In Part I of this article, we briefly summarized how O’Reilly v. Morse was relied upon in the denial for rehearing in the recent case of AAM v. Neapco to assert that a patent claim to a method of making a motor vehicle axle failed to qualify as patent eligible subject matter under 35 U.S.C. § 101. The concurring opinions concluded that claim 22 of the patent at issue, U.S. 7,774,911, “merely invoked” natural law, and did not describe what had been obtained in the patent. Consequently, as in O’Reilly v. Morse, the claim was “too broad, and not warranted by law.” We also noted an apparent paradox in that, while claims cannot preempt natural law and must be supported by an enabling specification, they necessarily must be able to read on embodiments that incorporate later-developed technology. The key to resolving this dilemma is the notion of invention, which was the basis for the holding by the Court of the King’s Bench in Hornblower v. Boulton.
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