1. PATENTABLE SUBJECT
MATTER
“The Committee Reports accompanying the 1952 Act inform us
that Congress intended statutory subject matter to ‘include anything under the
sun that is made by man.’” Diamond v. Chakrabarty,
447 U.S.
303 (1980).
2. UTILITY
“[A] patent is not a hunting license. It is not a reward for the search, but
compensation for its successful conclusion.”
Brenner v. Manson, 383 U.S. 519 (1966).
3. NOVELTY AND
STATUTORY BARS
“But can it be said that the invention was in public
use? The use of an invention by the
inventor himself, or of any other person under his direction, by way of
experiment, and in order to bring the invention to perfection, has never been
regarded as such a use.” City of Elizabeth v. American
Nicholson Pavement Co., 97 U.S.
126 (1877).
4. NONOBVIOUSNESS
“Under §103, the scope and content of prior art are to be
determined; differences between the prior art and the claims at issue are to be
ascertained; and the level of ordinary skill in pertinent art resolved. Against this background, the obviousness and nonobviousness of the subject matter is determined. Such secondary consideration as commercial
success, long felt but unresolved needs, failure of others, etc., might be
utilized to give light to th circumstance surrounding
the origin of the subject matter sought to be patented. As indicia of nonobviousness,
these inquiries may have relevancy.” Graham v. John Deere Co., 383 U.S. 1 (1966).
5. DISCLOSURE AND
ENABLEMENT
“[I]f the eighth claim of the patentee can be maintained,
there was no necessity for any specification, further than to say that he had
discovered that, by using the motive power of electro-magnetism, he could print
intelligible characters at any distance… {T]his claim
can derive no aid from the specification file.
It is outside of [the specification], and the patentee claims beyond
it”. O’Reilly v.
Morse, 56 US (15 How.) 62 (1854).
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