Posted by Anton Hughes on Wednesday, April 13, 2005 with No comments
Per Morton JAt 2:
"Pausing here, I would observe that the fact that the specification sets out a discovery, which is alleged to be of value in firefighting, does not of itself entitle the applicant to a patent; the proposition that discovery is one thing and invention another has been so often stated that I need not refer to authority; in order to obtain a patent that which the applicant claims must be a manner of new manufacture..."
" I have in considering cases arising under Section 93 of the Acts to apply to each of the claims before me the considerations stated by the Law Officer in the Compagnies Reunies des Glaces case (48 RPC 185), that is to say, I have first to ask the question: Is the claim for a manufacture? If that question is answered in the affirmative, I have to ask the further question: Is that manufacture new?"
"Now claims to methods or processes are in a different category and require different considerations, from claims to articles or apparatus. An article or an apparatus is prima facie a manufacture, but a method or process is not a manufacture unless it results in the production of some tangible vendible product. There are many ingenious methods or processes which can be stated in the form of a claim, but which result in no vendible product, and are accordingly incapable of protection by patent..."