Alexander Milburn Company v. Davis-Bournonville Company

In Alexander Milburn Company v. Davis-Bournonville Company, 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651 (1926) the Supreme Court reversed a decision of ours - affirming one of mine - that the issue of prior invention was different from that of anticipation, because the invention of a patent lay in the claims; and that no one could be an inventor "prior" to another, who had not claimed the combination of elements contained in the claims in suit. Therefore the issue of "prior invention," we thought, must always be determined by a comparison of claims - some latitude of interpretation being allowed. The Supreme Court thought otherwise; it considered all those combinations to be inventions of the earlier inventor, which could be abstracted from his disclosure, regardless of whether he had selected them as combinations at all.