## Facts

- William T. G. Morton sued the New York Eye Infirmary for damages, alleging infringement of a U.S. patent claiming an improvement in surgical operations by administering sulfuric ether vapor to render patients insensible to pain.
- The patent’s specification described inhalation of ether vapor in quantities sufficient to produce insensibility, with dosage and conditions left largely to the operator’s judgment and patient susceptibility.
- Sulfuric ether was a known chemical substance, and inhalation of vapors through the lungs was a known method of administering substances to the body.
- The alleged novelty was the recognition that ether inhalation, in sufficient quantity, could prevent conscious perception of pain during surgery.
- During a jury trial term, after some infringement evidence was introduced, the court halted evidence-taking due to doubts about validity, heard argument on the patent’s validity as a legal question, and ruled the patent invalid.
- Morton moved for a new trial, asking the court to reconsider whether the claimed subject matter was patentable.

## Issues

1. Whether a patent may validly claim the discovery that a known substance (sulfuric ether), administered by a known method (inhalation), produces a new or more complete effect (surgical insensibility to pain).
2. Whether, absent a new device or a definite, technically described process, a patentee can obtain an exclusive right over the newly discovered effect of a known agent.

## Decision

- The court denied the motion for a new trial and adhered to its prior ruling that the patent was void.
- The court held the claimed subject matter was not a patentable invention but a “naked discovery” of a new or more perfect effect of a known agent used by known means.
- Because the patent did not claim a novel apparatus or a specific, defined process beyond general administration by inhalation, it could not monopolize the discovered effect.

## Legal Principles

- Patent rights are purely statutory; any exclusive right depends on whether the claim falls within the statutory category of patentable “invention.”
- A discovery, in the strict sense, is not patentable; identifying a new effect or property of a known substance does not alone support a patent.
- A newly discovered principle or natural force is patentable only when embodied in a concrete application—such as a particular medium, mechanical contrivance, or definite process—through which it operates on the material world.
- The application of a well-known agent, by well-known means, to a new or more perfect use is insufficient to support a patent monopoly when the claim does not add a novel instrumentality or clearly defined method.

## Conclusion

The court concluded that the asserted ether anesthesia patent impermissibly sought exclusive control over a newly recognized effect of a known substance administered in a known way, without claiming a novel device or definite process, and therefore the patent was invalid and a new trial was denied.


Morton v. N.Y. Eye Infirmary, 17 F. Cas. 879 (C.C.S.D.N.Y. 1862)