## Facts

- Murphy and other inventors (“et al.”) filed a U.S. patent application directed to a slot machine commonly known as a “one-armed bandit.”
- The claimed machine was presented as a device intended for gambling use.
- A PTO examiner rejected the application based on the view that gambling could be harmful to public morals and therefore the invention lacked the “utility” required by 35 U.S.C. § 101.
- The examiner’s rejection was framed as a moral or public-policy objection rather than an assertion that the machine failed to operate or lacked a practical function.
- The applicants took an ex parte appeal to the United States Patent and Trademark Office Board of Appeals.

## Issues

1. Whether an otherwise operable invention may be rejected under 35 U.S.C. § 101 solely because its intended use is gambling and is considered immoral or contrary to public policy.
2. Whether “utility” in § 101 turns on functional, practical usefulness rather than moral approval of an invention’s purpose.

## Decision

- The Board reversed the examiner’s rejection.
- The Board held that the PTO may not deny patentability on § 101 utility grounds merely because the invention is designed for gambling or is thought to offend public morals.
- The Board treated the slot machine’s practical, real-world function as sufficient to meet the utility requirement, absent a specific statutory prohibition on such subject matter.

## Legal Principles

- The § 101 utility requirement addresses whether an invention is operable and provides a specific, practical use; it is not a general license to refuse patents based on moral judgments.
- Moral disapproval of an invention’s intended use, standing alone, does not establish a lack of utility when the invention works and has a recognizable use.
- Public-policy limits on patent eligibility must come from the patent statute (or other controlling legal authority), not from examiner discretion that adds extra conditions to § 101.
- A commercially functional device is not “nonuseful” under § 101 simply because some members of the public view the device’s use as undesirable.

## Conclusion

*Ex parte Murphy et al.* stands for the proposition that the PTO Board of Appeals would not sustain a § 101 “moral utility” rejection of a slot-machine application based only on the belief that gambling is harmful to public morals; where the invention operates and has a practical use, moral objections alone are not enough to deny utility.


Ex parte Murphy et al., 200 U.S.P.Q. 801 (1977)