United States v. Adams (383 U.S. 39, 1966 Feb 21)

Decision Parameters

Decisions It Cites Decisions That Cite It
Rules & Quotes
[OBVIOUS] {1} Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium. These long-accepted factors, when taken together, would, we believe, deter any investigation into such a combination as is used by Adams. This is not to say that one who merely finds new uses for old inventions by shutting his eyes to their prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness.

[OBVIOUS] {2} Nor are these the only factors bearing on the question of obviousness. We have seen that, at the time Adams perfected his invention, noted experts expressed disbelief in it. Several of the same experts subsequently recognized the significance of the Adams invention, some even patenting improvements on the same system. Fischbach et al., U.S. Patent No. 2,636,060 (1953). Furthermore, in a crowded art replete with a century and a half of advancement, the Patent Office found not one reference to cite against the Adams application.

Review Articles and Papers

Brief Comments and Observations

Brenner v. Manson (383 U.S. 519, 1966 Mar 21)

Decision Parameters

Graham v. Deere [383 U.S. 1, 1966]
Gottschalk v. Benson [409 U.S. 63, 1972]
[USEFUL] {1} Our starting point is the proposition, neither disputed nor disputable, that one may patent only that which is "useful". In Graham v. John Deere Co., ante, p. 383 U. S. 1 at 383 U. S. 5-10, we have reviewed the history of the requisites of patentability, and it need not be repeated here. Suffice it to say that the concept of utility has maintained a central place in all of our patent legislation, beginning with the first patent law in 1790 and culminating in the present law's provision ...

[USEFUL] {2} The basic quid pro quo contemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from an invention with substantial utility. Unless and until a process is refined and developed to this point - where specific benefit exists in currently available form - there is insufficient justification for permitting an applicant to engross what may prove to be a broad field. ... We find absolutely no warrant for the proposition that, although Congress intended that no patent be granted on a chemical compound whose sole "utility" consists of its potential role as an object of use-testing, a different set of rules was meant to apply to the process which yielded the unpatentable product.

[USEFUL] {3} This is not to say that we mean to disparage the importance of contributions to the fund of scientific information short of the invention of something "useful," or that we are blind to the prospect that what now seems without "use" may tomorrow command the grateful attention of the public. But a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion. "[A] patent system must be related to the world of commerce rather than to the realm of philosophy. . . .".

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