Inre: Roslin Institute (Edinburgh) , 750 F.3d 1333 ( 2014 )

United States Court of Appeals
for the Federal Circuit
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IN RE ROSLIN INSTITUTE (Edinburgh)
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2013-1407
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Serial No.
09/225,233.
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Decided: May 8, 2014
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SALVATORE J. ARRIGO, Law Office of Salvatore Arrigo
and Scott Lee, LLP, of Washington, DC, argued for appel-
lant. With him on the brief was SCOTT M.K. LEE.
AMY J. NELSON, Associate Solicitor, United States Pa-
tent and Trademark Office, of Alexandria, Virginia,
argued for appellee. With her on the brief were NATHAN
K. KELLEY, Deputy General Counsel for Intellectual
Property Law and Solicitor, and THOMAS W. KRAUSE,
Associate Solicitor.
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Before DYK, MOORE, and WALLACH, Circuit Judges.
DYK, Circuit Judge.
The Roslin Institute of Edinburgh, Scotland (Roslin)
is the assignee of U.S. Patent Application No. 09/225,233
(the ’233 application) and appeals from a final decision of
2 IN RE: ROSLIN INSTITUTE (EDINBURGH)
the Patent Trial and Appeal Board (Board). The Board
held that all of Roslin’s pending claims—claims 155-159
and 164—were unpatentable subject matter under 35
U.S.C. § 101. The Board also rejected Roslin’s claims as
anticipated and obvious under 35 U.S.C. §§ 102 and 103.
We affirm the Board’s rejection of the claims under § 101.
BACKGROUND
On July 5, 1996, Keith Henry Stockman Campbell
and Ian Wilmut successfully produced the first mammal
ever cloned from an adult somatic cell: Dolly the Sheep. A
clone is an identical genetic copy of a cell, cell part, or
organism.
The cloning method Campbell and Wilmut used to
create Dolly constituted a breakthrough in scientific
discovery. Known as somatic cell nuclear transfer, this
process involves removing the nucleus of a somatic cell
and implanting that nucleus into an enucleated (i.e.,
without a nucleus) oocyte. A somatic cell is any body cell
other than gametes (egg or sperm). An oocyte is a female
gametocyte (an egg cell prior to maturation), and a nucle-
us is the organelle that holds a cell’s genetic material (its
DNA). Often referred to as “adult” cells, somatic cells are
differentiated, i.e., they are specialized to perform specific
functions. For example, liver, heart, and muscle cells are
all differentiated, somatic cells.
To create Dolly, Campbell and Wilmut fused the nu-
cleus of an adult, somatic mammary cell with an enucle-
ated oocyte. Specifically, Campbell and Wilmut found that
if the donor, somatic cell is arrested in the stage of the cell
cycle where it is dormant and non-replicating (the quies-
cent phase) prior to nuclear transfer, the resulting fused
cell will develop into a reconstituted embryo. Once the
nucleus of a somatic, donor cell is removed, that nucleus
is fused with an oocyte, which develops into an embryo.
The embryo can then be implanted into a surrogate
mammal, where it develops into a baby animal. The
IN RE: ROSLIN INSTITUTE (EDINBURGH) 3
resulting cloned animal is an exact genetic replica of the
adult mammal from which the somatic cell nucleus was
taken.
Campbell and Wilmut obtained a patent on the so-
matic method of cloning mammals, which has been as-
signed to Roslin. See U.S. Patent No. 7,514,258 (the ’258
patent). The ’258 patent is not before us in this appeal.
Instead, the dispute here concerns the Patent and Trade-
mark Office’s (PTO) rejection of Campbell’s and Wilmut’s
claims to the clones themselves, set forth in the ’233
application, titled Quiescent Cell Populations for Nuclear
Transfer. 1
The ’233 application claims the products of Campbell’s
and Wilmut’s cloning method: cattle, sheep, pigs, and
goats. Claims 155 and 164 are representative:
155. A live-born clone of a pre-existing, non-
embryonic, donor mammal, wherein the mammal
is selected from cattle, sheep, pigs, and goats.
164. The clone of any of claims 155-159, wherein
the donor mammal is non-foetal.
J.A. 4. As the Board described, “[c]laims 156-159 depend
from claim 155 and further specify that the claimed clones
are limited to clones of cattle, sheep, pigs, and goats,
respectively.” J.A. 4.
On November 10, 2008, the examiner issued a non-
final rejection of Campbell’s and Wilmut’s patent claims
1 This application was previously before the Board
in Ex Parte Campbell, No. 2007-1617 (B.P.A.I. Jan. 30,
2008). In Ex Parte Campbell, the Board examined the ’233
application as well as a companion patent application,
U.S. Patent Application No. 09/658,862 (the ’862 applica-
tion). The ’862 application was abandoned on September
16, 2008, and is not at issue in the present appeal.
4 IN RE: ROSLIN INSTITUTE (EDINBURGH)
because she found that they were directed to non-
statutory subject matter under 35 U.S.C. § 101 as well as
anticipated and obvious under §§ 102 and 103. On Febru-
ary 7, 2013, the Board affirmed the examiner’s rejection of
all of Campbell’s and Wilmut’s claims. Although the
Board acknowledged that the claimed clones “may be
called a composition of matter or a manufacture” as
required by § 101, J.A. 18, it concluded that the claimed
subject matter was ineligible for patent protection under
§ 101 because it constituted a natural phenomenon that
did not possess “markedly different characteristics than
any found in nature.” J.A. 21.
The Board also affirmed the examiner’s finding that
Campbell’s and Wilmut’s claimed subject matter was
anticipated by and obvious in light of the relevant prior
art under 35 U.S.C. §§ 102 and 103. Specifically, the
Board explained that “‘[w]here . . . the claimed and prior
art products are identical or substantially identical, or are
produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior
art products do not necessarily or inherently possess the
characteristics of his claimed product.’” J.A. 21 (quoting
In re Best, 562 F.2d 1252, 1255 (CCPA 1977)) (alteration
and omission in original). The Board then held that the
claimed clones were anticipated and obvious because they
were indistinguishable from clones produced through
prior art cloning methods, i.e., embryotic nuclear transfer
and in vitro fertilization.
We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(A). We review the Board’s legal determina-
tions de novo, and its factual findings for substantial
evidence. In re Baxter Int’l, Inc., 678 F.3d 1357, 1361
(Fed. Cir. 2012). Section 101 patent eligibility is a ques-
tion of law that we review de novo. Bancorp Servs., LLC v.
Sun Life Assurance Co. of Can., 687 F.3d 1266, 1273 (Fed.
Cir. 2012).
IN RE: ROSLIN INSTITUTE (EDINBURGH) 5
DISCUSSION
I
An inventor may obtain a patent for “any new and
useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.” 35
U.S.C. § 101; see Bilski v. Kappos, 130 S. Ct. 3218, 3225
(2010). An invention that falls within one of these catego-
ries of patentable subject matter may still be ineligible for
patent protection if it meets one of three exceptions. Laws
of nature, natural phenomena, and abstract ideas are not
eligible for patent protection. See Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
(2012); Bilski, 130 S. Ct. at 3225; Diamond v.
Chakrabarty, 447 U.S. 303, 309 (1980); Gottschalk v.
Benson, 409 U.S. 63, 67 (1972); O’Reilly v. Morse, 56 U.S.
(15 How.) 62, 112-20 (1854).
Even before the Supreme Court’s recent decision in
Association for Molecular Pathology v. Myriad Genetics,
Inc., 133 S. Ct. 2107 (2013), the Court’s opinions in
Chakrabarty and Funk Bros. Seed Co. v. Kalo Inoculant
Co., 333 U.S. 127 (1948), made clear that naturally occur-
ring organisms are not patentable.
In Funk Bros., the Supreme Court considered a patent
that claimed a mixture of naturally occurring strains of
bacteria that helped leguminous plants extract nitrogen
from the air and fix it in soil. 333 U.S. at 128-29. The
Court concluded that this mixture of bacteria strains was
not patent eligible because the patentee did not alter the
bacteria in any way. Id. at 132 (“[T]here is no invention
here unless the discovery that certain strains of the
several species of these bacteria are non-inhibitive 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.”). Critically, in
Funk Bros., the Court explained:
6 IN RE: ROSLIN INSTITUTE (EDINBURGH)
[w]e do not have presented the question whether
the methods of selecting and testing the non-
inhibitive strains are patentable. We have here
only product claims. [The patentee] does not cre-
ate a state of inhibition or of non-inhibition 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 phe-
nomena of nature. The qualities of these bacteria,
like the heat of the sun, electricity, or the quali-
ties 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 exclu-
sively to none.
Id. at 130 (citation omitted). Thus, while the method of
selecting the strains of bacteria might have been patent
eligible, the natural organism itself—the mixture of
bacteria—was unpatentable because its “qualities are the
work of nature” unaltered by the hand of man. Id.
In Chakrabarty, the Court clarified the scope of Funk.
The patent at issue in Chakrabarty claimed a genetically
engineered bacterium that was capable of breaking down
various components of crude oil. 447 U.S. at 305. The
patent applicant created this non-naturally occurring
bacterium by adding four plasmids to a specific strain of
bacteria. Id. at 305 n.1. Overturning the Board’s rejec-
tions, the Court held that the modified bacterium was
patentable because it was “new” with “markedly different
characteristics from any found in nature and one having
the potential for significant utility.” Id. at 310 (emphasis
added). As the Court explained, the patentee’s “discovery
is not nature’s handiwork, but his own.” Id.
Accordingly, discoveries that possess “markedly dif-
ferent characteristics from any found in nature,” id., are
eligible for patent protection. In contrast, any existing
organism or newly discovered plant found in the wild is
IN RE: ROSLIN INSTITUTE (EDINBURGH) 7
not patentable. Id. at 309; see also In re Beineke, 690 F.3d
1344, 1352 (Fed. Cir. 2012), cert. denied, 133 S. Ct. 1243
(2013) (holding that a newly discovered type of plant is
not eligible for plant patent protection, in part, because
such a plant was not “in any way the result of [the patent
applicant’s] creative efforts or indeed anyone’s creative
efforts.”).
More recently, in Myriad, the Court held that claims
on two naturally occurring, isolated genes (BRCA1 and
BRCA2), which can be examined to determine whether a
person may develop breast cancer, were invalid under
§ 101. 133 S. Ct. at 2112-13, 2117-18. The Supreme Court
concluded that the BRCA genes themselves were un-
patentable products of nature.
While Roslin does not dispute that the donor sheep
whose genetic material was used to create Dolly could not
be patented, Roslin contends that copies (clones) are
eligible for protection because they are “the product of
human ingenuity” and “not nature’s handiwork, but
[their] own.” Appellant’s Br. 17, 18. Roslin argues that
such copies are either compositions of matter or manufac-
tures within the scope of § 101. However, Dolly herself is
an exact genetic replica of another sheep and does not
possess “markedly different characteristics from any
[farm animals] found in nature.” Chakrabarty, 447 U.S. at
310; see Reply Br. 13 (stating that “the clones are genetic
copies”). Dolly’s genetic identity to her donor parent
renders her unpatentable.
In Myriad, the Court concluded that “isolated,” natu-
rally occurring DNA strands are not eligible for patent
protection. 133 S. Ct. at 2111. Here, as in Myriad, Roslin
“did not create or alter any of the genetic information” of
its claimed clones, “[n]or did [Roslin] create or alter the
genetic structure of [the] DNA” used to make its clones.
Myriad, 133 S. Ct. at 2116. Instead, Roslin’s chief innova-
tion was the preservation of the donor DNA such that the
8 IN RE: ROSLIN INSTITUTE (EDINBURGH)
clone is an exact copy of the mammal from which the
somatic cell was taken. Such a copy is not eligible for
patent protection.
Related areas of Supreme Court patent case law rein-
force this conclusion. For example, Supreme Court deci-
sions regarding the preemptive force of federal patent law
confirm that individuals are free to copy any unpatentable
article, such as a live farm animal, so long as they do not
infringe a patented method of copying. Sears Roebuck &
Co. v. Stiffel Co. clarified that a state may not “prohibit
the copying of [an] article itself or award damages for
such copying” when that article is ineligible for patent
protection. 376 U.S. 225, 232-33 (1964) (citing G. Ricordi
& Co. v. Haendler, 194 F.2d 914, 916 (2d Cir. 1952)). In
Sears, the question was whether the defendant, Sears
Roebuck & Co., could be held liable under state law for
copying a lamp design whose patent protection had ex-
pired. Id. at 225-26. The Court explained that “when the
patent expires the monopoly created by it expires, too,
and the right to make the article—including the right to
make it in precisely the shape it carried when patented—
passes to the public.” Id. at 230 (citing Kellogg Co. v. Nat’l
Biscuit Co., 305 U.S. 111, 120-22 (1938) and Singer Mfg.
Co. v. June Mfg. Co., 163 U.S. 169, 185 (1896)). The Court
further clarified that “[a]n unpatentable article, like an
article on which the patent has expired, is in the public
domain and may be made and sold by whoever chooses to
do so.” Id. at 231; see also Bonito Boats, Inc. v. Thunder
Craft Boats, Inc., 489 U.S. 141 (1989). Roslin’s claimed
clones are exact genetic copies of patent ineligible subject
matter. 2 Accordingly, they are not eligible for patent
protection.
2 The ’233 patent application clarifies that
“[a]nimals produced by transfer of nuclei from a source of
IN RE: ROSLIN INSTITUTE (EDINBURGH) 9
II
However, Roslin argues that its claimed clones are pa-
tent eligible because they are distinguishable from the
donor mammals used to create them. First, Roslin con-
tends that “environmental factors” lead to phenotypic
differences that distinguish its clones from their donor
mammals. A phenotype refers to all the observable char-
acteristics of an organism, such as shape, size, color, and
behavior, that result from the interaction of the organ-
ism’s genotype with its environment. A mammal’s pheno-
type can change constantly throughout the life of that
organism not only due to environmental changes, but also
the physiological and morphological changes associated
with aging.
Roslin argues that environmental factors lead to phe-
notypic differences between its clones and their donor
mammals that render their claimed subject matter pa-
tentable. However, these differences are unclaimed. See
J.A. 17. Indeed, the word “cloned” in the pending claims
connotes genetic identity, and the claims say nothing
about a phenotypic difference between the claimed subject
matter and the donor mammals. Moreover, Roslin
acknowledges that any phenotypic differences came about
or were produced “quite independently of any effort of the
patentee.” Funk Bros., 333 U.S. at 131; see id. at 130
(“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.”); Chakrabarty,
447 U.S. at 310 (“Here, by contrast, the patentee has
produced a new bacterium with markedly different char-
acteristics from any found in nature and one having the
potential for significant utility. His discovery is not na-
ture’s handiwork, but his own; accordingly it is patentable
genetically identical cells share the same nucleus,” J.A.
101, i.e., they share the same nuclear genome.
10 IN RE: ROSLIN INSTITUTE (EDINBURGH)
subject matter under § 101.”). Contrary to Roslin’s argu-
ments, these phenotypic differences do not confer eligibil-
ity on their claimed subject matter. Any phenotypic
differences between Roslin’s donor mammals and its
claimed clones are the result of “environmental factors,”
Appellant’s Br. 21, uninfluenced by Roslin’s efforts. 3
Second, Roslin urges that its clones are distinguisha-
ble from their original donor mammals because of differ-
ences in mitochondrial DNA, which originates from the
donor oocyte rather than the donor nucleus. Mitochondria
are the organelles (cellular bodies) that produce the
energy eukaryotic cells need to function. Mitochondria
possess their own DNA, which is distinct from the DNA
housed in the cell’s nucleus. In the cloning process, the
clone inherits its mitochondrial DNA from its donor
oocyte, instead of its donor somatic cell. Therefore, Dolly’s
mitochondrial DNA came from the oocyte used to create
her, not her donor mammary cell. Roslin argues that this
difference in mitochondrial DNA renders its product
claims patent eligible.
But any difference in mitochondrial DNA between the
donor and cloned mammals is, too, unclaimed. Further-
more, Roslin’s patent application does not identify how
differences in mitochondrial DNA influence or could
3 Roslin itself explained that “[c]loned offspring
may vary phenotypically due to environment.” Appellant’s
Br. 3; see also id. (“[E]nvironmental factors, such as
uterine environment, generate differences that prevent a
clone and its parent from being phenotypically identi-
cal. . . . [Therefore,] [a] clone that contains the same set of
chromosomes as a single parental mammal can be distin-
guished from the parental mammal due to these environ-
mental influences.”), 21 (“[E]nvironmental influences . . .
result in phenotypic differences.”), 23.
IN RE: ROSLIN INSTITUTE (EDINBURGH) 11
influence the characteristics of cloned mammals. As the
Board found below,
[a]s for the influence of the oocyte into which the
donor nucleus is transferred, the [’]233 Specifica-
tion teaches that “[a]nimals produced by transfer
of nuclei from a source of genetically identical
cells share the same nucleus, but are not strictly
identical as they are derived from different oo-
cytes. The significance of this different origin is
not clear, but may affect commercial traits.” The
Specification cautions further that “[i]t re-
mains . . . to consider whether it is possible or
necessary in specific situations to consider the se-
lection of oocytes.” Thus . . . the Specification does
not disclose any systematic differences in the
clones that arise from the capture of the recipient
oocyte.
J.A. 12 (third, fourth, and fifth alterations in original)
(citations omitted). There is nothing in the claims, or even
in the specification, that suggests that the clones are
distinct in any relevant way from the donor animals of
which they are copies. The clones are defined in terms of
the identity of their nuclear DNA to that of the donor
mammals. To be clear, having the same nuclear DNA as
the donor mammal may not necessarily result in patent
ineligibility in every case. Here, however, the claims do
not describe clones that have markedly different charac-
teristics from the donor animals of which they are copies.
Finally, Roslin argues that its clones are patent eligi-
ble because they are time-delayed versions of their donor
mammals, and therefore different from their original
mammals. But this distinction cannot confer patentabil-
ity. As the Board noted, “[t]he difficulty with the time-
delayed characteristic is that it is true of any copy of an
original.” J.A. 18. Thus, we affirm the Board’s finding that
12 IN RE: ROSLIN INSTITUTE (EDINBURGH)
Roslin’s clones are unpatentable subject matter under
§ 101.
AFFIRMED