Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 8 (1998)

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62

PFAFF v. WELLS ELECTRONICS, INC.

Opinion of the Court

electrical condition that must be created to accomplish his purpose, and he also described, with sufficient precision to enable one of ordinary skill in such matters to make it, a form of apparatus which, if used in the way pointed out, would produce the required effect, receive the words, and carry them to and deliver them at the appointed place. The particular instrument which he had, and which he used in his experiments, did not, under the circumstances in which it was tried, reproduce the words spoken, so that they could be clearly understood, but the proof is abundant and of the most convincing character, that other instruments, carefully constructed and made exactly in accordance with the specification, without any additions whatever, have operated and will operate successfully. A good mechanic of proper skill in matters of the kind can take the patent and, by following the specification strictly, can, without more, construct an apparatus which, when used in the way pointed out, will do all that it is claimed the method or process will do . . . .

"The law does not require that a discoverer or inventor, in order to get a patent for a process, must have succeeded in bringing his art to the highest degree of perfection. It is enough if he describes his method with sufficient clearness and precision to enable those skilled in the matter to understand what the process is, and if he points out some practicable way of putting it into operation." The Telephone Cases, 126 U. S. 1, 535-536 (1888).10

When we apply the reasoning of The Telephone Cases to the facts of the case before us today, it is evident that Pfaff

10 This Court has also held a patent invalid because the invention had previously been disclosed in a prior patent application, although that application did not claim the invention and the first invention apparently had not been reduced to practice. Alexander Milburn Co. v. Davis-Bournonville Co., 270 U. S. 390, 401-402 (1926).

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