Bill Goodwine's Wiki - User contributions [en]

Here in list of arguments in Quanta

2011-04-29T04:06:31Z

901281608:

Post a link to your summary of the brief you read here.

[[Quanta Brief Summary 901330223]]

[[901349446 Quanta Brief]]

[[Quanta Brief Summary 901471466]]

[[Quanta Brief Summary 901422128]]

[[Quanta Brief Summary Jacob Marmolejo]]

[[Homework 8 (due Friday 28)~jnosal | Quanta Brief Summary 901438174]]

[[Mitros: Quanta Brief]]

[[Zahm Homework 31: Quanta Brief]]

[[901419437 Quanta v. LGE Brief Summary]]

[[Quanta Brief 901437068]]

[[901281608: Quanta Brief]]

901281608: Quanta Brief

2011-04-29T04:05:27Z

901281608: Created page with "Brief of Various Law Professors as Amici Curiae in Support of the Respondent. The amici state that they have no stake in the outcome of this case, but are interested in ensur..."

Brief of Various Law Professors as Amici Curiae in Support of the Respondent.

The amici state that they have no stake in the outcome of this case, but are interested in ensuring that patent law develops in a way that best promotes innovation and competition. The amici argue for the Supreme Court to reject the petitioner's request for a new standard to overturn the first sale doctrine. They argue the first sale doctrine is primarily a gap filling default rule that implies into contracts, where not explicitly stated, certain rights for the buyer. The overturning of present doctrine would have the effect of discouraging innovation and interfere with efforts to establish rights via contract. This would harm third parties unaware of licensing and their protection from this has been firmly legally established. The freedom of corporations to make contracts is an essential feature of business and should remain legally binding to promote industry and innovation.

The first sale doctrine complies with legal precedent, but under this, express license contracts should not trigger the first sale defense. The precedent dates back to Adams v. Burke (1873) which established the doctrine of first sale, but also mentioned the possibility of opting out of this through a mutual contract connected to the sale. Furthermore, this has be reinforced and maintained through many Supreme Court cases as well as patent law. Thus, unless contrary to positive law, there is no room for the law to imply terms that are contrary to a legal, express contract that both parties have agreed to. Furthermore, the specific terms of this particular contract were reasonable and justified because of the circumstances of electronic hardware sales. The overturning of this case could potentially lead to third parties abusing this law to assert licenses for their own profit. If precedent were overturned, the courts could be flooded with suits by buyers of previously limited-licensed patents claiming additional rights. Furthermore, contacts such as these are essential in resolving disputes and the reversal of this policy would greatly complicate this matter.

US v. Univis Lens does not support the broad interpretation of the petitioner. The Univis case was substantially different as the contract violated anti-trust laws, which was the central issue of the case, but that issue is not present here. The US Patent Act of 1952 supports the contract-based view of the first sale doctrine and was in fact one of the central motivations behind it.

901281608: Honeywell-Sundstrand Case

2011-04-06T15:33:29Z

901281608:

The Supreme Court should rule in favor of Honeywell International, Inc. Honeywell is able to adequately demonstrate that the system for managing surges in APUs, that was constructed by Sundstrand was unforeseeable by Honeywell. Because of this, we argue that the Supreme Court acknowledges that Sundstrand infringed claims 8, 10, 11, 19 and 23 of the Patent no. 4,380,893 and claim 4 of Patent no. 4,428,194, both of which are the property of Honeywell.

Honeywell's patent, which deals with a airflow control system in aircraft auxiliary power units has been shown to be more efficient than previous other models through its establishment of a 'set point' that governs the opening and closing of inlet guide vanes, IGVs. Honeywell was justified and reasonable in their decision to rewrite a certain number of their dependent claims into independent claims to include the necessary mention of the IGVs. These additional claims are beneficial as they add additional detail to the patent and better explain the patent's functioning. This is contrary to the goals of many patentees, which is to make a patent application as broad as possible and thus block a wide variety of competitor’s products. The reasoning for this amendment was to overcome prior art, which disclosed a surge control system, and this is unrelated to the IGVs. This is adequate evidence that countered the presumption of persecution history estoppel under the foreseeability and tangential relation criterion. If estoppel were applied in this case, it would be overreaching and fundamentally run counter to the purpose of estoppel, that is, to hold the inventor to the claims of his patent. In 1982, the year in which this system was developed by Honeywell, surge control systems did not use IGV orientation to determine the flow characteristic for use in surge control. The development by Sundstrand occurred 10 years after Honeywell's amendment, and this amount of time is significant in demonstrating unforeseeability. On such bases, Honeywell can rebut the presumption of surrender of all equivalents.

As a result of this rebuttal, it therefore follows that Sundstrand, which manufactures the APS 3200, infringed Honeywell's patent rights with their manufacture of a device that 'performs substantially the same function in substantially the same manner'. The use of the DELPQP is essentially the same in form and function to Honeywell's use of a 'set point' that the two can be judged as equivalent under the well established doctrine of equivalence. This opinion was also given by the jury, which in 2001 decided in favor of Honeywell and correctly awarded them 45 million dollars. The court also sided with Honeywell on the issue of the rewriting of their claims, noting that the change of claims from dependent to independent created a presumption of prosecution history estoppel. There is no need for a specific amendment to narrow claims in this matter as the lack of this does not imply unlimited surrender, as reasonable inferences maybe made.

901281608: Honeywell-Sundstrand Case

2011-04-06T03:03:40Z

901281608:

The Supreme Court should rule in favor of Honeywell International, Inc. Honeywell is able to adequately demonstrate that the device constructed by Sundstrand was unforeseeable. Because of this, we argue that the Supreme Court acknowledges that Sundstrand infringed claims 8, 10, 11, 19 and 23 of the Patent no. 4,380,893 and claim 4 of Patent no. 4,428,194, both of which are the property of Honeywell.

Honeywell's patent, which deals with a airflow control system in aircraft auxiliary power units has been shown to be more efficient than previous other models through its establishment of a 'set point' that governs the opening and closing of inlet guide vanes. Honeywell was justified and reasonable in their decision to rewrite a certain number of their dependent claims into independent claims to include the necessary mention of the IGVs. These additional claims are beneficial as they add additional detail to the patent and better explain the patent's functioning. This is contrary to the goals of many patentees, that is, to make a patent as broad as possible and thus block a wide variety of competitor’s products. The reasoning for this amendment was to overcome prior art, which disclosed a surge control system, and this is unrelated to the IGVs. This is adequate evidence that countered the presumption of persecution history estoppel under the foreseeability and tangential relation criterion. If estoppel were applied in this case, it would be an overreaching claim and fundamentally run counter to the purpose of estoppel, that is, to hold the inventor to the claims of his patent. In 1982, the year in which this system was developed by Honeywell, surge control systems did not use IGV orientation to determine the flow characteristic for use in surge control, which is a vital part of this patent. The development by Sundstrand occurred 10 years after Honeywell's amendment, and this amount of time is significant in demonstrating unforeseeability. On such bases, Honeywell can rebut the presumption of surrender of all equivalents.

Sundstrand, which manufactures the APS 3200, infringed Honeywell's patent rights with their manufacture of a device that 'performs substantially the same function in substantially the same manner'. The use of the DELPQP is essentially the same in form and function to Honeywell's use of a 'set point' that the two can be judged as equivalent under the well established doctrine of equivalence. This opinion was also given by the jury, which in 2001 decided in favor of Honeywell and correctly awarded them 45 million dollars. The court also sided with Honeywell on the issue of the rewriting of their claims, noting that the change of claims from dependent to independent created a presumption of prosecution history estoppel. There is no need for a specific amendment to narrow claims in this matter as the lack of this does not imply unlimited surrender, as reasonable inferences maybe made.

901281608: Honeywell-Sundstrand Case

2011-04-04T15:40:39Z

901281608: Created page with " The Supreme Court should rule in favor of Honeywell International, Inc. Honeywell is able to adequately demonstrate that the device constructed by Sundstrand was unforeseeable. ..."

The Supreme Court should rule in favor of Honeywell International, Inc. Honeywell is able to adequately demonstrate that the device constructed by Sundstrand was unforeseeable. Because of this, we argue that the Supreme Court acknowledges that Sundstrand infringed claims 8, 10, 11, 19 and 23 of the Patent no. 4,380,893 and claim 4 of Patent no. 4,428,194, both of which are the property of Honeywell.

Honeywell's patent, which deals with a airflow control system in aircraft auxiliary power units has been shown to be more efficient than previous other models through its establishment of a 'set point' that governs the opening and closing of inlet guide vanes. Honeywell was justified and reasonable in their decision to rewrite a certain number of their dependent claims into independent claims to include the necessary mention of the IGVs. These additional claims are beneficial as they add additional detail to the patent and better explain the patent's functioning. The reasoning for this amendment was to overcome prior art, which disclosed a surge control system, and this is unrelated to the IGVs. This is adequate evidence that countered the presumption of persecution history estoppel under the foreseeability and tangential relation criterion. In 1982, the year in which this system was developed by Honeywell, surge control systems did not use IGV orientation to determine the flow characteristic for use in surge control, which is a vital part of this patent. The development by Sundstrand occurred 10 years after Honeywell's amendment, and this amount of time is significant in demonstrating unforeseeability.

Sundstrand, which manufactures the APS 3200, infringed Honeywell's patent rights with their manufacture of a device that 'performs substantially the same function in substantially the same manner'. The use of the DELPQP is essentially the same in form and function to Honeywell's use of a 'set point' that the two can be judged as equivalent under the well established doctrine of equivalence. This opinion was also given by the jury, which in 2001 decided in favor of Honeywell and correctly awarded them 45 million dollars. The court also sided with Honeywell on the issue of the rewriting of their claims, noting that the change of claims from dependent to independent created a presumption of prosecution history estoppel.

Doctrine of Equivalents Case List

2011-04-01T18:43:57Z

901281608:

Add your case to the list with a one-paragraph (approximately 250 words) summary of the facts at issues, i.e., "an umbrella is or is not equivalent to a parasol because..."

Please put the cases in chronological order. If two are from the same year, then put them in alphabetical order. Also put your name, your login name or NDID number with your case. Use the following for a template.

* Goodwine v. Batill, 123 US 4567 (1066)
This case concerned a patent for an iPad and the patentee sued the maker of an iPod for infringement. The important part of the claim was "a device for playing music and other media comprising a touch screen..." The court held that iPod infringed the iPad patent because the ... was equivalent to the ... because ...

Bill Goodwine

*Hale Propeller, L.L.C. v Ryan Marine Products Pty., LTD., et al, 151 F. Supp .2d 183 (2001) Connecticut District Court
Ryan owned patent 4411073, issued on 25 October 1983, which concerned devices to measure the pitch of propeller blades. Ryan originally filed the claim on 13 July 1981 it was rejected and then ammended on 4 October 1982. Hale's device called the "Hale Propeller MRI" was developed in 1997. In question are claims 1(b),(c),(f), and 6. A third party, Michigan Wheel Corporation, a distributor of Hale's invention filed for patent invalidity. The important differences between Hale's and Ryan's device are that Hale's does not use gears or worm-drives to rotate the blade and the device does not give direct readouts of the measurements using electric circuits. The issue with claim 1(b) was if a roller was a necessary part of the structure because it prevents skipping of the probe making the measurements more accurate. The court used means-plus-function to rule that the roller was important and Hale did not infringe. The issue with claim 1(c) deals with whether a worm or gear drive is necessary to rotate the blade. Ryan's patent discloses a hand-cranked device, like Hales, but includes a worm-drive. Part of Ryan's ammendment to his claim was to include worm gear to the hand-cranking device and therefore the court used prosecution history estoppel to make their decision because Ryan forfeited that claim (hand-cranked device without worm-drive) in order to get the patent and therefore cannot use doctrine of equivalents to get the claim back. The issue of claim 1(f) was whether the computer in the claim was a special computer needed for the readouts. The court ruled that the claim was not that narrow, but then the court ruled that claim 6 dealt with a computer that receives measurement data from the optical encoder and therefore Hale did not infringe. The patent was also ruled valid using the roller and worm drive to prove that it was non-obvious §103, definitively disclosed §112, and not anticipated by prior art §102(b).

Gillian Allsup

*Next case here...
901281608

*Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc. Nos. 2010-1145, 2010-117. (2001) United States Court of Appeals, Federal Circuit

This case began as an infringement lawsuit by Siemens Medical Solutions USA, inc. against Saint-Gobain Ceramics and Plastics, Inc. for the alleged infringement of a patent held by Siemens for a scintillator, a part of an x-ray machine that detects radiation. Saint-Gobain owned a patent for a similar device and the circuit court found that this patent infringed on the patent held by Siemens, which was filed earlier. Though the doctrine of equivalents was used to rule infringement, Saint-Gobain was found to have accidentally, rather than willfully infringed and Siemens was awarded 52.3 million dollars.

Siemens filed for patent number 4,958,080 on August 4, 1989. This patent was for a scintillator containing cerium-doped- lutetium oxyorthosilicate. This is a component of a radiation detector that absorbs gamma-ray photons from an x-ray machine and converts them to visible light so the results can be interpreted. Saint-Gobain also produces scintillators, filing patent number 6,6424,420 in 2000 for a cerium-doped lutetium-yttrium orthosilicate. The chemical composition differs from that of the Siemens' patent as %10 of the lutetium is substituted for yttrium. These scintillators were sold by Saint-Gobain to Philips Medical Systems, a competitor of Siemens. The circuit court found that the composition of Saint-Gobain's scintillator preformed largely the same function in the same manner as Siemens' patent, and therefore was infringement under the doctrine of equivalence.

Saint-Gobain filed a motion for a new trail, on the basis that the jury was not told that infringement by the doctrine of equivalence must be proved by clear evidence and argued that damages should be remitted. The Federal Appeals Court did not grant Saint-Gobain a new trial, but did reduces the damages to 44 million.

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Doctrine of Equivalents Case List

2011-04-01T18:43:13Z

901281608:

Add your case to the list with a one-paragraph (approximately 250 words) summary of the facts at issues, i.e., "an umbrella is or is not equivalent to a parasol because..."

Please put the cases in chronological order. If two are from the same year, then put them in alphabetical order. Also put your name, your login name or NDID number with your case. Use the following for a template.

* Goodwine v. Batill, 123 US 4567 (1066)
This case concerned a patent for an iPad and the patentee sued the maker of an iPod for infringement. The important part of the claim was "a device for playing music and other media comprising a touch screen..." The court held that iPod infringed the iPad patent because the ... was equivalent to the ... because ...

Bill Goodwine

*Hale Propeller, L.L.C. v Ryan Marine Products Pty., LTD., et al, 151 F. Supp .2d 183 (2001) Connecticut District Court
Ryan owned patent 4411073, issued on 25 October 1983, which concerned devices to measure the pitch of propeller blades. Ryan originally filed the claim on 13 July 1981 it was rejected and then ammended on 4 October 1982. Hale's device called the "Hale Propeller MRI" was developed in 1997. In question are claims 1(b),(c),(f), and 6. A third party, Michigan Wheel Corporation, a distributor of Hale's invention filed for patent invalidity. The important differences between Hale's and Ryan's device are that Hale's does not use gears or worm-drives to rotate the blade and the device does not give direct readouts of the measurements using electric circuits. The issue with claim 1(b) was if a roller was a necessary part of the structure because it prevents skipping of the probe making the measurements more accurate. The court used means-plus-function to rule that the roller was important and Hale did not infringe. The issue with claim 1(c) deals with whether a worm or gear drive is necessary to rotate the blade. Ryan's patent discloses a hand-cranked device, like Hales, but includes a worm-drive. Part of Ryan's ammendment to his claim was to include worm gear to the hand-cranking device and therefore the court used prosecution history estoppel to make their decision because Ryan forfeited that claim (hand-cranked device without worm-drive) in order to get the patent and therefore cannot use doctrine of equivalents to get the claim back. The issue of claim 1(f) was whether the computer in the claim was a special computer needed for the readouts. The court ruled that the claim was not that narrow, but then the court ruled that claim 6 dealt with a computer that receives measurement data from the optical encoder and therefore Hale did not infringe. The patent was also ruled valid using the roller and worm drive to prove that it was non-obvious §103, definitively disclosed §112, and not anticipated by prior art §102(b).

Gillian Allsup

*Next case here...
901281608

*Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc. Nos. 2010-1145, 2010-117. (2001) United States Court of Appeals, Federal Circuit

This case began as an infringement lawsuit by Siemens Medical Solutions USA, inc. against Saint-Gobain Ceramics and )Plastics, Inc. for the alleged infringement of a patent held by Siemens for a scintillator, a part of an x-ray machine that detects radiation. Saint-Gobain owned a patent for a similar device and the circuit court found that this patent infringed on the patent held by Siemens, which was filed earlier. Though the doctrine of equivalents was used to rule infringement, Saint-Gobain was found to have accidentally, rather than willfully infringed and Siemens was awarded 52.3 million dollars.

Siemens filed for patent number 4,958,080 on August 4, 1989. This patent was for a scintillator containing cerium-doped- lutetium oxyorthosilicate. This is a component of a radiation detector that absorbs gamma-ray photons from an x-ray machine and converts them to visible light so the results can be interpreted. Saint-Gobain also produces scintillators, filing patent number 6,6424,420 in 2000 for a cerium-doped lutetium-yttrium orthosilicate. The chemical composition differs from that of the Siemens' patent as %10 of the lutetium is substituted for yttrium. These scintillators were sold by Saint-Gobain to Philips Medical Systems, a competitor of Siemens. The circuit court found that the composition of Saint-Gobain's scintillator preformed largely the same function in the same manner as Siemens' patent, and therefore was infringement under the doctrine of equivalence.

Saint-Gobain filed a motion for a new trail, on the basis that the jury was not told that infringement by the doctrine of equivalence must be proved by clear evidence and argued that damages should be remitted. The Federal Appeals Court did not grant Saint-Gobain a new trial, but did reduces the damages to 44 million.

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Godshall: 3-23-2011 HW

2011-03-22T22:39:25Z

901281608:

Orion IP v. Hyundai Motor America

(May 17, 2010)

This case centered on a computer–assisted method to help a salesman identify automotive parts for a customer. Hyundai was sued for infringement by Orion, who owned a patent for a similar a computer–assisted method to help a salesman identify automotive parts for a customer, which Orion won. Hyundai then appealed to a Federal Appeals Court, whose decision is described here.

Hyundai initially argued the Orion’s patent was invalid as it was anticipated by prior art by a previously patented electronic parts catalog, the IDB2000, which functioned in a similar manner. Orion countered by arguing that it's system did not generate a customer proposal, which was outlined in one of its claims of the IDB2000’s patent. Orion claims this was done so that the customer would not be able to calculate the difference in the wholesale and retail price of the automotive component. The district court sided with Orion in this claim.

The Federal Court began their analysis by taking up the issue of whether or not the catalog was disseminated. A representative from Reynolds & Reynolds, the owner of the IDB2000 patent, testified that the IDB2000 had described in a brochure sent to several hundred automotive-components salesmen. Hyundai also called a witness from Reynolds & Reynolds to testify and explain the similarities between the IDB2000 and Orion’s patent. Orion argued that because its patent did not reveal the cost to the customer, and the lack of a proposal differentiated it from the IDB2000.

The judge held that an electronic parts catalog qualified as prior art printed publication, and thus upheld most of the district court’s earlier decision, rendering Orion’s patent invalid. However, on the issue of whether Orion’s patent was sufficiently different from the IDB2000, the court sided with Orion.

Godshall: 3-23-2011 HW

2011-03-22T22:39:00Z

901281608:

Orion IP v. Hyundai Motor America

(May 17, 2010)

This case centered on a computer–assisted method to help a salesman identify automotive parts for a customer. Hyundai was sued for infringement by Orion, who owned a patent for a similar a computer–assisted method to help a salesman identify automotive parts for a customer, which Orion won. Hyundai then appealed to a Federal Appeals Court, whose decision is described here.

Hyundai initially argued the Orion’s patent was invalid as it was anticipated by prior art by a previously patented electronic parts catalog, the IDB2000, which functioned in a similar manner. Orion countered by arguing that it's system did not generate a customer proposal, which was outlined in one of its claims of the IDB2000’s patent. Orion claims this was done so that the customer would not be able to calculate the difference in the wholesale and retail price of the automotive component. The district court sided with Orion in this claim.

The Federal Court began their analysis by taking up the issue of whether or not the catalog was disseminated. A representative from Reynolds & Reynolds, the owner of the IDB2000 patent, testified that the IDB2000 had described in a brochure sent to several hundred automotive-components salesmen. Hyundai also called a witness from Reynolds & Reynolds to testify and explain the similarities between the IDB2000 and Orion’s patent. Orion argued that because its patent did not reveal the cost to the customer, and the lack of this proposal differentiated it from the IDB2000.

The judge held that an electronic parts catalog qualified as prior art printed publication, and thus upheld most of the district court’s earlier decision, rendering Orion’s patent invalid. However, on the issue of whether Orion’s patent was sufficiently different from the IDB2000, the court sided with Orion.

Godshall: 3-23-2011 HW

2011-03-22T22:34:08Z

901281608:

Orion IP v. Hyundai Motor America

(May 17, 2010)

This case centered on a computer –assisted method to help a salesman identify automotive parts for a customer. Hyundai requested a new trial after it was sued for infringement by Orion, who owned a patent for a similar a computer –assisted method to help a salesman identify automotive parts for a customer.

Hyundai initially argued the Orion’s patent was invalid as it was anticipated by prior art by a previously existing electronic parts catalogue, the IDB2000, which functioned in a similar manner. Orion countered by arguing that its system did not generate a customer proposal, which was outlined in one of its claims of the IDB2000’s patent. Orion claims this was done so that the customer would not be able to calculate the difference in the wholesale and retail price of the automotive component. The district court sided with Orion in this claim.

The federal court began their analysis by taking up the issue of whether or not the catalogue was disseminated. Reynolds & Reynolds, the owner of the IDB2000 patent testified that the IDB2000 had described in a brochure sent to several hundred automotive-components salesmen. Hyundai also called a witness from Reynolds & Reynolds to testify and explain the similarities between the IDB2000 and Orion’s patent. Orion argued that because its patent did not reveal the cost to the customer, and the lack of this proposal differentiated it from the IDB2000.

The judge held that an electronic parts catalog qualified as prior art printed publication, and thus upheld most of the district court’s earlier decision, rendering Orion’s patent invalid. However, on the issue of whether Orion’s patent was sufficiently different from the IDB2000, the court sided with Orion.

Godshall: 3-23-2011 HW

2011-03-22T22:32:51Z

901281608: Created page with "Orion IP v. Hyundai Motor America (May 17, 2010) This case centered on a computer –assisted method to help a salesman identify automotive parts for a customer. Hyundai request..."

Orion IP v. Hyundai Motor America
(May 17, 2010)
This case centered on a computer –assisted method to help a salesman identify automotive parts for a customer. Hyundai requested a new trial after it was sued for infringement by Orion, who owned a patent for a similar a computer –assisted method to help a salesman identify automotive parts for a customer.
Hyundai initially argued the Orion’s patent was invalid as it was anticipated by prior art by a previously existing electronic parts catalogue, the IDB2000, which functioned in a similar manner. Orion countered by arguing that its system did not generate a customer proposal, which was outlined in one of its claims of the IDB2000’s patent. Orion claims this was done so that the customer would not be able to calculate the difference in the wholesale and retail price of the automotive component. The district court sided with Orion in this claim.
The federal court began their analysis by taking up the issue of whether or not the catalogue was disseminated. Reynolds & Reynolds, the owner of the IDB2000 patent testified that the IDB2000 had described in a brochure sent to several hundred automotive-components salesmen. Hyundai also called a witness from Reynolds & Reynolds to testify and explain the similarities between the IDB2000 and Orion’s patent. Orion argued that because its patent did not reveal the cost to the customer, and the lack of this proposal differentiated it from the IDB2000.
The judge held that an electronic parts catalog qualified as prior art printed publication, and thus upheld most of the district court’s earlier decision, rendering Orion’s patent invalid. However, on the issue of whether Orion’s patent was sufficiently different from the IDB2000, the court sided with Orion.

ESB Briefs

2011-03-04T03:29:58Z

901281608:

Here is a list of briefs for the Electric Storage Battery Co v. Shimadzu case. Add your name next to the list for the one with the fewest names and read that one.
* Reply Brief for Respondents. (Feb. 27, 1939)
#Michael Madden
#Hwong1
#croetzel
#kroshak
#Adam Mahood
#Michael Ackroyd
#Sam Karch
#Kyle Tennant
#
#
* Reply Brief for Petitioner. (Feb. 7, 1939)
#Cmadiga1
#90144463
#901422128
#jpotter2
#ewolz
#E W Hitchler
#Davin Sakamoto
#Kevin Godshall
#
#
* Brief for Respondents (Jan. 28, 1939)
#LMiller
#Josh Bradley
#Brobins
#Ebingle
#kyergler
#BCastel1
#Eric Leis
#
#
#
* Brief for Petitioner. (Jan. 1939)
#Kschlax
#Andy Stulc
#Mzahm
#Rabot
#Peter Mitros
#Jacob Marmolejo
#Greg Torrisi
#
#
#

Godshall: Bilski Brief Summary

2011-02-13T17:41:13Z

901281608: Created page with "Bilski v. Kappos Brief Summary: Brief Amicus Curiae of Red hat, Inc. in Support of Affirmance. Red Hat, Inc. is one of the leading providers of open source software who has file..."

Bilski v. Kappos Brief Summary:
Brief Amicus Curiae of Red hat, Inc. in Support of Affirmance.

Red Hat, Inc. is one of the leading providers of open source software who has filed a brief arguing in the affirmative. Their two main points are: the lower court correctly applied precedent in ruling that software is not statutory under patent law and that the Federal Circuit Court correctly abandoned a misinterpretation of the limits of what is statutory.

Red Hat, Inc. writes that they are committed to free and open software, which is the basis for much of the software used by government, businesses and individuals. They argue that this type of software produces innovation through allowing large numbers of people to freely collaborate, yielding high quality, rapidly developed, low cost software. The rapid initial progress in software during the 1970’s and 1980’s was a result of the competition resulting from a lack of patentability and Red Hat, Inc. quotes Bill Gates and others who express similar ideas.

These advantages are eliminated through software patents for several reasons. Firstly, software is very complicated, requiring many thousands of successive algorithms. This makes it very difficult to describe in a patent application, making patent infringement a very complicated issue, and therefore slow and costly to prove or disprove. The effect of this is the discouragement of innovation due to the threat of long, costly legal battles. The filing an excessive number of patents for software components as a defensive strategy further make software patents obstructive to innovation.

Red Hat, Inc. argues that the Supreme Court cases of Benson v. Gottschalk and Diamond v. Diehr were correctly decided. These, along with Flook, established the machine-or-transformation test for software-related patents that Red Hat, Inc. argues is the correct limit for what is statutory. They furthermore argue that during the 1990’s, this percent was incorrectly disregarded, leading to an excess of software patents. These, they argue, has discouraged progress and innovation in the software industry.

Thus, Red Hat, Inc. draws two main claims from these arguments. Firstly, that the lower court correctly applied precedent in ruling the patent in question as nonstatutory, as the machine-or-transformation test is a valid test for statutorty-ness. Secondly, the Federal Circuit court correctly abandoned the misinterpretation of what is statutory, which began in the 1990’s.

Bilski brief list

2011-02-12T00:21:38Z

901281608:

Choose one of the briefs from this list. Delete it and replace it with your login name. Please be careful editing this page. If you mess up all the formatting it will create work for your colleagues.

#Reply Brief for Petitioners (Oct. 26, 2009)
#jpotter2
#Brief of Eleven Law Professors and AARP as Amici Curiae in Support of Respondent (Oct. 2, 2009)
#Craigkrzyskowski
#Brief of Amicus Curiae William Mitchell College of Law Intellectual Property Institute in Support of Respondent (Oct. 2, 2009)
#ebingle
#Rabot
#Brief for Amicus Curiae Mark Landesmann in Support of Affirmance (Oct. 2, 2009)
#Brief of Amici Curiae American Insurance Association, the Hartford Financial Services, Jackson National Life Insurance Company, Pacific Life Insurance Company, Sun Life Assurance Company Of Canada (U.S.), and Transamerica Life Insurance Company in Support of Respondent (Oct. 2, 2009)
#Brief For Amicus Curiae Computer & Communications Industry Association in Support of Respondent (Oct. 2, 2009)
#Brief of Software & Information Industry Association (SIIA) as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#Brief of Amici Curiae Foundation for a Free Information Infrastructure, IP Justice, and Four Global Software Professionals and Business Leaders in Support of Respondent (Oct. 2, 2009)
#Brief for Free Software Foundation as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#Brief for Bank of America Corporation, Barclays Capital Inc., The Clearing House Association L.L.C., The Financial Services Roundtable, Google Inc., MetLife, Inc., and Morgan Stanley as Amici Curiae in Support of Respondent (Oct. 2, 2009)
#Brief Amici Curiae of Professors Peter S. Menell and Michael J. Meurer In Support of Respondent (Oct. 2, 2009)
#Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent (Oct. 2, 2009)
#Amicus Curiae Brief in Support of the Respondent, Submitted on Behalf of Adamas Pharmaceuticals, Inc. and Tethys Bioscience, Inc. (Oct. 2, 2009)
#Brief of American Bar Association as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#Brief of Amicus Curiae Knowledge Ecology International in Support of Respondent (Oct. 2, 2009)
#Brief for Amicus Curiae Mark Landesmann in Support of Affirmance (Oct. 2, 2009)
#Amicus Curiae Brief of Center for Advanced Study and Research in Intellectual Property (CASRIP) of the University of Washington School of Law, and of CASRIP Research Affiliate Scholars, in Support of Affirmance of the Judgment in Favor of Respondent (Oct. 1, 2009)
#Kevin Godshall
#Amici Curiae Brief of Internet Retailers in Support of Respondent (Oct. 1, 2009)
#Brief for the Respondent (Sep. 25, 2009)
#Brief of the Intellectual Property Section of the Nevada State Bar, as Amicus Curiae in Support of Respondent (Sep. 25, 2009)
#Brief of Professor Lee A. Hollaar and IEEE-USA as Amici Curiae in Support of Affirmance (Sep. 1, 2009)
#Brief of Amicus Curiae Austin Intellectual Property Law Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Amici Curiae Entrepreneurial Software Companies in Support of Petitioner (Aug. 6, 2009)
#Brief of Amicus Curiae Yahoo! Inc. in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Amici Curiae Biotechnology Industry Organization, Advanced Medical Technology Association, Wisconsin Alumni Research Foundation & The Regents of the University of California in Support of Neither Party (Aug. 6, 2009)
#Brief Amicus Curiae of International Business Machines Corporation in Support of Neither Party (Aug. 6, 2009)
#Brief of Pharmaceutical Research and Manufacturers of America as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Medtronic, Inc. in Support of Neither Party (Aug. 6, 2009)
#Brief of F%21ed%21eration Internationale Des Conseils En Propri%21et%21e Industrielle as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Law Professor Kevin Emerson Collins in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Legal OnRamp in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae John Sutton in Support of Petitioners (Aug. 6, 2009)
#Brief of Amicus Curiae Novartis Corporation Supporting Petitioners (Aug. 6, 2009)
#Brief Amicus Curiae of The Federal Circuit Bar Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Regulatory Datacorp, Inc, American Express Company, Palm Inc., Rockwell Automation, Inc., and SAP America, Inc. as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Double Rock Corporation, Island Intellectual Property LLC, LIDs Capital LLC, Intrasweep LLC, Access Control Advantage, Inc., Ecomp Consultants, Pipeline Trading Systems LLC, Rearden Capital Corporation, Craig Mowry and PCT Capital LLC as Ami ci Curiae in Support of Petitioners (Aug. 6, 2009)
#Brief Amici Curiae of 20 Law and Business Professors in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae The Houston Intellectual Property Law Association in Support of Petitioners (Aug. 6, 2009)
#Brief of Franklin Pierce Law Center as Amicus Curiae in Support of Petitioners (Aug. 6, 2009)
#LMiller
#Brief of TELES AG as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae San Diego Intellectual Property Law Association in Support of Neither Party on the Merits (Aug. 6, 2009)
#Brief of Robert R. Sachs and Daniel R. Brownstone as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae the University of South Florida in Support of Petitioners (Aug. 6, 2009)
#Brief of Amicus Curiae AwakenIP, LLC in Support of Petitioners (Aug. 6, 2009)
#Brief of Amici Curiae Dolby Laboratories, Inc., DTS, Inc., and SRS Labs, Inc., in Support of Neither Party (Aug. 6, 2009)
#Brief of Dr. Ananda Chakrabarty as Amicus Curiae in Support of Petitioners (Aug. 6, 2009)
#Brief of Georgia Biomedical Partnership, Inc. as Amicus Curiae in Support of Petitioners (Aug. 5, 2009)
#Brief for Prometheus Laboratories Inc. as Amicus Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Intellectual Property Owners Association in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Aug. 5, 2009)
#Brief for the Business Software Alliance as Amicus Curiae in Support of Affirmance (Aug. 5, 2009)
#Brief of Amicus Curiae Washington State Patent Law Association in Support of Petitioner (Aug. 5, 2009)
#Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Aug. 5, 2009)
#Brief of Amici Curiae Association Internationale Pour la Protection de la Propriete Intellectuelle and International Association For The Protection Of Intellectual Property (U.S.) in Support of Reversal (Aug. 5, 2009)
#Brief of Amicus Curiae Caris Diagnostics, Inc. in Support of Petitioners (Aug. 5, 2009)
#Brief of the Intellectual Property Law Association of Chicago as Amicus Curiae Supporting Neither Party (Aug. 5, 2009)
#Brief of Monogram Biosciences, Inc. and Genomic Health, Inc. as Amici Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Raymond C. Meiers in Support of Neither Party (Aug. 5, 2009)
#Brief of On Time Systems, Inc. as Amicus Curiae in Support of Neither Party (Aug. 4, 2009)
#Brief of Amicus Curiae Conejo Valley Bar Association in Support of Neither Party (Aug. 3, 2009)
#Brief For Petitioners (Jul. 30, 2009)
#Brief of Amicus Curiae Telecommunication Systems, Inc. in Support of Neither Party and for Purely Prospective Application of Any Adoption of the New Legal Test Applied Below (Jul. 24, 2009)
#Brief for the State of Oregon as Amicus Curiae in Support of Neither Party (Jul. 24, 2009)
#Brief of Amicus Curiae Timothy F. McDonough, Ph.D. in Support of Petitioners (Jul. 22, 2009)
#Petitioners' Reply Brief (May 8, 2009)
#Brief for the Respondent in Opposition (May 1, 2009)
#Brief of Koninklijke Philips Electronics N.V. as Amicus Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Mar. 2, 2009)
#Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief Amicus Curiae of Franklin Pierce Law Center in Support of Certiorari (Mar. 2, 2009)
#Brief of Amica Curiae Anne E. Barschall, Pro Se in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of the Petition for a Writ of Certiorari (Mar. 2, 2009)
#Brief of Amicus Curiae Medistem Inc. in Support of the Petition for a Writ of Certiorari (Feb. 27, 2009) )
#Brief of John P. Sutton Amicus Curiae Supporting Petitioners (Feb. 25, 2009)

Bilski brief list

2011-02-12T00:21:21Z

901281608:

Choose one of the briefs from this list. Delete it and replace it with your login name. Please be careful editing this page. If you mess up all the formatting it will create work for your colleagues.

#Reply Brief for Petitioners (Oct. 26, 2009)
#jpotter2
#Brief of Eleven Law Professors and AARP as Amici Curiae in Support of Respondent (Oct. 2, 2009)
#Craigkrzyskowski
#Brief of Amicus Curiae William Mitchell College of Law Intellectual Property Institute in Support of Respondent (Oct. 2, 2009)
#ebingle
#Rabot
#Brief for Amicus Curiae Mark Landesmann in Support of Affirmance (Oct. 2, 2009)
#Brief of Amici Curiae American Insurance Association, the Hartford Financial Services, Jackson National Life Insurance Company, Pacific Life Insurance Company, Sun Life Assurance Company Of Canada (U.S.), and Transamerica Life Insurance Company in Support of Respondent (Oct. 2, 2009)
#Brief For Amicus Curiae Computer & Communications Industry Association in Support of Respondent (Oct. 2, 2009)
#Brief of Software & Information Industry Association (SIIA) as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#Brief of Amici Curiae Foundation for a Free Information Infrastructure, IP Justice, and Four Global Software Professionals and Business Leaders in Support of Respondent (Oct. 2, 2009)
#Brief for Free Software Foundation as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#Brief for Bank of America Corporation, Barclays Capital Inc., The Clearing House Association L.L.C., The Financial Services Roundtable, Google Inc., MetLife, Inc., and Morgan Stanley as Amici Curiae in Support of Respondent (Oct. 2, 2009)
#Brief Amici Curiae of Professors Peter S. Menell and Michael J. Meurer In Support of Respondent (Oct. 2, 2009)
#Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent (Oct. 2, 2009)
#Amicus Curiae Brief in Support of the Respondent, Submitted on Behalf of Adamas Pharmaceuticals, Inc. and Tethys Bioscience, Inc. (Oct. 2, 2009)
#Brief of American Bar Association as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#Brief of Amicus Curiae Knowledge Ecology International in Support of Respondent (Oct. 2, 2009)
#Brief for Amicus Curiae Mark Landesmann in Support of Affirmance (Oct. 2, 2009)
#Amicus Curiae Brief of Center for Advanced Study and Research in Intellectual Property (CASRIP) of the University of Washington School of Law, and of CASRIP Research Affiliate Scholars, in Support of Affirmance of the Judgment in Favor of Respondent (Oct. 1, 2009)
Kevin Godshall
#Amici Curiae Brief of Internet Retailers in Support of Respondent (Oct. 1, 2009)
#Brief for the Respondent (Sep. 25, 2009)
#Brief of the Intellectual Property Section of the Nevada State Bar, as Amicus Curiae in Support of Respondent (Sep. 25, 2009)
#Brief of Professor Lee A. Hollaar and IEEE-USA as Amici Curiae in Support of Affirmance (Sep. 1, 2009)
#Brief of Amicus Curiae Austin Intellectual Property Law Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Amici Curiae Entrepreneurial Software Companies in Support of Petitioner (Aug. 6, 2009)
#Brief of Amicus Curiae Yahoo! Inc. in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Amici Curiae Biotechnology Industry Organization, Advanced Medical Technology Association, Wisconsin Alumni Research Foundation & The Regents of the University of California in Support of Neither Party (Aug. 6, 2009)
#Brief Amicus Curiae of International Business Machines Corporation in Support of Neither Party (Aug. 6, 2009)
#Brief of Pharmaceutical Research and Manufacturers of America as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Medtronic, Inc. in Support of Neither Party (Aug. 6, 2009)
#Brief of F%21ed%21eration Internationale Des Conseils En Propri%21et%21e Industrielle as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Law Professor Kevin Emerson Collins in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Legal OnRamp in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae John Sutton in Support of Petitioners (Aug. 6, 2009)
#Brief of Amicus Curiae Novartis Corporation Supporting Petitioners (Aug. 6, 2009)
#Brief Amicus Curiae of The Federal Circuit Bar Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Regulatory Datacorp, Inc, American Express Company, Palm Inc., Rockwell Automation, Inc., and SAP America, Inc. as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Double Rock Corporation, Island Intellectual Property LLC, LIDs Capital LLC, Intrasweep LLC, Access Control Advantage, Inc., Ecomp Consultants, Pipeline Trading Systems LLC, Rearden Capital Corporation, Craig Mowry and PCT Capital LLC as Ami ci Curiae in Support of Petitioners (Aug. 6, 2009)
#Brief Amici Curiae of 20 Law and Business Professors in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae The Houston Intellectual Property Law Association in Support of Petitioners (Aug. 6, 2009)
#Brief of Franklin Pierce Law Center as Amicus Curiae in Support of Petitioners (Aug. 6, 2009)
#LMiller
#Brief of TELES AG as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae San Diego Intellectual Property Law Association in Support of Neither Party on the Merits (Aug. 6, 2009)
#Brief of Robert R. Sachs and Daniel R. Brownstone as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae the University of South Florida in Support of Petitioners (Aug. 6, 2009)
#Brief of Amicus Curiae AwakenIP, LLC in Support of Petitioners (Aug. 6, 2009)
#Brief of Amici Curiae Dolby Laboratories, Inc., DTS, Inc., and SRS Labs, Inc., in Support of Neither Party (Aug. 6, 2009)
#Brief of Dr. Ananda Chakrabarty as Amicus Curiae in Support of Petitioners (Aug. 6, 2009)
#Brief of Georgia Biomedical Partnership, Inc. as Amicus Curiae in Support of Petitioners (Aug. 5, 2009)
#Brief for Prometheus Laboratories Inc. as Amicus Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Intellectual Property Owners Association in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Aug. 5, 2009)
#Brief for the Business Software Alliance as Amicus Curiae in Support of Affirmance (Aug. 5, 2009)
#Brief of Amicus Curiae Washington State Patent Law Association in Support of Petitioner (Aug. 5, 2009)
#Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Aug. 5, 2009)
#Brief of Amici Curiae Association Internationale Pour la Protection de la Propriete Intellectuelle and International Association For The Protection Of Intellectual Property (U.S.) in Support of Reversal (Aug. 5, 2009)
#Brief of Amicus Curiae Caris Diagnostics, Inc. in Support of Petitioners (Aug. 5, 2009)
#Brief of the Intellectual Property Law Association of Chicago as Amicus Curiae Supporting Neither Party (Aug. 5, 2009)
#Brief of Monogram Biosciences, Inc. and Genomic Health, Inc. as Amici Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Raymond C. Meiers in Support of Neither Party (Aug. 5, 2009)
#Brief of On Time Systems, Inc. as Amicus Curiae in Support of Neither Party (Aug. 4, 2009)
#Brief of Amicus Curiae Conejo Valley Bar Association in Support of Neither Party (Aug. 3, 2009)
#Brief For Petitioners (Jul. 30, 2009)
#Brief of Amicus Curiae Telecommunication Systems, Inc. in Support of Neither Party and for Purely Prospective Application of Any Adoption of the New Legal Test Applied Below (Jul. 24, 2009)
#Brief for the State of Oregon as Amicus Curiae in Support of Neither Party (Jul. 24, 2009)
#Brief of Amicus Curiae Timothy F. McDonough, Ph.D. in Support of Petitioners (Jul. 22, 2009)
#Petitioners' Reply Brief (May 8, 2009)
#Brief for the Respondent in Opposition (May 1, 2009)
#Brief of Koninklijke Philips Electronics N.V. as Amicus Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Mar. 2, 2009)
#Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief Amicus Curiae of Franklin Pierce Law Center in Support of Certiorari (Mar. 2, 2009)
#Brief of Amica Curiae Anne E. Barschall, Pro Se in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of the Petition for a Writ of Certiorari (Mar. 2, 2009)
#Brief of Amicus Curiae Medistem Inc. in Support of the Petition for a Writ of Certiorari (Feb. 27, 2009) )
#Brief of John P. Sutton Amicus Curiae Supporting Petitioners (Feb. 25, 2009)

Godshall: Nonobviousness

2011-02-08T04:30:58Z

901281608:

=='''Relation to Purpose of Patents'''==
The purpose of patents, as stated in the US Constitution is:
''"To promote the Progress of Science and useful Arts”''
Thus it can be said that the purpose of patents is largely practical and utilitarian. Thomas Jefferson, himself one of the driving forces behind the Constitution, concurred on this point, arguing that ideas are available to everyone and cannot be restricted by law. An inventor does not have an inherent and fundamental right to his patent under property law, but rather it is a necessary and practical matter whose purpose is to encourage inventiveness by rewarding the inventor. The limited monopoly is a reward for creating a new invention that is beneficial for society.

Without the application of the standard of nonobviousness, the advancement of useful products would be impeded, as improvements coming from the modification or combination of previous components would be obstructed. The court’s opinion in the case A&P Tea v. Supermarket Equipment (1950) states:

''“The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.”''

With such statements, the Supreme Court has taken a decidedly utilitarian stance on the subject of patent law. The strictness or laxness of the application of nonobviousness is a balance between rewarding inventiveness and preventing monopoly, both of which are desired, but which act against each other. Justice Douglas argued, in his concurring opinion in the case A&P Tea v. Supermarket Equipment that:

''“Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science-to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge.”''

==Historical Development==
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.

==Origins (pre-1850)==
The use of non-obviousness in determining the validity (or patentability) is a relatively new concept in the history of patents. It is not found in the earliest documents concerning patents. The US Constitution’s section on patents (Article 1, Section8) does not lay out requirements for the eligibility of patents. It reads:

"To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;"

In the first Patent Act (1790) established the process and limitations of the granting of patents, for which the power to do so was granted to the government in the Constitution from the year prior, but was not since explicitly established. Furthermore, Thomas Jefferson, in his writings on the subject of patents and their purpose did not mention nonobviousness or any similar concept.

Because patents must be approved (initially this had to be done through the secretary of state, but later a patent office was established), some similar concept was likely used by the patent office, although it was not a formal and well defined policy, nor did it have a name. The first instance in US History where what would later be called ‘Nonobviousness’ appeared in either written law, court decisions, or any other legally binding form was Hotchkiss v. Greenwood, a Supreme Court case dating from 1850.

==Hotchkiss v. Greenwood (1850)==
The Supreme Court case Hotchkiss v Greenwood (1850) was the first instance where nonobviousness became a legal doctrine in US patent law. The Patent Act of 60 years prior left certain areas of patentability vague, which ultimately led up the this case.

Patent at the center of the case was filed by John Hotchkiss of Connecticut in 1841 for a type of doorknob. The main features of this doorknob, as described in his patent application are:

Clay knob: This material is superior to the wood or metal previously in use due to its durability and strength

Dovetail shank: This method of fastening the shank to the knob is more durable and stronger than other methods

Cast shank: This method of attaching the shank to the knob is both an inexpensive and effective method of forming the shank inside the knob

Hotchkiss argued that such a combination of features results in a doorknob that is superior to previous models and represents a significant advancement. For these reasons, he argued that his patent was valid.

In 1845, Hotchkiss brought a suit against Greenwood for Greenwood’s alleged violation of his patent. As the Supreme Court analyzed the case, they made note of the fact that each of these features had existed prior to Hotchkiss’s patent, although they had never before been used in combination with one another. The defendants used this reasoning to argue that Hotchkiss’s patent invalid, and therefore their product was not in violation of any law. Ultimately, the Supreme Court rejected the patent as being invalid, due to its lack of what would from then on be known as non-obviousness. The Court wrote:

''“The knob was not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank was securely fastened therein. Knobs had also been used made of clay […] The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void, and this was a proper question for the jury.”''

This decision established a test for non-obviousness, namely ordinary skill in an art. Simply put, a patent is not valid if its discovery would be obvious to a person having an ordinary level of skill in the subject of the patent. Thus, the basis of the Supreme Court’s decision was that, for a person having an ordinary level of skill in the manufacture of door knobs, the combination of such features would have been obvious.

''“The material being in common use, and no other ingenuity or skill being necessary to construct the knob than that of an ordinary mechanic acquainted with the business, the patent is void, and the plaintiffs are not entitled to recover.”
''
The Supreme Court also ruled that simply because a product is superior, in cost, performance and/or reliability, does not make it automatically patentable, although this may have an effect on other issues or patentability, such as utility. However, if some new, previously unknown method or material was the source of these improvements, the patent may be valid.

==A&P Tea v. Supermarket Equipment (1950)==
A&P Tea v. Supermarket Equipment (1950) further expanded upon the precedent originally set by Hotchkiss v. Greenwood in 1850, 100 years earlier. The invention in question is a three-sided rack that is used on the counter of stores to move the customers merchandise forward to the cashier.

Many of the issues in this case are the same as Hotchkiss v. Greenwood, namely that each component of the patent in question had been in prior use. Similarly, the patent holder argued that his particular combination of components created something both new and useful. The Supreme Court ultimately determined that this patent was simply and extension of a previously existing device and, as such did not contain adequate nonobvious to validate the patent.

The significance of this case is the court’s explanation of what constitutes nonobviousness, which is far more detailed and explicit than the explanation of Hotchkiss v. Greenwood. The Supreme Court itself wrote in this case:

''“While this Court has sustained combination patents, it never has ventured to give a precise and comprehensive definition of the test to be applied in such cases. The voluminous literature which the subject has excited discloses no such test.”''

The Supreme Court referenced previous court decisions to make the claim that for a patent that is the combination of previously known parts to be valid, the sum of its properties must be greater than the sum of the properties of its components. That is, they must combine in some manner that produces a new or unexpected characteristic.

This patent however, did not exemplify this characteristic and was thus judged to be invalid under this standard. The court notes the practicality and popularity of the device in question, but denies that these as sufficient ground for the validity of the patent.
The major points of the court’s decision in this case can be summarized as:

$ First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.

$ Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.

$ Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

==US Patent Act of 1952==
The US Patent Act of 1952 made many important changes to the way patents were filed and validated. One of the most important changes was the creation the US Patent and Trademark Office. The Act also made many ideas that had been established as court precedent officially part of the US Code.

Concerning nonobviousness, the standard of ordinary skill, originally established a precedent in the case Hotchkiss v Greenwood (1850) was reaffirmed, being given the official definition as:

''“The subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”
(35 USC 103)''

The Act also specified what was patentable, changing the word 'art' from the original Patent Act of 1790 to:

''"Any new and useful process, machine, manufacture, or composition of matter"''

==Lyon v. Bausch & Lomb (1955)==
In the case Lyon v. Bausch & Lomb, additional factors contributing to nonobviousness were established. In the case, in which a patent filed by Dean Lyon for a method for coating optical glass, the presence of a long-felt but unsatisfied need for a certain product or method of production was used as evidence of nonobviousness.

Lyon sued Bausch & Lomb, alleging they violated his patent rights by using his patented method. Bausch & Lomb countered, arguing the patent was invalid due to several similar methods being in practice prior to Lyon's patent.

The critical factor in the case was the fact that none of the previous methods, though similar, were as successful as Lyon's procedure. The court ruled that the failure of previous scientists to achieve what Lyon had done demonstrated that Lyon's process was not obvious to one ordinarily skilled in the art. A long-felt but unsatisfied is not in itself a sufficient requirement for a patent to be valid, but rather can provide evidence to the fact that certain processes are nonobvious, else they would have been discovered by ordinarily skilled men prior.

In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) Learned Hand, in his brilliance, expounded on the new standard thusly:

''Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4''

==Graham v. John Deere (1966)==
In Graham v. John Deere, 383 U.S. 1 (1966) indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
$ scope and content of the prior art;
$ differences between the prior art and the claims at issue;
$ level of ordinary skill in the pertinent art; and,
$ secondary considerations, including:
$ commercial success of the invention;
$ long-felt but unsolved needs;
$ Failure of others to find a solution, etc.

==U.S. v. Adams (1966)==
$ 1966: US v. Adams, 383 U.S. 39 (1966) All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

==Anderson's Black Rock v. Pavement Salvage (1969)==
The Supreme Court case Anderson’s Black Rock v. Pavement Salvage (1969) reaffirmed many of the previous components of nonobviousness. The case centered on a device for paving asphalt which combined both the machine that spread the asphalt and a radiant heat burner. Radiant heat burners were used previously to heat sections of asphalt to enhance bonding but had never before been used for general paving

The Supreme Court ruled that because the radiant heat burner functioned in the same way when combined with the other machine as it did one its own; the patent was no more than a combination of previous inventions and therefore invalid. This reaffirmed the precedent set by Hotchkiss v. Greenwood in 1850.

==Diamond v. Diehr (1981)==
The Supreme Court Case Diamond v. Diehr further built upon the precedent set by Gottschalk v. Benson 9 years prior. The case concerned a method for the manufacture of cured rubber. This case is significant as it determined when processes involving both physical manufacturing as well as software are present.

The process in contention was a method for curing rubber that involved previously known and used equipment controlled by a computer program. The time rubber needs to properly cure is dependent on its temperature; however, it is not possible to measure the temperature at the center of the mass, only the surface. Thus, James Diehr, the applicant in the patent, devised a method of continuously measuring the surface temperature and feeding this data to a computer program, which would successively recalculate curing time.

The patent was originally rejected, because the formula used by the program was seen by the patent office as invalidating the patent as a result of precedent set by Gottschalk v. Benson. However, the Supreme Court decided that this mathematical formula was not the subject of the patent; it was merely a component in the process. Although the mathematical model and physical equipment had all been in use before, their combination in a novel manner resulted in the Supreme Court declaring this patent to be valid. This case set a precedent for the patentability of certain processes involving software and further refined the limits of patentability set by Gottschalk v. Benson.

==Time line of Nonobviousness in US Patent Law==
1789: The US Constitution is ratified, stating that ''"To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries"
''
1790: First Patent Act established a Patent Board to revue patents, which were to be valid for 14 years for ''"any useful art, manufacture, engine, machine, or device, or any improvement thereon not before known or used."''

1850: Hotchkiss v. Greenwood established Nonobviousness as a precedent and requirement for patentability and defining ordinary skill as a measure of this, stating ''“The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void.” ''

1950: A&P Tea v. Supermarket Equipment further refined nonobviousness, stating that ''“The mere aggregation of a number of old parts or elements which, in aggregation perform or produce no new or different function or operation that that theretofore performed or produced by them, is not patentable invention.”''

1952: US Patent Act of 1952 codifies 100 years of court precedent, placing the line ''“The subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”'' in Section 103 of the US Code.
1955: Lyon v. Bausch & Lomb established a long-felt but unsatisfied need as evidence of nonobviousness.

1969: Anderson's Black Rock v. Pavement Salvage reaffirms the standards of nonobviousness set originally by A&P Tea v. Supermarket Equipment.

1981: Diamond v. Diehr establishes the nonobviousness (and therefore patentability) of processes that feature software, even if no new physical methods or equipment are used.

==Issues in Nonobviousness==

'''Ordinary skill in the art:''' A test originally set by Hotchkiss v. Greenwood. It stipulates that if an invention would have been obvious to a person with ordinary skill in the field of the patent, it is obvious and therefore unpatentable.

'''Combinations:''' As judged in Anderson's Black Rock v. Pavement Salvage and Hotchkiss Greenwood, a combination of previous devices is only valid if they behave in a new or unexpected way and are not simply a sum of the previous functions.

'''Long-felt unsatisfied need:''' The case Lyon v. Bausch & Lomb established the presence of a long-felt but unsatisfied need, which is ultimately satisfied by the invention, as a test that can be used to show nonobviousness.

==Suggestion to Combine==

In Re Rouffet deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.
"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Objective Tests==
Two important considerations were the focus of Hybritech v. Monoclonal Antiboties, 802 F.2d 1375.
$ A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
$ The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they must be considered by the court.
$ This case also considers the concept of enablement which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.
==The Inventive Step==
==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==
Reiner v. I. Leon Co. (full text)
Reiner v. I. Leon Co.
South Corp. v. US (full text)
South Corp. v. US

Godshall: Nonobviousness

2011-02-08T04:29:29Z

901281608:

=='''Relation to Purpose of Patents'''==
The purpose of patents, as stated in the US Constitution is:
''"To promote the Progress of Science and useful Arts”''
Thus it can be said that the purpose of patents is largely practical and utilitarian. Thomas Jefferson, himself one of the driving forces behind the Constitution, concurred on this point, arguing that ideas are available to everyone and cannot be restricted by law. An inventor does not have an inherent and fundamental right to his patent under property law, but rather it is a necessary and practical matter whose purpose is to encourage inventiveness by rewarding the inventor. The limited monopoly is a reward for creating a new invention that is beneficial for society.

Without the application of the standard of nonobviousness, the advancement of useful products would be impeded, as improvements coming from the modification or combination of previous components would be obstructed. The court’s opinion in the case A&P Tea v. Supermarket Equipment (1950) states:

''“The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.”''

With such statements, the Supreme Court has taken a decidedly utilitarian stance on the subject of patent law. The strictness or laxness of the application of nonobviousness is a balance between rewarding inventiveness and preventing monopoly, both of which are desired, but which act against each other. Justice Douglas argued, in his concurring opinion in the case A&P Tea v. Supermarket Equipment that:

''“Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science-to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge.”''

==Historical Development==
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.

==Origins (pre-1850)==
The use of non-obviousness in determining the validity (or patentability) is a relatively new concept in the history of patents. It is not found in the earliest documents concerning patents. The US Constitution’s section on patents (Article 1, Section8) does not lay out requirements for the eligibility of patents. It reads:

"To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;"

In the first Patent Act (1790) established the process and limitations of the granting of patents, for which the power to do so was granted to the government in the Constitution from the year prior, but was not since explicitly established. Furthermore, Thomas Jefferson, in his writings on the subject of patents and their purpose did not mention nonobviousness or any similar concept.

Because patents must be approved (initially this had to be done through the secretary of state, but later a patent office was established), some similar concept was likely used by the patent office, although it was not a formal and well defined policy, nor did it have a name. The first instance in US History where what would later be called ‘Nonobviousness’ appeared in either written law, court decisions, or any other legally binding form was Hotchkiss v. Greenwood, a Supreme Court case dating from 1850.

==Hotchkiss v. Greenwood (1850)==
The Supreme Court case Hotchkiss v Greenwood (1850) was the first instance where nonobviousness became a legal doctrine in US patent law. The Patent Act of 60 years prior left certain areas of patentability vague, which ultimately led up the this case.

Patent at the center of the case was filed by John Hotchkiss of Connecticut in 1841 for a type of doorknob. The main features of this doorknob, as described in his patent application are:

Clay knob: This material is superior to the wood or metal previously in use due to its durability and strength

Dovetail shank: This method of fastening the shank to the knob is more durable and stronger than other methods

Cast shank: This method of attaching the shank to the knob is both an inexpensive and effective method of forming the shank inside the knob

Hotchkiss argued that such a combination of features results in a doorknob that is superior to previous models and represents a significant advancement. For these reasons, he argued that his patent was valid.

In 1845, Hotchkiss brought a suit against Greenwood for Greenwood’s alleged violation of his patent. As the Supreme Court analyzed the case, they made note of the fact that each of these features had existed prior to Hotchkiss’s patent, although they had never before been used in combination with one another. The defendants used this reasoning to argue that Hotchkiss’s patent invalid, and therefore their product was not in violation of any law. Ultimately, the Supreme Court rejected the patent as being invalid, due to its lack of what would from then on be known as non-obviousness. The Court wrote:

''“The knob was not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank was securely fastened therein. Knobs had also been used made of clay […] The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void, and this was a proper question for the jury.”''

This decision established a test for non-obviousness, namely ordinary skill in an art. Simply put, a patent is not valid if its discovery would be obvious to a person having an ordinary level of skill in the subject of the patent. Thus, the basis of the Supreme Court’s decision was that, for a person having an ordinary level of skill in the manufacture of door knobs, the combination of such features would have been obvious.

''“The material being in common use, and no other ingenuity or skill being necessary to construct the knob than that of an ordinary mechanic acquainted with the business, the patent is void, and the plaintiffs are not entitled to recover.”
''
The Supreme Court also ruled that simply because a product is superior, in cost, performance and/or reliability, does not make it automatically patentable, although this may have an effect on other issues or patentability, such as utility. However, if some new, previously unknown method or material was the source of these improvements, the patent may be valid.

==A&P Tea v. Supermarket Equipment (1950)==
A&P Tea v. Supermarket Equipment (1950) further expanded upon the precedent originally set by Hotchkiss v. Greenwood in 1850, 100 years earlier. The invention in question is a three-sided rack that is used on the counter of stores to move the customers merchandise forward to the cashier.

Many of the issues in this case are the same as Hotchkiss v. Greenwood, namely that each component of the patent in question had been in prior use. Similarly, the patent holder argued that his particular combination of components created something both new and useful. The Supreme Court ultimately determined that this patent was simply and extension of a previously existing device and, as such did not contain adequate nonobvious to validate the patent.

The significance of this case is the court’s explanation of what constitutes nonobviousness, which is far more detailed and explicit than the explanation of Hotchkiss v. Greenwood. The Supreme Court itself wrote in this case:

''“While this Court has sustained combination patents, it never has ventured to give a precise and comprehensive definition of the test to be applied in such cases. The voluminous literature which the subject has excited discloses no such test.”''

The Supreme Court referenced previous court decisions to make the claim that for a patent that is the combination of previously known parts to be valid, the sum of its properties must be greater than the sum of the properties of its components. That is, they must combine in some manner that produces a new or unexpected characteristic.

This patent however, did not exemplify this characteristic and was thus judged to be invalid under this standard. The court notes the practicality and popularity of the device in question, but denies that these as sufficient ground for the validity of the patent.
The major points of the court’s decision in this case can be summarized as:

$ First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.

$ Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.

$ Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

==US Patent Act of 1952==
The US Patent Act of 1952 made many important changes to the way patents were filed and validated. One of the most important changes was the creation the US Patent and Trademark Office. The Act also made many ideas that had been established as court precedent officially part of the US Code.

Concerning nonobviousness, the standard of ordinary skill, originally established a precedent in the case Hotchkiss v Greenwood (1850) was reaffirmed, being given the official definition as:

''“The subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”
(35 USC 103)''

The Act also specified what was patentable, changing the word 'art' from the original Patent Act of 1790 to:

''"Any new and useful process, machine, manufacture, or composition of matter"''

==Lyon v. Bausch & Lomb (1955)==
In the case Lyon v. Bausch & Lomb, additional factors contributing to nonobviousness were established. In the case, in which a patent filed by Dean Lyon for a method for coating optical glass, the presence of a long-felt but unsatisfied need for a certain product or method of production was used as evidence of nonobviousness.

Lyon sued Bausch & Lomb, alleging they violated his patent rights by using his patented method. Bausch & Lomb countered, arguing the patent was invalid due to several similar methods being in practice prior to Lyon's patent.

The critical factor in the case was the fact that none of the previous methods, though similar, were as successful as Lyon's procedure. The court ruled that the failure of previous scientists to achieve what Lyon had done demonstrated that Lyon's process was not obvious to one ordinarily skilled in the art. A long-felt but unsatisfied is not in itself a sufficient requirement for a patent to be valid, but rather can provide evidence to the fact that certain processes are nonobvious, else they would have been discovered by ordinarily skilled men prior.

In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) Learned Hand, in his brilliance, expounded on the new standard thusly:

''Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4''

==Graham v. John Deere (1966)==
In Graham v. John Deere, 383 U.S. 1 (1966) indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
$ scope and content of the prior art;
$ differences between the prior art and the claims at issue;
$ level of ordinary skill in the pertinent art; and,
$ secondary considerations, including:
$ commercial success of the invention;
$ long-felt but unsolved needs;
$ Failure of others to find a solution, etc.

==U.S. v. Adams (1966)==
$ 1966: US v. Adams, 383 U.S. 39 (1966) All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

==Anderson's Black Rock v. Pavement Salvage (1969)==
The Supreme Court case Anderson’s Black Rock v. Pavement Salvage (1969) reaffirmed many of the previous components of nonobviousness. The case centered on a device for paving asphalt which combined both the machine that spread the asphalt and a radiant heat burner. Radiant heat burners were used previously to heat sections of asphalt to enhance bonding but had never before been used for general paving

The Supreme Court ruled that because the radiant heat burner functioned in the same way when combined with the other machine as it did one its own; the patent was no more than a combination of previous inventions and therefore invalid. This reaffirmed the precedent set by Hotchkiss v. Greenwood in 1850.

==Diamond v. Diehr (1981)==
The Supreme Court Case Diamond v. Diehr further built upon the precedent set by Gottschalk v. Benson 9 years prior. The case concerned a method for the manufacture of cured rubber. This case is significant as it determined when processes involving both physical manufacturing as well as software are present.

The process in contention was a method for curing rubber that involved previously known and used equipment controlled by a computer program. The time rubber needs to properly cure is dependent on its temperature; however, it is not possible to measure the temperature at the center of the mass, only the surface. Thus, James Diehr, the applicant in the patent, devised a method of continuously measuring the surface temperature and feeding this data to a computer program, which would successively recalculate curing time.

The patent was originally rejected, because the formula used by the program was seen by the patent office as invalidating the patent as a result of precedent set by Gottschalk v. Benson. However, the Supreme Court decided that this mathematical formula was not the subject of the patent; it was merely a component in the process. Although the mathematical model and physical equipment had all been in use before, their combination in a novel manner resulted in the Supreme Court declaring this patent to be valid. This case set a precedent for the patentability of certain processes involving software and further refined the limits of patentability set by Gottschalk v. Benson.

==Time line of Nonobviousness in US Patent Law==
1789: The US Constitution is ratified, stating that ''"To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries"
''
1790: First Patent Act established a Patent Board to revue patents, which were to be valid for 14 years for ''"any useful art, manufacture, engine, machine, or device, or any improvement thereon not before known or used."''

1850: Hotchkiss v. Greenwood established Nonobviousness as a precedent and requirement for patentability and defining ordinary skill as a measure of this, stating ''“The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void.”
''
1950: A&P Tea v. Supermarket Equipment further refined nonobviousness, stating that ''“The mere aggregation of a number of old parts or elements which, in aggregation perform or produce no new or different function or operation that that theretofore performed or produced by them, is not patentable invention.”''

1952: US Patent Act of 1952 codifies 100 years of court precedent, placing the line ''“The subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”'' in Section 103 of the US Code.
1955: Lyon v. Bausch & Lomb established a long-felt but unsatisfied need as evidence of nonobviousness.

1969: Anderson's Black Rock v. Pavement Salvage reaffirms the standards of nonobviousness set originally by A&P Tea v. Supermarket Equipment.

1981: Diamond v. Diehr establishes the nonobviousness (and therefore patentability) of processes that feature software, even if no new physical methods or equipment are used.

==Issues in Nonobviousness==

'''Ordinary skill in the art:''' A test originally set by Hotchkiss v. Greenwood. It stipulates that if an invention would have been obvious to a person with ordinary skill in the field of the patent, it is obvious and therefore unpatentable.

'''Combinations:''' As judged in Anderson's Black Rock v. Pavement Salvage and Hotchkiss Greenwood, a combination of previous devices is only valid if they behave in a new or unexpected way and are not simply a sum of the previous functions.

'''Long-felt unsatisfied need:''' The case Lyon v. Bausch & Lomb established the presence of a long-felt but unsatisfied need, which is ultimately satisfied by the invention, as a test that can be used to show nonobviousness.

==Suggestion to Combine==

In Re Rouffet deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.
"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Objective Tests==
Two important considerations were the focus of Hybritech v. Monoclonal Antiboties, 802 F.2d 1375.
$ A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
$ The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they must be considered by the court.
$ This case also considers the concept of enablement which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.
==The Inventive Step==
==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==
Reiner v. I. Leon Co. (full text)
Reiner v. I. Leon Co.
South Corp. v. US (full text)
South Corp. v. US

Godshall: Nonobviousness

2011-02-08T04:24:21Z

901281608:

=='''Relation to Purpose of Patents'''==
The purpose of patents, as stated in the US Constitution is:
''"To promote the Progress of Science and useful Arts”''
Thus it can be said that the purpose of patents is largely practical and utilitarian. Thomas Jefferson, himself one of the driving forces behind the Constitution, concurred on this point, arguing that ideas are available to everyone and cannot be restricted by law. An inventor does not have an inherent and fundamental right to his patent under property law, but rather it is a necessary and practical matter whose purpose is to encourage inventiveness by rewarding the inventor. The limited monopoly is a reward for creating a new invention that is beneficial for society.

Without the application of the standard of nonobviousness, the advancement of useful products would be impeded, as improvements coming from the modification or combination of previous components would be obstructed. The court’s opinion in the case A&P Tea v. Supermarket Equipment (1950) states:

''“The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.”''

With such statements, the Supreme Court has taken a decidedly utilitarian stance on the subject of patent law. The strictness or laxness of the application of nonobviousness is a balance between rewarding inventiveness and preventing monopoly, both of which are desired, but which act against each other. Justice Douglas argued, in his concurring opinion in the case A&P Tea v. Supermarket Equipment that:

''“Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science-to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge.”''

==Historical Development==
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.
==Origins (pre-1850)==
The use of non-obviousness in determining the validity (or patentability) is a relatively new concept in the history of patents. It is not found in the earliest documents concerning patents. The US Constitution’s section on patents (Article 1, Section8) does not lay out requirements for the eligibility of patents. It reads:
"To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;"
In the first Patent Act (1790) established the process and limitations of the granting of patents, for which the power to do so was granted to the government in the Constitution from the year prior, but was not since explicitly established. Furthermore, Thomas Jefferson, in his writings on the subject of patents and their purpose did not mention nonobviousness or any similar concept.
Because patents must be approved (initially this had to be done through the secretary of state, but later a patent office was established), some similar concept was likely used by the patent office, although it was not a formal and well defined policy, nor did it have a name. The first instance in US History where what would later be called ‘Nonobviousness’ appeared in either written law, court decisions, or any other legally binding form was Hotchkiss v. Greenwood, a Supreme Court case dating from 1850.

==Hotchkiss v. Greenwood (1850)==
The Supreme Court case Hotchkiss v Greenwood (1850) was the first instance where nonobviousness became a legal doctrine in US patent law. The Patent Act of 60 years prior left certain areas of patentability vague, which ultimately led up the this case.

Patent at the center of the case was filed by John Hotchkiss of Connecticut in 1841 for a type of doorknob. The main features of this doorknob, as described in his patent application are:

Clay knob: This material is superior to the wood or metal previously in use due to its durability and strength
Dovetail shank: This method of fastening the shank to the knob is more durable and stronger than other methods
Cast shank: This method of attaching the shank to the knob is both an inexpensive and effective method of forming the shank inside the knob

Hotchkiss argued that such a combination of features results in a doorknob that is superior to previous models and represents a significant advancement. For these reasons, he argued that his patent was valid.

In 1845, Hotchkiss brought a suit against Greenwood for Greenwood’s alleged violation of his patent. As the Supreme Court analyzed the case, they made note of the fact that each of these features had existed prior to Hotchkiss’s patent, although they had never before been used in combination with one another. The defendants used this reasoning to argue that Hotchkiss’s patent invalid, and therefore their product was not in violation of any law. Ultimately, the Supreme Court rejected the patent as being invalid, due to its lack of what would from then on be known as non-obviousness. The Court wrote:

''“The knob was not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank was securely fastened therein. Knobs had also been used made of clay […] The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void, and this was a proper question for the jury.”'' ''Italic text''

This decision established a test for non-obviousness, namely ordinary skill in an art. Simply put, a patent is not valid if its discovery would be obvious to a person having an ordinary level of skill in the subject of the patent. Thus, the basis of the Supreme Court’s decision was that, for a person having an ordinary level of skill in the manufacture of door knobs, the combination of such features would have been obvious.

“The material being in common use, and no other ingenuity or skill being necessary to construct the knob than that of an ordinary mechanic acquainted with the business, the patent is void, and the plaintiffs are not entitled to recover.”

The Supreme Court also ruled that simply because a product is superior, in cost, performance and/or reliability, does not make it automatically patentable, although this may have an effect on other issues or patentability, such as utility. However, if some new, previously unknown method or material was the source of these improvements, the patent may be valid.
==A&P Tea v. Supermarket Equipment (1950)==
A&P Tea v. Supermarket Equipment (1950) further expanded upon the precedent originally set by Hotchkiss v. Greenwood in 1850, 100 years earlier. The invention in question is a three-sided rack that is used on the counter of stores to move the customers merchandise forward to the cashier.
Many of the issues in this case are the same as Hotchkiss v. Greenwood, namely that each component of the patent in question had been in prior use. Similarly, the patent holder argued that his particular combination of components created something both new and useful. The Supreme Court ultimately determined that this patent was simply and extension of a previously existing device and, as such did not contain adequate nonobvious to validate the patent.
The significance of this case is the court’s explanation of what constitutes nonobviousness, which is far more detailed and explicit than the explanation of Hotchkiss v. Greenwood. The Supreme Court itself wrote in this case:
“While this Court has sustained combination patents, it never has ventured to give a precise and comprehensive definition of the test to be applied in such cases. The voluminous literature which the subject has excited discloses no such test.”
The Supreme Court referenced previous court decisions to make the claim that for a patent that is the combination of previously known parts to be valid, the sum of its properties must be greater than the sum of the properties of its components. That is, they must combine in some manner that produces a new or unexpected characteristic.
This patent however, did not exemplify this characteristic and was thus judged to be invalid under this standard. The court notes the practicality and popularity of the device in question, but denies that these as sufficient ground for the validity of the patent.
The major points of the court’s decision in this case can be summarized as:
$ First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
$ Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
$ Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

==US Patent Act of 1952==
The US Patent Act of 1952 made many important changes to the way patents were filed and validated. One of the most important changes was the creation the US Patent and Trademark Office. The Act also made many ideas that had been established as court precedent officially part of the US Code.
Concerning nonobviousness, the standard of ordinary skill, originally established a precedent in the case Hotchkiss v Greenwood (1850) was reaffirmed, being given the official definition as:
“The subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”
(35 USC 103)
The Act also specified what was patentable, changing the word 'art' from the original Patent Act of 1790 to:
"Any new and useful process, machine, manufacture, or composition of matter"

==Lyon v. Bausch & Lomb (1955)==
In the case Lyon v. Bausch & Lomb, additional factors contributing to nonobviousness were established. In the case, in which a patent filed by Dean Lyon for a method for coating optical glass, the presence of a long-felt but unsatisfied need for a certain product or method of production was used as evidence of nonobviousness.
Lyon sued Bausch & Lomb, alleging they violated his patent rights by using his patented method. Bausch & Lomb countered, arguing the patent was invalid due to several similar methods being in practice prior to Lyon's patent.
The critical factor in the case was the fact that none of the previous methods, though similar, were as successful as Lyon's procedure. The court ruled that the failure of previous scientists to achieve what Lyon had done demonstrated that Lyon's process was not obvious to one ordinarily skilled in the art. A long-felt but unsatisfied is not in itself a sufficient requirement for a patent to be valid, but rather can provide evidence to the fact that certain processes are nonobvious, else they would have been discovered by ordinarily skilled men prior.
In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) Learned Hand, in his brilliance, expounded on the new standard thusly:
Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4

==Graham v. John Deere (1966)==
In Graham v. John Deere, 383 U.S. 1 (1966) indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
$ scope and content of the prior art;
$ differences between the prior art and the claims at issue;
$ level of ordinary skill in the pertinent art; and,
$ secondary considerations, including:
$ commercial success of the invention;
$ long-felt but unsolved needs;
$ Failure of others to find a solution, etc.
U.S. v. Adams (1966)
$ 1966: US v. Adams, 383 U.S. 39 (1966) All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.
==Anderson's Black Rock v. Pavement Salvage (1969)==
The Supreme Court case Anderson’s Black Rock v. Pavement Salvage (1969) reaffirmed many of the previous components of nonobviousness. The case centered on a device for paving asphalt which combined both the machine that spread the asphalt and a radiant heat burner. Radiant heat burners were used previously to heat sections of asphalt to enhance bonding but had never before been used for general paving
The Supreme Court ruled that because the radiant heat burner functioned in the same way when combined with the other machine as it did one its own; the patent was no more than a combination of previous inventions and therefore invalid. This reaffirmed the precedent set by Hotchkiss v. Greenwood in 1850.
==Diamond v. Diehr (1981)==
The Supreme Court Case Diamond v. Diehr further built upon the precedent set by Gottschalk v. Benson 9 years prior. The case concerned a method for the manufacture of cured rubber. This case is significant as it determined when processes involving both physical manufacturing as well as software are present.
The process in contention was a method for curing rubber that involved previously known and used equipment controlled by a computer program. The time rubber needs to properly cure is dependent on its temperature; however, it is not possible to measure the temperature at the center of the mass, only the surface. Thus, James Diehr, the applicant in the patent, devised a method of continuously measuring the surface temperature and feeding this data to a computer program, which would successively recalculate curing time.
The patent was originally rejected, because the formula used by the program was seen by the patent office as invalidating the patent as a result of precedent set by Gottschalk v. Benson. However, the Supreme Court decided that this mathematical formula was not the subject of the patent; it was merely a component in the process. Although the mathematical model and physical equipment had all been in use before, their combination in a novel manner resulted in the Supreme Court declaring this patent to be valid. This case set a precedent for the patentability of certain processes involving software and further refined the limits of patentability set by Gottschalk v. Benson.

==Time line of Nonobviousness in US Patent Law==
1789: The US Constitution is ratified, stating that "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries"

1790: First Patent Act established a Patent Board to revue patents, which were to be valid for 14 years for "any useful art, manufacture, engine, machine, or device, or any improvement thereon not before known or used."

1850: Hotchkiss v. Greenwood established Nonobviousness as a precedent and requirement for patentability and defining ordinary skill as a measure of this, stating “The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void.”

1950: A&P Tea v. Supermarket Equipment further refined nonobviousness, stating that “The mere aggregation of a number of old parts or elements which, in aggregation perform or produce no new or different function or operation that that theretofore performed or produced by them, is not patentable invention.”

1952: US Patent Act of 1952 codifies 100 years of court precedent, placing the line “The subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” in Section 103 of the US Code.
1955: Lyon v. Bausch & Lomb established a long-felt but unsatisfied need as evidence of nonobviousness.

1969: Anderson's Black Rock v. Pavement Salvage reaffirms the standards of nonobviousness set originally by A&P Tea v. Supermarket Equipment.

1981: Diamond v. Diehr establishes the nonobviousness (and therefore patentability) of processes that feature software, even if no new physical methods or equipment are used.

==Issues in Nonobviousness==

'''Ordinary skill in the art:''' A test originally set by Hotchkiss v. Greenwood. It stipulates that if an invention would have been obvious to a person with ordinary skill in the field of the patent, it is obvious and therefore unpatentable.
'''Combinations:''' As judged in Anderson's Black Rock v. Pavement Salvage and Hotchkiss Greenwood, a combination of previous devices is only valid if they behave in a new or unexpected way and are not simply a sum of the previous functions.
'''Long-felt unsatisfied need:''' The case Lyon v. Bausch & Lomb established the presence of a long-felt but unsatisfied need, which is ultimately satisfied by the invention, as a test that can be used to show nonobviousness.
Suggestion to Combine
In Re Rouffet deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.
"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Objective Tests==
Two important considerations were the focus of Hybritech v. Monoclonal Antiboties, 802 F.2d 1375.
$ A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
$ The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they must be considered by the court.
$ This case also considers the concept of enablement which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.
==The Inventive Step==
==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==
Reiner v. I. Leon Co. (full text)
Reiner v. I. Leon Co.
South Corp. v. US (full text)
South Corp. v. US

Godshall: Nonobviousness

2011-02-08T04:05:20Z

901281608:

=='''Relation to Purpose of Patents'''==
The purpose of patents, as stated in the US Constitution is:
''"To promote the Progress of Science and useful Arts”''
Thus it can be said that the purpose of patents is largely practical and utilitarian. Thomas Jefferson, himself one of the driving forces behind the Constitution, concurred on this point, arguing that ideas are available to everyone and cannot be restricted by law. An inventor does not have an inherent and fundamental right to his patent under property law, but rather it is a necessary and practical matter whose purpose is to encourage inventiveness by rewarding the inventor. The limited monopoly is a reward for creating a new invention that is beneficial for society.
Without the application of the standard of nonobviousness, the advancement of useful products would be impeded, as improvements coming from the modification or combination of previous components would be obstructed. The court’s opinion in the case A&P Tea v. Supermarket Equipment (1950) states:
''“The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.”''
With such statements, the Supreme Court has taken a decidedly utilitarian stance on the subject of patent law. The strictness or laxness of the application of nonobviousness is a balance between rewarding inventiveness and preventing monopoly, both of which are desired, but which act against each other. Justice Douglas argued, in his concurring opinion in the case A&P Tea v. Supermarket Equipment that:
''“Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science-to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge.”''
==Historical Development==
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.
==Origins (pre-1850)==
The use of non-obviousness in determining the validity (or patentability) is a relatively new concept in the history of patents. It is not found in the earliest documents concerning patents. The US Constitution’s section on patents (Article 1, Section8) does not lay out requirements for the eligibility of patents. It reads:
"To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;"
In the first Patent Act (1790) established the process and limitations of the granting of patents, for which the power to do so was granted to the government in the Constitution from the year prior, but was not since explicitly established. Furthermore, Thomas Jefferson, in his writings on the subject of patents and their purpose did not mention nonobviousness or any similar concept.
Because patents must be approved (initially this had to be done through the secretary of state, but later a patent office was established), some similar concept was likely used by the patent office, although it was not a formal and well defined policy, nor did it have a name. The first instance in US History where what would later be called ‘Nonobviousness’ appeared in either written law, court decisions, or any other legally binding form was Hotchkiss v. Greenwood, a Supreme Court case dating from 1850.

==Hotchkiss v. Greenwood (1850)==
The Supreme Court case Hotchkiss v Greenwood (1850) was the first instance where nonobviousness became a legal doctrine in US patent law. The Patent Act of 60 years prior left certain areas of patentability vague, which ultimately led up the this case.

Patent at the center of the case was filed by John Hotchkiss of Connecticut in 1841 for a type of doorknob. The main features of this doorknob, as described in his patent application are:

Clay knob: This material is superior to the wood or metal previously in use due to its durability and strength
Dovetail shank: This method of fastening the shank to the knob is more durable and stronger than other methods
Cast shank: This method of attaching the shank to the knob is both an inexpensive and effective method of forming the shank inside the knob

Hotchkiss argued that such a combination of features results in a doorknob that is superior to previous models and represents a significant advancement. For these reasons, he argued that his patent was valid.

In 1845, Hotchkiss brought a suit against Greenwood for Greenwood’s alleged violation of his patent. As the Supreme Court analyzed the case, they made note of the fact that each of these features had existed prior to Hotchkiss’s patent, although they had never before been used in combination with one another. The defendants used this reasoning to argue that Hotchkiss’s patent invalid, and therefore their product was not in violation of any law. Ultimately, the Supreme Court rejected the patent as being invalid, due to its lack of what would from then on be known as non-obviousness. The Court wrote:

''“The knob was not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank was securely fastened therein. Knobs had also been used made of clay […] The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void, and this was a proper question for the jury.”'' ''Italic text''

This decision established a test for non-obviousness, namely ordinary skill in an art. Simply put, a patent is not valid if its discovery would be obvious to a person having an ordinary level of skill in the subject of the patent. Thus, the basis of the Supreme Court’s decision was that, for a person having an ordinary level of skill in the manufacture of door knobs, the combination of such features would have been obvious.

“The material being in common use, and no other ingenuity or skill being necessary to construct the knob than that of an ordinary mechanic acquainted with the business, the patent is void, and the plaintiffs are not entitled to recover.”

The Supreme Court also ruled that simply because a product is superior, in cost, performance and/or reliability, does not make it automatically patentable, although this may have an effect on other issues or patentability, such as utility. However, if some new, previously unknown method or material was the source of these improvements, the patent may be valid.
==A&P Tea v. Supermarket Equipment (1950)==
A&P Tea v. Supermarket Equipment (1950) further expanded upon the precedent originally set by Hotchkiss v. Greenwood in 1850, 100 years earlier. The invention in question is a three-sided rack that is used on the counter of stores to move the customers merchandise forward to the cashier.
Many of the issues in this case are the same as Hotchkiss v. Greenwood, namely that each component of the patent in question had been in prior use. Similarly, the patent holder argued that his particular combination of components created something both new and useful. The Supreme Court ultimately determined that this patent was simply and extension of a previously existing device and, as such did not contain adequate nonobvious to validate the patent.
The significance of this case is the court’s explanation of what constitutes nonobviousness, which is far more detailed and explicit than the explanation of Hotchkiss v. Greenwood. The Supreme Court itself wrote in this case:
“While this Court has sustained combination patents, it never has ventured to give a precise and comprehensive definition of the test to be applied in such cases. The voluminous literature which the subject has excited discloses no such test.”
The Supreme Court referenced previous court decisions to make the claim that for a patent that is the combination of previously known parts to be valid, the sum of its properties must be greater than the sum of the properties of its components. That is, they must combine in some manner that produces a new or unexpected characteristic.
This patent however, did not exemplify this characteristic and was thus judged to be invalid under this standard. The court notes the practicality and popularity of the device in question, but denies that these as sufficient ground for the validity of the patent.
The major points of the court’s decision in this case can be summarized as:
$ First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
$ Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
$ Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

==US Patent Act of 1952==
The US Patent Act of 1952 made many important changes to the way patents were filed and validated. One of the most important changes was the creation the US Patent and Trademark Office. The Act also made many ideas that had been established as court precedent officially part of the US Code.
Concerning nonobviousness, the standard of ordinary skill, originally established a precedent in the case Hotchkiss v Greenwood (1850) was reaffirmed, being given the official definition as:
“The subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”
(35 USC 103)
The Act also specified what was patentable, changing the word 'art' from the original Patent Act of 1790 to:
"Any new and useful process, machine, manufacture, or composition of matter"

==Lyon v. Bausch & Lomb (1955)==
In the case Lyon v. Bausch & Lomb, additional factors contributing to nonobviousness were established. In the case, in which a patent filed by Dean Lyon for a method for coating optical glass, the presence of a long-felt but unsatisfied need for a certain product or method of production was used as evidence of nonobviousness.
Lyon sued Bausch & Lomb, alleging they violated his patent rights by using his patented method. Bausch & Lomb countered, arguing the patent was invalid due to several similar methods being in practice prior to Lyon's patent.
The critical factor in the case was the fact that none of the previous methods, though similar, were as successful as Lyon's procedure. The court ruled that the failure of previous scientists to achieve what Lyon had done demonstrated that Lyon's process was not obvious to one ordinarily skilled in the art. A long-felt but unsatisfied is not in itself a sufficient requirement for a patent to be valid, but rather can provide evidence to the fact that certain processes are nonobvious, else they would have been discovered by ordinarily skilled men prior.
In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) Learned Hand, in his brilliance, expounded on the new standard thusly:
Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4

==Graham v. John Deere (1966)==
In Graham v. John Deere, 383 U.S. 1 (1966) indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
$ scope and content of the prior art;
$ differences between the prior art and the claims at issue;
$ level of ordinary skill in the pertinent art; and,
$ secondary considerations, including:
$ commercial success of the invention;
$ long-felt but unsolved needs;
$ Failure of others to find a solution, etc.
U.S. v. Adams (1966)
$ 1966: US v. Adams, 383 U.S. 39 (1966) All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.
==Anderson's Black Rock v. Pavement Salvage (1969)==
The Supreme Court case Anderson’s Black Rock v. Pavement Salvage (1969) reaffirmed many of the previous components of nonobviousness. The case centered on a device for paving asphalt which combined both the machine that spread the asphalt and a radiant heat burner. Radiant heat burners were used previously to heat sections of asphalt to enhance bonding but had never before been used for general paving
The Supreme Court ruled that because the radiant heat burner functioned in the same way when combined with the other machine as it did one its own; the patent was no more than a combination of previous inventions and therefore invalid. This reaffirmed the precedent set by Hotchkiss v. Greenwood in 1850.
==Diamond v. Diehr (1981)==
The Supreme Court Case Diamond v. Diehr further built upon the precedent set by Gottschalk v. Benson 9 years prior. The case concerned a method for the manufacture of cured rubber. This case is significant as it determined when processes involving both physical manufacturing as well as software are present.
The process in contention was a method for curing rubber that involved previously known and used equipment controlled by a computer program. The time rubber needs to properly cure is dependent on its temperature; however, it is not possible to measure the temperature at the center of the mass, only the surface. Thus, James Diehr, the applicant in the patent, devised a method of continuously measuring the surface temperature and feeding this data to a computer program, which would successively recalculate curing time.
The patent was originally rejected, because the formula used by the program was seen by the patent office as invalidating the patent as a result of precedent set by Gottschalk v. Benson. However, the Supreme Court decided that this mathematical formula was not the subject of the patent; it was merely a component in the process. Although the mathematical model and physical equipment had all been in use before, their combination in a novel manner resulted in the Supreme Court declaring this patent to be valid. This case set a precedent for the patentability of certain processes involving software and further refined the limits of patentability set by Gottschalk v. Benson.

==Time line of Nonobviousness in US Patent Law==
1789: The US Constitution is ratified, stating that "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries"

1790: First Patent Act established a Patent Board to revue patents, which were to be valid for 14 years for "any useful art, manufacture, engine, machine, or device, or any improvement thereon not before known or used."

1850: Hotchkiss v. Greenwood established Nonobviousness as a precedent and requirement for patentability and defining ordinary skill as a measure of this, stating “The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void.”

1950: A&P Tea v. Supermarket Equipment further refined nonobviousness, stating that “The mere aggregation of a number of old parts or elements which, in aggregation perform or produce no new or different function or operation that that theretofore performed or produced by them, is not patentable invention.”

1952: US Patent Act of 1952 codifies 100 years of court precedent, placing the line “The subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” in Section 103 of the US Code.
1955: Lyon v. Bausch & Lomb established a long-felt but unsatisfied need as evidence of nonobviousness.

1969: Anderson's Black Rock v. Pavement Salvage reaffirms the standards of nonobviousness set originally by A&P Tea v. Supermarket Equipment.

1981: Diamond v. Diehr establishes the nonobviousness (and therefore patentability) of processes that feature software, even if no new physical methods or equipment are used.

==Issues in Nonobviousness==

'''Ordinary skill in the art:''' A test originally set by Hotchkiss v. Greenwood. It stipulates that if an invention would have been obvious to a person with ordinary skill in the field of the patent, it is obvious and therefore unpatentable.
'''Combinations:''' As judged in Anderson's Black Rock v. Pavement Salvage and Hotchkiss Greenwood, a combination of previous devices is only valid if they behave in a new or unexpected way and are not simply a sum of the previous functions.
'''Long-felt unsatisfied need:''' The case Lyon v. Bausch & Lomb established the presence of a long-felt but unsatisfied need, which is ultimately satisfied by the invention, as a test that can be used to show nonobviousness.
Suggestion to Combine
In Re Rouffet deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.
"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Objective Tests==
Two important considerations were the focus of Hybritech v. Monoclonal Antiboties, 802 F.2d 1375.
$ A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
$ The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they must be considered by the court.
$ This case also considers the concept of enablement which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.
==The Inventive Step==
==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==
Reiner v. I. Leon Co. (full text)
Reiner v. I. Leon Co.
South Corp. v. US (full text)
South Corp. v. US

Godshall: Nonobviousness

2011-02-08T04:03:22Z

901281608:

=='''Relation to Purpose of Patents'''==
The purpose of patents, as stated in the US Constitution is:
''"To promote the Progress of Science and useful Arts”''
Thus it can be said that the purpose of patents is largely practical and utilitarian. Thomas Jefferson, himself one of the driving forces behind the Constitution, concurred on this point, arguing that ideas are available to everyone and cannot be restricted by law. An inventor does not have an inherent and fundamental right to his patent under property law, but rather it is a necessary and practical matter whose purpose is to encourage inventiveness by rewarding the inventor. The limited monopoly is a reward for creating a new invention that is beneficial for society.
Without the application of the standard of nonobviousness, the advancement of useful products would be impeded, as improvements coming from the modification or combination of previous components would be obstructed. The court’s opinion in the case A&P Tea v. Supermarket Equipment (1950) states:
''“The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.”''
With such statements, the Supreme Court has taken a decidedly utilitarian stance on the subject of patent law. The strictness or laxness of the application of nonobviousness is a balance between rewarding inventiveness and preventing monopoly, both of which are desired, but which act against each other. Justice Douglas argued, in his concurring opinion in the case A&P Tea v. Supermarket Equipment that:
''“Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science-to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge.”''
==Historical Development==
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.
==Origins (pre-1850)==
The use of non-obviousness in determining the validity (or patentability) is a relatively new concept in the history of patents. It is not found in the earliest documents concerning patents. The US Constitution’s section on patents (Article 1, Section8) does not lay out requirements for the eligibility of patents. It reads:
"To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;"
In the first Patent Act (1790) established the process and limitations of the granting of patents, for which the power to do so was granted to the government in the Constitution from the year prior, but was not since explicitly established. Furthermore, Thomas Jefferson, in his writings on the subject of patents and their purpose did not mention nonobviousness or any similar concept.
Because patents must be approved (initially this had to be done through the secretary of state, but later a patent office was established), some similar concept was likely used by the patent office, although it was not a formal and well defined policy, nor did it have a name. The first instance in US History where what would later be called ‘Nonobviousness’ appeared in either written law, court decisions, or any other legally binding form was Hotchkiss v. Greenwood, a Supreme Court case dating from 1850.

==Hotchkiss v. Greenwood (1850)==
The Supreme Court case Hotchkiss v Greenwood (1850) was the first instance where nonobviousness became a legal doctrine in US patent law. The Patent Act of 60 years prior left certain areas of patentability vague, which ultimately led up the this case.

Patent at the center of the case was filed by John Hotchkiss of Connecticut in 1841 for a type of doorknob. The main features of this doorknob, as described in his patent application are:

Clay knob: This material is superior to the wood or metal previously in use due to its durability and strength
Dovetail shank: This method of fastening the shank to the knob is more durable and stronger than other methods
Cast shank: This method of attaching the shank to the knob is both an inexpensive and effective method of forming the shank inside the knob

Hotchkiss argued that such a combination of features results in a doorknob that is superior to previous models and represents a significant advancement. For these reasons, he argued that his patent was valid.

In 1845, Hotchkiss brought a suit against Greenwood for Greenwood’s alleged violation of his patent. As the Supreme Court analyzed the case, they made note of the fact that each of these features had existed prior to Hotchkiss’s patent, although they had never before been used in combination with one another. The defendants used this reasoning to argue that Hotchkiss’s patent invalid, and therefore their product was not in violation of any law. Ultimately, the Supreme Court rejected the patent as being invalid, due to its lack of what would from then on be known as non-obviousness. The Court wrote:

''“The knob was not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank was securely fastened therein. Knobs had also been used made of clay […] The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void, and this was a proper question for the jury.”'' ''Italic text''

This decision established a test for non-obviousness, namely ordinary skill in an art. Simply put, a patent is not valid if its discovery would be obvious to a person having an ordinary level of skill in the subject of the patent. Thus, the basis of the Supreme Court’s decision was that, for a person having an ordinary level of skill in the manufacture of door knobs, the combination of such features would have been obvious.

“The material being in common use, and no other ingenuity or skill being necessary to construct the knob than that of an ordinary mechanic acquainted with the business, the patent is void, and the plaintiffs are not entitled to recover.”

The Supreme Court also ruled that simply because a product is superior, in cost, performance and/or reliability, does not make it automatically patentable, although this may have an effect on other issues or patentability, such as utility. However, if some new, previously unknown method or material was the source of these improvements, the patent may be valid.
==A&P Tea v. Supermarket Equipment (1950)==
A&P Tea v. Supermarket Equipment (1950) further expanded upon the precedent originally set by Hotchkiss v. Greenwood in 1850, 100 years earlier. The invention in question is a three-sided rack that is used on the counter of stores to move the customers merchandise forward to the cashier.
Many of the issues in this case are the same as Hotchkiss v. Greenwood, namely that each component of the patent in question had been in prior use. Similarly, the patent holder argued that his particular combination of components created something both new and useful. The Supreme Court ultimately determined that this patent was simply and extension of a previously existing device and, as such did not contain adequate nonobvious to validate the patent.
The significance of this case is the court’s explanation of what constitutes nonobviousness, which is far more detailed and explicit than the explanation of Hotchkiss v. Greenwood. The Supreme Court itself wrote in this case:
“While this Court has sustained combination patents, it never has ventured to give a precise and comprehensive definition of the test to be applied in such cases. The voluminous literature which the subject has excited discloses no such test.”
The Supreme Court referenced previous court decisions to make the claim that for a patent that is the combination of previously known parts to be valid, the sum of its properties must be greater than the sum of the properties of its components. That is, they must combine in some manner that produces a new or unexpected characteristic.
This patent however, did not exemplify this characteristic and was thus judged to be invalid under this standard. The court notes the practicality and popularity of the device in question, but denies that these as sufficient ground for the validity of the patent.
The major points of the court’s decision in this case can be summarized as:
$ First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
$ Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
$ Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

==US Patent Act of 1952==
The US Patent Act of 1952 made many important changes to the way patents were filed and validated. One of the most important changes was the creation the US Patent and Trademark Office. The Act also made many ideas that had been established as court precedent officially part of the US Code.
Concerning nonobviousness, the standard of ordinary skill, originally established a precedent in the case Hotchkiss v Greenwood (1850) was reaffirmed, being given the official definition as:
“The subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”
(35 USC 103)
The Act also specified what was patentable, changing the word 'art' from the original Patent Act of 1790 to:
"Any new and useful process, machine, manufacture, or composition of matter"

==Lyon v. Bausch & Lomb (1955)==
In the case Lyon v. Bausch & Lomb, additional factors contributing to nonobviousness were established. In the case, in which a patent filed by Dean Lyon for a method for coating optical glass, the presence of a long-felt but unsatisfied need for a certain product or method of production was used as evidence of nonobviousness.
Lyon sued Bausch & Lomb, alleging they violated his patent rights by using his patented method. Bausch & Lomb countered, arguing the patent was invalid due to several similar methods being in practice prior to Lyon's patent.
The critical factor in the case was the fact that none of the previous methods, though similar, were as successful as Lyon's procedure. The court ruled that the failure of previous scientists to achieve what Lyon had done demonstrated that Lyon's process was not obvious to one ordinarily skilled in the art. A long-felt but unsatisfied is not in itself a sufficient requirement for a patent to be valid, but rather can provide evidence to the fact that certain processes are nonobvious, else they would have been discovered by ordinarily skilled men prior.
In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) Learned Hand, in his brilliance, expounded on the new standard thusly:
Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4

==Graham v. John Deere (1966)==
In Graham v. John Deere, 383 U.S. 1 (1966) indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
$ scope and content of the prior art;
$ differences between the prior art and the claims at issue;
$ level of ordinary skill in the pertinent art; and,
$ secondary considerations, including:
$ commercial success of the invention;
$ long-felt but unsolved needs;
$ Failure of others to find a solution, etc.
U.S. v. Adams (1966)
$ 1966: US v. Adams, 383 U.S. 39 (1966) All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.
==Anderson's Black Rock v. Pavement Salvage (1969)==
The Supreme Court case Anderson’s Black Rock v. Pavement Salvage (1969) reaffirmed many of the previous components of nonobviousness. The case centered on a device for paving asphalt which combined both the machine that spread the asphalt and a radiant heat burner. Radiant heat burners were used previously to heat sections of asphalt to enhance bonding but had never before been used for general paving
The Supreme Court ruled that because the radiant heat burner functioned in the same way when combined with the other machine as it did one its own; the patent was no more than a combination of previous inventions and therefore invalid. This reaffirmed the precedent set by Hotchkiss v. Greenwood in 1850.
==Diamond v. Diehr (1981)==
The Supreme Court Case Diamond v. Diehr further built upon the precedent set by Gottschalk v. Benson 9 years prior. The case concerned a method for the manufacture of cured rubber. This case is significant as it determined when processes involving both physical manufacturing as well as software are present.
The process in contention was a method for curing rubber that involved previously known and used equipment controlled by a computer program. The time rubber needs to properly cure is dependent on its temperature; however, it is not possible to measure the temperature at the center of the mass, only the surface. Thus, James Diehr, the applicant in the patent, devised a method of continuously measuring the surface temperature and feeding this data to a computer program, which would successively recalculate curing time.
The patent was originally rejected, because the formula used by the program was seen by the patent office as invalidating the patent as a result of precedent set by Gottschalk v. Benson. However, the Supreme Court decided that this mathematical formula was not the subject of the patent; it was merely a component in the process. Although the mathematical model and physical equipment had all been in use before, their combination in a novel manner resulted in the Supreme Court declaring this patent to be valid. This case set a precedent for the patentability of certain processes involving software and further refined the limits of patentability set by Gottschalk v. Benson.

==Time line of Nonobviousness in US Patent Law==
1789: The US Constitution is ratified, stating that "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries"
1790: First Patent Act established a Patent Board to revue patents, which were to be valid for 14 years for "any useful art, manufacture, engine, machine, or device, or any improvement thereon not before known or used."
1850: Hotchkiss v. Greenwood established Nonobviousness as a precedent and requirement for patentability and defining ordinary skill as a measure of this, stating “The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void.”
1950: A&P Tea v. Supermarket Equipment further refined nonobviousness, stating that “The mere aggregation of a number of old parts or elements which, in aggregation perform or produce no new or different function or operation that that theretofore performed or produced by them, is not patentable invention.”
1952: US Patent Act of 1952 codifies 100 years of court precedent, placing the line “The subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” in Section 103 of the US Code.
1955: Lyon v. Bausch & Lomb established a long-felt but unsatisfied need as evidence of nonobviousness.
1969: Anderson's Black Rock v. Pavement Salvage reaffirms the standards of nonobviousness set originally by A&P Tea v. Supermarket Equipment.
1981: Diamond v. Diehr establishes the nonobviousness (and therefore patentability) of processes that feature software, even if no new physical methods or equipment are used.
Issues in Nonobviousness
Ordinary skill in the art: A test originally set by Hotchkiss v. Greenwood. It stipulates that if an invention would have been obvious to a person with ordinary skill in the field of the patent, it is obvious and therefore unpatentable.
Combinations: As judged in Anderson's Black Rock v. Pavement Salvage and Hotchkiss Greenwood, a combination of previous devices is only valid if they behave in a new or unexpected way and are not simply a sum of the previous functions.
Long-felt unsatisfied need: The case Lyon v. Bausch & Lomb established the presence of a long-felt but unsatisfied need, which is ultimately satisfied by the invention, as a test that can be used to show nonobviousness.
Suggestion to Combine
In Re Rouffet deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.
"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Objective Tests==
Two important considerations were the focus of Hybritech v. Monoclonal Antiboties, 802 F.2d 1375.
$ A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
$ The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they must be considered by the court.
$ This case also considers the concept of enablement which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.
==The Inventive Step==
==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==
Reiner v. I. Leon Co. (full text)
Reiner v. I. Leon Co.
South Corp. v. US (full text)
South Corp. v. US

Godshall: Nonobviousness

2011-02-08T04:01:01Z

901281608:

=='''Relation to Purpose of Patents'''==
The purpose of patents, as stated in the US Constitution is:
"To promote the Progress of Science and useful Arts”
Thus it can be said that the purpose of patents is largely practical and utilitarian. Thomas Jefferson, himself one of the driving forces behind the Constitution, concurred on this point, arguing that ideas are available to everyone and cannot be restricted by law. An inventor does not have an inherent and fundamental right to his patent under property law, but rather it is a necessary and practical matter whose purpose is to encourage inventiveness by rewarding the inventor. The limited monopoly is a reward for creating a new invention that is beneficial for society.
Without the application of the standard of nonobviousness, the advancement of useful products would be impeded, as improvements coming from the modification or combination of previous components would be obstructed. The court’s opinion in the case A&P Tea v. Supermarket Equipment (1950) states:
“The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.”
With such statements, the Supreme Court has taken a decidedly utilitarian stance on the subject of patent law. The strictness or laxness of the application of nonobviousness is a balance between rewarding inventiveness and preventing monopoly, both of which are desired, but which act against each other. Justice Douglas argued, in his concurring opinion in the case A&P Tea v. Supermarket Equipment that:
“Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science-to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge.”
==Historical Development==
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.
==Origins (pre-1850)==
The use of non-obviousness in determining the validity (or patentability) is a relatively new concept in the history of patents. It is not found in the earliest documents concerning patents. The US Constitution’s section on patents (Article 1, Section8) does not lay out requirements for the eligibility of patents. It reads:
"To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;"
In the first Patent Act (1790) established the process and limitations of the granting of patents, for which the power to do so was granted to the government in the Constitution from the year prior, but was not since explicitly established. Furthermore, Thomas Jefferson, in his writings on the subject of patents and their purpose did not mention nonobviousness or any similar concept.
Because patents must be approved (initially this had to be done through the secretary of state, but later a patent office was established), some similar concept was likely used by the patent office, although it was not a formal and well defined policy, nor did it have a name. The first instance in US History where what would later be called ‘Nonobviousness’ appeared in either written law, court decisions, or any other legally binding form was Hotchkiss v. Greenwood, a Supreme Court case dating from 1850.
==Hotchkiss v. Greenwood (1850)==
The Supreme Court case Hotchkiss v Greenwood (1850) was the first instance where nonobviousness became a legal doctrine in US patent law. The Patent Act of 60 years prior left certain areas of patentability vague, which ultimately led up the this case.

Patent at the center of the case was filed by John Hotchkiss of Connecticut in 1841 for a type of doorknob. The main features of this doorknob, as described in his patent application are:

$ Clay knob: This material is superior to the wood or metal previously in use due to its durability and strength
$ Dovetail shank: This method of fastening the shank to the knob is more durable and stronger than other methods
$ Cast shank: This method of attaching the shank to the knob is both an inexpensive and effective method of forming the shank inside the knob

Hotchkiss argued that such a combination of features results in a doorknob that is superior to previous models and represents a significant advancement. For these reasons, he argued that his patent was valid.

In 1845, Hotchkiss brought a suit against Greenwood for Greenwood’s alleged violation of his patent. As the Supreme Court analyzed the case, they made note of the fact that each of these features had existed prior to Hotchkiss’s patent, although they had never before been used in combination with one another. The defendants used this reasoning to argue that Hotchkiss’s patent invalid, and therefore their product was not in violation of any law. Ultimately, the Supreme Court rejected the patent as being invalid, due to its lack of what would from then on be known as non-obviousness. The Court wrote:

“The knob was not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank was securely fastened therein. Knobs had also been used made of clay […] The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void, and this was a proper question for the jury.”

This decision established a test for non-obviousness, namely ordinary skill in an art. Simply put, a patent is not valid if its discovery would be obvious to a person having an ordinary level of skill in the subject of the patent. Thus, the basis of the Supreme Court’s decision was that, for a person having an ordinary level of skill in the manufacture of door knobs, the combination of such features would have been obvious.

“The material being in common use, and no other ingenuity or skill being necessary to construct the knob than that of an ordinary mechanic acquainted with the business, the patent is void, and the plaintiffs are not entitled to recover.”

The Supreme Court also ruled that simply because a product is superior, in cost, performance and/or reliability, does not make it automatically patentable, although this may have an effect on other issues or patentability, such as utility. However, if some new, previously unknown method or material was the source of these improvements, the patent may be valid.
==A&P Tea v. Supermarket Equipment (1950)==
A&P Tea v. Supermarket Equipment (1950) further expanded upon the precedent originally set by Hotchkiss v. Greenwood in 1850, 100 years earlier. The invention in question is a three-sided rack that is used on the counter of stores to move the customers merchandise forward to the cashier.
Many of the issues in this case are the same as Hotchkiss v. Greenwood, namely that each component of the patent in question had been in prior use. Similarly, the patent holder argued that his particular combination of components created something both new and useful. The Supreme Court ultimately determined that this patent was simply and extension of a previously existing device and, as such did not contain adequate nonobvious to validate the patent.
The significance of this case is the court’s explanation of what constitutes nonobviousness, which is far more detailed and explicit than the explanation of Hotchkiss v. Greenwood. The Supreme Court itself wrote in this case:
“While this Court has sustained combination patents, it never has ventured to give a precise and comprehensive definition of the test to be applied in such cases. The voluminous literature which the subject has excited discloses no such test.”
The Supreme Court referenced previous court decisions to make the claim that for a patent that is the combination of previously known parts to be valid, the sum of its properties must be greater than the sum of the properties of its components. That is, they must combine in some manner that produces a new or unexpected characteristic.
This patent however, did not exemplify this characteristic and was thus judged to be invalid under this standard. The court notes the practicality and popularity of the device in question, but denies that these as sufficient ground for the validity of the patent.
The major points of the court’s decision in this case can be summarized as:
$ First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
$ Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
$ Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

==US Patent Act of 1952==
The US Patent Act of 1952 made many important changes to the way patents were filed and validated. One of the most important changes was the creation the US Patent and Trademark Office. The Act also made many ideas that had been established as court precedent officially part of the US Code.
Concerning nonobviousness, the standard of ordinary skill, originally established a precedent in the case Hotchkiss v Greenwood (1850) was reaffirmed, being given the official definition as:
“The subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”
(35 USC 103)
The Act also specified what was patentable, changing the word 'art' from the original Patent Act of 1790 to:
"Any new and useful process, machine, manufacture, or composition of matter"

==Lyon v. Bausch & Lomb (1955)==
In the case Lyon v. Bausch & Lomb, additional factors contributing to nonobviousness were established. In the case, in which a patent filed by Dean Lyon for a method for coating optical glass, the presence of a long-felt but unsatisfied need for a certain product or method of production was used as evidence of nonobviousness.
Lyon sued Bausch & Lomb, alleging they violated his patent rights by using his patented method. Bausch & Lomb countered, arguing the patent was invalid due to several similar methods being in practice prior to Lyon's patent.
The critical factor in the case was the fact that none of the previous methods, though similar, were as successful as Lyon's procedure. The court ruled that the failure of previous scientists to achieve what Lyon had done demonstrated that Lyon's process was not obvious to one ordinarily skilled in the art. A long-felt but unsatisfied is not in itself a sufficient requirement for a patent to be valid, but rather can provide evidence to the fact that certain processes are nonobvious, else they would have been discovered by ordinarily skilled men prior.
In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) Learned Hand, in his brilliance, expounded on the new standard thusly:
Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4

==Graham v. John Deere (1966)==
In Graham v. John Deere, 383 U.S. 1 (1966) indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
$ scope and content of the prior art;
$ differences between the prior art and the claims at issue;
$ level of ordinary skill in the pertinent art; and,
$ secondary considerations, including:
$ commercial success of the invention;
$ long-felt but unsolved needs;
$ Failure of others to find a solution, etc.
U.S. v. Adams (1966)
$ 1966: US v. Adams, 383 U.S. 39 (1966) All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.
==Anderson's Black Rock v. Pavement Salvage (1969)==
The Supreme Court case Anderson’s Black Rock v. Pavement Salvage (1969) reaffirmed many of the previous components of nonobviousness. The case centered on a device for paving asphalt which combined both the machine that spread the asphalt and a radiant heat burner. Radiant heat burners were used previously to heat sections of asphalt to enhance bonding but had never before been used for general paving
The Supreme Court ruled that because the radiant heat burner functioned in the same way when combined with the other machine as it did one its own; the patent was no more than a combination of previous inventions and therefore invalid. This reaffirmed the precedent set by Hotchkiss v. Greenwood in 1850.
==Diamond v. Diehr (1981)==
The Supreme Court Case Diamond v. Diehr further built upon the precedent set by Gottschalk v. Benson 9 years prior. The case concerned a method for the manufacture of cured rubber. This case is significant as it determined when processes involving both physical manufacturing as well as software are present.
The process in contention was a method for curing rubber that involved previously known and used equipment controlled by a computer program. The time rubber needs to properly cure is dependent on its temperature; however, it is not possible to measure the temperature at the center of the mass, only the surface. Thus, James Diehr, the applicant in the patent, devised a method of continuously measuring the surface temperature and feeding this data to a computer program, which would successively recalculate curing time.
The patent was originally rejected, because the formula used by the program was seen by the patent office as invalidating the patent as a result of precedent set by Gottschalk v. Benson. However, the Supreme Court decided that this mathematical formula was not the subject of the patent; it was merely a component in the process. Although the mathematical model and physical equipment had all been in use before, their combination in a novel manner resulted in the Supreme Court declaring this patent to be valid. This case set a precedent for the patentability of certain processes involving software and further refined the limits of patentability set by Gottschalk v. Benson.

==Time line of Nonobviousness in US Patent Law==
1789: The US Constitution is ratified, stating that "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries"
1790: First Patent Act established a Patent Board to revue patents, which were to be valid for 14 years for "any useful art, manufacture, engine, machine, or device, or any improvement thereon not before known or used."
1850: Hotchkiss v. Greenwood established Nonobviousness as a precedent and requirement for patentability and defining ordinary skill as a measure of this, stating “The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void.”
1950: A&P Tea v. Supermarket Equipment further refined nonobviousness, stating that “The mere aggregation of a number of old parts or elements which, in aggregation perform or produce no new or different function or operation that that theretofore performed or produced by them, is not patentable invention.”
1952: US Patent Act of 1952 codifies 100 years of court precedent, placing the line “The subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” in Section 103 of the US Code.
1955: Lyon v. Bausch & Lomb established a long-felt but unsatisfied need as evidence of nonobviousness.
1969: Anderson's Black Rock v. Pavement Salvage reaffirms the standards of nonobviousness set originally by A&P Tea v. Supermarket Equipment.
1981: Diamond v. Diehr establishes the nonobviousness (and therefore patentability) of processes that feature software, even if no new physical methods or equipment are used.
Issues in Nonobviousness
Ordinary skill in the art: A test originally set by Hotchkiss v. Greenwood. It stipulates that if an invention would have been obvious to a person with ordinary skill in the field of the patent, it is obvious and therefore unpatentable.
Combinations: As judged in Anderson's Black Rock v. Pavement Salvage and Hotchkiss Greenwood, a combination of previous devices is only valid if they behave in a new or unexpected way and are not simply a sum of the previous functions.
Long-felt unsatisfied need: The case Lyon v. Bausch & Lomb established the presence of a long-felt but unsatisfied need, which is ultimately satisfied by the invention, as a test that can be used to show nonobviousness.
Suggestion to Combine
In Re Rouffet deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.
"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Objective Tests==
Two important considerations were the focus of Hybritech v. Monoclonal Antiboties, 802 F.2d 1375.
$ A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
$ The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they must be considered by the court.
$ This case also considers the concept of enablement which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.
==The Inventive Step==
==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==
Reiner v. I. Leon Co. (full text)
Reiner v. I. Leon Co.
South Corp. v. US (full text)
South Corp. v. US

Godshall: Nonobviousness

2011-02-08T03:59:57Z

901281608:

=='''Relation to Purpose of Patents'''==
The purpose of patents, as stated in the US Constitution is:
"To promote the Progress of Science and useful Arts”
Thus it can be said that the purpose of patents is largely practical and utilitarian. Thomas Jefferson, himself one of the driving forces behind the Constitution, concurred on this point, arguing that ideas are available to everyone and cannot be restricted by law. An inventor does not have an inherent and fundamental right to his patent under property law, but rather it is a necessary and practical matter whose purpose is to encourage inventiveness by rewarding the inventor. The limited monopoly is a reward for creating a new invention that is beneficial for society.
Without the application of the standard of nonobviousness, the advancement of useful products would be impeded, as improvements coming from the modification or combination of previous components would be obstructed. The court’s opinion in the case A&P Tea v. Supermarket Equipment (1950) states:
“The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.”
With such statements, the Supreme Court has taken a decidedly utilitarian stance on the subject of patent law. The strictness or laxness of the application of nonobviousness is a balance between rewarding inventiveness and preventing monopoly, both of which are desired, but which act against each other. Justice Douglas argued, in his concurring opinion in the case A&P Tea v. Supermarket Equipment that:
“Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science-to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge.”
Historical Development
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.
Origins (pre-1850)
The use of non-obviousness in determining the validity (or patentability) is a relatively new concept in the history of patents. It is not found in the earliest documents concerning patents. The US Constitution’s section on patents (Article 1, Section8) does not lay out requirements for the eligibility of patents. It reads:
"To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;"
In the first Patent Act (1790) established the process and limitations of the granting of patents, for which the power to do so was granted to the government in the Constitution from the year prior, but was not since explicitly established. Furthermore, Thomas Jefferson, in his writings on the subject of patents and their purpose did not mention nonobviousness or any similar concept.
Because patents must be approved (initially this had to be done through the secretary of state, but later a patent office was established), some similar concept was likely used by the patent office, although it was not a formal and well defined policy, nor did it have a name. The first instance in US History where what would later be called ‘Nonobviousness’ appeared in either written law, court decisions, or any other legally binding form was Hotchkiss v. Greenwood, a Supreme Court case dating from 1850.
Hotchkiss v. Greenwood (1850)
The Supreme Court case Hotchkiss v Greenwood (1850) was the first instance where nonobviousness became a legal doctrine in US patent law. The Patent Act of 60 years prior left certain areas of patentability vague, which ultimately led up the this case.

Patent at the center of the case was filed by John Hotchkiss of Connecticut in 1841 for a type of doorknob. The main features of this doorknob, as described in his patent application are:

$ Clay knob: This material is superior to the wood or metal previously in use due to its durability and strength
$ Dovetail shank: This method of fastening the shank to the knob is more durable and stronger than other methods
$ Cast shank: This method of attaching the shank to the knob is both an inexpensive and effective method of forming the shank inside the knob

Hotchkiss argued that such a combination of features results in a doorknob that is superior to previous models and represents a significant advancement. For these reasons, he argued that his patent was valid.

In 1845, Hotchkiss brought a suit against Greenwood for Greenwood’s alleged violation of his patent. As the Supreme Court analyzed the case, they made note of the fact that each of these features had existed prior to Hotchkiss’s patent, although they had never before been used in combination with one another. The defendants used this reasoning to argue that Hotchkiss’s patent invalid, and therefore their product was not in violation of any law. Ultimately, the Supreme Court rejected the patent as being invalid, due to its lack of what would from then on be known as non-obviousness. The Court wrote:

“The knob was not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank was securely fastened therein. Knobs had also been used made of clay […] The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void, and this was a proper question for the jury.”

This decision established a test for non-obviousness, namely ordinary skill in an art. Simply put, a patent is not valid if its discovery would be obvious to a person having an ordinary level of skill in the subject of the patent. Thus, the basis of the Supreme Court’s decision was that, for a person having an ordinary level of skill in the manufacture of door knobs, the combination of such features would have been obvious.

“The material being in common use, and no other ingenuity or skill being necessary to construct the knob than that of an ordinary mechanic acquainted with the business, the patent is void, and the plaintiffs are not entitled to recover.”

The Supreme Court also ruled that simply because a product is superior, in cost, performance and/or reliability, does not make it automatically patentable, although this may have an effect on other issues or patentability, such as utility. However, if some new, previously unknown method or material was the source of these improvements, the patent may be valid.
A&P Tea v. Supermarket Equipment (1950)
A&P Tea v. Supermarket Equipment (1950) further expanded upon the precedent originally set by Hotchkiss v. Greenwood in 1850, 100 years earlier. The invention in question is a three-sided rack that is used on the counter of stores to move the customers merchandise forward to the cashier.
Many of the issues in this case are the same as Hotchkiss v. Greenwood, namely that each component of the patent in question had been in prior use. Similarly, the patent holder argued that his particular combination of components created something both new and useful. The Supreme Court ultimately determined that this patent was simply and extension of a previously existing device and, as such did not contain adequate nonobvious to validate the patent.
The significance of this case is the court’s explanation of what constitutes nonobviousness, which is far more detailed and explicit than the explanation of Hotchkiss v. Greenwood. The Supreme Court itself wrote in this case:
“While this Court has sustained combination patents, it never has ventured to give a precise and comprehensive definition of the test to be applied in such cases. The voluminous literature which the subject has excited discloses no such test.”
The Supreme Court referenced previous court decisions to make the claim that for a patent that is the combination of previously known parts to be valid, the sum of its properties must be greater than the sum of the properties of its components. That is, they must combine in some manner that produces a new or unexpected characteristic.
This patent however, did not exemplify this characteristic and was thus judged to be invalid under this standard. The court notes the practicality and popularity of the device in question, but denies that these as sufficient ground for the validity of the patent.
The major points of the court’s decision in this case can be summarized as:
$ First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
$ Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
$ Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

US Patent Act of 1952
The US Patent Act of 1952 made many important changes to the way patents were filed and validated. One of the most important changes was the creation the US Patent and Trademark Office. The Act also made many ideas that had been established as court precedent officially part of the US Code.
Concerning nonobviousness, the standard of ordinary skill, originally established a precedent in the case Hotchkiss v Greenwood (1850) was reaffirmed, being given the official definition as:
“The subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”
(35 USC 103)
The Act also specified what was patentable, changing the word 'art' from the original Patent Act of 1790 to:
"Any new and useful process, machine, manufacture, or composition of matter"

Lyon v. Bausch & Lomb (1955)
In the case Lyon v. Bausch & Lomb, additional factors contributing to nonobviousness were established. In the case, in which a patent filed by Dean Lyon for a method for coating optical glass, the presence of a long-felt but unsatisfied need for a certain product or method of production was used as evidence of nonobviousness.
Lyon sued Bausch & Lomb, alleging they violated his patent rights by using his patented method. Bausch & Lomb countered, arguing the patent was invalid due to several similar methods being in practice prior to Lyon's patent.
The critical factor in the case was the fact that none of the previous methods, though similar, were as successful as Lyon's procedure. The court ruled that the failure of previous scientists to achieve what Lyon had done demonstrated that Lyon's process was not obvious to one ordinarily skilled in the art. A long-felt but unsatisfied is not in itself a sufficient requirement for a patent to be valid, but rather can provide evidence to the fact that certain processes are nonobvious, else they would have been discovered by ordinarily skilled men prior.
In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) Learned Hand, in his brilliance, expounded on the new standard thusly:
Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4

Graham v. John Deere (1966)
In Graham v. John Deere, 383 U.S. 1 (1966) indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
$ scope and content of the prior art;
$ differences between the prior art and the claims at issue;
$ level of ordinary skill in the pertinent art; and,
$ secondary considerations, including:
$ commercial success of the invention;
$ long-felt but unsolved needs;
$ Failure of others to find a solution, etc.
U.S. v. Adams (1966)
$ 1966: US v. Adams, 383 U.S. 39 (1966) All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.
Anderson's Black Rock v. Pavement Salvage (1969)
The Supreme Court case Anderson’s Black Rock v. Pavement Salvage (1969) reaffirmed many of the previous components of nonobviousness. The case centered on a device for paving asphalt which combined both the machine that spread the asphalt and a radiant heat burner. Radiant heat burners were used previously to heat sections of asphalt to enhance bonding but had never before been used for general paving
The Supreme Court ruled that because the radiant heat burner functioned in the same way when combined with the other machine as it did one its own; the patent was no more than a combination of previous inventions and therefore invalid. This reaffirmed the precedent set by Hotchkiss v. Greenwood in 1850.
Diamond v. Diehr (1981)
The Supreme Court Case Diamond v. Diehr further built upon the precedent set by Gottschalk v. Benson 9 years prior. The case concerned a method for the manufacture of cured rubber. This case is significant as it determined when processes involving both physical manufacturing as well as software are present.
The process in contention was a method for curing rubber that involved previously known and used equipment controlled by a computer program. The time rubber needs to properly cure is dependent on its temperature; however, it is not possible to measure the temperature at the center of the mass, only the surface. Thus, James Diehr, the applicant in the patent, devised a method of continuously measuring the surface temperature and feeding this data to a computer program, which would successively recalculate curing time.
The patent was originally rejected, because the formula used by the program was seen by the patent office as invalidating the patent as a result of precedent set by Gottschalk v. Benson. However, the Supreme Court decided that this mathematical formula was not the subject of the patent; it was merely a component in the process. Although the mathematical model and physical equipment had all been in use before, their combination in a novel manner resulted in the Supreme Court declaring this patent to be valid. This case set a precedent for the patentability of certain processes involving software and further refined the limits of patentability set by Gottschalk v. Benson.

Time line of Nonobviousness in US Patent Law
1789: The US Constitution is ratified, stating that "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries"
1790: First Patent Act established a Patent Board to revue patents, which were to be valid for 14 years for "any useful art, manufacture, engine, machine, or device, or any improvement thereon not before known or used."
1850: Hotchkiss v. Greenwood established Nonobviousness as a precedent and requirement for patentability and defining ordinary skill as a measure of this, stating “The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void.”
1950: A&P Tea v. Supermarket Equipment further refined nonobviousness, stating that “The mere aggregation of a number of old parts or elements which, in aggregation perform or produce no new or different function or operation that that theretofore performed or produced by them, is not patentable invention.”
1952: US Patent Act of 1952 codifies 100 years of court precedent, placing the line “The subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” in Section 103 of the US Code.
1955: Lyon v. Bausch & Lomb established a long-felt but unsatisfied need as evidence of nonobviousness.
1969: Anderson's Black Rock v. Pavement Salvage reaffirms the standards of nonobviousness set originally by A&P Tea v. Supermarket Equipment.
1981: Diamond v. Diehr establishes the nonobviousness (and therefore patentability) of processes that feature software, even if no new physical methods or equipment are used.
Issues in Nonobviousness
Ordinary skill in the art: A test originally set by Hotchkiss v. Greenwood. It stipulates that if an invention would have been obvious to a person with ordinary skill in the field of the patent, it is obvious and therefore unpatentable.
Combinations: As judged in Anderson's Black Rock v. Pavement Salvage and Hotchkiss Greenwood, a combination of previous devices is only valid if they behave in a new or unexpected way and are not simply a sum of the previous functions.
Long-felt unsatisfied need: The case Lyon v. Bausch & Lomb established the presence of a long-felt but unsatisfied need, which is ultimately satisfied by the invention, as a test that can be used to show nonobviousness.
Suggestion to Combine
In Re Rouffet deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.
"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

Objective Tests
Two important considerations were the focus of Hybritech v. Monoclonal Antiboties, 802 F.2d 1375.
$ A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
$ The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they must be considered by the court.
$ This case also considers the concept of enablement which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.
The Inventive Step
Relationship with Novelty
Nonobviousness vs. Invention
Secondary Considerations
Ordinary Skill in the Art
Reiner v. I. Leon Co. (full text)
Reiner v. I. Leon Co.
South Corp. v. US (full text)
South Corp. v. US

Godshall: Nonobviousness

2011-02-08T03:59:16Z

901281608: Created page with "Relation to Purpose of Patents The purpose of patents, as stated in the US Constitution is: "To promote the Progress of Science and useful Arts” Thus it can be said that the p..."

Relation to Purpose of Patents
The purpose of patents, as stated in the US Constitution is:
"To promote the Progress of Science and useful Arts”
Thus it can be said that the purpose of patents is largely practical and utilitarian. Thomas Jefferson, himself one of the driving forces behind the Constitution, concurred on this point, arguing that ideas are available to everyone and cannot be restricted by law. An inventor does not have an inherent and fundamental right to his patent under property law, but rather it is a necessary and practical matter whose purpose is to encourage inventiveness by rewarding the inventor. The limited monopoly is a reward for creating a new invention that is beneficial for society.
Without the application of the standard of nonobviousness, the advancement of useful products would be impeded, as improvements coming from the modification or combination of previous components would be obstructed. The court’s opinion in the case A&P Tea v. Supermarket Equipment (1950) states:
“The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.”
With such statements, the Supreme Court has taken a decidedly utilitarian stance on the subject of patent law. The strictness or laxness of the application of nonobviousness is a balance between rewarding inventiveness and preventing monopoly, both of which are desired, but which act against each other. Justice Douglas argued, in his concurring opinion in the case A&P Tea v. Supermarket Equipment that:
“Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science-to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge.”
Historical Development
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.
Origins (pre-1850)
The use of non-obviousness in determining the validity (or patentability) is a relatively new concept in the history of patents. It is not found in the earliest documents concerning patents. The US Constitution’s section on patents (Article 1, Section8) does not lay out requirements for the eligibility of patents. It reads:
"To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;"
In the first Patent Act (1790) established the process and limitations of the granting of patents, for which the power to do so was granted to the government in the Constitution from the year prior, but was not since explicitly established. Furthermore, Thomas Jefferson, in his writings on the subject of patents and their purpose did not mention nonobviousness or any similar concept.
Because patents must be approved (initially this had to be done through the secretary of state, but later a patent office was established), some similar concept was likely used by the patent office, although it was not a formal and well defined policy, nor did it have a name. The first instance in US History where what would later be called ‘Nonobviousness’ appeared in either written law, court decisions, or any other legally binding form was Hotchkiss v. Greenwood, a Supreme Court case dating from 1850.
Hotchkiss v. Greenwood (1850)
The Supreme Court case Hotchkiss v Greenwood (1850) was the first instance where nonobviousness became a legal doctrine in US patent law. The Patent Act of 60 years prior left certain areas of patentability vague, which ultimately led up the this case.

Patent at the center of the case was filed by John Hotchkiss of Connecticut in 1841 for a type of doorknob. The main features of this doorknob, as described in his patent application are:

$ Clay knob: This material is superior to the wood or metal previously in use due to its durability and strength
$ Dovetail shank: This method of fastening the shank to the knob is more durable and stronger than other methods
$ Cast shank: This method of attaching the shank to the knob is both an inexpensive and effective method of forming the shank inside the knob

Hotchkiss argued that such a combination of features results in a doorknob that is superior to previous models and represents a significant advancement. For these reasons, he argued that his patent was valid.

In 1845, Hotchkiss brought a suit against Greenwood for Greenwood’s alleged violation of his patent. As the Supreme Court analyzed the case, they made note of the fact that each of these features had existed prior to Hotchkiss’s patent, although they had never before been used in combination with one another. The defendants used this reasoning to argue that Hotchkiss’s patent invalid, and therefore their product was not in violation of any law. Ultimately, the Supreme Court rejected the patent as being invalid, due to its lack of what would from then on be known as non-obviousness. The Court wrote:

“The knob was not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank was securely fastened therein. Knobs had also been used made of clay […] The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void, and this was a proper question for the jury.”

This decision established a test for non-obviousness, namely ordinary skill in an art. Simply put, a patent is not valid if its discovery would be obvious to a person having an ordinary level of skill in the subject of the patent. Thus, the basis of the Supreme Court’s decision was that, for a person having an ordinary level of skill in the manufacture of door knobs, the combination of such features would have been obvious.

“The material being in common use, and no other ingenuity or skill being necessary to construct the knob than that of an ordinary mechanic acquainted with the business, the patent is void, and the plaintiffs are not entitled to recover.”

The Supreme Court also ruled that simply because a product is superior, in cost, performance and/or reliability, does not make it automatically patentable, although this may have an effect on other issues or patentability, such as utility. However, if some new, previously unknown method or material was the source of these improvements, the patent may be valid.
A&P Tea v. Supermarket Equipment (1950)
A&P Tea v. Supermarket Equipment (1950) further expanded upon the precedent originally set by Hotchkiss v. Greenwood in 1850, 100 years earlier. The invention in question is a three-sided rack that is used on the counter of stores to move the customers merchandise forward to the cashier.
Many of the issues in this case are the same as Hotchkiss v. Greenwood, namely that each component of the patent in question had been in prior use. Similarly, the patent holder argued that his particular combination of components created something both new and useful. The Supreme Court ultimately determined that this patent was simply and extension of a previously existing device and, as such did not contain adequate nonobvious to validate the patent.
The significance of this case is the court’s explanation of what constitutes nonobviousness, which is far more detailed and explicit than the explanation of Hotchkiss v. Greenwood. The Supreme Court itself wrote in this case:
“While this Court has sustained combination patents, it never has ventured to give a precise and comprehensive definition of the test to be applied in such cases. The voluminous literature which the subject has excited discloses no such test.”
The Supreme Court referenced previous court decisions to make the claim that for a patent that is the combination of previously known parts to be valid, the sum of its properties must be greater than the sum of the properties of its components. That is, they must combine in some manner that produces a new or unexpected characteristic.
This patent however, did not exemplify this characteristic and was thus judged to be invalid under this standard. The court notes the practicality and popularity of the device in question, but denies that these as sufficient ground for the validity of the patent.
The major points of the court’s decision in this case can be summarized as:
$ First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
$ Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
$ Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

US Patent Act of 1952
The US Patent Act of 1952 made many important changes to the way patents were filed and validated. One of the most important changes was the creation the US Patent and Trademark Office. The Act also made many ideas that had been established as court precedent officially part of the US Code.
Concerning nonobviousness, the standard of ordinary skill, originally established a precedent in the case Hotchkiss v Greenwood (1850) was reaffirmed, being given the official definition as:
“The subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”
(35 USC 103)
The Act also specified what was patentable, changing the word 'art' from the original Patent Act of 1790 to:
"Any new and useful process, machine, manufacture, or composition of matter"

Lyon v. Bausch & Lomb (1955)
In the case Lyon v. Bausch & Lomb, additional factors contributing to nonobviousness were established. In the case, in which a patent filed by Dean Lyon for a method for coating optical glass, the presence of a long-felt but unsatisfied need for a certain product or method of production was used as evidence of nonobviousness.
Lyon sued Bausch & Lomb, alleging they violated his patent rights by using his patented method. Bausch & Lomb countered, arguing the patent was invalid due to several similar methods being in practice prior to Lyon's patent.
The critical factor in the case was the fact that none of the previous methods, though similar, were as successful as Lyon's procedure. The court ruled that the failure of previous scientists to achieve what Lyon had done demonstrated that Lyon's process was not obvious to one ordinarily skilled in the art. A long-felt but unsatisfied is not in itself a sufficient requirement for a patent to be valid, but rather can provide evidence to the fact that certain processes are nonobvious, else they would have been discovered by ordinarily skilled men prior.
In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) Learned Hand, in his brilliance, expounded on the new standard thusly:
Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4

Graham v. John Deere (1966)
In Graham v. John Deere, 383 U.S. 1 (1966) indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
$ scope and content of the prior art;
$ differences between the prior art and the claims at issue;
$ level of ordinary skill in the pertinent art; and,
$ secondary considerations, including:
$ commercial success of the invention;
$ long-felt but unsolved needs;
$ Failure of others to find a solution, etc.
U.S. v. Adams (1966)
$ 1966: US v. Adams, 383 U.S. 39 (1966) All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.
Anderson's Black Rock v. Pavement Salvage (1969)
The Supreme Court case Anderson’s Black Rock v. Pavement Salvage (1969) reaffirmed many of the previous components of nonobviousness. The case centered on a device for paving asphalt which combined both the machine that spread the asphalt and a radiant heat burner. Radiant heat burners were used previously to heat sections of asphalt to enhance bonding but had never before been used for general paving
The Supreme Court ruled that because the radiant heat burner functioned in the same way when combined with the other machine as it did one its own; the patent was no more than a combination of previous inventions and therefore invalid. This reaffirmed the precedent set by Hotchkiss v. Greenwood in 1850.
Diamond v. Diehr (1981)
The Supreme Court Case Diamond v. Diehr further built upon the precedent set by Gottschalk v. Benson 9 years prior. The case concerned a method for the manufacture of cured rubber. This case is significant as it determined when processes involving both physical manufacturing as well as software are present.
The process in contention was a method for curing rubber that involved previously known and used equipment controlled by a computer program. The time rubber needs to properly cure is dependent on its temperature; however, it is not possible to measure the temperature at the center of the mass, only the surface. Thus, James Diehr, the applicant in the patent, devised a method of continuously measuring the surface temperature and feeding this data to a computer program, which would successively recalculate curing time.
The patent was originally rejected, because the formula used by the program was seen by the patent office as invalidating the patent as a result of precedent set by Gottschalk v. Benson. However, the Supreme Court decided that this mathematical formula was not the subject of the patent; it was merely a component in the process. Although the mathematical model and physical equipment had all been in use before, their combination in a novel manner resulted in the Supreme Court declaring this patent to be valid. This case set a precedent for the patentability of certain processes involving software and further refined the limits of patentability set by Gottschalk v. Benson.

Time line of Nonobviousness in US Patent Law
1789: The US Constitution is ratified, stating that "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries"
1790: First Patent Act established a Patent Board to revue patents, which were to be valid for 14 years for "any useful art, manufacture, engine, machine, or device, or any improvement thereon not before known or used."
1850: Hotchkiss v. Greenwood established Nonobviousness as a precedent and requirement for patentability and defining ordinary skill as a measure of this, stating “The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void.”
1950: A&P Tea v. Supermarket Equipment further refined nonobviousness, stating that “The mere aggregation of a number of old parts or elements which, in aggregation perform or produce no new or different function or operation that that theretofore performed or produced by them, is not patentable invention.”
1952: US Patent Act of 1952 codifies 100 years of court precedent, placing the line “The subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” in Section 103 of the US Code.
1955: Lyon v. Bausch & Lomb established a long-felt but unsatisfied need as evidence of nonobviousness.
1969: Anderson's Black Rock v. Pavement Salvage reaffirms the standards of nonobviousness set originally by A&P Tea v. Supermarket Equipment.
1981: Diamond v. Diehr establishes the nonobviousness (and therefore patentability) of processes that feature software, even if no new physical methods or equipment are used.
Issues in Nonobviousness
Ordinary skill in the art: A test originally set by Hotchkiss v. Greenwood. It stipulates that if an invention would have been obvious to a person with ordinary skill in the field of the patent, it is obvious and therefore unpatentable.
Combinations: As judged in Anderson's Black Rock v. Pavement Salvage and Hotchkiss Greenwood, a combination of previous devices is only valid if they behave in a new or unexpected way and are not simply a sum of the previous functions.
Long-felt unsatisfied need: The case Lyon v. Bausch & Lomb established the presence of a long-felt but unsatisfied need, which is ultimately satisfied by the invention, as a test that can be used to show nonobviousness.
Suggestion to Combine
In Re Rouffet deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.
"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

Objective Tests
Two important considerations were the focus of Hybritech v. Monoclonal Antiboties, 802 F.2d 1375.
$ A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
$ The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they must be considered by the court.
$ This case also considers the concept of enablement which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.
The Inventive Step
Relationship with Novelty
Nonobviousness vs. Invention
Secondary Considerations
Ordinary Skill in the Art
Reiner v. I. Leon Co. (full text)
Reiner v. I. Leon Co.
South Corp. v. US (full text)
South Corp. v. US

Kgodshal Homework 1

2011-02-04T02:13:09Z

901281608: Created page with "Patent 4,529,056: Mechanism for the spring-cushioning of a vehicle wheel Date issued: July 16, 1985 This invention is an improved means to absorb and dampen shocks and vibrat..."

Patent 4,529,056: Mechanism for the spring-cushioning of a vehicle wheel

Date issued: July 16, 1985

This invention is an improved means to absorb and dampen shocks and vibrations for vehicle wheels similar to the rear wheel of a bicycle or motorcycle. It features a spring an dampener which connect from the wheel to the frame of the vehicle using an assemble of rods and revolute joints. This has an advantage over previous mechanisms as it does not place the fork under a bending moment and because it can be adjusted to alter the hardness of the damping. I chose this patent, as I am interested in the kinetics and solid mechanics of machine. Additionally, this patent seemed to have the right amount of complexity and similar products exist for it to be compared to. This patent can be found at: http://www.google.com/patents?id=mhg7AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false

Kgodshal Homework 2

2011-02-04T02:12:27Z

901281608:

Homework 2

ntroduction: Comparison of patents to Patent 4529056: Mechanism for the Spring-cushioning of a vehicle wheel Patent 4529056 Mechanism for the Spring-cushioning of a vehicle wheel is for a mechanics consisting of a series of links and revolute joints as well as a spring and damper designed to absorb shocks on the rear wheel of a two wheeled vehicle, such as a bicycle or motorcycle. This patent was filed in 1983, granted in 1985 and cites 4 other patents from 1976 to 1984. These patents also features devices to accomplish the same task and contain largely the same parts, but differ substantially in the manner in which they are arranged.

With regards to 4408674: Motorcycle drive wheel suspension system: While this patent shows a mechanism with the same type of system to damp vibrations and absorb shocks, there are several notable differences which would likely make the later patent valid, even when applying the standards of Hotchkiss v. Greenwood, 52 U.S. 11 (1850) and A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950). Though both inventions features largely the same components, their arrangements are quite different. 4408674: Motorcycle drive wheel suspension system has a substantially more complex design than 4529056, as can clearly be seen from the accompanying diagrams. This makes it a significant improvement. 4408674 also makes reference early in the patent application to preventing the slacking of the sprocket as a result of shock, something 4529056 never does in the patent application. Although it may do this, it is not mentioned, and therefore it can be assumed that not only the construction, but also the function of the patents are different in nature. Additionally, 4529056 makes specific note that one of the key features of the design is that no linkage is placed under a heavy bending moment and notes that this is a significant improvement from previous designs. From the figures included in 4408674, it can be seen that the link numbered 22 (the back swinging fork) in all figures is placed under significant bending forces as a result of the weight of the rider and motorcycle. Additionally, 4529056 is adjustable in its spring pretension, allowing the user to quickly alter the damping characteristics, something which is lacking in 4408674. Because of the complex mechanics of 4408674, it would not be obvious to someone with ordinary skill to discern one patent from the other, as the kinematics are considerably different. Because of the addition of an adjusting mechanism, lessening of the bending moment on the back swinging fork and a mechanically much simpler deigns with many fewer parts, the novelty requirement is satisfied by 4529056

With regards to 3977697: Long Travel Rear Wheel Suspension System for Motorcycle: This patent shows a device that is far more similar to 4529056 than 4408674, meaning it would most likely not qualify as a valid patent under the standards imposed be Hotchkiss v. Greenwood, 52 U.S. 11 (1850) and A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950). This patent features a much more simple design, with substantially fewer components than 4408674. While not as simple as 4529056, this makes it considerably more similar to 4529056. The method of mounting the device and its orientation on the bike are also considerably more similar to 4529056. It fixes to the vehicle in two points, one horizontal and another up and diagonal. Similar to 4529056, it is also adjustable, although in this patent it is stated that this is to facilitate its installation, but nevertheless, it can be used for the same purpose of adjusting damping. Furthermore, the configuration of 3977697 is such that a strong bending moment is not placed on the back swinging fork, which was listed by 4529056 as one of the major features distinguishing it from other previous patents. There is one factor which does differentiate between the two patents; 3977697 specifically states that its purpose if for motocross riding, where more ‘arc’ for the rear wheel is required, 7 -10 inches instead of the usual four due to the much more severe shocks and loading. The inventor of the patent credits this reason for his new design, where as nothing similar is mentioned in 4529056. Despite the differences in purpose, the function of both patents are similar enough that under Hotchkiss v. Greenwood, 52 U.S. 11 (1850) and A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) 4529056 would most likely not be considered ‘novel’ enough to warrant a patent. The similarities in the number of parts, the manner in which they are attached as well as the adjustable nature of each and the support of loads such that no strong bending moment develops, all take away from novelty. The transition from one into the other may be obvious to someone with ordinary skill in the art. However, kinematics are often difficult to visualize, so it would not be obvious to an ordinary person, but perhaps it would be to a skilled kinematician. For both of these patents to remain valid today, a change in the standards of patentability concerning nonobviousness must have changed in the past decades. Other than a general loosening of standards of nonobviousness, changes allowing ‘obviously’ devices could have been allowed provided that one showed a significant improvement in its functioning. This would be along the lines of Justice Woodbury’s dissenting opinion in the case Hotchkiss v. Greenwood, 52 U.S. 11 (1850), in which he argued that improvement alone justified the validity of a patent.

Kgodshal Homework 2

2011-02-04T02:11:39Z

901281608: Created page with " 1. Patent 4,529,056: Mechanism for the spring-cushioning of a vehicle wheel * Date issued: July 16, 1985 1. This invention is an improved means to absorb and dampen..."

1. Patent 4,529,056: Mechanism for the spring-cushioning of a vehicle wheel

* Date issued: July 16, 1985

1. This invention is an improved means to absorb and dampen shocks and vibrations for vehicle wheels similar to the rear wheel of a bicycle or motorcycle. It features a spring an dampener which connect from the wheel to the frame of the vehicle using an assemble of rods and revolute joints. This has an advantage over previous mechanisms as it does not place the fork under a bending moment and because it can be adjusted to alter the hardness of the damping. I chose this patent, as I am interested in the kinetics and solid mechanics of machine. Additionally, this patent seemed to have the right amount of complexity and similar products exist for it to be compared to. This patent can be found at: http://www.google.com/patents?id=mhg7AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false

Kgodshal Homework 3

2011-02-04T02:11:05Z

901281608: Created page with "Obvious The patent is invalid under Section 103 due to the lack of nonobviousness of the patent. Based upon the sketches and description, as well as the general construction, di..."

Obvious
The patent is invalid under Section 103 due to the lack of nonobviousness of the patent. Based upon the sketches and description, as well as the general construction, dimension, purpose and functioning of patent 2,627,798 in comparison to that of patent 2,493,811, there are no meaningful differences. The Supreme Court case Hotchkiss v. Greenwood established the precedent of nonobviousness, which was codified under the Patent Act of 1952, and which states that for a patent to be valid it must demonstrate that it differs from a previous invention in such a way that the changes are not obvious to an individual skilled in the relevant art.
The Graham patent is simply an improvement upon an existing patent, and although it may be superior in some regards, improvement does not satisfy the requirement of nonobviousness. The patent could be valid, if there were some aspect of it that differed fundamentally from the patent it was based upon. The lengthening of certain components to increase durability is not sufficient for this because the components remain the same, merely modified for convenience. This precedent has been established in A & P Tea Co. v. Supermarket Corp. Furthermore, based upon the nature of the problem, stresses and wear on the upper plate, lengthening the shank would be the obvious solution and required no creativity.
The purpose of a patent is to reward and encourage innovation, in spite of the inherent drawbacks of a monopoly. But, it is necessary for an invention to remain adequately free, such that it can be continuously improved upon by other individuals; as such activities promote the progress of useful arts, which is the foundation the patent system is based upon.

Not Obvious
The patent is valid under Section 103 as it demonstrates a significant improvement from a previous invention. Because the magnitude of the improvement is not insignificant, it must be considered to be superior, and therefore different from previous patents of similar devices. Such interpretations are necessary to encourage the innovation and improvement of currently existing devices, which in turn contributes to the progress of useful arts, which under the U.S. Constitution is the purpose of allowing a temporary monopoly on an invention.
Were such types of patents rendered invalid, the incentive to improve upon existing inventions would be undermined, and thus, the progress of useful arts would be impeded.

User:901281608

2011-01-28T16:22:13Z

901281608:

# Patent 4,529,056: Mechanism for the spring-cushioning of a vehicle wheel

* Date issued: July 16, 1985

# This invention is an improved means to absorb and dampen shocks and vibrations for vehicle wheels similar to the rear wheel of a bicycle or motorcycle. It features a spring an dampener which connect from the wheel to the frame of the vehicle using an assemble of rods and revolute joints. This has an advantage over previous mechanisms as it does not place the fork under a bending moment and because it can be adjusted to alter the hardness of the damping. I chose this patent, as I am interested in the kinetics and solid mechanics of machine. Additionally, this patent seemed to have the right amount of complexity and similar products exist for it to be compared to. This patent can be found at: http://www.google.com/patents?id=mhg7AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false

Homework 2

ntroduction: Comparison of patents to Patent 4529056: Mechanism for the Spring-cushioning of a vehicle wheel
Patent 4529056 Mechanism for the Spring-cushioning of a vehicle wheel is for a mechanics consisting of a series of links and revolute joints as well as a spring and damper designed to absorb shocks on the rear wheel of a two wheeled vehicle, such as a bicycle or motorcycle. This patent was filed in 1983, granted in 1985 and cites 4 other patents from 1976 to 1984. These patents also features devices to accomplish the same task and contain largely the same parts, but differ substantially in the manner in which they are arranged.

With regards to 4408674: Motorcycle drive wheel suspension system:
While this patent shows a mechanism with the same type of system to damp vibrations and absorb shocks, there are several notable differences which would likely make the later patent valid, even when applying the standards of Hotchkiss v. Greenwood, 52 U.S. 11 (1850) and A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950).
Though both inventions features largely the same components, their arrangements are quite different. 4408674: Motorcycle drive wheel suspension system has a substantially more complex design than 4529056, as can clearly be seen from the accompanying diagrams. This makes it a significant improvement. 4408674 also makes reference early in the patent application to preventing the slacking of the sprocket as a result of shock, something 4529056 never does in the patent application. Although it may do this, it is not mentioned, and therefore it can be assumed that not only the construction, but also the function of the patents are different in nature.
Additionally, 4529056 makes specific note that one of the key features of the design is that no linkage is placed under a heavy bending moment and notes that this is a significant improvement from previous designs. From the figures included in 4408674, it can be seen that the link numbered 22 (the back swinging fork) in all figures is placed under significant bending forces as a result of the weight of the rider and motorcycle. Additionally, 4529056 is adjustable in its spring pretension, allowing the user to quickly alter the damping characteristics, something which is lacking in 4408674.
Because of the complex mechanics of 4408674, it would not be obvious to someone with ordinary skill to discern one patent from the other, as the kinematics are considerably different. Because of the addition of an adjusting mechanism, lessening of the bending moment on the back swinging fork and a mechanically much simpler deigns with many fewer parts, the novelty requirement is satisfied by 4529056

With regards to 3977697: Long Travel Rear Wheel Suspension System for Motorcycle:
This patent shows a device that is far more similar to 4529056 than 4408674, meaning it would most likely not qualify as a valid patent under the standards imposed be Hotchkiss v. Greenwood, 52 U.S. 11 (1850) and A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950).
This patent features a much more simple design, with substantially fewer components than 4408674. While not as simple as 4529056, this makes it considerably more similar to 4529056. The method of mounting the device and its orientation on the bike are also considerably more similar to 4529056. It fixes to the vehicle in two points, one horizontal and another up and diagonal.
Similar to 4529056, it is also adjustable, although in this patent it is stated that this is to facilitate its installation, but nevertheless, it can be used for the same purpose of adjusting damping. Furthermore, the configuration of 3977697 is such that a strong bending moment is not placed on the back swinging fork, which was listed by 4529056 as one of the major features distinguishing it from other previous patents.
There is one factor which does differentiate between the two patents; 3977697 specifically states that its purpose if for motocross riding, where more ‘arc’ for the rear wheel is required, 7 -10 inches instead of the usual four due to the much more severe shocks and loading. The inventor of the patent credits this reason for his new design, where as nothing similar is mentioned in 4529056.
Despite the differences in purpose, the function of both patents are similar enough that under Hotchkiss v. Greenwood, 52 U.S. 11 (1850) and A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) 4529056 would most likely not be considered ‘novel’ enough to warrant a patent. The similarities in the number of parts, the manner in which they are attached as well as the adjustable nature of each and the support of loads such that no strong bending moment develops, all take away from novelty. The transition from one into the other may be obvious to someone with ordinary skill in the art. However, kinematics are often difficult to visualize, so it would not be obvious to an ordinary person, but perhaps it would be to a skilled kinematician.
For both of these patents to remain valid today, a change in the standards of patentability concerning nonobviousness must have changed in the past decades. Other than a general loosening of standards of nonobviousness, changes allowing ‘obviously’ devices could have been allowed provided that one showed a significant improvement in its functioning. This would be along the lines of Justice Woodbury’s dissenting opinion in the case Hotchkiss v. Greenwood, 52 U.S. 11 (1850), in which he argued that improvement alone justified the validity of a patent.

Talk:Main Page

2011-01-23T23:59:22Z

901281608: /* Homework 2 */ new section

== Homework 2 ==

Patent 4,529,056: Mechanism for the spring-cushioning of a vehicle wheel

Date issued: July 16, 1985

This invention is an improved means to absorb and dampen shocks and vibrations for vehicle wheels similar to the rear wheel of a bicycle or motorcycle. It features a spring an dampener which connect from the wheel to the frame of the vehicle using an assemble of rods and revolute joints. This has an advantage over previous mechanisms as it does not place the fork under a bending moment and because it can be adjusted to alter the hardness of the damping. I chose this patent, as I am interested in the kinetics and solid mechanics of machine. Additionally, this patent seemed to have the right amount of complexity and similar products exist for it to be compared to. This patent can be found at: http://www.google.com/patents?id=mhg7AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false

User:901281608

2011-01-23T23:58:32Z

901281608: Created page with "# Patent 4,529,056: Mechanism for the spring-cushioning of a vehicle wheel * Date issued: July 16, 1985 # This invention is an improved means to absorb and dampen shocks a..."