In Re Hall.

Facts. Halls application for a patent was rejected because a doctoral thesis was available as a printed
publication more than one year prior to the applications effective date. Hall appealed, claiming that
there was no evidence that the dissertation was indexed properly in the library catalog before the
critical date and that, even if it were, the presence of a single catalogued thesis in one university library
does not establish sufficient accessibility of the publications teachings to those interested in the art and
who practice reasonable diligence.
Issue. Is an invention that is already in the public domain patentable?
(Baldwin, J.) No. An invention that is already in the public domain is no longer patentable. Here, the
dissertation had an effective date as prior art more than a year before the filing date of Halls first
application. Competent evidence of the general library practice may be relied upon to establish an
approximate time when a thesis becomes accessible. The dissertation was indexed and placed in the
main collection at Freiburg University in Germany. Affirmed.
Rosaire v. National Lead Co
Rosaire (Plaintiff) claimed to have invented a new method for oil prospecting and held two patents that
National Lead Co. (Defendant) had allegedly infringed. Defendant argued that the patents were
invalidated because Teplitz for Gulf Oil had known and used the alleged inventions extensively before
the date that Plaintiff first conceived the invention. Plaintiff claimed that Teplitzs work was a failed
experiment that was not published or patented and therefore did not give the public the benefit of the
experimental work. The trial court found that the work by Teplitz was a successful and adequate field
trial of the prospecting method involved and a reduction to practice of that method. The trial court
therefore held that the two patents involved in the litigation were invalid and void and that there had
been no infringement by National Lead (Defendant). Rosaire (Plaintiff) appealed
Issue. May an invention that was known or used by others in this country before the patentees
invention be patentable?
Held. (Tuttle, J.) No. An invention that was known or used by others in this country before the
patentees invention is not patentable. The lack of publication of Teplitzs work did not keep the alleged
infringer, National Lead (Defendant), from claiming prior use as a defense. The work was done openly
and in the ordinary course of the activities of the employer, a large producing company in the oil
industry, and therefore no further affirmative act was required to bring the work publics attention at
large. Affirmed.

City of Elizabeth vs. American Nicholson pavement co.

Facts. In 1954, Plaintiff patented a process for laying down wooden pavement that was cheaper, more
durable and safer than the norm. While developing the process, Plaintiff experimented at his own
expense, by laying down pavement on a public road in Boston in 1948. It was assumed that people and
horses would use it to travel on. The Defendant laid down wooden pavements very much like the
patented process. Plaintiff successfully brought an action for patent infringement, and the Supreme
Court agreed to review it.
Issue. Is an invention placed within the statutory meaning of "public use" by public experimentation?
No. An invention is not placed in "public use" by public experimentation. It is not enough that the public
know about the invention as public use or sale must occur. If the invention is in public use or sale prior
to the two years before filing as required by statute, the policy of abandonment requires that the
inventor loses all rights. However, street pavement cannot be experimented upon satisfactorily without
public use. The public had incidental use of Plaintiff"s pavement, but not "public use" within the
meaning of the statute. If Plaintiff had allowed Boston to lay payment down somewhere else in the city
or if he had sold it, it would have been different, but Plaintiff never let the invention be out of his
control. Public knowledge of the invention does not prevent the inventor from receiving a patent. It is
the public use or sale of the object that will prevent the patent. Affirmed.

Graham vs. John Deere Co.

Facts. Graham (Plaintiff) filed suit against Defendant claiming patent infringement on a device which
consisted of old mechanical elements that absorbed shock from plow shanks as they plowed through
rocky soil. In a prior case, The Fifth Circuit held that a patent was valid, ruling that a combination was
eligible for patent when it produced an "old result in a cheaper and otherwise more advantageous way."
The Eighth Circuit said the patent was invalid in the present case as there was no new result or
combination. Plaintiff petitioned for certiorari, and the Supreme Court granted the request in order to
resolve the conflict.
Issue. Is a case-by-case analysis required of the scope and content of the prior art, the differences
between the prior art and the claims at issue, as well as the level of ordinary skill in the applicable art to
determine the non-obviousness of a claimed invention as to prior art
Held. (Clark, J.) Yes. A case-by-case analysis of the scope and content of the prior art, the differences
between the prior art and the claims at issue, as well as the level of ordinary skill in the applicable art
are required to determine the non-obviousness of a claimed invention as to a prior art. The statutory
non-obviousness requirement was added by the Patent Act of 1952. However, this was just a
codification of the judicial precedent set forth in Hotchkiss v. Greenwood, 11 How. 248 (1851).
Although the term "non-obviousness" is used instead of "invention," in 103 of the Act, the general
level of improvement and originality needed in order to sustain a patent did not change. In order to
determine whether an invention is eligible for patent or is only an obvious improvement to a prior art
requires a case-by-case analysis of the criteria listed above. Commercial success, long-felt but unsolved
needs, and the failure of others are secondary considerations that may also be relevant in considering
the obviousness of an invention. Regarding the patent at issue in these cases, the differences between

the patented invention and prior art would have been obvious to one reasonably skilled in the art. The
patent is therefore invalid. Affirmed.

Incandescent Light Patent

The Electric Company (Plaintiff) filed suit against McKeesport (Defendant) to recover damages for the
infringement of letters patent issued to the Electro-Dynamic Light Company, assignee of Sawyer and
Man, for an electric light. The defendants justified their actions under certain patents issued to Thomas
Edison, denied their novelty and utility and claimed that they had been fraudulently and illegally
obtained. The circuit court held the patent to be invalid and dismissed. Plaintiff appealed.

ssue. Must a patent state specifically the composition of the materials to be combined to produce the
intended result and if they are not capable of an exact description, then is the inventor not entitled to a
patent.?
Held. (Brown, J.) Yes. A patent must state specifically the composition of the materials to be combined
to produce the intended result and if they are not capable of an exact description, then the inventor is
not entitled to a patent. The two main defenses to the patent are: (1) that it is defective upon its face in
attempting to monopolize use of all fibrous and textile materials for the purpose of electric illumination;
and (2) that Sawyer and Man were not actually the first to discover that these materials were better
adapted than mineral carbons for such use. With respect to the first defense, if the patentees had
discovered in the fibrous and textile substances a quality distinguishing them from other materials
adapting them particularly to incandescent conductors, such claim might prevail. Sawyer and Man
presumed they discovered in carbonized paper the best material for an incandescent conductor. Rather
than confining themselves to this material, they made a broad claim for every fibrous or textile material.
Rev. Stat. 4888 requires the application to include a written description of the device and the manner
and process of making and using it in full, clear, and concise terms. The purpose of this requirement is to
inform the public of what the patentee claims to hold a patent to. With the specification, however, only
gives the names of the substances used without stating the relative proportions, the court must declare
the patent void. If Sawyer and Man had discovered that a certain type of carbonized paper sufficed,
then their claim to all carbonized paper might not fail. However, the fact that such paper is a fibrous
material does not allow them to limit other inventors to the entire domain of such materials. The claims
of this patent are too indefinite. Affirmed.

The Gentry Gallery, Inc. v. The Berkline Corp

Plaintiff owns the "244 patent to a sectional sofa with two separate reclining seats facing the same
direction. Plaintiff filed suit claiming infringement of its patent by Defendant for making and selling
sofas with two recliners facing the same direction. The district court granted Defendant"s motion for
summary judgment of noninfringement, but denied its motions for invalidity and unenforceability. The
court determined that Defendant"s sofas did not infringe on Plaintiff"s patent because they did not
contain a fixed console.

Issue. May patent claims be broader than the supporting disclosure?

Held. (Lourie, J.) No. Patent claims may not be broader than the supporting disclosure, therefore a
narrow disclosure will limit extent of the claim. Defendant argued that the claimed consoles were not
described within the meaning of 112 because the patent only described the sofas having controls on
the console. This court agrees that the patent"s disclosure does not support claims if the recliner
control location is not on the console. Whether a specification complies with the written description
requirement of 112 is a question of fact to be reviewed for clear error on appeal. The patent
specification must "clearly allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed" in order to fulfill the written description requirement. This requirement is
met if the written description describes the invention including all claimed limitations. The scope of a
right to exclude may be limited by a narrow disclosure, but a claim does not need to be limited to a
preferred embodiment. In this case, the original disclosure clearly identifies the console as the only
possible location for the controls. Having the controls placed anywhere but on the consoles is outside
the stated purpose of the invention. Claims may not be broader than the supporting disclosure;
therefore, the extent of the claim will be limited by a narrow disclosure. It was in error that the district
court found that Plaintiff was entitled to claims where the recliner controllers are not located on the
console. Reversed.