Bill Goodwine's Wiki - User contributions [en]

4/6/11 (Robins)

2011-04-06T16:09:56Z

Adam T. Letcher:

Billy Shakespeare wrote a whole lotta sonnets

patent prosecution process:

Several Parts:

1. Application

2. Examination, PTO

3. Office Action-revisions needed, not needed

4. Response to Office action

5. Subsequent Office action

6. Final rejection or allowance

7. Issues

CFR- Code of Federal Regulations

Promulgated by PTO-Department of Commerce

37 CFR-Patents, TM, (c)

37 CFR 1.51-Application needs:

1)Specification including claims(35 USC 112)

2)Drawings (35 USC 113)

3) Oath- you are th eoriginal inventor etc. (37 CFR 1.63, 1.68)

4) Fee

User:Adam T. Letcher

2011-04-06T13:43:33Z

Adam T. Letcher:

=Contact=
*Email: aletcher@nd.edu

=Selected Patent=

*Patent 4,875,508: Beverage Container for Use in Outer Space
**Date Issued: October 24th, 1989

*The idea behind this particular patent is to design a beverage container that can both function in zero-gravity environments as well as withstand the stresses during takeoff and landing. Since there is no gravity, there is no natural separation of liquids and gases in the container. The mechanics of the patented design use both an elastic bag inside the container that contracts and forces the beverage out of the container, and also a flexible bag that is surrounded by a compressible gas. The patent and design drawings can be found here [http://www.google.com/patents?id=hbgsAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false] via Google Patents.
**This patent interested because I am interested in the complications that zero gravity environments have on even the simplest things, such as the fluid mechanics we take for granted in drinking a beverage.

=Inventiveness and Invention in the Combination of Known Devices=
===Patent 2,762,534: Device for Tapping a Barrel and Removing the Liquid Therefrom [http://www.google.com/patents?id=c2NHAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]===

:As seen in the patent document above, Patent 2,762,534 is an invention that is designed to provide a new and better method of removing liquid from a solid container, most commonly beer from a barrel as typically sold in the United States. The need for the invention arises from the adverse effects of introducing air into direct contact and mixing with the carbonic gases in the barrel of beer. This mixing results in the diluting of the beer's carbonic gases, causing it to become flat and tasteless.

:The invention presented in the patent then is a method of removing the liquid from the barrel without air coming into direct contact with the liquid itself and its own vaporized carbonic acids. This is achieved by the means of inserting an expandable bag into the barrel of liquid by means described in the patent document. As air from outside the barrel is pumped by means of a typical hand powered pump, the expandable bag inside the barrel inflates and exerts a constant pressure force on the liquid contained in the barrel. The invention also includes a rod which is inserted into the bottom of barrel and serves as the path along which the liquid is forced. This rod is then attached to a tap by which the liquid can then be dispensed into smaller containers.

===Patent 2,816,690: Pressure Packaging Systems for Liquids [http://www.google.com/patents?id=_cVfAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]===

:This particular patent concerns the invention of a new, faster, and more sterile way of packaging and transporting liquids in large containers. Previously, it was common practice to simply pump the liquid into the solid rigid container through an inlet valve, until it was satisfactorily full. The container was then capped and transported to its destination. This left the liquid exposed to potentially unsterile conditions through direct contact with the inside of the rigid container. Also, in the event that the rigid container was punctured, broken, or damaged in some way, the liquid would rapidly be exposed to the outside environment and spill from the container.

:The invention presented here addresses these problems through the use of an elastic core that would receive the liquid to be packaged and expand as it was filled.The diameter of the core would be minimal compared to the overall diameter of the rigid barrel. This elastic core would lie inside the rigid container and be attached to the inlet valve. As the liquid is pumped into the core under pressure, the core would expand until it came into all-around contact with the rigid shell. Upon delivery to its destination, the new container could be hooked to the extraction system. The natural elastic properties of the core would then provide the pressure force needed to extract the contained liquid.

:This invention allows liquids to be transported in a much more sterile environment, since the liquid never comes into direct contact with the inside of the rigid container. The invention also provides another layer of protection against contamination in the event that the rigid shell is punctured, broken, or damaged in some way.

===Patentability of Chosen Patent===
====Prior to Development of Modern Patent Code====

:Prior to the development of the modern United States Patent Code, the views on inventiveness and invention was based largely on the Supreme Court opinion delivered on the case of Hotchkiss v. Greenwood, 52 U.S. 11 (1850) and related cases. Before we analyze the patentability of the current patent by examining as a combination of known devices and materials, it is important to first look at the similarities between the chosen patent and the Pressure Packaging System (PPS) described above. The issue of novelty is an important one, and would negate the validity of the chosen patent regardless of all other factors.

:By examining the patent descriptions of both the chosen patent and the PPS, it is seen that the first embodiment of the chosen patent, and a preferred one as described in the patent document, is remarkably simliar to the PPS. Both patents employ an outer rigid container that encases an inner elastic bag whose diameter is insignificant compared to the diameter of the rigid shell. The properties of both of these inner bags are to use the natural elastic forces of the bag to provide the pressure needed to extract the liquid from its container. The only difference between the two, it seems, is the size of the container. While the earlier patent is explicitly intended for large liquid containers for the packaging and transportation of liquids, the patent author makes note of the potential of the PPS to be applied to many different cases that vary according to type of liquid contained and size of container (See Line 40, Right Column of the patent document) [http://www.google.com/patents?id=_cVfAAAAEBAJ&zoom=4&pg=PA2#v=onepage&q&f=false]. The mere reduction of size of this invention does not in fact produce a new or novel invention and is hardly qualified for a patent. However, since this is simply one of several embodiments of the chosen patent, the overall patent is not yet shown to be invalid.

:By examining the second preferred embodiment of the chosen patent, it can be shown that every part of the invention is not, by itself, new or novel. The rigid container is, obviously, the same as many bottles used and sold every day. The expandable or flexible bag is also widely used and known and the use of pressurized carbon dioxide is widespread. If it could be shown however, that these components had not been previously used in this configuration, and the resulting invention is novel and useful, then is would be patentable. However, the issue becomes more complicated when examining the patented Device for Tapping a Barrel (DTB) as described above. In both patents, liquid is removed from a container through the use of a flexible or expandable bag inside a rigid outer container, and the constant pressure force provided by a compressible gas. In the case of the DTB, the working compressible gas is air and for the chosen patent the working gas is carbon dioxide (CO2). The difference, in essence, between the two patents is that the chosen patent uses the natural properties of the compressible CO2 gas to do the work of extracting the liquid, whereas the work to extract the liquid using the DTB comes from a hand operated pump. This is an obvious improvement on the system. However, according to the opinion of the courts, this improvement is one based on the superiority of the carbon dioxide. It does not take any significant skill to simply substitute the carbon dioxide in the chosen patent for the air in the DTB, nor does it take much skill to rearrange the configuration of liquid and gas (where the gas is outside of the bag and the liquid inside). Thus, the chosen patent would be invalid.

====Since the Adoption of Modern Patent Code====

:With the codification of the Modern Patent Laws, the issues raised by cases such as Hotchkiss v. Greenwood and A. & P. Tea Company v. Supermarket Corp. are more clearly addressed, especially the topics of inventions by combination and the condition of non-obviousness. Specifically, 35 USC 103(a) expresses the non-obviousness clause as

::(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made. [http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000103----000-.html]

:Now, the importance of the simple substitution of carbon dioxide for air needs to be reconsidered. While each component of the embodiment of this patent is not in itself novel, and even their arrangement had been previously known and used, the thought behind the invention represents a significant step in science. By instead using a gas that will eliminate the need for a hand operated pump, the chosen patent's value lies in its ability to remove human work from the process. The chosen patent employs the natural properties, heretofore known but not utilized, to act upon the liquid and extract the liquid from the container. In the field of fluid mechanics, the use of a fluids pressure or momentum has seemingly limitless potential for future use, and represents a step forward in science and innovation when interacting in zero-gravity environments. Thus, in this light the patent should be held to be valid, in the discussed embodiment.

=Graham's Plow Patent in Light of the Prior Art=
===Argument for the Obviousness of the Patent===
:The improved plow design in Patent 2,627,798: Clamp for Vibrating Shank Plows [http://www.google.com/patents/about?id=2MVtAAAAEBAJ&dq=2,627,798] is not patentable since it does not satisfy the condition of non-obviousness as set forth in 35 U.S.C. 103. The invention is simply a combination of previously known mechanical components in a way that is neither inventive nor non-obvious.

:Every component, with the exception of the “stirrup and bolted connections of the shank to the hinge plate and the position of the shank”, is identical in design and composition to Graham’s older Patent 2,493,811: Vibrating Plow and Mounting Therefore [http://www.google.com/patents/about?id=0BZqAAAAEBAJ&dq=2,493,811]. Additionally, the “new” components described in his ‘798 patent had previously been known and used as shown by the Glencoe Patent 3,258,076: Adjustable Spring Clamp Shank Assembly. The Glencoe patent focuses its use of the stirrup to spread the structural wear of the shank’s movement over a surface, rather than at one point. The updates in the Graham ‘798 patent are identical in approach and function to the Glencoe patent.

:The argument that the positions of the shank and the hinge plate have been reversed is irrelevant, since there is no change in their mechanical purpose and the inversion of the component location is an obvious and trivial addition and should not be considered patentable. To further the argument of the patent’s obviousness, we must consider a person of ordinary skill in the field. It is well known to any student of solid mechanics and dynamics that a structure subjected to a force over an extended surface is subject to less pressure and subsequent damage than a structure that encounters a force of equal magnitude at a single discrete point. This rationale is clearly employed in both the Glencoe and Graham ‘798 patents, and would be an obvious solution to the problem of joint wear to any student in the field, nonetheless an experienced engineer.

:The addition of the “free flex theory” by the patent holder to the benefits of his invention seems to be a desperate grab for his patent’s validity. This claim that the improved flexibility results in a patentable invention was never discussed in his patent document and cannot be applied to the current debate. These arguments are clearly in support of the Supreme Court’s ruling that the patent was invalid.

===Argument for the Non-obviousness of the Patent===
:The ruling by the Supreme Court on the validity of the Graham Patent 2,627,798: Clamp for Vibrating Shank Plows, should be reversed, since the patent does, in fact, satisfy all the conditions of patentability, including novelty, utility, and non-obviousness.

:In the original court case Graham v. John Deere, the defendants failed in their efforts to prove that the improved design for reducing structural wear on plow parts and increasing flexibility to absorb larger shocks from obstructions was of an obvious nature to a person of ordinary skill the field. The argument that the patent is invalid since it is a mere combination of previously known parts is false, since an invention in that capacity can be patentable if the whole invention is greater than the sum of its parts. The specific arrangement and composition of the invention at hand is an integral part of the desired performance, and Graham’s patent holds that he has optimized his invention for its purpose.

:While there is similarity between the’798 patent and the prior art, specifically the Glencoe patent, the key arrangement of the ‘798 patent proves it to be a new and useful invention that has not been anticipated by the prior art. Glencoe’s clamp uses merely the mechanics of a spring and stirrup to pull the rake arm up and down. Graham’s clamp uses an I-beam structure for support as well as a hinge mechanism that attaches to the spring in the back to pull the rake arm up and down. The new design significantly reduces the structural wear on the ‘811 patent and is a clear improvement. According to 35 U.S.C. 101,

::Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title [http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000101----000-.html].

:The need for an improvement of the plow was evidenced by the number of structural fractures and subsequent repairs needs due to the extreme vibrations and oscillations in the plow shanks. If the ‘798 patent were indeed obvious, then any person of ordinary skill in the field could have examined the ‘811 mechanism and deduced that a simple inversion of the hinge plate and shank would improve the flexibility of the shank and extend the lifetime of the plow. However, this was not the case. This observation was never made, although the plow was commercially successful and its use widespread. Just because an improvement is simple does not indicate that it is obvious or not ingenious. There does not need to be a “flash of genius” to prove invention. Thus, the invention should be considered non-obvious and the patent valid.

=Non-obviousness Edit=
: The edited and revised page on non-obviousness can be found [[/Non-obviousness/|here]]

=Brief=
:Brief of Eleven Law Professors and AARP as Amici Curiae in Support of Respondent (Oct. 2, 2009)

=Anticipation by a Printed Publication=
===MEHL/Biophile Intern. Corp. v. Milgraum===
:This case in the United State Court of Appeals concerned the patent on a method of laser hair removal and its validity. The validity of the patent was challenged by two references, an instruction manual for the Spectrum RD-1200 laser and an article in the 1987 Journal of Investigative Dermatology. MEHL/Biophile owned the '192 patent which concerned a method of using a focused laser beam at a particular wavelength to destroy the follicles of unwanted hair and prevent regrowth. The company sued Milgraum for infringement of the '192 patent. Milgram, who worked for Spectrum, countered and argued for the invalidity of the patent based on an instruction manual for his company's laser as well as an article ('The Polla Article') in a scholarly journal.

:The instruction manual described the use of the laser for tattoo removal and was generally the same method as the laser removal method, but was not expressly directed towards hair removal and also failed to mention a perfectly vertical alignment, which was a significant part of the '192 claims. The manual does not teach all the limitations of the claim, and thus could not have anticipated the claim. The Polla article described the damage done to pigmented cells by a laser, specifically the damage done to the "pigment structures in the deep dermis such as hair follicles". Therefore, the court ruled that the Polla article anticipated the '192 patent and rendered it invalid.

=Doctrine of Equivalents in Honeywell v. Sundstrand=
===Brief in favor of Honeywell===

:This brief argues for ruling in favor of Honeywell based on non-literal infringement according to the doctrine of equivalents. The patent in question details a system to monitor and prevent flow surge in the compressor of a gas turbine engine. The presence of such a surge is extremely damaging to the compressor, and is necessarily prevented for the proper functioning of the engine.

:Honeywell’s method of surge protection is detailed in their patent for a system that defines a set point of air flow that acts as the minimum value of desired air flow to avoid surge. The sensing of the airflow is related to a flow related parameter that the system measures and compares to the set point, which is a function of the position of the engine’s inlet guide vanes (IGV).

:Sundstrand’s system performs the same purpose, but by measuring a different flow related parameter and comparing it to a set point. The value of this parameter determines whether or not surge protection should be activated, and is related to the position of the IGV’s. Sundstrand’s parameter dealt with pressure differentials across the compressor.

:While pressure differentials had been measured in compressors for many years, and indeed in the Honeywell system, they were measured for different reasons than detecting surge conditions. The use of this parameter as a means of detecting surge conditions is little more than a mathematical trick that could not have been foreseen when Honeywell asserted the claims in their patent. Sundstrand’s method serves the same purpose as Honeywell’s with the same performance, but avoids literal infringement by simply working around how to detect potential surge. This cannot be viewed as a reason for prosecution history estoppel since it could not have been reasonably foreseen during patent application.

User:Adam T. Letcher

2011-03-23T04:53:48Z

Adam T. Letcher: /* MEHL/Biophile Intern. Corp. v. Milgraum */

User:Adam T. Letcher

2011-03-23T04:53:24Z

Adam T. Letcher: /* Brief */

=Contact=
*Email: aletcher@nd.edu

=Selected Patent=

*Patent 4,875,508: Beverage Container for Use in Outer Space
**Date Issued: October 24th, 1989

*The idea behind this particular patent is to design a beverage container that can both function in zero-gravity environments as well as withstand the stresses during takeoff and landing. Since there is no gravity, there is no natural separation of liquids and gases in the container. The mechanics of the patented design use both an elastic bag inside the container that contracts and forces the beverage out of the container, and also a flexible bag that is surrounded by a compressible gas. The patent and design drawings can be found here [http://www.google.com/patents?id=hbgsAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false] via Google Patents.
**This patent interested because I am interested in the complications that zero gravity environments have on even the simplest things, such as the fluid mechanics we take for granted in drinking a beverage.

=Inventiveness and Invention in the Combination of Known Devices=
===Patent 2,762,534: Device for Tapping a Barrel and Removing the Liquid Therefrom [http://www.google.com/patents?id=c2NHAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]===

:As seen in the patent document above, Patent 2,762,534 is an invention that is designed to provide a new and better method of removing liquid from a solid container, most commonly beer from a barrel as typically sold in the United States. The need for the invention arises from the adverse effects of introducing air into direct contact and mixing with the carbonic gases in the barrel of beer. This mixing results in the diluting of the beer's carbonic gases, causing it to become flat and tasteless.

:The invention presented in the patent then is a method of removing the liquid from the barrel without air coming into direct contact with the liquid itself and its own vaporized carbonic acids. This is achieved by the means of inserting an expandable bag into the barrel of liquid by means described in the patent document. As air from outside the barrel is pumped by means of a typical hand powered pump, the expandable bag inside the barrel inflates and exerts a constant pressure force on the liquid contained in the barrel. The invention also includes a rod which is inserted into the bottom of barrel and serves as the path along which the liquid is forced. This rod is then attached to a tap by which the liquid can then be dispensed into smaller containers.

===Patent 2,816,690: Pressure Packaging Systems for Liquids [http://www.google.com/patents?id=_cVfAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]===

:This particular patent concerns the invention of a new, faster, and more sterile way of packaging and transporting liquids in large containers. Previously, it was common practice to simply pump the liquid into the solid rigid container through an inlet valve, until it was satisfactorily full. The container was then capped and transported to its destination. This left the liquid exposed to potentially unsterile conditions through direct contact with the inside of the rigid container. Also, in the event that the rigid container was punctured, broken, or damaged in some way, the liquid would rapidly be exposed to the outside environment and spill from the container.

:The invention presented here addresses these problems through the use of an elastic core that would receive the liquid to be packaged and expand as it was filled.The diameter of the core would be minimal compared to the overall diameter of the rigid barrel. This elastic core would lie inside the rigid container and be attached to the inlet valve. As the liquid is pumped into the core under pressure, the core would expand until it came into all-around contact with the rigid shell. Upon delivery to its destination, the new container could be hooked to the extraction system. The natural elastic properties of the core would then provide the pressure force needed to extract the contained liquid.

:This invention allows liquids to be transported in a much more sterile environment, since the liquid never comes into direct contact with the inside of the rigid container. The invention also provides another layer of protection against contamination in the event that the rigid shell is punctured, broken, or damaged in some way.

===Patentability of Chosen Patent===
====Prior to Development of Modern Patent Code====

:Prior to the development of the modern United States Patent Code, the views on inventiveness and invention was based largely on the Supreme Court opinion delivered on the case of Hotchkiss v. Greenwood, 52 U.S. 11 (1850) and related cases. Before we analyze the patentability of the current patent by examining as a combination of known devices and materials, it is important to first look at the similarities between the chosen patent and the Pressure Packaging System (PPS) described above. The issue of novelty is an important one, and would negate the validity of the chosen patent regardless of all other factors.

:By examining the patent descriptions of both the chosen patent and the PPS, it is seen that the first embodiment of the chosen patent, and a preferred one as described in the patent document, is remarkably simliar to the PPS. Both patents employ an outer rigid container that encases an inner elastic bag whose diameter is insignificant compared to the diameter of the rigid shell. The properties of both of these inner bags are to use the natural elastic forces of the bag to provide the pressure needed to extract the liquid from its container. The only difference between the two, it seems, is the size of the container. While the earlier patent is explicitly intended for large liquid containers for the packaging and transportation of liquids, the patent author makes note of the potential of the PPS to be applied to many different cases that vary according to type of liquid contained and size of container (See Line 40, Right Column of the patent document) [http://www.google.com/patents?id=_cVfAAAAEBAJ&zoom=4&pg=PA2#v=onepage&q&f=false]. The mere reduction of size of this invention does not in fact produce a new or novel invention and is hardly qualified for a patent. However, since this is simply one of several embodiments of the chosen patent, the overall patent is not yet shown to be invalid.

:By examining the second preferred embodiment of the chosen patent, it can be shown that every part of the invention is not, by itself, new or novel. The rigid container is, obviously, the same as many bottles used and sold every day. The expandable or flexible bag is also widely used and known and the use of pressurized carbon dioxide is widespread. If it could be shown however, that these components had not been previously used in this configuration, and the resulting invention is novel and useful, then is would be patentable. However, the issue becomes more complicated when examining the patented Device for Tapping a Barrel (DTB) as described above. In both patents, liquid is removed from a container through the use of a flexible or expandable bag inside a rigid outer container, and the constant pressure force provided by a compressible gas. In the case of the DTB, the working compressible gas is air and for the chosen patent the working gas is carbon dioxide (CO2). The difference, in essence, between the two patents is that the chosen patent uses the natural properties of the compressible CO2 gas to do the work of extracting the liquid, whereas the work to extract the liquid using the DTB comes from a hand operated pump. This is an obvious improvement on the system. However, according to the opinion of the courts, this improvement is one based on the superiority of the carbon dioxide. It does not take any significant skill to simply substitute the carbon dioxide in the chosen patent for the air in the DTB, nor does it take much skill to rearrange the configuration of liquid and gas (where the gas is outside of the bag and the liquid inside). Thus, the chosen patent would be invalid.

====Since the Adoption of Modern Patent Code====

:With the codification of the Modern Patent Laws, the issues raised by cases such as Hotchkiss v. Greenwood and A. & P. Tea Company v. Supermarket Corp. are more clearly addressed, especially the topics of inventions by combination and the condition of non-obviousness. Specifically, 35 USC 103(a) expresses the non-obviousness clause as

::(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made. [http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000103----000-.html]

:Now, the importance of the simple substitution of carbon dioxide for air needs to be reconsidered. While each component of the embodiment of this patent is not in itself novel, and even their arrangement had been previously known and used, the thought behind the invention represents a significant step in science. By instead using a gas that will eliminate the need for a hand operated pump, the chosen patent's value lies in its ability to remove human work from the process. The chosen patent employs the natural properties, heretofore known but not utilized, to act upon the liquid and extract the liquid from the container. In the field of fluid mechanics, the use of a fluids pressure or momentum has seemingly limitless potential for future use, and represents a step forward in science and innovation when interacting in zero-gravity environments. Thus, in this light the patent should be held to be valid, in the discussed embodiment.

=Graham's Plow Patent in Light of the Prior Art=
===Argument for the Obviousness of the Patent===
:The improved plow design in Patent 2,627,798: Clamp for Vibrating Shank Plows [http://www.google.com/patents/about?id=2MVtAAAAEBAJ&dq=2,627,798] is not patentable since it does not satisfy the condition of non-obviousness as set forth in 35 U.S.C. 103. The invention is simply a combination of previously known mechanical components in a way that is neither inventive nor non-obvious.

:Every component, with the exception of the “stirrup and bolted connections of the shank to the hinge plate and the position of the shank”, is identical in design and composition to Graham’s older Patent 2,493,811: Vibrating Plow and Mounting Therefore [http://www.google.com/patents/about?id=0BZqAAAAEBAJ&dq=2,493,811]. Additionally, the “new” components described in his ‘798 patent had previously been known and used as shown by the Glencoe Patent 3,258,076: Adjustable Spring Clamp Shank Assembly. The Glencoe patent focuses its use of the stirrup to spread the structural wear of the shank’s movement over a surface, rather than at one point. The updates in the Graham ‘798 patent are identical in approach and function to the Glencoe patent.

:The argument that the positions of the shank and the hinge plate have been reversed is irrelevant, since there is no change in their mechanical purpose and the inversion of the component location is an obvious and trivial addition and should not be considered patentable. To further the argument of the patent’s obviousness, we must consider a person of ordinary skill in the field. It is well known to any student of solid mechanics and dynamics that a structure subjected to a force over an extended surface is subject to less pressure and subsequent damage than a structure that encounters a force of equal magnitude at a single discrete point. This rationale is clearly employed in both the Glencoe and Graham ‘798 patents, and would be an obvious solution to the problem of joint wear to any student in the field, nonetheless an experienced engineer.

:The addition of the “free flex theory” by the patent holder to the benefits of his invention seems to be a desperate grab for his patent’s validity. This claim that the improved flexibility results in a patentable invention was never discussed in his patent document and cannot be applied to the current debate. These arguments are clearly in support of the Supreme Court’s ruling that the patent was invalid.

===Argument for the Non-obviousness of the Patent===
:The ruling by the Supreme Court on the validity of the Graham Patent 2,627,798: Clamp for Vibrating Shank Plows, should be reversed, since the patent does, in fact, satisfy all the conditions of patentability, including novelty, utility, and non-obviousness.

:In the original court case Graham v. John Deere, the defendants failed in their efforts to prove that the improved design for reducing structural wear on plow parts and increasing flexibility to absorb larger shocks from obstructions was of an obvious nature to a person of ordinary skill the field. The argument that the patent is invalid since it is a mere combination of previously known parts is false, since an invention in that capacity can be patentable if the whole invention is greater than the sum of its parts. The specific arrangement and composition of the invention at hand is an integral part of the desired performance, and Graham’s patent holds that he has optimized his invention for its purpose.

:While there is similarity between the’798 patent and the prior art, specifically the Glencoe patent, the key arrangement of the ‘798 patent proves it to be a new and useful invention that has not been anticipated by the prior art. Glencoe’s clamp uses merely the mechanics of a spring and stirrup to pull the rake arm up and down. Graham’s clamp uses an I-beam structure for support as well as a hinge mechanism that attaches to the spring in the back to pull the rake arm up and down. The new design significantly reduces the structural wear on the ‘811 patent and is a clear improvement. According to 35 U.S.C. 101,

::Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title [http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000101----000-.html].

:The need for an improvement of the plow was evidenced by the number of structural fractures and subsequent repairs needs due to the extreme vibrations and oscillations in the plow shanks. If the ‘798 patent were indeed obvious, then any person of ordinary skill in the field could have examined the ‘811 mechanism and deduced that a simple inversion of the hinge plate and shank would improve the flexibility of the shank and extend the lifetime of the plow. However, this was not the case. This observation was never made, although the plow was commercially successful and its use widespread. Just because an improvement is simple does not indicate that it is obvious or not ingenious. There does not need to be a “flash of genius” to prove invention. Thus, the invention should be considered non-obvious and the patent valid.

=Non-obviousness Edit=
: The edited and revised page on non-obviousness can be found [[/Non-obviousness/|here]]

=Brief=
:Brief of Eleven Law Professors and AARP as Amici Curiae in Support of Respondent (Oct. 2, 2009)

=Anticipation by a Printed Publication=
===MEHL/Biophile Intern. Corp. v. Milgraum===
:This case in the United State Court of Appeals concerned the patent on a method of laser hair removal and its validity. The validity of the patent was challenged by two references, an instruction manual for the Spectrum RD-1200 laser and an article in the 1987 Journal of Investigative Dermatology.

:MEHL/Biophile owned the '192 patent which concerned a method of using a focused laser beam at a particular wavelength to destroy the follicles of unwanted hair and prevent regrowth. The company sued Milgraum for infringement of the '192 patent. Milgram, who worked for Spectrum, countered and argued for the invalidity of the patent based on an instruction manual for his company's laser as well as an article ('The Polla Article') in a scholarly journal.

:The instruction manual described the use of the laser for tattoo removal and was generally the same method as the laser removal method, but was not expressly directed towards hair removal and also failed to mention a perfectly vertical alignment, which was a significant part of the '192 claims. The manual does not teach all the limitations of the claim, and thus could not have anticipated the claim.

:The Polla article described the damage done to pigmented cells by a laser, specifically the damage done to the "pigment structures in the deep dermis such as hair follicles". Therefore, the court ruled that the Polla article anticipated the '192 patent and rendered it invalid.

User:Adam T. Letcher

2011-03-23T04:53:12Z

Adam T. Letcher: /* MEHL/Biophile Intern. Corp. v. Milgraum */

=Contact=
*Email: aletcher@nd.edu

=Selected Patent=

*Patent 4,875,508: Beverage Container for Use in Outer Space
**Date Issued: October 24th, 1989

*The idea behind this particular patent is to design a beverage container that can both function in zero-gravity environments as well as withstand the stresses during takeoff and landing. Since there is no gravity, there is no natural separation of liquids and gases in the container. The mechanics of the patented design use both an elastic bag inside the container that contracts and forces the beverage out of the container, and also a flexible bag that is surrounded by a compressible gas. The patent and design drawings can be found here [http://www.google.com/patents?id=hbgsAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false] via Google Patents.
**This patent interested because I am interested in the complications that zero gravity environments have on even the simplest things, such as the fluid mechanics we take for granted in drinking a beverage.

=Inventiveness and Invention in the Combination of Known Devices=
===Patent 2,762,534: Device for Tapping a Barrel and Removing the Liquid Therefrom [http://www.google.com/patents?id=c2NHAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]===

:As seen in the patent document above, Patent 2,762,534 is an invention that is designed to provide a new and better method of removing liquid from a solid container, most commonly beer from a barrel as typically sold in the United States. The need for the invention arises from the adverse effects of introducing air into direct contact and mixing with the carbonic gases in the barrel of beer. This mixing results in the diluting of the beer's carbonic gases, causing it to become flat and tasteless.

:The invention presented in the patent then is a method of removing the liquid from the barrel without air coming into direct contact with the liquid itself and its own vaporized carbonic acids. This is achieved by the means of inserting an expandable bag into the barrel of liquid by means described in the patent document. As air from outside the barrel is pumped by means of a typical hand powered pump, the expandable bag inside the barrel inflates and exerts a constant pressure force on the liquid contained in the barrel. The invention also includes a rod which is inserted into the bottom of barrel and serves as the path along which the liquid is forced. This rod is then attached to a tap by which the liquid can then be dispensed into smaller containers.

===Patent 2,816,690: Pressure Packaging Systems for Liquids [http://www.google.com/patents?id=_cVfAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]===

:This particular patent concerns the invention of a new, faster, and more sterile way of packaging and transporting liquids in large containers. Previously, it was common practice to simply pump the liquid into the solid rigid container through an inlet valve, until it was satisfactorily full. The container was then capped and transported to its destination. This left the liquid exposed to potentially unsterile conditions through direct contact with the inside of the rigid container. Also, in the event that the rigid container was punctured, broken, or damaged in some way, the liquid would rapidly be exposed to the outside environment and spill from the container.

:The invention presented here addresses these problems through the use of an elastic core that would receive the liquid to be packaged and expand as it was filled.The diameter of the core would be minimal compared to the overall diameter of the rigid barrel. This elastic core would lie inside the rigid container and be attached to the inlet valve. As the liquid is pumped into the core under pressure, the core would expand until it came into all-around contact with the rigid shell. Upon delivery to its destination, the new container could be hooked to the extraction system. The natural elastic properties of the core would then provide the pressure force needed to extract the contained liquid.

:This invention allows liquids to be transported in a much more sterile environment, since the liquid never comes into direct contact with the inside of the rigid container. The invention also provides another layer of protection against contamination in the event that the rigid shell is punctured, broken, or damaged in some way.

===Patentability of Chosen Patent===
====Prior to Development of Modern Patent Code====

:Prior to the development of the modern United States Patent Code, the views on inventiveness and invention was based largely on the Supreme Court opinion delivered on the case of Hotchkiss v. Greenwood, 52 U.S. 11 (1850) and related cases. Before we analyze the patentability of the current patent by examining as a combination of known devices and materials, it is important to first look at the similarities between the chosen patent and the Pressure Packaging System (PPS) described above. The issue of novelty is an important one, and would negate the validity of the chosen patent regardless of all other factors.

:By examining the patent descriptions of both the chosen patent and the PPS, it is seen that the first embodiment of the chosen patent, and a preferred one as described in the patent document, is remarkably simliar to the PPS. Both patents employ an outer rigid container that encases an inner elastic bag whose diameter is insignificant compared to the diameter of the rigid shell. The properties of both of these inner bags are to use the natural elastic forces of the bag to provide the pressure needed to extract the liquid from its container. The only difference between the two, it seems, is the size of the container. While the earlier patent is explicitly intended for large liquid containers for the packaging and transportation of liquids, the patent author makes note of the potential of the PPS to be applied to many different cases that vary according to type of liquid contained and size of container (See Line 40, Right Column of the patent document) [http://www.google.com/patents?id=_cVfAAAAEBAJ&zoom=4&pg=PA2#v=onepage&q&f=false]. The mere reduction of size of this invention does not in fact produce a new or novel invention and is hardly qualified for a patent. However, since this is simply one of several embodiments of the chosen patent, the overall patent is not yet shown to be invalid.

:By examining the second preferred embodiment of the chosen patent, it can be shown that every part of the invention is not, by itself, new or novel. The rigid container is, obviously, the same as many bottles used and sold every day. The expandable or flexible bag is also widely used and known and the use of pressurized carbon dioxide is widespread. If it could be shown however, that these components had not been previously used in this configuration, and the resulting invention is novel and useful, then is would be patentable. However, the issue becomes more complicated when examining the patented Device for Tapping a Barrel (DTB) as described above. In both patents, liquid is removed from a container through the use of a flexible or expandable bag inside a rigid outer container, and the constant pressure force provided by a compressible gas. In the case of the DTB, the working compressible gas is air and for the chosen patent the working gas is carbon dioxide (CO2). The difference, in essence, between the two patents is that the chosen patent uses the natural properties of the compressible CO2 gas to do the work of extracting the liquid, whereas the work to extract the liquid using the DTB comes from a hand operated pump. This is an obvious improvement on the system. However, according to the opinion of the courts, this improvement is one based on the superiority of the carbon dioxide. It does not take any significant skill to simply substitute the carbon dioxide in the chosen patent for the air in the DTB, nor does it take much skill to rearrange the configuration of liquid and gas (where the gas is outside of the bag and the liquid inside). Thus, the chosen patent would be invalid.

====Since the Adoption of Modern Patent Code====

:With the codification of the Modern Patent Laws, the issues raised by cases such as Hotchkiss v. Greenwood and A. & P. Tea Company v. Supermarket Corp. are more clearly addressed, especially the topics of inventions by combination and the condition of non-obviousness. Specifically, 35 USC 103(a) expresses the non-obviousness clause as

::(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made. [http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000103----000-.html]

:Now, the importance of the simple substitution of carbon dioxide for air needs to be reconsidered. While each component of the embodiment of this patent is not in itself novel, and even their arrangement had been previously known and used, the thought behind the invention represents a significant step in science. By instead using a gas that will eliminate the need for a hand operated pump, the chosen patent's value lies in its ability to remove human work from the process. The chosen patent employs the natural properties, heretofore known but not utilized, to act upon the liquid and extract the liquid from the container. In the field of fluid mechanics, the use of a fluids pressure or momentum has seemingly limitless potential for future use, and represents a step forward in science and innovation when interacting in zero-gravity environments. Thus, in this light the patent should be held to be valid, in the discussed embodiment.

=Graham's Plow Patent in Light of the Prior Art=
===Argument for the Obviousness of the Patent===
:The improved plow design in Patent 2,627,798: Clamp for Vibrating Shank Plows [http://www.google.com/patents/about?id=2MVtAAAAEBAJ&dq=2,627,798] is not patentable since it does not satisfy the condition of non-obviousness as set forth in 35 U.S.C. 103. The invention is simply a combination of previously known mechanical components in a way that is neither inventive nor non-obvious.

:Every component, with the exception of the “stirrup and bolted connections of the shank to the hinge plate and the position of the shank”, is identical in design and composition to Graham’s older Patent 2,493,811: Vibrating Plow and Mounting Therefore [http://www.google.com/patents/about?id=0BZqAAAAEBAJ&dq=2,493,811]. Additionally, the “new” components described in his ‘798 patent had previously been known and used as shown by the Glencoe Patent 3,258,076: Adjustable Spring Clamp Shank Assembly. The Glencoe patent focuses its use of the stirrup to spread the structural wear of the shank’s movement over a surface, rather than at one point. The updates in the Graham ‘798 patent are identical in approach and function to the Glencoe patent.

:The argument that the positions of the shank and the hinge plate have been reversed is irrelevant, since there is no change in their mechanical purpose and the inversion of the component location is an obvious and trivial addition and should not be considered patentable. To further the argument of the patent’s obviousness, we must consider a person of ordinary skill in the field. It is well known to any student of solid mechanics and dynamics that a structure subjected to a force over an extended surface is subject to less pressure and subsequent damage than a structure that encounters a force of equal magnitude at a single discrete point. This rationale is clearly employed in both the Glencoe and Graham ‘798 patents, and would be an obvious solution to the problem of joint wear to any student in the field, nonetheless an experienced engineer.

:The addition of the “free flex theory” by the patent holder to the benefits of his invention seems to be a desperate grab for his patent’s validity. This claim that the improved flexibility results in a patentable invention was never discussed in his patent document and cannot be applied to the current debate. These arguments are clearly in support of the Supreme Court’s ruling that the patent was invalid.

===Argument for the Non-obviousness of the Patent===
:The ruling by the Supreme Court on the validity of the Graham Patent 2,627,798: Clamp for Vibrating Shank Plows, should be reversed, since the patent does, in fact, satisfy all the conditions of patentability, including novelty, utility, and non-obviousness.

:In the original court case Graham v. John Deere, the defendants failed in their efforts to prove that the improved design for reducing structural wear on plow parts and increasing flexibility to absorb larger shocks from obstructions was of an obvious nature to a person of ordinary skill the field. The argument that the patent is invalid since it is a mere combination of previously known parts is false, since an invention in that capacity can be patentable if the whole invention is greater than the sum of its parts. The specific arrangement and composition of the invention at hand is an integral part of the desired performance, and Graham’s patent holds that he has optimized his invention for its purpose.

:While there is similarity between the’798 patent and the prior art, specifically the Glencoe patent, the key arrangement of the ‘798 patent proves it to be a new and useful invention that has not been anticipated by the prior art. Glencoe’s clamp uses merely the mechanics of a spring and stirrup to pull the rake arm up and down. Graham’s clamp uses an I-beam structure for support as well as a hinge mechanism that attaches to the spring in the back to pull the rake arm up and down. The new design significantly reduces the structural wear on the ‘811 patent and is a clear improvement. According to 35 U.S.C. 101,

::Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title [http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000101----000-.html].

:The need for an improvement of the plow was evidenced by the number of structural fractures and subsequent repairs needs due to the extreme vibrations and oscillations in the plow shanks. If the ‘798 patent were indeed obvious, then any person of ordinary skill in the field could have examined the ‘811 mechanism and deduced that a simple inversion of the hinge plate and shank would improve the flexibility of the shank and extend the lifetime of the plow. However, this was not the case. This observation was never made, although the plow was commercially successful and its use widespread. Just because an improvement is simple does not indicate that it is obvious or not ingenious. There does not need to be a “flash of genius” to prove invention. Thus, the invention should be considered non-obvious and the patent valid.

=Non-obviousness Edit=
: The edited and revised page on non-obviousness can be found [[/Non-obviousness/|here]]

=Brief=
Brief of Eleven Law Professors and AARP as Amici Curiae in Support of Respondent (Oct. 2, 2009)

=Anticipation by a Printed Publication=
===MEHL/Biophile Intern. Corp. v. Milgraum===
:This case in the United State Court of Appeals concerned the patent on a method of laser hair removal and its validity. The validity of the patent was challenged by two references, an instruction manual for the Spectrum RD-1200 laser and an article in the 1987 Journal of Investigative Dermatology.

:MEHL/Biophile owned the '192 patent which concerned a method of using a focused laser beam at a particular wavelength to destroy the follicles of unwanted hair and prevent regrowth. The company sued Milgraum for infringement of the '192 patent. Milgram, who worked for Spectrum, countered and argued for the invalidity of the patent based on an instruction manual for his company's laser as well as an article ('The Polla Article') in a scholarly journal.

:The instruction manual described the use of the laser for tattoo removal and was generally the same method as the laser removal method, but was not expressly directed towards hair removal and also failed to mention a perfectly vertical alignment, which was a significant part of the '192 claims. The manual does not teach all the limitations of the claim, and thus could not have anticipated the claim.

:The Polla article described the damage done to pigmented cells by a laser, specifically the damage done to the "pigment structures in the deep dermis such as hair follicles". Therefore, the court ruled that the Polla article anticipated the '192 patent and rendered it invalid.

User:Adam T. Letcher

2011-03-23T04:37:42Z

Adam T. Letcher:

=Contact=
*Email: aletcher@nd.edu

=Selected Patent=

*Patent 4,875,508: Beverage Container for Use in Outer Space
**Date Issued: October 24th, 1989

*The idea behind this particular patent is to design a beverage container that can both function in zero-gravity environments as well as withstand the stresses during takeoff and landing. Since there is no gravity, there is no natural separation of liquids and gases in the container. The mechanics of the patented design use both an elastic bag inside the container that contracts and forces the beverage out of the container, and also a flexible bag that is surrounded by a compressible gas. The patent and design drawings can be found here [http://www.google.com/patents?id=hbgsAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false] via Google Patents.
**This patent interested because I am interested in the complications that zero gravity environments have on even the simplest things, such as the fluid mechanics we take for granted in drinking a beverage.

=Inventiveness and Invention in the Combination of Known Devices=
===Patent 2,762,534: Device for Tapping a Barrel and Removing the Liquid Therefrom [http://www.google.com/patents?id=c2NHAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]===

:As seen in the patent document above, Patent 2,762,534 is an invention that is designed to provide a new and better method of removing liquid from a solid container, most commonly beer from a barrel as typically sold in the United States. The need for the invention arises from the adverse effects of introducing air into direct contact and mixing with the carbonic gases in the barrel of beer. This mixing results in the diluting of the beer's carbonic gases, causing it to become flat and tasteless.

:The invention presented in the patent then is a method of removing the liquid from the barrel without air coming into direct contact with the liquid itself and its own vaporized carbonic acids. This is achieved by the means of inserting an expandable bag into the barrel of liquid by means described in the patent document. As air from outside the barrel is pumped by means of a typical hand powered pump, the expandable bag inside the barrel inflates and exerts a constant pressure force on the liquid contained in the barrel. The invention also includes a rod which is inserted into the bottom of barrel and serves as the path along which the liquid is forced. This rod is then attached to a tap by which the liquid can then be dispensed into smaller containers.

===Patent 2,816,690: Pressure Packaging Systems for Liquids [http://www.google.com/patents?id=_cVfAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]===

:This particular patent concerns the invention of a new, faster, and more sterile way of packaging and transporting liquids in large containers. Previously, it was common practice to simply pump the liquid into the solid rigid container through an inlet valve, until it was satisfactorily full. The container was then capped and transported to its destination. This left the liquid exposed to potentially unsterile conditions through direct contact with the inside of the rigid container. Also, in the event that the rigid container was punctured, broken, or damaged in some way, the liquid would rapidly be exposed to the outside environment and spill from the container.

:The invention presented here addresses these problems through the use of an elastic core that would receive the liquid to be packaged and expand as it was filled.The diameter of the core would be minimal compared to the overall diameter of the rigid barrel. This elastic core would lie inside the rigid container and be attached to the inlet valve. As the liquid is pumped into the core under pressure, the core would expand until it came into all-around contact with the rigid shell. Upon delivery to its destination, the new container could be hooked to the extraction system. The natural elastic properties of the core would then provide the pressure force needed to extract the contained liquid.

:This invention allows liquids to be transported in a much more sterile environment, since the liquid never comes into direct contact with the inside of the rigid container. The invention also provides another layer of protection against contamination in the event that the rigid shell is punctured, broken, or damaged in some way.

===Patentability of Chosen Patent===
====Prior to Development of Modern Patent Code====

:Prior to the development of the modern United States Patent Code, the views on inventiveness and invention was based largely on the Supreme Court opinion delivered on the case of Hotchkiss v. Greenwood, 52 U.S. 11 (1850) and related cases. Before we analyze the patentability of the current patent by examining as a combination of known devices and materials, it is important to first look at the similarities between the chosen patent and the Pressure Packaging System (PPS) described above. The issue of novelty is an important one, and would negate the validity of the chosen patent regardless of all other factors.

:By examining the patent descriptions of both the chosen patent and the PPS, it is seen that the first embodiment of the chosen patent, and a preferred one as described in the patent document, is remarkably simliar to the PPS. Both patents employ an outer rigid container that encases an inner elastic bag whose diameter is insignificant compared to the diameter of the rigid shell. The properties of both of these inner bags are to use the natural elastic forces of the bag to provide the pressure needed to extract the liquid from its container. The only difference between the two, it seems, is the size of the container. While the earlier patent is explicitly intended for large liquid containers for the packaging and transportation of liquids, the patent author makes note of the potential of the PPS to be applied to many different cases that vary according to type of liquid contained and size of container (See Line 40, Right Column of the patent document) [http://www.google.com/patents?id=_cVfAAAAEBAJ&zoom=4&pg=PA2#v=onepage&q&f=false]. The mere reduction of size of this invention does not in fact produce a new or novel invention and is hardly qualified for a patent. However, since this is simply one of several embodiments of the chosen patent, the overall patent is not yet shown to be invalid.

:By examining the second preferred embodiment of the chosen patent, it can be shown that every part of the invention is not, by itself, new or novel. The rigid container is, obviously, the same as many bottles used and sold every day. The expandable or flexible bag is also widely used and known and the use of pressurized carbon dioxide is widespread. If it could be shown however, that these components had not been previously used in this configuration, and the resulting invention is novel and useful, then is would be patentable. However, the issue becomes more complicated when examining the patented Device for Tapping a Barrel (DTB) as described above. In both patents, liquid is removed from a container through the use of a flexible or expandable bag inside a rigid outer container, and the constant pressure force provided by a compressible gas. In the case of the DTB, the working compressible gas is air and for the chosen patent the working gas is carbon dioxide (CO2). The difference, in essence, between the two patents is that the chosen patent uses the natural properties of the compressible CO2 gas to do the work of extracting the liquid, whereas the work to extract the liquid using the DTB comes from a hand operated pump. This is an obvious improvement on the system. However, according to the opinion of the courts, this improvement is one based on the superiority of the carbon dioxide. It does not take any significant skill to simply substitute the carbon dioxide in the chosen patent for the air in the DTB, nor does it take much skill to rearrange the configuration of liquid and gas (where the gas is outside of the bag and the liquid inside). Thus, the chosen patent would be invalid.

====Since the Adoption of Modern Patent Code====

:With the codification of the Modern Patent Laws, the issues raised by cases such as Hotchkiss v. Greenwood and A. & P. Tea Company v. Supermarket Corp. are more clearly addressed, especially the topics of inventions by combination and the condition of non-obviousness. Specifically, 35 USC 103(a) expresses the non-obviousness clause as

::(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made. [http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000103----000-.html]

:Now, the importance of the simple substitution of carbon dioxide for air needs to be reconsidered. While each component of the embodiment of this patent is not in itself novel, and even their arrangement had been previously known and used, the thought behind the invention represents a significant step in science. By instead using a gas that will eliminate the need for a hand operated pump, the chosen patent's value lies in its ability to remove human work from the process. The chosen patent employs the natural properties, heretofore known but not utilized, to act upon the liquid and extract the liquid from the container. In the field of fluid mechanics, the use of a fluids pressure or momentum has seemingly limitless potential for future use, and represents a step forward in science and innovation when interacting in zero-gravity environments. Thus, in this light the patent should be held to be valid, in the discussed embodiment.

=Graham's Plow Patent in Light of the Prior Art=
===Argument for the Obviousness of the Patent===
:The improved plow design in Patent 2,627,798: Clamp for Vibrating Shank Plows [http://www.google.com/patents/about?id=2MVtAAAAEBAJ&dq=2,627,798] is not patentable since it does not satisfy the condition of non-obviousness as set forth in 35 U.S.C. 103. The invention is simply a combination of previously known mechanical components in a way that is neither inventive nor non-obvious.

:Every component, with the exception of the “stirrup and bolted connections of the shank to the hinge plate and the position of the shank”, is identical in design and composition to Graham’s older Patent 2,493,811: Vibrating Plow and Mounting Therefore [http://www.google.com/patents/about?id=0BZqAAAAEBAJ&dq=2,493,811]. Additionally, the “new” components described in his ‘798 patent had previously been known and used as shown by the Glencoe Patent 3,258,076: Adjustable Spring Clamp Shank Assembly. The Glencoe patent focuses its use of the stirrup to spread the structural wear of the shank’s movement over a surface, rather than at one point. The updates in the Graham ‘798 patent are identical in approach and function to the Glencoe patent.

:The argument that the positions of the shank and the hinge plate have been reversed is irrelevant, since there is no change in their mechanical purpose and the inversion of the component location is an obvious and trivial addition and should not be considered patentable. To further the argument of the patent’s obviousness, we must consider a person of ordinary skill in the field. It is well known to any student of solid mechanics and dynamics that a structure subjected to a force over an extended surface is subject to less pressure and subsequent damage than a structure that encounters a force of equal magnitude at a single discrete point. This rationale is clearly employed in both the Glencoe and Graham ‘798 patents, and would be an obvious solution to the problem of joint wear to any student in the field, nonetheless an experienced engineer.

:The addition of the “free flex theory” by the patent holder to the benefits of his invention seems to be a desperate grab for his patent’s validity. This claim that the improved flexibility results in a patentable invention was never discussed in his patent document and cannot be applied to the current debate. These arguments are clearly in support of the Supreme Court’s ruling that the patent was invalid.

===Argument for the Non-obviousness of the Patent===
:The ruling by the Supreme Court on the validity of the Graham Patent 2,627,798: Clamp for Vibrating Shank Plows, should be reversed, since the patent does, in fact, satisfy all the conditions of patentability, including novelty, utility, and non-obviousness.

:In the original court case Graham v. John Deere, the defendants failed in their efforts to prove that the improved design for reducing structural wear on plow parts and increasing flexibility to absorb larger shocks from obstructions was of an obvious nature to a person of ordinary skill the field. The argument that the patent is invalid since it is a mere combination of previously known parts is false, since an invention in that capacity can be patentable if the whole invention is greater than the sum of its parts. The specific arrangement and composition of the invention at hand is an integral part of the desired performance, and Graham’s patent holds that he has optimized his invention for its purpose.

:While there is similarity between the’798 patent and the prior art, specifically the Glencoe patent, the key arrangement of the ‘798 patent proves it to be a new and useful invention that has not been anticipated by the prior art. Glencoe’s clamp uses merely the mechanics of a spring and stirrup to pull the rake arm up and down. Graham’s clamp uses an I-beam structure for support as well as a hinge mechanism that attaches to the spring in the back to pull the rake arm up and down. The new design significantly reduces the structural wear on the ‘811 patent and is a clear improvement. According to 35 U.S.C. 101,

::Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title [http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000101----000-.html].

:The need for an improvement of the plow was evidenced by the number of structural fractures and subsequent repairs needs due to the extreme vibrations and oscillations in the plow shanks. If the ‘798 patent were indeed obvious, then any person of ordinary skill in the field could have examined the ‘811 mechanism and deduced that a simple inversion of the hinge plate and shank would improve the flexibility of the shank and extend the lifetime of the plow. However, this was not the case. This observation was never made, although the plow was commercially successful and its use widespread. Just because an improvement is simple does not indicate that it is obvious or not ingenious. There does not need to be a “flash of genius” to prove invention. Thus, the invention should be considered non-obvious and the patent valid.

=Non-obviousness Edit=
: The edited and revised page on non-obviousness can be found [[/Non-obviousness/|here]]

=Brief=
Brief of Eleven Law Professors and AARP as Amici Curiae in Support of Respondent (Oct. 2, 2009)

=Anticipation by a Printed Publication=
==MEHL/Biophile Intern. Corp. v. Milgraum==

ESB Briefs

2011-03-04T13:53:40Z

Adam T. Letcher:

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
#Steve Bonomo
#Kurt Riester
#
* Reply Brief for Petitioner. (Feb. 7, 1939)
#Cmadiga1
#90144463
#901422128
#jpotter2
#ewolz
#E W Hitchler
#Davin Sakamoto
#Kevin Godshall
#901479977
#Adam Letcher
* Brief for Respondents (Jan. 28, 1939)
#LMiller
#Josh Bradley
#Brobins
#Ebingle
#kyergler
#BCastel1
#Eric Leis
#Eddie Guilbeau
#Andrew McBride
#gallsup
* Brief for Petitioner. (Jan. 1939)
#Kschlax
#Andy Stulc
#Mzahm
#Rabot
#Peter Mitros
#Jacob Marmolejo
#Greg Torrisi
#Kevin Dacey
#Fernando Rodriguez
#

User:Adam T. Letcher/Non-obviousness

2011-03-02T01:24:45Z

Adam T. Letcher: /* Graham v. John Deere (1966) */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a long-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

==Relationship with Novelty==
During the evolution of modern patent laws, one of the first requirements for patent protection was novelty, which is to say the invention must be a new invention. It is subject to the restrictions that it will not be eligible for patenting if

:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

The novelty clause restricts inventors from filing for patent protection for inventions that have not only been patented in this country, but also those that are known or used in the United States prior to their filing. The issue of proving whether or not an invention was previously known and its difficulty is illustrated in [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]. Nonobviousness, on the other hand, is a second condition for patentability that was codified in the 1952 Patent Act.

:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

While an invention may satisfy the condition of novelty, it may fail the test of nonobviousness. The logic of the clause is to prevent small manipulations or changes to existing patents in order to gain monopolies, which further stagnate innovation and progress.

==Nonobviousness vs. Invention==
Prior to the codification of modern patent law, the ruling on patents, specifically combination patents, was governed by court precedents. Hotchkiss v. Greenwood used the term "inventiveness" and ingenuity in attempting to rationalize a patent's invalidity. This language guided courts' decisions on the subject of combination patents for years, but the ambiguous terminology of "invention" rapidly caused confusion and resulted in conflicting rulings throughout the United States. The court's opinion in [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] expressed the need for new language and definition of the evolving concept of nonobviousness

:However useful as words of art to denote in short form that an assembly of units has failed or has met the examination for invention, their employment as tests to determine invention results in nothing but confusion. The concept of invention is inherently elusive when applied to combination of old elements.

The explicit language of the Patent Act of 1952 sought to provide an unambiguous and well defined expression of nonobviousness that upheld the concept as it had evolved in the courts. It did not raise or lower the required level of inventiveness for patents, but nominally held the same standard as set forth in the Constitution while providing a more uniform ruling on the subject.

==Secondary Considerations==

Secondary considerations that can be taken into account, as initially set forth in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.

*commercial success of the invention;
*long-felt but unsolved needs;
*failure of others to find a solution;

Fulfilment of the U.S.C. is the sole indicator of patentability, but these considerations can be used to aid in determination of nonobviousness. For example, in the aforementioned case with Learned Hand, it was shown that, while keeping the workpiece heated throughout the coating process is a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years without success. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Ordinary Skill in the Art==

Examination of the opinion in [[Reiner v. I. Leon Co. (full text)]] reveals attempts at putting the modern patent statutes into practice.

:We are of course acutely aware of the constant reminders in the books that the sale of a patented device is not alone a measure of its invention, and we accept that conclusion. Nevertheless, great commercial success, when properly scrutinized, may be a telling circumstance. It is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a "combination": that is to say, it consists of former elements in a new assemblage. All the constituents may be old, if their new concourse would not "have been obvious at the time the invention was made to a person having ordinary skill in the art" (§ 103, Title 35).

The codification of nonobviousness was intended to provided definition and unambiguity to the ruling of courts in the United States. However, the language still leaves room for interpretation that needed to be developed in the judicial system. Specifically, the concept of "ordinary skill in the art" is difficult to evaluate for judges and justices clearly outside of that "art"

:The test laid down is indeed misty enough. It directs us to surmise what was the range of ingenuity of a person "having ordinary skill" in an "art" with which we are totally unfamiliar; and we do not see how such a standard can be applied at all except by recourse to the earlier work in the art, and to the general history of the means available at the time. To judge on our own that this or that new assemblage of old factors was, or was not, "obvious" is to substitute our ignorance for the acquaintance with the subject of those who were familiar with it. There are indeed some sign posts: e. g. how long did the need exist; how many tried to find the way; how long did the surrounding and accessory arts disclose the means; how immediately was the invention recognized as an answer by those who used the new variant?

The approach followed by Judge Hand, an approach still followed today, was to rely on testimonies of those people thoroughly acquainted with the field and those who could provide the court with expert testimony on the subject at hand.

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

User:Adam T. Letcher/Non-obviousness

2011-03-02T01:18:40Z

Adam T. Letcher: /* A&P Tea v. Supermarket Equipment (1950) */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a long-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

==Relationship with Novelty==
During the evolution of modern patent laws, one of the first requirements for patent protection was novelty, which is to say the invention must be a new invention. It is subject to the restrictions that it will not be eligible for patenting if

:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

The novelty clause restricts inventors from filing for patent protection for inventions that have not only been patented in this country, but also those that are known or used in the United States prior to their filing. The issue of proving whether or not an invention was previously known and its difficulty is illustrated in [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]. Nonobviousness, on the other hand, is a second condition for patentability that was codified in the 1952 Patent Act.

:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

While an invention may satisfy the condition of novelty, it may fail the test of nonobviousness. The logic of the clause is to prevent small manipulations or changes to existing patents in order to gain monopolies, which further stagnate innovation and progress.

==Nonobviousness vs. Invention==
Prior to the codification of modern patent law, the ruling on patents, specifically combination patents, was governed by court precedents. Hotchkiss v. Greenwood used the term "inventiveness" and ingenuity in attempting to rationalize a patent's invalidity. This language guided courts' decisions on the subject of combination patents for years, but the ambiguous terminology of "invention" rapidly caused confusion and resulted in conflicting rulings throughout the United States. The court's opinion in [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] expressed the need for new language and definition of the evolving concept of nonobviousness

:However useful as words of art to denote in short form that an assembly of units has failed or has met the examination for invention, their employment as tests to determine invention results in nothing but confusion. The concept of invention is inherently elusive when applied to combination of old elements.

The explicit language of the Patent Act of 1952 sought to provide an unambiguous and well defined expression of nonobviousness that upheld the concept as it had evolved in the courts. It did not raise or lower the required level of inventiveness for patents, but nominally held the same standard as set forth in the Constitution while providing a more uniform ruling on the subject.

==Secondary Considerations==

Secondary considerations that can be taken into account, as initially set forth in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.

*commercial success of the invention;
*long-felt but unsolved needs;
*failure of others to find a solution;

Fulfilment of the U.S.C. is the sole indicator of patentability, but these considerations can be used to aid in determination of nonobviousness. For example, in the aforementioned case with Learned Hand, it was shown that, while keeping the workpiece heated throughout the coating process is a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years without success. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Ordinary Skill in the Art==

Examination of the opinion in [[Reiner v. I. Leon Co. (full text)]] reveals attempts at putting the modern patent statutes into practice.

:We are of course acutely aware of the constant reminders in the books that the sale of a patented device is not alone a measure of its invention, and we accept that conclusion. Nevertheless, great commercial success, when properly scrutinized, may be a telling circumstance. It is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a "combination": that is to say, it consists of former elements in a new assemblage. All the constituents may be old, if their new concourse would not "have been obvious at the time the invention was made to a person having ordinary skill in the art" (§ 103, Title 35).

The codification of nonobviousness was intended to provided definition and unambiguity to the ruling of courts in the United States. However, the language still leaves room for interpretation that needed to be developed in the judicial system. Specifically, the concept of "ordinary skill in the art" is difficult to evaluate for judges and justices clearly outside of that "art"

:The test laid down is indeed misty enough. It directs us to surmise what was the range of ingenuity of a person "having ordinary skill" in an "art" with which we are totally unfamiliar; and we do not see how such a standard can be applied at all except by recourse to the earlier work in the art, and to the general history of the means available at the time. To judge on our own that this or that new assemblage of old factors was, or was not, "obvious" is to substitute our ignorance for the acquaintance with the subject of those who were familiar with it. There are indeed some sign posts: e. g. how long did the need exist; how many tried to find the way; how long did the surrounding and accessory arts disclose the means; how immediately was the invention recognized as an answer by those who used the new variant?

The approach followed by Judge Hand, an approach still followed today, was to rely on testimonies of those people thoroughly acquainted with the field and those who could provide the court with expert testimony on the subject at hand.

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

User:Adam T. Letcher/Non-obviousness

2011-02-28T05:08:43Z

Adam T. Letcher: /* 35 USC 103 (1952) */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

==Relationship with Novelty==
During the evolution of modern patent laws, one of the first requirements for patent protection was novelty, which is to say the invention must be a new invention. It is subject to the restrictions that it will not be eligible for patenting if

:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

The novelty clause restricts inventors from filing for patent protection for inventions that have not only been patented in this country, but also those that are known or used in the United States prior to their filing. The issue of proving whether or not an invention was previously known and its difficulty is illustrated in [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]. Nonobviousness, on the other hand, is a second condition for patentability that was codified in the 1952 Patent Act.

:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

While an invention may satisfy the condition of novelty, it may fail the test of nonobviousness. The logic of the clause is to prevent small manipulations or changes to existing patents in order to gain monopolies, which further stagnate innovation and progress.

==Nonobviousness vs. Invention==
Prior to the codification of modern patent law, the ruling on patents, specifically combination patents, was governed by court precedents. Hotchkiss v. Greenwood used the term "inventiveness" and ingenuity in attempting to rationalize a patent's invalidity. This language guided courts' decisions on the subject of combination patents for years, but the ambiguous terminology of "invention" rapidly caused confusion and resulted in conflicting rulings throughout the United States. The court's opinion in [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] expressed the need for new language and definition of the evolving concept of nonobviousness

:However useful as words of art to denote in short form that an assembly of units has failed or has met the examination for invention, their employment as tests to determine invention results in nothing but confusion. The concept of invention is inherently elusive when applied to combination of old elements.

The explicit language of the Patent Act of 1952 sought to provide an unambiguous and well defined expression of nonobviousness that upheld the concept as it had evolved in the courts. It did not raise or lower the required level of inventiveness for patents, but nominally held the same standard as set forth in the Constitution while providing a more uniform ruling on the subject.

==Secondary Considerations==

Secondary considerations that can be taken into account, as initially set forth in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.

*commercial success of the invention;
*long-felt but unsolved needs;
*failure of others to find a solution;

Fulfilment of the U.S.C. is the sole indicator of patentability, but these considerations can be used to aid in determination of nonobviousness. For example, in the aforementioned case with Learned Hand, it was shown that, while keeping the workpiece heated throughout the coating process is a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years without success. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Ordinary Skill in the Art==

Examination of the opinion in [[Reiner v. I. Leon Co. (full text)]] reveals attempts at putting the modern patent statutes into practice.

:We are of course acutely aware of the constant reminders in the books that the sale of a patented device is not alone a measure of its invention, and we accept that conclusion. Nevertheless, great commercial success, when properly scrutinized, may be a telling circumstance. It is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a "combination": that is to say, it consists of former elements in a new assemblage. All the constituents may be old, if their new concourse would not "have been obvious at the time the invention was made to a person having ordinary skill in the art" (§ 103, Title 35).

The codification of nonobviousness was intended to provided definition and unambiguity to the ruling of courts in the United States. However, the language still leaves room for interpretation that needed to be developed in the judicial system. Specifically, the concept of "ordinary skill in the art" is difficult to evaluate for judges and justices clearly outside of that "art"

:The test laid down is indeed misty enough. It directs us to surmise what was the range of ingenuity of a person "having ordinary skill" in an "art" with which we are totally unfamiliar; and we do not see how such a standard can be applied at all except by recourse to the earlier work in the art, and to the general history of the means available at the time. To judge on our own that this or that new assemblage of old factors was, or was not, "obvious" is to substitute our ignorance for the acquaintance with the subject of those who were familiar with it. There are indeed some sign posts: e. g. how long did the need exist; how many tried to find the way; how long did the surrounding and accessory arts disclose the means; how immediately was the invention recognized as an answer by those who used the new variant?

The approach followed by Judge Hand, an approach still followed today, was to rely on testimonies of those people thoroughly acquainted with the field and those who could provide the court with expert testimony on the subject at hand.

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

User:Adam T. Letcher/Non-obviousness

2011-02-28T05:08:24Z

Adam T. Letcher: /* 35 USC 103 (1952) */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

==Relationship with Novelty==
During the evolution of modern patent laws, one of the first requirements for patent protection was novelty, which is to say the invention must be a new invention. It is subject to the restrictions that it will not be eligible for patenting if

:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

The novelty clause restricts inventors from filing for patent protection for inventions that have not only been patented in this country, but also those that are known or used in the United States prior to their filing. The issue of proving whether or not an invention was previously known and its difficulty is illustrated in [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]. Nonobviousness, on the other hand, is a second condition for patentability that was codified in the 1952 Patent Act.

:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

While an invention may satisfy the condition of novelty, it may fail the test of nonobviousness. The logic of the clause is to prevent small manipulations or changes to existing patents in order to gain monopolies, which further stagnate innovation and progress.

==Nonobviousness vs. Invention==
Prior to the codification of modern patent law, the ruling on patents, specifically combination patents, was governed by court precedents. Hotchkiss v. Greenwood used the term "inventiveness" and ingenuity in attempting to rationalize a patent's invalidity. This language guided courts' decisions on the subject of combination patents for years, but the ambiguous terminology of "invention" rapidly caused confusion and resulted in conflicting rulings throughout the United States. The court's opinion in [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] expressed the need for new language and definition of the evolving concept of nonobviousness

:However useful as words of art to denote in short form that an assembly of units has failed or has met the examination for invention, their employment as tests to determine invention results in nothing but confusion. The concept of invention is inherently elusive when applied to combination of old elements.

The explicit language of the Patent Act of 1952 sought to provide an unambiguous and well defined expression of nonobviousness that upheld the concept as it had evolved in the courts. It did not raise or lower the required level of inventiveness for patents, but nominally held the same standard as set forth in the Constitution while providing a more uniform ruling on the subject.

==Secondary Considerations==

Secondary considerations that can be taken into account, as initially set forth in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.

*commercial success of the invention;
*long-felt but unsolved needs;
*failure of others to find a solution;

Fulfilment of the U.S.C. is the sole indicator of patentability, but these considerations can be used to aid in determination of nonobviousness. For example, in the aforementioned case with Learned Hand, it was shown that, while keeping the workpiece heated throughout the coating process is a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years without success. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Ordinary Skill in the Art==

Examination of the opinion in [[Reiner v. I. Leon Co. (full text)]] reveals attempts at putting the modern patent statutes into practice.

:We are of course acutely aware of the constant reminders in the books that the sale of a patented device is not alone a measure of its invention, and we accept that conclusion. Nevertheless, great commercial success, when properly scrutinized, may be a telling circumstance. It is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a "combination": that is to say, it consists of former elements in a new assemblage. All the constituents may be old, if their new concourse would not "have been obvious at the time the invention was made to a person having ordinary skill in the art" (§ 103, Title 35).

The codification of nonobviousness was intended to provided definition and unambiguity to the ruling of courts in the United States. However, the language still leaves room for interpretation that needed to be developed in the judicial system. Specifically, the concept of "ordinary skill in the art" is difficult to evaluate for judges and justices clearly outside of that "art"

:The test laid down is indeed misty enough. It directs us to surmise what was the range of ingenuity of a person "having ordinary skill" in an "art" with which we are totally unfamiliar; and we do not see how such a standard can be applied at all except by recourse to the earlier work in the art, and to the general history of the means available at the time. To judge on our own that this or that new assemblage of old factors was, or was not, "obvious" is to substitute our ignorance for the acquaintance with the subject of those who were familiar with it. There are indeed some sign posts: e. g. how long did the need exist; how many tried to find the way; how long did the surrounding and accessory arts disclose the means; how immediately was the invention recognized as an answer by those who used the new variant?

The approach followed by Judge Hand, an approach still followed today, was to rely on testimonies of those people thoroughly acquainted with the field and those who could provide the court with expert testimony on the subject at hand.

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

User:Adam T. Letcher/Non-obviousness

2011-02-28T05:08:09Z

Adam T. Letcher: /* 35 USC 103 (1952) */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[##The Inventive Step##]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

==Relationship with Novelty==
During the evolution of modern patent laws, one of the first requirements for patent protection was novelty, which is to say the invention must be a new invention. It is subject to the restrictions that it will not be eligible for patenting if

:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

The novelty clause restricts inventors from filing for patent protection for inventions that have not only been patented in this country, but also those that are known or used in the United States prior to their filing. The issue of proving whether or not an invention was previously known and its difficulty is illustrated in [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]. Nonobviousness, on the other hand, is a second condition for patentability that was codified in the 1952 Patent Act.

:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

While an invention may satisfy the condition of novelty, it may fail the test of nonobviousness. The logic of the clause is to prevent small manipulations or changes to existing patents in order to gain monopolies, which further stagnate innovation and progress.

==Nonobviousness vs. Invention==
Prior to the codification of modern patent law, the ruling on patents, specifically combination patents, was governed by court precedents. Hotchkiss v. Greenwood used the term "inventiveness" and ingenuity in attempting to rationalize a patent's invalidity. This language guided courts' decisions on the subject of combination patents for years, but the ambiguous terminology of "invention" rapidly caused confusion and resulted in conflicting rulings throughout the United States. The court's opinion in [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] expressed the need for new language and definition of the evolving concept of nonobviousness

:However useful as words of art to denote in short form that an assembly of units has failed or has met the examination for invention, their employment as tests to determine invention results in nothing but confusion. The concept of invention is inherently elusive when applied to combination of old elements.

The explicit language of the Patent Act of 1952 sought to provide an unambiguous and well defined expression of nonobviousness that upheld the concept as it had evolved in the courts. It did not raise or lower the required level of inventiveness for patents, but nominally held the same standard as set forth in the Constitution while providing a more uniform ruling on the subject.

==Secondary Considerations==

Secondary considerations that can be taken into account, as initially set forth in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.

*commercial success of the invention;
*long-felt but unsolved needs;
*failure of others to find a solution;

Fulfilment of the U.S.C. is the sole indicator of patentability, but these considerations can be used to aid in determination of nonobviousness. For example, in the aforementioned case with Learned Hand, it was shown that, while keeping the workpiece heated throughout the coating process is a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years without success. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Ordinary Skill in the Art==

Examination of the opinion in [[Reiner v. I. Leon Co. (full text)]] reveals attempts at putting the modern patent statutes into practice.

:We are of course acutely aware of the constant reminders in the books that the sale of a patented device is not alone a measure of its invention, and we accept that conclusion. Nevertheless, great commercial success, when properly scrutinized, may be a telling circumstance. It is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a "combination": that is to say, it consists of former elements in a new assemblage. All the constituents may be old, if their new concourse would not "have been obvious at the time the invention was made to a person having ordinary skill in the art" (§ 103, Title 35).

The codification of nonobviousness was intended to provided definition and unambiguity to the ruling of courts in the United States. However, the language still leaves room for interpretation that needed to be developed in the judicial system. Specifically, the concept of "ordinary skill in the art" is difficult to evaluate for judges and justices clearly outside of that "art"

:The test laid down is indeed misty enough. It directs us to surmise what was the range of ingenuity of a person "having ordinary skill" in an "art" with which we are totally unfamiliar; and we do not see how such a standard can be applied at all except by recourse to the earlier work in the art, and to the general history of the means available at the time. To judge on our own that this or that new assemblage of old factors was, or was not, "obvious" is to substitute our ignorance for the acquaintance with the subject of those who were familiar with it. There are indeed some sign posts: e. g. how long did the need exist; how many tried to find the way; how long did the surrounding and accessory arts disclose the means; how immediately was the invention recognized as an answer by those who used the new variant?

The approach followed by Judge Hand, an approach still followed today, was to rely on testimonies of those people thoroughly acquainted with the field and those who could provide the court with expert testimony on the subject at hand.

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

User:Adam T. Letcher/Non-obviousness

2011-02-28T05:07:35Z

Adam T. Letcher: /* 35 USC 103 (1952) */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step#]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

==Relationship with Novelty==
During the evolution of modern patent laws, one of the first requirements for patent protection was novelty, which is to say the invention must be a new invention. It is subject to the restrictions that it will not be eligible for patenting if

:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

The novelty clause restricts inventors from filing for patent protection for inventions that have not only been patented in this country, but also those that are known or used in the United States prior to their filing. The issue of proving whether or not an invention was previously known and its difficulty is illustrated in [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]. Nonobviousness, on the other hand, is a second condition for patentability that was codified in the 1952 Patent Act.

:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

While an invention may satisfy the condition of novelty, it may fail the test of nonobviousness. The logic of the clause is to prevent small manipulations or changes to existing patents in order to gain monopolies, which further stagnate innovation and progress.

==Nonobviousness vs. Invention==
Prior to the codification of modern patent law, the ruling on patents, specifically combination patents, was governed by court precedents. Hotchkiss v. Greenwood used the term "inventiveness" and ingenuity in attempting to rationalize a patent's invalidity. This language guided courts' decisions on the subject of combination patents for years, but the ambiguous terminology of "invention" rapidly caused confusion and resulted in conflicting rulings throughout the United States. The court's opinion in [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] expressed the need for new language and definition of the evolving concept of nonobviousness

:However useful as words of art to denote in short form that an assembly of units has failed or has met the examination for invention, their employment as tests to determine invention results in nothing but confusion. The concept of invention is inherently elusive when applied to combination of old elements.

The explicit language of the Patent Act of 1952 sought to provide an unambiguous and well defined expression of nonobviousness that upheld the concept as it had evolved in the courts. It did not raise or lower the required level of inventiveness for patents, but nominally held the same standard as set forth in the Constitution while providing a more uniform ruling on the subject.

==Secondary Considerations==

Secondary considerations that can be taken into account, as initially set forth in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.

*commercial success of the invention;
*long-felt but unsolved needs;
*failure of others to find a solution;

Fulfilment of the U.S.C. is the sole indicator of patentability, but these considerations can be used to aid in determination of nonobviousness. For example, in the aforementioned case with Learned Hand, it was shown that, while keeping the workpiece heated throughout the coating process is a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years without success. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Ordinary Skill in the Art==

Examination of the opinion in [[Reiner v. I. Leon Co. (full text)]] reveals attempts at putting the modern patent statutes into practice.

:We are of course acutely aware of the constant reminders in the books that the sale of a patented device is not alone a measure of its invention, and we accept that conclusion. Nevertheless, great commercial success, when properly scrutinized, may be a telling circumstance. It is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a "combination": that is to say, it consists of former elements in a new assemblage. All the constituents may be old, if their new concourse would not "have been obvious at the time the invention was made to a person having ordinary skill in the art" (§ 103, Title 35).

The codification of nonobviousness was intended to provided definition and unambiguity to the ruling of courts in the United States. However, the language still leaves room for interpretation that needed to be developed in the judicial system. Specifically, the concept of "ordinary skill in the art" is difficult to evaluate for judges and justices clearly outside of that "art"

:The test laid down is indeed misty enough. It directs us to surmise what was the range of ingenuity of a person "having ordinary skill" in an "art" with which we are totally unfamiliar; and we do not see how such a standard can be applied at all except by recourse to the earlier work in the art, and to the general history of the means available at the time. To judge on our own that this or that new assemblage of old factors was, or was not, "obvious" is to substitute our ignorance for the acquaintance with the subject of those who were familiar with it. There are indeed some sign posts: e. g. how long did the need exist; how many tried to find the way; how long did the surrounding and accessory arts disclose the means; how immediately was the invention recognized as an answer by those who used the new variant?

The approach followed by Judge Hand, an approach still followed today, was to rely on testimonies of those people thoroughly acquainted with the field and those who could provide the court with expert testimony on the subject at hand.

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

AME 40590 Homeworks, Spring 2011

2011-02-24T20:00:43Z

Adam T. Letcher:

=Due Friday, January 21, 2011=

* Read [[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]]
**There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
** If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

=Due Monday, January 24, 2011=
* Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
* On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

=Due Wednesday, January 26, 2011=
Read:
* [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]]
* [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]

=Due Friday, January 28, 2011=
* Read [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
* Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
** Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
** If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

=Due Monday, January 31, 2011=
We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.
* [[Graham v. John Deere, 383 U.S. 1 (1966)]]
* [[US v. Adams, 383 U.S. 39 (1966) ]]

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

=Due Wednesday, February 2, 2011=
* Read
** [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
** [[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
* Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
** Read the patent that was litigated
** Read two of the patents referred to in the prior art
*** for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
*** for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

=Due Friday, February 4, 2011=
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

=Due Monday, February 7, 2011=
We are starting the topic of patentable subject matter. 35 USC 101 says "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:
* [[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
* [[Diamond v. Diehr, 450 U.S. 175 (1981)]]

=Due Wednesday, February 9, 2011=
Make a copy of the [[NONOBVIOUSNESS]] page and edit ''your'' copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

=Due Friday, February 11, 2011=
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]

=Due Monday, February 14, 2011=
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
* Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. [[Bilski brief list|Here]] is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

=Due Friday, February 18, 2011=
We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:
*35 USC 102
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

=Due Monday, February 21, 2011=
We are continuing with statutory bars. Read:
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]]

=Due Wednesday, February 23, 2011=
*[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]

=Due Friday, February 25, 2011=
Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3323372_KISTLER_ETAL_LINEAR_SERVO_ACCELE.pdf 3,323,372]
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf 3,643,513]

=Due Monday, February 28, 2011=
Write a six page paper on non-obviousness with the following approximate page break-down:
*The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
*The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
*The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The sixth page should be a description of what ''you'' would propose for the standard for non-obviousness and why it is the best standard.

=Due Wednesday, March 2, 2011=

=Due Friday, March 4, 2011=

AME 40590 Intellectual Property for Engineers

2011-02-15T17:01:17Z

Adam T. Letcher: /* INTRODUCTION */

=ALPHABETICAL LISTING OF CASES=

Testing

*[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]
*[[Alza Corp. v. Mylan Laboratories, 464 F.3d 1286, (2006)]]
*[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
*[[Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961)]]
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1994)]]
*[[Atlas Powder v. E.I. du Pont de Nemours, 750 F2d 1569 (1984)]]
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
*[[Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908)]]
*[[Bonito Boats. v. Thunder Craft, 489 U.S. 141 (1989)]]
*[[Chester v. Miller, 906 F.2d 1574 (1990)]]
*[[Diamond v. Diehr, 450 U.S. 175 (1981)]]
*[[Egbert v. Lippmann, 104 U.S. 333 (1881))]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (1991)]]
*[[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
*[[Gould v. Hellwarth, 472 F2d 1383 (1973)]]
*[[Graham v. John Deere, 383 U.S. 1 (1966)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]
*[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850) ]]
*[[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]
*[[In Re Rouffet]]
*[[In Re Bilski]]
**[[In Re Bilski, Dky concurring opinion]]
**[[In Re Bilski, Newman dissenting opinion]]
**[[In Re Bilski, Mayer dissenting opinion]]
**[[In Re Bilski, Rader dissenting opinion]]
*[[In re Brana, 51 F.3d 1560 (1995)]]
*[[In re Hall (full text)]]
*[[In re Kahn, CAFC 04-1616 (2006)]]
*[[J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001)]]
*[[Juicy Whip v. Orange Bang, 185 F.3d 1364 (1999)]]
*[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
*[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]
*[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
*[[Metabolit Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings, 370 F.3d 1354 (2004)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]
*[[Microsoft Corp v. At&T Corp.]]
*[[Monsanto v. Good F.Supp.2d, WL 1664013 (D.N.J.) (2003)]]
*[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]
*[[Pfaff v. Wells Electronics: full text]]
*[[Pfaff vs. Wells Electronics]]
*[[Philips Electric Co. v. Thermal Industries, Inc. (full text)]]
*[[Quanta Computers Inc v. LG Electronics (full text)]]
*[[Reiner v. I. Leon Co. (full text)]]
*[[South Corp. v. US]]
*[[South Corp. v. US (full text)]]
*[[South Corp. v. US 690 F.2d 1368 (1982)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]
*[[Traffix Devices, Inc. vs. Marketing Displays, Inc.]]
*[[US v. Adams, 383 U.S. 39 (1966)]]
*[[US v. Adams (full text)]]
*[[U.S. v. Univis Lens Co., 316 U.S. 241 (1942)]]
*[[Universal Athletic Sales Co. v. American Gym Recreational & Athletic Equipment Corporation, Inc. (full text)]]
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
**[[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
**[[Warner-Jenkinson v. Hilton Davis Respondent Brief]]
*[[Winner International Royalty Co. v. Wang, 202 F.3d 1340 (2000)]]

=[[INTRODUCTION]]=
This is a summary. Click on the title for the full chapter: [[INTRODUCTION]]

Outline:
*The main purpose for obtaining a patent is ''economic''.
*It grants the exclusive right to ''make, use or sell'' the invention for a limited period of time.
*The governing law is Title 35 of the United States Code (35 USC).
*The governing regulations are from Title 37 of the Code of Federal Regulations (37 CFR).
*The law is federal, so patent cases are resolved in the federal court system:
**district courts;
**circuit courts;
**the Court of Appeals for the Federal Circuit (CAFC), a special appeals court for patent cases; and,
**the Supreme Court.
*The US Patent and Trademark Office (PTO) processes patent applications.
*Patents last for 20 years from the date the application is filed with the PTO.
*Patents have the attributes of personal property.
*The foundation of the federal government's authority to create a patent system is in the Constitution. The purposes is explicitly economic, "to promote the progress of science and useful arts..."
*Other forms of intellectual property
**copyright;
**trademarks; and,
**trade secrets.

=[[NONOBVIOUSNESS]]=
This is a summary. Click on the title for the full chapter: [[NONOBVIOUSNESS]]

Outline:

*This is perhaps the most difficult factual patent issue. In addition to meeting the novelty requirements of 35 USC 102, 35 USC 103 requires that the claimed invention as a whole must have been nonobvious "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
*There is a lot of historical confusion regarding this standard. Basically, it is a notion of something being meeting some type of sufficient inventive standard or nontriviality.
*To determine this, there are three fundamental lines of inquiry:
**the scope and content of the prior art;
**the differences between the prior art and claims at issue; and,
**the level of ordinary skill in the art.
*Secondary considerations include:
**a long-felt but unsatisfied need met by the invention;
**appreciation by those versed in the art that the need existed;
**substantial attempts to meet this need;
**commercial success of the invention;
**replacement in the industry by the claimed invention;
**acquiescence by the industry;
**''teaching away'' by those skilled in the art;
**unexpectedness of the results; and,
**disbelief or incredulity on the part of industry with respect to the new invention.

=[[INFRINGEMENT]]=
This is a summary. Click on the title for the full chapter: [[INFRINGEMENT]]

=[[THE PATENT DOCUMENT]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT DOCUMENT]]

Outline:
*A patent has several parts:
**specification: describes the invention;
**claims: delineates the ownership rights;
**drawings: not required, but if they are included then any element included in the claims must be shown in the drawings; and,
**other miscellaneous parts.
*Interpreting claims: claims are said to ''read on'' another device.
*The doctrine of equivalence, prevents something from being patented that only has minor alterations from the prior art.
*The date of the invention
**''reduction to practice'';
**''diligence'' requirement.
*The ''file wrapper''.

=[[NOVELTY]]=
This is a summary. Click on the title for the full chapter: [[NOVELTY]]

Outline:
*Specified in 35 USC 102.
*Fundamentally: an invention must be ''new''.
*Section 102 basically defines in a technical way what it means to not be new:
**Events prior to invention
***known or used by others in the US
***patented or in a printed publication in another country
**Events one year before filing the patent application
***patented or in a printed publication anywhere (''in this or a foreign country'')
***in public use or on sale in the US
**Other bars
*The applicant must be the inventor (not the employer)

Outline:
*Literal Infringement
*The Doctrine of Equivalents

=[[UTILITY]]=
This is a summary. Click on the title for the full chapter: [[UTILITY]]

=[[PATENTABLE SUBJECT MATTER]]=
This is a summary. Click on the title for the full chapter: [[PATENTABLE SUBJECT MATTER]]

Can computer programs, algorithms, laws of nature, life forms, plants, ''etc.'' be patented. In particular, are the following patentable:

* Plants
* Algorithms and Computer Programs
* Scientific Facts?

In a recent case
* State Street (1998)
the CAFC substantially broadened the subject matter of section 101 to include such things as methods of doing business, etc.

=[[FOREIGN AND DOMESTIC PRIORITY]]=
This is a summary. Click on the title for the full chapter: [[FOREIGN AND DOMESTIC PRIORITY]]

Outline:
*Priority in general
*Foreign priority
*International applications
*Domestic priority
*Provisional applications

=[[THE PATENT APPLICATION]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT APPLICATION]]

Outline:
*The Disclosure
*The Claims
*Other Sections
*New Matter
*The Examination Process

=[[INVENTOR ELIGIBILITY]]=
This is a summary. Click on the title for the full chapter: [[INVENTOR ELIGIBILITY]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005): (full text)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]

[[METABOLITE LABORATORIES, INC. and Competitive Technologies, Inc. v. LABORATORY CORPORATION OF AMERICA HOLDINGS (doing business as LabCorp): the CAFC case (full text)]]

=[[ANTICIPATION]]=
This is a summary. Click on the title for the full chapter: [[ANTICIPATION]]

=[[PRIOR ART]]=
This is a summary. Click on the title for the full chapter: [[PRIOR ART]]

[[Pfaff v. Wells Electronics: full text]]

[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]

[[Perkin-Elmer Corporation v. Computervision Corporation]]

Bilski brief list

2011-02-12T22:23:18Z

Adam T. Letcher:

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
#Adam T. Letcher
#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)
#Jmarmole
#Brief of John P. Sutton Amicus Curiae Supporting Petitioners (Feb. 25, 2009)

User:Adam T. Letcher

2011-02-12T22:22:50Z

Adam T. Letcher:

=Contact=
*Email: aletcher@nd.edu

=Selected Patent=

*Patent 4,875,508: Beverage Container for Use in Outer Space
**Date Issued: October 24th, 1989

*The idea behind this particular patent is to design a beverage container that can both function in zero-gravity environments as well as withstand the stresses during takeoff and landing. Since there is no gravity, there is no natural separation of liquids and gases in the container. The mechanics of the patented design use both an elastic bag inside the container that contracts and forces the beverage out of the container, and also a flexible bag that is surrounded by a compressible gas. The patent and design drawings can be found here [http://www.google.com/patents?id=hbgsAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false] via Google Patents.
**This patent interested because I am interested in the complications that zero gravity environments have on even the simplest things, such as the fluid mechanics we take for granted in drinking a beverage.

=Inventiveness and Invention in the Combination of Known Devices=
===Patent 2,762,534: Device for Tapping a Barrel and Removing the Liquid Therefrom [http://www.google.com/patents?id=c2NHAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]===

:As seen in the patent document above, Patent 2,762,534 is an invention that is designed to provide a new and better method of removing liquid from a solid container, most commonly beer from a barrel as typically sold in the United States. The need for the invention arises from the adverse effects of introducing air into direct contact and mixing with the carbonic gases in the barrel of beer. This mixing results in the diluting of the beer's carbonic gases, causing it to become flat and tasteless.

:The invention presented in the patent then is a method of removing the liquid from the barrel without air coming into direct contact with the liquid itself and its own vaporized carbonic acids. This is achieved by the means of inserting an expandable bag into the barrel of liquid by means described in the patent document. As air from outside the barrel is pumped by means of a typical hand powered pump, the expandable bag inside the barrel inflates and exerts a constant pressure force on the liquid contained in the barrel. The invention also includes a rod which is inserted into the bottom of barrel and serves as the path along which the liquid is forced. This rod is then attached to a tap by which the liquid can then be dispensed into smaller containers.

===Patent 2,816,690: Pressure Packaging Systems for Liquids [http://www.google.com/patents?id=_cVfAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]===

:This particular patent concerns the invention of a new, faster, and more sterile way of packaging and transporting liquids in large containers. Previously, it was common practice to simply pump the liquid into the solid rigid container through an inlet valve, until it was satisfactorily full. The container was then capped and transported to its destination. This left the liquid exposed to potentially unsterile conditions through direct contact with the inside of the rigid container. Also, in the event that the rigid container was punctured, broken, or damaged in some way, the liquid would rapidly be exposed to the outside environment and spill from the container.

:The invention presented here addresses these problems through the use of an elastic core that would receive the liquid to be packaged and expand as it was filled.The diameter of the core would be minimal compared to the overall diameter of the rigid barrel. This elastic core would lie inside the rigid container and be attached to the inlet valve. As the liquid is pumped into the core under pressure, the core would expand until it came into all-around contact with the rigid shell. Upon delivery to its destination, the new container could be hooked to the extraction system. The natural elastic properties of the core would then provide the pressure force needed to extract the contained liquid.

:This invention allows liquids to be transported in a much more sterile environment, since the liquid never comes into direct contact with the inside of the rigid container. The invention also provides another layer of protection against contamination in the event that the rigid shell is punctured, broken, or damaged in some way.

===Patentability of Chosen Patent===
====Prior to Development of Modern Patent Code====

:Prior to the development of the modern United States Patent Code, the views on inventiveness and invention was based largely on the Supreme Court opinion delivered on the case of Hotchkiss v. Greenwood, 52 U.S. 11 (1850) and related cases. Before we analyze the patentability of the current patent by examining as a combination of known devices and materials, it is important to first look at the similarities between the chosen patent and the Pressure Packaging System (PPS) described above. The issue of novelty is an important one, and would negate the validity of the chosen patent regardless of all other factors.

:By examining the patent descriptions of both the chosen patent and the PPS, it is seen that the first embodiment of the chosen patent, and a preferred one as described in the patent document, is remarkably simliar to the PPS. Both patents employ an outer rigid container that encases an inner elastic bag whose diameter is insignificant compared to the diameter of the rigid shell. The properties of both of these inner bags are to use the natural elastic forces of the bag to provide the pressure needed to extract the liquid from its container. The only difference between the two, it seems, is the size of the container. While the earlier patent is explicitly intended for large liquid containers for the packaging and transportation of liquids, the patent author makes note of the potential of the PPS to be applied to many different cases that vary according to type of liquid contained and size of container (See Line 40, Right Column of the patent document) [http://www.google.com/patents?id=_cVfAAAAEBAJ&zoom=4&pg=PA2#v=onepage&q&f=false]. The mere reduction of size of this invention does not in fact produce a new or novel invention and is hardly qualified for a patent. However, since this is simply one of several embodiments of the chosen patent, the overall patent is not yet shown to be invalid.

:By examining the second preferred embodiment of the chosen patent, it can be shown that every part of the invention is not, by itself, new or novel. The rigid container is, obviously, the same as many bottles used and sold every day. The expandable or flexible bag is also widely used and known and the use of pressurized carbon dioxide is widespread. If it could be shown however, that these components had not been previously used in this configuration, and the resulting invention is novel and useful, then is would be patentable. However, the issue becomes more complicated when examining the patented Device for Tapping a Barrel (DTB) as described above. In both patents, liquid is removed from a container through the use of a flexible or expandable bag inside a rigid outer container, and the constant pressure force provided by a compressible gas. In the case of the DTB, the working compressible gas is air and for the chosen patent the working gas is carbon dioxide (CO2). The difference, in essence, between the two patents is that the chosen patent uses the natural properties of the compressible CO2 gas to do the work of extracting the liquid, whereas the work to extract the liquid using the DTB comes from a hand operated pump. This is an obvious improvement on the system. However, according to the opinion of the courts, this improvement is one based on the superiority of the carbon dioxide. It does not take any significant skill to simply substitute the carbon dioxide in the chosen patent for the air in the DTB, nor does it take much skill to rearrange the configuration of liquid and gas (where the gas is outside of the bag and the liquid inside). Thus, the chosen patent would be invalid.

====Since the Adoption of Modern Patent Code====

:With the codification of the Modern Patent Laws, the issues raised by cases such as Hotchkiss v. Greenwood and A. & P. Tea Company v. Supermarket Corp. are more clearly addressed, especially the topics of inventions by combination and the condition of non-obviousness. Specifically, 35 USC 103(a) expresses the non-obviousness clause as

::(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made. [http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000103----000-.html]

:Now, the importance of the simple substitution of carbon dioxide for air needs to be reconsidered. While each component of the embodiment of this patent is not in itself novel, and even their arrangement had been previously known and used, the thought behind the invention represents a significant step in science. By instead using a gas that will eliminate the need for a hand operated pump, the chosen patent's value lies in its ability to remove human work from the process. The chosen patent employs the natural properties, heretofore known but not utilized, to act upon the liquid and extract the liquid from the container. In the field of fluid mechanics, the use of a fluids pressure or momentum has seemingly limitless potential for future use, and represents a step forward in science and innovation when interacting in zero-gravity environments. Thus, in this light the patent should be held to be valid, in the discussed embodiment.

=Graham's Plow Patent in Light of the Prior Art=
===Argument for the Obviousness of the Patent===
:The improved plow design in Patent 2,627,798: Clamp for Vibrating Shank Plows [http://www.google.com/patents/about?id=2MVtAAAAEBAJ&dq=2,627,798] is not patentable since it does not satisfy the condition of non-obviousness as set forth in 35 U.S.C. 103. The invention is simply a combination of previously known mechanical components in a way that is neither inventive nor non-obvious.

:Every component, with the exception of the “stirrup and bolted connections of the shank to the hinge plate and the position of the shank”, is identical in design and composition to Graham’s older Patent 2,493,811: Vibrating Plow and Mounting Therefore [http://www.google.com/patents/about?id=0BZqAAAAEBAJ&dq=2,493,811]. Additionally, the “new” components described in his ‘798 patent had previously been known and used as shown by the Glencoe Patent 3,258,076: Adjustable Spring Clamp Shank Assembly. The Glencoe patent focuses its use of the stirrup to spread the structural wear of the shank’s movement over a surface, rather than at one point. The updates in the Graham ‘798 patent are identical in approach and function to the Glencoe patent.

:The argument that the positions of the shank and the hinge plate have been reversed is irrelevant, since there is no change in their mechanical purpose and the inversion of the component location is an obvious and trivial addition and should not be considered patentable. To further the argument of the patent’s obviousness, we must consider a person of ordinary skill in the field. It is well known to any student of solid mechanics and dynamics that a structure subjected to a force over an extended surface is subject to less pressure and subsequent damage than a structure that encounters a force of equal magnitude at a single discrete point. This rationale is clearly employed in both the Glencoe and Graham ‘798 patents, and would be an obvious solution to the problem of joint wear to any student in the field, nonetheless an experienced engineer.

:The addition of the “free flex theory” by the patent holder to the benefits of his invention seems to be a desperate grab for his patent’s validity. This claim that the improved flexibility results in a patentable invention was never discussed in his patent document and cannot be applied to the current debate. These arguments are clearly in support of the Supreme Court’s ruling that the patent was invalid.

===Argument for the Non-obviousness of the Patent===
:The ruling by the Supreme Court on the validity of the Graham Patent 2,627,798: Clamp for Vibrating Shank Plows, should be reversed, since the patent does, in fact, satisfy all the conditions of patentability, including novelty, utility, and non-obviousness.

:In the original court case Graham v. John Deere, the defendants failed in their efforts to prove that the improved design for reducing structural wear on plow parts and increasing flexibility to absorb larger shocks from obstructions was of an obvious nature to a person of ordinary skill the field. The argument that the patent is invalid since it is a mere combination of previously known parts is false, since an invention in that capacity can be patentable if the whole invention is greater than the sum of its parts. The specific arrangement and composition of the invention at hand is an integral part of the desired performance, and Graham’s patent holds that he has optimized his invention for its purpose.

:While there is similarity between the’798 patent and the prior art, specifically the Glencoe patent, the key arrangement of the ‘798 patent proves it to be a new and useful invention that has not been anticipated by the prior art. Glencoe’s clamp uses merely the mechanics of a spring and stirrup to pull the rake arm up and down. Graham’s clamp uses an I-beam structure for support as well as a hinge mechanism that attaches to the spring in the back to pull the rake arm up and down. The new design significantly reduces the structural wear on the ‘811 patent and is a clear improvement. According to 35 U.S.C. 101,

::Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title [http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000101----000-.html].

:The need for an improvement of the plow was evidenced by the number of structural fractures and subsequent repairs needs due to the extreme vibrations and oscillations in the plow shanks. If the ‘798 patent were indeed obvious, then any person of ordinary skill in the field could have examined the ‘811 mechanism and deduced that a simple inversion of the hinge plate and shank would improve the flexibility of the shank and extend the lifetime of the plow. However, this was not the case. This observation was never made, although the plow was commercially successful and its use widespread. Just because an improvement is simple does not indicate that it is obvious or not ingenious. There does not need to be a “flash of genius” to prove invention. Thus, the invention should be considered non-obvious and the patent valid.

=Non-obviousness Edit=
: The edited and revised page on non-obviousness can be found [[/Non-obviousness/|here]]

=Brief=
Brief of Eleven Law Professors and AARP as Amici Curiae in Support of Respondent (Oct. 2, 2009)

User:Adam T. Letcher/Non-obviousness

2011-02-09T11:40:07Z

Adam T. Letcher: /* Ordinary Skill in the Art */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

==Relationship with Novelty==
During the evolution of modern patent laws, one of the first requirements for patent protection was novelty, which is to say the invention must be a new invention. It is subject to the restrictions that it will not be eligible for patenting if

:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

The novelty clause restricts inventors from filing for patent protection for inventions that have not only been patented in this country, but also those that are known or used in the United States prior to their filing. The issue of proving whether or not an invention was previously known and its difficulty is illustrated in [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]. Nonobviousness, on the other hand, is a second condition for patentability that was codified in the 1952 Patent Act.

:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

While an invention may satisfy the condition of novelty, it may fail the test of nonobviousness. The logic of the clause is to prevent small manipulations or changes to existing patents in order to gain monopolies, which further stagnate innovation and progress.

==Nonobviousness vs. Invention==
Prior to the codification of modern patent law, the ruling on patents, specifically combination patents, was governed by court precedents. Hotchkiss v. Greenwood used the term "inventiveness" and ingenuity in attempting to rationalize a patent's invalidity. This language guided courts' decisions on the subject of combination patents for years, but the ambiguous terminology of "invention" rapidly caused confusion and resulted in conflicting rulings throughout the United States. The court's opinion in [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] expressed the need for new language and definition of the evolving concept of nonobviousness

:However useful as words of art to denote in short form that an assembly of units has failed or has met the examination for invention, their employment as tests to determine invention results in nothing but confusion. The concept of invention is inherently elusive when applied to combination of old elements.

The explicit language of the Patent Act of 1952 sought to provide an unambiguous and well defined expression of nonobviousness that upheld the concept as it had evolved in the courts. It did not raise or lower the required level of inventiveness for patents, but nominally held the same standard as set forth in the Constitution while providing a more uniform ruling on the subject.

==Secondary Considerations==

Secondary considerations that can be taken into account, as initially set forth in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.

*commercial success of the invention;
*long-felt but unsolved needs;
*failure of others to find a solution;

Fulfilment of the U.S.C. is the sole indicator of patentability, but these considerations can be used to aid in determination of nonobviousness. For example, in the aforementioned case with Learned Hand, it was shown that, while keeping the workpiece heated throughout the coating process is a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years without success. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Ordinary Skill in the Art==

Examination of the opinion in [[Reiner v. I. Leon Co. (full text)]] reveals attempts at putting the modern patent statutes into practice.

:We are of course acutely aware of the constant reminders in the books that the sale of a patented device is not alone a measure of its invention, and we accept that conclusion. Nevertheless, great commercial success, when properly scrutinized, may be a telling circumstance. It is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a "combination": that is to say, it consists of former elements in a new assemblage. All the constituents may be old, if their new concourse would not "have been obvious at the time the invention was made to a person having ordinary skill in the art" (§ 103, Title 35).

The codification of nonobviousness was intended to provided definition and unambiguity to the ruling of courts in the United States. However, the language still leaves room for interpretation that needed to be developed in the judicial system. Specifically, the concept of "ordinary skill in the art" is difficult to evaluate for judges and justices clearly outside of that "art"

:The test laid down is indeed misty enough. It directs us to surmise what was the range of ingenuity of a person "having ordinary skill" in an "art" with which we are totally unfamiliar; and we do not see how such a standard can be applied at all except by recourse to the earlier work in the art, and to the general history of the means available at the time. To judge on our own that this or that new assemblage of old factors was, or was not, "obvious" is to substitute our ignorance for the acquaintance with the subject of those who were familiar with it. There are indeed some sign posts: e. g. how long did the need exist; how many tried to find the way; how long did the surrounding and accessory arts disclose the means; how immediately was the invention recognized as an answer by those who used the new variant?

The approach followed by Judge Hand, an approach still followed today, was to rely on testimonies of those people thoroughly acquainted with the field and those who could provide the court with expert testimony on the subject at hand.

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

User:Adam T. Letcher/Non-obviousness

2011-02-09T11:39:06Z

Adam T. Letcher: /* Ordinary Skill in the Art */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

==Relationship with Novelty==
During the evolution of modern patent laws, one of the first requirements for patent protection was novelty, which is to say the invention must be a new invention. It is subject to the restrictions that it will not be eligible for patenting if

:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

The novelty clause restricts inventors from filing for patent protection for inventions that have not only been patented in this country, but also those that are known or used in the United States prior to their filing. The issue of proving whether or not an invention was previously known and its difficulty is illustrated in [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]. Nonobviousness, on the other hand, is a second condition for patentability that was codified in the 1952 Patent Act.

:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

While an invention may satisfy the condition of novelty, it may fail the test of nonobviousness. The logic of the clause is to prevent small manipulations or changes to existing patents in order to gain monopolies, which further stagnate innovation and progress.

==Nonobviousness vs. Invention==
Prior to the codification of modern patent law, the ruling on patents, specifically combination patents, was governed by court precedents. Hotchkiss v. Greenwood used the term "inventiveness" and ingenuity in attempting to rationalize a patent's invalidity. This language guided courts' decisions on the subject of combination patents for years, but the ambiguous terminology of "invention" rapidly caused confusion and resulted in conflicting rulings throughout the United States. The court's opinion in [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] expressed the need for new language and definition of the evolving concept of nonobviousness

:However useful as words of art to denote in short form that an assembly of units has failed or has met the examination for invention, their employment as tests to determine invention results in nothing but confusion. The concept of invention is inherently elusive when applied to combination of old elements.

The explicit language of the Patent Act of 1952 sought to provide an unambiguous and well defined expression of nonobviousness that upheld the concept as it had evolved in the courts. It did not raise or lower the required level of inventiveness for patents, but nominally held the same standard as set forth in the Constitution while providing a more uniform ruling on the subject.

==Secondary Considerations==

Secondary considerations that can be taken into account, as initially set forth in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.

*commercial success of the invention;
*long-felt but unsolved needs;
*failure of others to find a solution;

Fulfilment of the U.S.C. is the sole indicator of patentability, but these considerations can be used to aid in determination of nonobviousness. For example, in the aforementioned case with Learned Hand, it was shown that, while keeping the workpiece heated throughout the coating process is a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years without success. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Ordinary Skill in the Art==

[[Reiner v. I. Leon Co. (full text)]]

:We are of course acutely aware of the constant reminders in the books that the sale of a patented device is not alone a measure of its invention, and we accept that conclusion. Nevertheless, great commercial success, when properly scrutinized, may be a telling circumstance. It is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a "combination": that is to say, it consists of former elements in a new assemblage. All the constituents may be old, if their new concourse would not "have been obvious at the time the invention was made to a person having ordinary skill in the art" (§ 103, Title 35).

The codification of nonobviousness was intended to provided definition and unambiguity to the ruling of courts in the United States. However, the language still leaves room for interpretation that needed to be developed in the judicial system. Specifically, the concept of "ordinary skill in the art" is difficult to evaluate for judges and justices clearly outside of that "art"

:The test laid down is indeed misty enough. It directs us to surmise what was the range of ingenuity of a person "having ordinary skill" in an "art" with which we are totally unfamiliar; and we do not see how such a standard can be applied at all except by recourse to the earlier work in the art, and to the general history of the means available at the time. To judge on our own that this or that new assemblage of old factors was, or was not, "obvious" is to substitute our ignorance for the acquaintance with the subject of those who were familiar with it. There are indeed some sign posts: e. g. how long did the need exist; how many tried to find the way; how long did the surrounding and accessory arts disclose the means; how immediately was the invention recognized as an answer by those who used the new variant?

The approach followed by Judge Hand, an approach still followed today, was to rely on testimonies of those people thoroughly acquainted with the field and those who could provide the court with expert testimony on the subject at hand.

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

User:Adam T. Letcher/Non-obviousness

2011-02-09T11:31:31Z

Adam T. Letcher: /* Ordinary Skill in the Art */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

==Relationship with Novelty==
During the evolution of modern patent laws, one of the first requirements for patent protection was novelty, which is to say the invention must be a new invention. It is subject to the restrictions that it will not be eligible for patenting if

:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

The novelty clause restricts inventors from filing for patent protection for inventions that have not only been patented in this country, but also those that are known or used in the United States prior to their filing. The issue of proving whether or not an invention was previously known and its difficulty is illustrated in [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]. Nonobviousness, on the other hand, is a second condition for patentability that was codified in the 1952 Patent Act.

:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

While an invention may satisfy the condition of novelty, it may fail the test of nonobviousness. The logic of the clause is to prevent small manipulations or changes to existing patents in order to gain monopolies, which further stagnate innovation and progress.

==Nonobviousness vs. Invention==
Prior to the codification of modern patent law, the ruling on patents, specifically combination patents, was governed by court precedents. Hotchkiss v. Greenwood used the term "inventiveness" and ingenuity in attempting to rationalize a patent's invalidity. This language guided courts' decisions on the subject of combination patents for years, but the ambiguous terminology of "invention" rapidly caused confusion and resulted in conflicting rulings throughout the United States. The court's opinion in [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] expressed the need for new language and definition of the evolving concept of nonobviousness

:However useful as words of art to denote in short form that an assembly of units has failed or has met the examination for invention, their employment as tests to determine invention results in nothing but confusion. The concept of invention is inherently elusive when applied to combination of old elements.

The explicit language of the Patent Act of 1952 sought to provide an unambiguous and well defined expression of nonobviousness that upheld the concept as it had evolved in the courts. It did not raise or lower the required level of inventiveness for patents, but nominally held the same standard as set forth in the Constitution while providing a more uniform ruling on the subject.

==Secondary Considerations==

Secondary considerations that can be taken into account, as initially set forth in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.

*commercial success of the invention;
*long-felt but unsolved needs;
*failure of others to find a solution;

Fulfilment of the U.S.C. is the sole indicator of patentability, but these considerations can be used to aid in determination of nonobviousness. For example, in the aforementioned case with Learned Hand, it was shown that, while keeping the workpiece heated throughout the coating process is a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years without success. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==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]]

User:Adam T. Letcher/Non-obviousness

2011-02-09T11:31:17Z

Adam T. Letcher: /* Ordinary Skill in the Art */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

==Relationship with Novelty==
During the evolution of modern patent laws, one of the first requirements for patent protection was novelty, which is to say the invention must be a new invention. It is subject to the restrictions that it will not be eligible for patenting if

:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

The novelty clause restricts inventors from filing for patent protection for inventions that have not only been patented in this country, but also those that are known or used in the United States prior to their filing. The issue of proving whether or not an invention was previously known and its difficulty is illustrated in [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]. Nonobviousness, on the other hand, is a second condition for patentability that was codified in the 1952 Patent Act.

:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

While an invention may satisfy the condition of novelty, it may fail the test of nonobviousness. The logic of the clause is to prevent small manipulations or changes to existing patents in order to gain monopolies, which further stagnate innovation and progress.

==Nonobviousness vs. Invention==
Prior to the codification of modern patent law, the ruling on patents, specifically combination patents, was governed by court precedents. Hotchkiss v. Greenwood used the term "inventiveness" and ingenuity in attempting to rationalize a patent's invalidity. This language guided courts' decisions on the subject of combination patents for years, but the ambiguous terminology of "invention" rapidly caused confusion and resulted in conflicting rulings throughout the United States. The court's opinion in [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] expressed the need for new language and definition of the evolving concept of nonobviousness

:However useful as words of art to denote in short form that an assembly of units has failed or has met the examination for invention, their employment as tests to determine invention results in nothing but confusion. The concept of invention is inherently elusive when applied to combination of old elements.

The explicit language of the Patent Act of 1952 sought to provide an unambiguous and well defined expression of nonobviousness that upheld the concept as it had evolved in the courts. It did not raise or lower the required level of inventiveness for patents, but nominally held the same standard as set forth in the Constitution while providing a more uniform ruling on the subject.

==Secondary Considerations==

Secondary considerations that can be taken into account, as initially set forth in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.

*commercial success of the invention;
*long-felt but unsolved needs;
*failure of others to find a solution;

Fulfilment of the U.S.C. is the sole indicator of patentability, but these considerations can be used to aid in determination of nonobviousness. For example, in the aforementioned case with Learned Hand, it was shown that, while keeping the workpiece heated throughout the coating process is a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years without success. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==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]]

User:Adam T. Letcher/Non-obviousness

2011-02-09T11:26:44Z

Adam T. Letcher: /* Nonobviousness vs. Invention */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

==Relationship with Novelty==
During the evolution of modern patent laws, one of the first requirements for patent protection was novelty, which is to say the invention must be a new invention. It is subject to the restrictions that it will not be eligible for patenting if

:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

The novelty clause restricts inventors from filing for patent protection for inventions that have not only been patented in this country, but also those that are known or used in the United States prior to their filing. The issue of proving whether or not an invention was previously known and its difficulty is illustrated in [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]. Nonobviousness, on the other hand, is a second condition for patentability that was codified in the 1952 Patent Act.

:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

While an invention may satisfy the condition of novelty, it may fail the test of nonobviousness. The logic of the clause is to prevent small manipulations or changes to existing patents in order to gain monopolies, which further stagnate innovation and progress.

==Nonobviousness vs. Invention==
Prior to the codification of modern patent law, the ruling on patents, specifically combination patents, was governed by court precedents. Hotchkiss v. Greenwood used the term "inventiveness" and ingenuity in attempting to rationalize a patent's invalidity. This language guided courts' decisions on the subject of combination patents for years, but the ambiguous terminology of "invention" rapidly caused confusion and resulted in conflicting rulings throughout the United States. The court's opinion in [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] expressed the need for new language and definition of the evolving concept of nonobviousness

:However useful as words of art to denote in short form that an assembly of units has failed or has met the examination for invention, their employment as tests to determine invention results in nothing but confusion. The concept of invention is inherently elusive when applied to combination of old elements.

The explicit language of the Patent Act of 1952 sought to provide an unambiguous and well defined expression of nonobviousness that upheld the concept as it had evolved in the courts. It did not raise or lower the required level of inventiveness for patents, but nominally held the same standard as set forth in the Constitution while providing a more uniform ruling on the subject.

==Secondary Considerations==

Secondary considerations that can be taken into account, as initially set forth in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.

*commercial success of the invention;
*long-felt but unsolved needs;
*failure of others to find a solution;

Fulfilment of the U.S.C. is the sole indicator of patentability, but these considerations can be used to aid in determination of nonobviousness. For example, in the aforementioned case with Learned Hand, it was shown that, while keeping the workpiece heated throughout the coating process is a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years without success. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==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]]

User:Adam T. Letcher/Non-obviousness

2011-02-09T10:50:26Z

Adam T. Letcher: /* Relationship with Novelty */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

==Relationship with Novelty==
During the evolution of modern patent laws, one of the first requirements for patent protection was novelty, which is to say the invention must be a new invention. It is subject to the restrictions that it will not be eligible for patenting if

:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

The novelty clause restricts inventors from filing for patent protection for inventions that have not only been patented in this country, but also those that are known or used in the United States prior to their filing. The issue of proving whether or not an invention was previously known and its difficulty is illustrated in [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]. Nonobviousness, on the other hand, is a second condition for patentability that was codified in the 1952 Patent Act.

:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

While an invention may satisfy the condition of novelty, it may fail the test of nonobviousness. The logic of the clause is to prevent small manipulations or changes to existing patents in order to gain monopolies, which further stagnate innovation and progress.

==Nonobviousness vs. Invention==
==Secondary Considerations==

Secondary considerations that can be taken into account, as initially set forth in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.

*commercial success of the invention;
*long-felt but unsolved needs;
*failure of others to find a solution;

Fulfilment of the U.S.C. is the sole indicator of patentability, but these considerations can be used to aid in determination of nonobviousness. For example, in the aforementioned case with Learned Hand, it was shown that, while keeping the workpiece heated throughout the coating process is a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years without success. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==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]]

User:Adam T. Letcher/Non-obviousness

2011-02-09T10:43:57Z

Adam T. Letcher: /* Relationship with Novelty */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

==Relationship with Novelty==
During the evolution of modern patent laws, one of the first requirements for patent protection was novelty, which is to say the invention must be a new invention. It is subject to the restrictions that it will not be eligible for patenting if

:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

==Nonobviousness vs. Invention==
==Secondary Considerations==

Secondary considerations that can be taken into account, as initially set forth in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.

*commercial success of the invention;
*long-felt but unsolved needs;
*failure of others to find a solution;

Fulfilment of the U.S.C. is the sole indicator of patentability, but these considerations can be used to aid in determination of nonobviousness. For example, in the aforementioned case with Learned Hand, it was shown that, while keeping the workpiece heated throughout the coating process is a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years without success. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==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]]

User:Adam T. Letcher/Non-obviousness

2011-02-09T05:53:56Z

Adam T. Letcher: /* Secondary Considerations */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==

Secondary considerations that can be taken into account, as initially set forth in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.

*commercial success of the invention;
*long-felt but unsolved needs;
*failure of others to find a solution;

Fulfilment of the U.S.C. is the sole indicator of patentability, but these considerations can be used to aid in determination of nonobviousness. For example, in the aforementioned case with Learned Hand, it was shown that, while keeping the workpiece heated throughout the coating process is a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years without success. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==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]]

User:Adam T. Letcher/Non-obviousness

2011-02-09T05:51:43Z

Adam T. Letcher: /* Secondary Considerations */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==

Secondary considerations that can be taken into account, as initially set forth in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.

*commercial success of the invention;
*long-felt but unsolved needs;
*failure of others to find a solution, etc.

While the US Code will always precede these considerations, they are useful in determining, at a deeper level, whether an invention is obvious or not. For example, in the aforementioned case with Learned Hand, it was demonstrated that, while keeping the workpiece heated throughout the coating process is such a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years, to no avail. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==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]]

User:Adam T. Letcher/Non-obviousness

2011-02-09T05:50:15Z

Adam T. Letcher: /* The Inventive Step */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

==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]]

User:Adam T. Letcher/Non-obviousness

2011-02-09T05:48:35Z

Adam T. Letcher: /* The Inventive Step */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in [[Hotchkiss v. Greenwood]]. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

:Patentability shall not be negatived by the manner in which the invention was made.

==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]]

User:Adam T. Letcher/Non-obviousness

2011-02-09T05:45:57Z

Adam T. Letcher: /* The Inventive Step */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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==

The "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false, as shown above in

==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]]

User:Adam T. Letcher/Non-obviousness

2011-02-09T05:38:08Z

Adam T. Letcher: /* Objective Tests */

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

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to be more to it, some sort of threshold for inventiveness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is 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 is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

The courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

:The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

:Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed [[#The Inventive Step|below]].

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of 35 U.S.C 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements 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. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a lon-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

:The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

:(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for [[#The Inventive Step]] and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Judge Learned Hand expounded on the new standard:
: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)===

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson's believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

[[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

:Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

:The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

:While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

===U.S. v. Adams (1966)===

In [[US v. Adams, 383 U.S. 39 (1966)]] the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

:Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The lower courts' ruling on [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

==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 case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

:Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

:We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court, for a thorough and precise investigation into nonobviousness.

:Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

:Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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]]

User:Adam T. Letcher/Non-obviousness

2011-02-09T04:59:51Z

Adam T. Letcher: /* Anderson's Black Rock v. Pavement Salvage (1969) */

User:Adam T. Letcher/Non-obviousness

2011-02-09T04:54:53Z

Adam T. Letcher: /* U.S. v. Adams (1966) */

User:Adam T. Letcher/Non-obviousness

2011-02-09T00:13:32Z

Adam T. Letcher: /* Graham v. John Deere (1966) */

User:Adam T. Letcher/Non-obviousness

2011-02-08T23:31:00Z

Adam T. Letcher: /* Lyon v. Bausch & Lomb (1955) */

User:Adam T. Letcher/Non-obviousness

2011-02-08T23:19:32Z

Adam T. Letcher: /* 35 USC 103 (1952) */

User:Adam T. Letcher/Non-obviousness

2011-02-08T23:15:43Z

Adam T. Letcher: /* A&P Tea v. Supermarket Equipment (1950) */

User:Adam T. Letcher/Non-obviousness

2011-02-08T23:15:06Z

Adam T. Letcher: /* A&P Tea v. Supermarket Equipment (1950) */

User:Adam T. Letcher/Non-obviousness

2011-02-08T23:14:53Z

Adam T. Letcher: /* A&P Tea v. Supermarket Equipment (1950) */

User:Adam T. Letcher/Non-obviousness

2011-02-08T22:46:35Z