S. 664,  283 U. S. 684-
685; Mackay Radio & Tel. Co. v. Radio Corp., 306 U. S. 86,  306 U. S. 94; Cameron Septic
Tank Co. v. Saratoga Springs, 159 F. 453, 462, 463. The Circuit Court of Appeals
thought that Bond did much more than discover a law of nature, since he made an
new and different composition of noninhibitive 

Page 333 U. S. 131

strains which contributed utility and economy to the manufacture and distribution
of commercial inoculants. But we think that that aggregation of species fell short of
invention within the meaning of the patent statutes.

Discovery of the fact that certain strains of each species of these bacteria can be
mixed without harmful effect to the properties of either is a discovery of their
qualities of noninhibition. It is no more than the discovery of some of the
handiwork of nature, and hence is not patentable. The aggregation of select strains
of the several species into one product is an application of that newly discovered
natural principle. But however ingenious the discovery of that natural principle may
have been, the application of it is hardly more than an advance in the packaging of
the inoculants. Each of the species of root nodule bacteria contained in the package
infects the same group of leguminous plants which it always infected. No species
acquires a different use. The combination of species produces no new bacteria, no
change in the six species of bacteria, and no enlargement of the range of their
utility. Each species has the same effect it always had. The bacteria perform in their
natural way. Their use in combination does not improve in any way their natural
functioning. They serve the ends nature originally provided, and act quite
independently of any effort of the patentee.

There is, of course, an advantage in the combination. The farmer need not buy six
different packages for six different crops. He can buy one package and use it for
any or all of his crops of leguminous plants. And, as respondent says, the packages
of mixed inoculants also hold advantages for the dealers and manufacturers by
reducing inventory problems and the like. But a product must be more than new
and useful to be patented; it must also satisfy the requirements of invention or
discovery. 

Page 333 U. S. 132

Cuno Engineering Corp. v. Automatic Devices Corp., 314 U. S. 84,  314 U. S. 90-91, and

cases cited; 35 U.S.C. § 31. R.S. 4886. The application of this newly discovered
natural principle to the problem of packaging of inoculants may well have been an
important commercial advance. But once nature's secret of the noninhibitive
quality of certain strains of the species of Rhizobium was discovered, the state of
the art made the production of a mixed inoculant a simple step. Even though it may
have been the product of skill, it certainly was not the product of invention. There is
no way in which we could call it such unless we borrowed invention from the
discovery of the natural principle itself. That is to say, there is no invention here
unless the discovery that certain strains of the several species of these bacteria are
noninhibitive, and may thus be safely mixed, is invention. But we cannot so hold
without allowing a patent to issue on one of the ancient secrets of nature now
disclosed. All that remains, therefore, are advantages of the mixed inoculants
themselves. They are not enough.

Since we conclude that the product claims do not disclose an invention or discovery
within the meaning of the patent statutes, we do not consider whether the other
statutory requirements contained in 35 U.S.C. § 31, R.S. § 4886, are satisfied.

Reversed.

[Footnote 1]

The product claims in suit are 1, 3, 4, 5, 6, 7, 8, 13, and 14. Claim 4 is illustrative of
the invention which is challenged. It reads as follows:

"An inoculant for leguminous plants comprising a plurality of selected mutually

noninhibitive strains of different species of bacteria of the genus Rhizobium, said
strains being unaffected by each other in respect to their ability to fix nitrogen in
the leguminous plant for which they are specific."

[Footnote 2]

The patent also contains process claims.

[Footnote 3]
The six well recognized species of bacteria and the corresponding groups (cross-
inculation groups) of leguminous plants are:

Rhizobium trifolii Red clover, crimson clover,

mammoth clover, alsike clover

Rhizobium meliloti Alfalfa, white or yellow sweet

clover

Rhizobium phaseoli Garden beans

Rhizobium leguminosarum Garden peas and vetch

Rhizobium lupini Lupines

Rhizobium japonicum Soybeans

[Footnote 4]

See  note 3 supra.

MR. JUSTICE FRANKFURTER, concurring.

My understanding of Bond's contribution is that, prior to his attempts, packages of

mixed cultures of inoculants presumably applicable to two or more different kinds
of legumes had from time to time been prepared, but had met with indifferent
success. The reasons for failure were not understood, but the authorities had
concluded that, in general, pure culture inoculants were alone reliable because
mixtures were ineffective due to the mutual inhibition 

Page 333 U. S. 133

of the combined strains of bacteria. Bond concluded that there might be special
strains which lacked this mutual inhibition, or were at all events mutually
compatible. Using techniques that had previously been developed to test efficiency
in promoting introgen fixation of various bacterial strains, Bond tested such
efficiency of various mixtures of strains. He confirmed his notion that some strains
were mutually compatible by finding that mixtures of these compatible strains gave
good nitrogen fixation in two or more different kinds of legumes, while other
mixtures of certain other strains proved mutually incompatible.

If this is a correct analysis of Bond's endeavors, two different claims of originality

are involved: (1) the idea that there are compatible strains, and (2) the experimental
demonstration that there were in fact some compatible strains. Insofar as the court
below concluded that the packaging of a particular mixture of compatible strains is
an invention, and, as such, patentable, I agree, provided not only that a new and
useful property results from their combination, but also that the particular strains
are identifiable and adequately identified. I do not find that Bond's combination of
strains satisfies these requirements. The strains by which Bond secured
compatibility are not identified, and are identifiable only by their compatibility.

Unless I misconceive the record, Bond makes no claim that Funk Brothers used the
same combination of strains that he had found mutually compatible. He appears to
claim that, since he was the originator of the idea that there might be mutually
compatible strains and had practically demonstrated that some such strains exist,
everyone else is forbidden to use a combination of strains, whether they are or are
not identical with the combinations that Bond selected and packaged together. It
was this claim that, as I understand it, the District Court 

Page 333 U. S. 134

found not to be patentable, but which, if valid, had been infringed.

The Circuit Court of Appeals defined the claims to

"cover a composite culture in which are included a plurality of species of bacteria

belonging to the general Rhizobium genus, carried in a conventional base."

161 F.2d 981, 983. But the phrase "the claims cover a composite culture" might
mean "a particular composite culture" or "any composite culture." The Circuit Court
of Appeals seems to me to have proceeded on the assumption that only "a
particular composite culture" was devised and patented by Bond, and then applies
it to "any composite culture" arrived at by deletion of mutually inhibiting strains,
but strains which may be quite different from Bond's composite culture.

The consequences of such a conclusion call for its rejection. Its acceptance would
require, for instance, in the field of alloys, that if one discovered a particular
mixture of metals which, when alloyed, had some particular desirable properties,
he could patent not merely this particular mixture, but the idea of alloying metals
for this purpose, and thus exclude everyone else from contriving some other
combination of metals which, when alloyed, had the same desirable properties. In
patenting an alloy, I assume that both the qualities of the product and its specific
composition would need to be specified. The strains that Bond put together in the
product which he patented can be specified only by the properties of the mixture.
The District Court, while praising Bond's achievement, found want of patentability.
The Circuit Court of Appeals reversed the judgment of the District Court by use of
an undistributed middle -- that the claims cover a "composite culture" -- in the
syllogism whereby they found patentability.

It only confuses the issue, however, to introduce such terms as "the work of nature"
and the "laws of nature." 

Page 333 U. S. 135

For these are vague and malleable terms infected with too much ambiguity and
equivocation. Everything that happens may be deemed "the work of nature," and
any patentable composite exemplifies in its properties "the laws of nature."
Arguments drawn from such terms for ascertaining patentability could fairly be
employed to challenge almost every patent. On the other hand, the suggestion that,
"if there is to be invention from such a discovery, it must come from the application
of the law of nature to a new and useful end" may readily validate Bond's claim.
Nor can it be contended that there was no invention because the composite has no
new properties other than its ingredients in isolation. Bond's mixture does, in fact,
have the new property of multi-service applicability. Multi-purpose tools, multi-
valent vaccines, vitamin complex composites are examples of complexes whose
sole new property is the conjunction of the properties of their components. Surely
the Court does not mean unwittingly to pass on the patentability of such products
by formulating criteria by which future issues of patentability may be prejudged. In
finding Bond's patent invalid, I have tried to avoid a formulation which, while it
would in fact justify bond's patent, would lay the basis for denying patentability to a
large area within existing patent legislation.

MR. JUSTICE BURTON, with whom MR. JUSTICE JACKSON concurs, dissenting.

On the grounds stated by the Circuit Court of Appeals, the judgment should be
affirmed.

When the patentee discovered the existence of certain strains of bacteria which,
when combined with certain other strains of bacteria, would infect two or more
leguminous plants without loss of their respective nitrogen-fixing efficiencies, and
utilized this discovery by segregating some of these mutually noninhibitive strains
and 

Page 333 U. S. 136

combining such strains into composite inoculants, we agree with MR. JUSTICE
FRANKFURTER that the combinations so produced satisfied the statutory
requirements of invention or discovery. [Footnote 2/1] These products were a
prompt and substantial commercial success, filling a long sought and important
agricultural need.

However, we do not agree that the patent issued for such products is invalid for
want of a clear, concise description of how the combinations were made and used.
The statutory requirement is that the inventor or discoverer --

"shall file in the Patent Office a written description of the same, and of the manner
and process of making, constructing, compounding, and using it, in such full, clear,
concise, and exact terms as to enable any person skilled in the art or science to
which it appertains, or with which it is most nearly connected, to make, construct,
compound, and use the same, and, in case of a machine, he shall explain the
principle thereof, and the best mode in which he has contemplated applying that
principle, so as to distinguish it from other inventions, and he shall particularly
point out and distinctly claim the part, improvement, or combination which he
claims as his invention or discovery. . . . No plant patent shall be declared invalid on
the ground of noncompliance with this section if the description is made as
complete as is reasonably possible. [Footnote 2/2]"

The completeness and character of the description must vary with the subject to be
described. Machines lend themselves readily to descriptions in terms of
mechanical 

Page 333 U. S. 137

principles and physical characteristics. On the other hand, it may be that a

combination of strains of bacterial species, which strains are distinguished from
one another and recognized in practice solely by their observed effects, can be
definable reasonably only in terms of those effects. In the present case, the
patentee has defined the combinations in terms of their mutually inhibiting and
noninhibiting effects upon their respective abilities to take free nitrogen from the
air and place it in the soil. These combinations were discovered by observation of
these effects -- they are in practice identified by these effects for the commercial
uses for which they are made. It is these effects that differentiate them from the
other bacteria heretofore generally identified only as common members of the
same species, and not commercially valuable for use with leguminous plants of
more than one of the groups named in the opinion of the Court. The identification
of the strains stated in the patent is that which the patentee used in making the
novel combinations of them that have been shown to be highly useful. There
appears to be no question but that the petitioners are now able to identify and use
the strains in the manner described in the patent. The record thus indicates that
the description is sufficiently full, clear, concise, and exact to enable persons skilled
in the art or science to which this discovery appertains or with which it is most
nearly connected to make, construct, compound, and use the same. There is no
suggestion as to how it would be reasonably possible to describe the patented
product more completely. The patent covers all composite cultures of bacterial
strains of the species described which do not inhibit each other's ability to fix
nitrogen. Bacteriologists skilled in the applicable art will not have difficulty in
selecting the noninhibitive strains by employing such standard and recognized
laboratory tests as are described in the application for this patent. 

Page 333 U. S. 138

The statute itself shows that Congress has recognized the inherent difficulty
presented. While this patent may not be technically a "plant patent" in the precise
sense in which that term is used in this Section, the references in the Section to the
differences in descriptions expected in mechanical patents and plant patents
obviously support the position here taken. An inventor should not be denied a
patent upon an otherwise patentable discovery merely because the nature of the
discovery defies description in conventional terms. Terms ordinarily unsuitable to
describe and distinguish products that are capable of description and distinction by
their appearance may be the most appropriate in which to describe and distinguish
other products that are not reasonably possible of identification by their
appearance, but which are easily identified by their effects when being sought for
or described by those skilled in the art.

[Footnote 2/1]

R.S. § 4886, as amended, 46 Stat. 376, 53 Stat. 1212, 35 U.S.C. § 31.

[Footnote 2/2]

R.S. § 4888, as amended, 38 Stat. 958, 959, 46 Stat. 376, 35 U.S.C. § 33.