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SUPREME COURT OF THE UNITED STATES ON PATENTS

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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