Morton v. New York Eye Infirmary (17 F. 879, 1862 Dec 01)

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{1} It is only where the explorer has gone beyond the mere domain of discovery, and has laid hold of the new principle, force, or law, and connected it with some particular medium or mechanical contrivance by which, or through which, it acts on the material world, that he can secure the exclusive control of it under the patent laws. He then controls his discovery through the means by which he has brought it into practical action, or their equivalent, and only through them. It is then an invention, although it embraces a discovery. Sever the force or principle discovered from the means or mechanism through which he has brought it into the domain of invention, and it immediately falls out of that domain and eludes his grasp. It is then a naked discovery, and not an invention. ... The new force or principle brought to light must be embodied and set to work, and can be patented only in connection or combination with the means by which, or the medium through which, it operates.

[OBVIOUS] {2} This new or additional effect is not produced by any new instrument by which the agent is administered, nor by any different application of it to the body of the patient. It is simply produced by increasing the quantity of the vapor inhaled. And even this quantity is to be regulated by the discretion of the operator, and may vary with the susceptibilities of the patient to its influence. It is nothing more, in the eye of the law, than the application of a well-known agent, by well-known means, to a new or more perfect use, which is not sufficient to support a patent. ... That process, in connection with these vapors, is as old as the vapors themselves. We come, therefore, to the same point, only by a different road. We have, after all, only a new or more perfect effect of a well-known chemical agent, operating through one of the ordinary functions of animal life. ... In both cases there is only a naked discovery of a new effect, resulting from a well-known agent, working by a well-known process.


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