Hotel Security Checking Co v Lorraine Co 160 F 467 (1908)

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Citation: Hotel Security Checking Co v Lorraine Co  160 F 467 (1908)

Jurisdiction: US Circuit Court of Appeals, Second Circuit

Facts: Hicks' patent claimed a "method of and means for cash-registering and account-checking" to prevent fraud on the part of waiters and cashiers in hotels and restaurants by means of numbered slips distinguishing each waiter, and a master table used to tally waiter activity. The defendants claimed lack of novelty and lack of invention.

Outcome: The patent was held to be void for an absence of novelty.

Ratio: The court sidestepped the issue of the patentability of business methods, finding instead a lack of novelty either in both the method described and the apparatus used to carry it out.

Relevance: The case was possibly the first business method patent case (predating Wait by at least 25 years). The case does contain a useful section on the nature of process claims, and suggests the need to find novelty in either the method itself, or the apparatus used to carry it out.


Ward J

At 469: "One of the definitions given by Webster of the word 'art' is as follows: 'The employment of means to accomplish some desired end; the adaption of things in the natural world to the uses of life; the application of knowledge or power to practical purposes.'"

At 469: "A system of transacting business disconnected from the means for carrying out the system is not, within the most liberal interpretation of the term, an art. Advice is not patentable. As this court said in Fowler v City of New York 121 Fed 747, 58 CCA 113: 'No mere abstraction, no idea, however brilliant, can be the subject of a patent irrespective of the means designed to give it effect.'

At 469: "It cannot be maintained that the physical means described [in this patent] -- the sheet and the slips, -- apart from the manner of their use, present any new and useful feature... In other words, if the 'art' described in the specification be old, the claims cannot be upheld because of novelty in the appliances used in carrying it out, -- for the reason that there is no novelty.

The patent seems to us to covery simply a system of bookkeeping made applicable to the conditions existing in hotels and restaurants. The fundamental principle of the system is as old as the art of bookkeeping".

At 470: "Admitting, arguendo, that a system such as Hicks describes is patentable, if absolutely novel, we are of the opinion that the improvements of Hicks over the [prior art] are such as would occur to anyone conversant with the business..."

At 472: "If at the time of Hicks' application, there had been no system of bookkeeping of any kind in restaurants, we would be confronted with the question whether a new and useful system of cash-registering and account-checking is such an art as is patentable under the statute. This question seems never to have been decided by a controlling authority and its decision is not necessary now unless we find that Hicks has made a contribution to the art which is new and useful. We are decidedly of the opinion that he has not..."