Bill Goodwine's Wiki - User contributions [en]

Apr. 29th: Brief Summary (2007 WL 3440937) - Andrew McBride

2011-04-30T17:55:25Z

Andrew McBride: /* Argument summary */

This is:

Brief Amici Curiae of Consumers Union (CU), Electronic Frontier Foundation (EFF), and Public Knowledge in Support of the Petitioner

== Argument summary ==

Patent exhaustion doctrine-Supreme Court precedent indicates that when a consumer purchases a patented product, that consumer owns it outright, and the patent owner loses their rights under patent law to restrict the use, repair or resale of that product.

A 1992 Federal Court decision broke the above precedent and decided that patent exhaustion doctrine only grants an 'implied license' to the consumer, and since that ruling many patented products have been sold with the threat to restrict resale, despite contrary rulings by the Supreme Court.

The above Federal Circuit decision has 'impermissibly and unwisely expanded patent scope by judicial fiat'. As patent owners further exploit this decision, imposing more and more restrictions on consumers, consumers will increasingly suffer several harms:

* Increased information costs when trying to ascertain restrictions on patented goods;

* Erosion of the well-established right to repair patented goods;

* Interference with the functioning of vibrant secondary markets (such as eBay and Craigslist) enabled by new technologies;

* Diminished opportunities for “user innovation”; and

* Expanded use of inefficient and unfair price discrimination in connection with patented goods.

There are no policy advantages to justify the above harms to consumers and the economy as a whole. Returning to the Supreme Court precedent on patent exhaustion will only force patent holders to rely upon contract law instead of patent law when imposing restrictions on purchased products. For the consumers, contract law will be better equipped to address concerns arising when such restrictions are imposed on patented products.

Apr. 29th: Brief Summary (2007 WL 3440937) - Andrew McBride

2011-04-30T17:51:18Z

Andrew McBride:

This is:

Brief Amici Curiae of Consumers Union (CU), Electronic Frontier Foundation (EFF), and Public Knowledge in Support of the Petitioner

== Argument summary ==

Patent exhaustion doctrine-Supreme Court precedent indicates that when a consumer purchases a patented product, that consumer owns it outright, and the patent owner loses their rights under patent law to restrict the use, repair or resale of that product

A 1992 Federal Court decision broke the above precedent and decided that patent exhaustion doctrine only grants an 'implied license' to the consumer, and since that ruling many patented products have been sold with the threat to restrict resale, despite contrary rulings by the Supreme Court

The above Federal Circuit decision has 'impermissibly and unwisely expanded patent scope by judicial fiat'. As patent owners further exploit this decision, imposing more and more restrictions on consumers, consumers will increasingly suffer several harms:

* Increased information costs when trying to ascertain restrictions on patented goods;

* Erosion of the well-established right to repair patented goods;

* Interference with the functioning of vibrant secondary markets (such as eBay and Craigslist) enabled by new technologies;

* Diminished opportunities for “user innovation”; and

* Expanded use of inefficient and unfair price discrimination in connection with patented goods.

There are no policy advantages to justify the above harms to consumers and the economy as a whole.

Apr. 29th: Brief Summary (2007 WL 3440937) - Andrew McBride

2011-04-30T17:50:41Z

Andrew McBride: /* Argument summary */

This is:

Brief Amici Curiae of Consumers Union (CU), Electronic Frontier Foundation (EFF), and Public Knowledge in Support of the Petitioner

== Argument summary ==
----
Patent exhaustion doctrine-Supreme Court precedent indicates that when a consumer purchases a patented product, that consumer owns it outright, and the patent owner loses their rights under patent law to restrict the use, repair or resale of that product

A 1992 Federal Court decision broke the above precedent and decided that patent exhaustion doctrine only grants an 'implied license' to the consumer, and since that ruling many patented products have been sold with the threat to restrict resale, despite contrary rulings by the Supreme Court

The above Federal Circuit decision has 'impermissibly and unwisely expanded patent scope by judicial fiat'. As patent owners further exploit this decision, imposing more and more restrictions on consumers, consumers will increasingly suffer several harms:

* Increased information costs when trying to ascertain restrictions on patented goods;

* Erosion of the well-established right to repair patented goods;

* Interference with the functioning of vibrant secondary markets (such as eBay and Craigslist) enabled by new technologies;

* Diminished opportunities for “user innovation”; and

* Expanded use of inefficient and unfair price discrimination in connection with patented goods.

There are no policy advantages to justify the above harms to consumers and the economy as a whole.

Apr. 29th: Brief Summary (2007 WL 3440937) - Andrew McBride

2011-04-29T06:16:37Z

Andrew McBride:

This is:

Brief Amici Curiae of Consumers Union (CU), Electronic Frontier Foundation (EFF), and Public Knowledge in Support of the Petitioner

== Argument summary ==
----

Apr. 29th: Brief Summary (2007 WL 3440937) - Andrew McBride

2011-04-29T06:15:59Z

Andrew McBride:

This is:

Brief Amici Curiae of Consumers Union (CU), Electronic Frontier Foundation (EFF), and Public Knowledge in Support of the Petitioner

== Argument summary ==

----

Apr. 29th: Brief Summary (2007 WL 3440937) - Andrew McBride

2011-04-29T06:14:38Z

Andrew McBride: Created page with "This is: Brief Amici Curiae of Consumers Union (CU), Electronic Frontier Foundation (EFF), and Public Knowledge in Support of the Petitioner"

This is:
Brief Amici Curiae of Consumers Union (CU), Electronic Frontier Foundation (EFF), and Public Knowledge in Support of the Petitioner

Here in list of arguments in Quanta

2011-04-29T06:14:26Z

Andrew McBride:

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

[[Quanta Brief Summary 901330223]]

[[901349446 Quanta Brief]]

[[Quanta Brief Summary 901471466]]

[[Quanta Brief Summary 901422128]]

[[Quanta Brief Summary Jacob Marmolejo]]

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

[[Mitros: Quanta Brief]]

[[Zahm Homework 31: Quanta Brief]]

[[901419437 Quanta v. LGE Brief Summary]]

[[Quanta Brief 901437068]]

[[901281608: Quanta Brief]]

[[901444263: Quanta v. LGE Reply Brief of Petitioners]]

[[901479977: Quanta for Petitioners]]

[[Apr. 29th: Brief Summary (2007 WL 3440937) - Andrew McBride]]

User:Andrew McBride

2011-04-29T06:08:04Z

Andrew McBride:

== Homework Assignments ==

[[Jan. 24th: Patent Description - Andrew McBride]]

[[Jan. 28th: Patentability Analysis - Andrew McBride]]

[[Jan. 28th: NONOBVIOUSNESS - Andrew McBride]]

[[Feb 25th: Accelerometer Patent (3,643,513) - Andrew McBride]]

[[Mar. 23rd: In re Baxter Travenol Labs. 952 F.2d 388 C.A.Fed.,1991. - Andrew McBride]]

[[Apr. 29th: Brief Summary (2007 WL 3440937) - Andrew McBride]]

Mar. 23rd: In re Baxter Travenol Labs. 952 F.2d 388 C.A.Fed.,1991. - Andrew McBride

2011-03-23T04:18:12Z

Andrew McBride: Created page with "In re Baxter Travenol Labs. 952 F.2d 388 C.A.Fed.,1991. Notes/Summary From the CAFC's decision, this case found a patent invalid that involved a system of multiple blood bags. ..."

In re Baxter Travenol Labs. 952 F.2d 388 C.A.Fed.,1991.

Notes/Summary

From the CAFC's decision, this case found a patent invalid that involved a system of multiple blood bags. The claims described by Becker were present in two already available blood bag systems. Testimony showed that claims 1-24 were obvious.

User:Andrew McBride

2011-03-23T02:57:32Z

Andrew McBride:

ESB Briefs

2011-03-04T05:53:31Z

Andrew McBride:

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

Feb 25th: Accelerometer Patent (3,643,513) - Andrew McBride

2011-02-25T04:15:51Z

Andrew McBride:

== Notes on claims: ==

'''Object:'''

"An object of this invention is to provide a new and improved maneuvering accelerometer.

Another object of this invention is to provide a maneuvering accelerometer having new and improved means for generating an electrical signal proportional to acceleration loads to which the aircraft is subjected.

Another object of this invention is to provide a maneuvering accelerometer having new and improved means for discriminating between parasitic accelerations and maneuvering accelerations.

Another object of this invention is to provide new and improved means in a device of the type described for ignoring high-frequency impulses.

A further object of this invention is to provide a new and improved acceleration sensing and recording arrangement." (us patent no. 3,643,513)

'''Claims:'''

1. An accelerometer comprising means to mount it to an aircraft for use, means to provide a voltage signal proportional to accelerations (output), a method to detect and store acceleration values that exceed predetermined thresholds and a way to count the number of times each threshold acceleration is exceeded, and a way to measure the amount of time for which each threshold acceleration is exceeded.

2. The accelerometer of claim 1, also able to filter out high frequency accelerations (wind, mechanical vibrations, etc.) which have no appreciable effect on determining when the aircraft needs to be inspected and serviced.

3. The method to count the number of times each threshold acceleration is exceeded in claim 1, using "a plurality of counters, each counter arranged to be advanced by one of said sensing and storing means", using gates, each gate set to give the signal to advance the count from the sensing/storing means.

4. A means for the accelerometer of claim 1 to sense when the output voltage "signal exceeds a reference value, and disabling said sensing and storing means if the signal falls below said threshold value."

Feb 25th: Accelerometer Patent (3,643,513) - Andrew McBride

2011-02-25T03:59:02Z

Andrew McBride:

Notes on claims:

"An object of this invention is to provide a new and improved maneuvering accelerometer.

Another object of this invention is to provide a maneuvering accelerometer having new and improved means for generating an electrical signal proportional to acceleration loads to which the aircraft is subjected.

Another object of this invention is to provide a maneuvering accelerometer having new and improved means for discriminating between parasitic accelerations and maneuvering accelerations.

Another object of this invention is to provide new and improved means in a device of the type described for ignoring high-frequency impulses.

A further object of this invention is to provide a new and improved acceleration sensing and recording arrangement." (us patent no. 3,643,513)

Feb 25th: Accelerometer Patent (3,643,513) - Andrew McBride

2011-02-25T03:57:31Z

Andrew McBride: Created page with "Notes on claims: "An object of this invention is to provide a new and improved maneuvering accelerometer. Another object of this invention is to provide a maneuvering accelerome..."

Notes on claims:

"An object of this invention is to provide a new and improved maneuvering accelerometer.
Another object of this invention is to provide a maneuvering accelerometer having new and improved means for generating an electrical signal proportional to acceleration loads to which the aircraft is subjected.
Another object of this invention is to provide a maneuvering accelerometer having new and improved means for discriminating between parasitic accelerations and maneuvering accelerations.
Another object of this invention is to provide new and improved means in a device of the type described for ignoring high-frequency impulses.
A further object of this invention is to provide a new and improved acceleration sensing and recording arrangement." (us patent no. 3,643,513)

User:Andrew McBride

2011-02-25T03:52:02Z

Andrew McBride: /* Homework Assignments */

Bilski brief list

2011-02-14T16:20:37Z

Andrew McBride:

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
#dcarter2
#ebingle
#Rabot
#Eric Paul
#cnorton
#kschlax
#Jnosal
#Mackroyd
#dsakamot
#eguilbea
#901444263
#shockett
#gallsup
#KyleR
#Andy Stulc
#Brief for Amicus Curiae Mark Landesmann in Support of Affirmance (Oct. 2, 2009)
#Aschlehube
#Kevin Godshall
#sbonomo
#Brief for the Respondent (Sep. 25, 2009)
#Kriester
#Brobins
#Josh Bradley
#Chuck Talley
#E W Hitchler
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of Neither Party (Aug. 6, 2009)
#Andrew McBride
#Mzahm
#Adam Mahood
#Hamburgler
#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)
#cmadiga1
#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)
#901422128
#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)
#CRoetzel
#Brief of Amicus Curiae AwakenIP, LLC in Support of Petitioners (Aug. 6, 2009)
#Pmitros
#pfleury
#901479977
#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)
#Bobby Powers
#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)
#Xiao Dong
#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)
#ewolz
#kristen kemnetz
#John Gallagher
#Sam Karch
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Mar. 2, 2009)
#Kyle Tennant
#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)
#bcastel1
#Jmarmole
#Gtorrisi

Jan. 28th: NONOBVIOUSNESS - Andrew McBride

2011-02-09T12:32:52Z

Andrew McBride: /* 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 me more to it, some sort of threshold for inventivness, 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.

It can be seen in this pronouncement of the court opinion by Justice Nelson, that the original requirement of novelty is not satisfactory, as the knob designed by Hotchkiss is a new product. Although the term "nonobviousness" will not be developed for some time, the court's decision hinges on the fact that the mere substitution of better suited materials is too obvious a development to warrant a patent. The fundamental premise of nonobviousness is presented a few paragraphs later, as Justice Nelson states,

:"....unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than ''were possessed by an ordinary mechanic acquainted with the business'', there was an absence of that degree of skill and ingeunity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor."

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field.

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

While it pre-dates the language of section 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. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

The importance of a "long felt but unsatisfied need" in the determination of nonobviousness is that it is difficult to claim that an invention is obvious if there has been a demand for a certain product and no one has been able to fulfill that need. However, it is important to note that there are two requirements that must be met here. There must be a need for the product and the need must have existed for a long time. If the need is relatively new, then it is difficult to claim that a person with ordinary skill in the field would have not developed such a design had he been aware of demand for such a device. On the other hand, if the market related to a certain field has provided no sign that there is a need for such an improvement, then it can be argued that the design would have been obvious had anyone expressed interest in the proposed device.

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

In Graham v. John Deere, the history of the patent process is discussed, particularly Thomas Jefferson's outlook on the purpose of providing a patent. Jefferson made it clear that patents were only to be granted for inventions that furthered human knowledge and were new and useful. The granting of patents for small details, obvious improvements, or frivolous devices was neither worthwhile nor helpful. In A&P v. Supermarket Corp., Jefferson's sentiment is echoed, except the focus of the court is narrowed further to the important frontier of science and engineering. As Justice Douglas states, "the purpose is to promote the Progress of Science and Useful Arts," and the two disciplines most associated with progress at that time (and still currently) are science and engineering. Even later, the court states, "patents serve a higher end-the advancement of science," which make this point very clear.

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

The court's outlook on the evaluation of patents in regard to the combination of prior elements is best summarized in the following explanation. "The mere aggregation of a number of old parts or elements which, in the aggregation, peform or produce no new or different function or operation than that theretofore performed or produced by them is not patentable invention....only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

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

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4

===Graham v. John Deere (1966)===

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

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

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

===Anderson's Black Rock v. Pavement Salvage (1969)===
Things seem relatively clear at this point, but the Supreme Court seemingly basically messed it all up again in [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] by returning the focus to "inventiveness" by revisiting the old problem of when a combination of old or know elements can become patentable.

==Suggestion to Combine==
[[In Re Rouffet]] deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.

:"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
:"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Objective Tests==
Two important considerations were the focus of [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375]].
*A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
*The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court.
*This case also considers the concept of ''enablement'' which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.

==The Inventive Step==

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
Secondary considerations are just that--secondary. While evidence related to secondary considerations must be taken into account--if any such evidence exists--the primary considerations remain inventiveness, and the relationships between non-obviousness, novelty and utility.

From [[Graham v. John Deere, 383 U.S. 1 (1966)]], secondary considerations when determining the non-obviousness of a patent include:
* commercial success of the invention;
* long-felt but unsolved needs;
* failure of others to find a solution, etc.
Several more secondary considerations can be drawn from [[US v. Adams, 383 U.S. 39 (1966)]]:
* skepticism of experts in the field regarding the claims;
* unexpected characteristics;
* factors that would deter investigation, including
** accepted disadvantages of prior inventions pertinent to the invention--In [[US v. Adams, 383 U.S. 39 (1966)]], Adams ignored the facts 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. These long-accepted factors, when taken together, would... deter any investigation into such a combination as is used by Adams."

more to come..

==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]]

Jan. 28th: NONOBVIOUSNESS - Andrew McBride

2011-02-09T11:37:36Z

Andrew McBride: Created page with " ==Historical Development== The following are some cases through history that trace the evolution of what is currently the nonobviousness standard. ===Hotchkiss v. Greenwood (18..."

==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 me more to it, some sort of threshold for inventivness, 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.

It can be seen in this pronouncement of the court opinion by Justice Nelson, that the original requirement of novelty is not satisfactory, as the knob designed by Hotchkiss is a new product. Although the term "nonobviousness" will not be developed for some time, the court's decision hinges on the fact that the mere substitution of better suited materials is too obvious a development to warrant a patent. The fundamental premise of nonobviousness is presented a few paragraphs later, as Justice Nelson states,

:"....unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than ''were possessed by an ordinary mechanic acquainted with the business'', there was an absence of that degree of skill and ingeunity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor."

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field.

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

While it pre-dates the language of section 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. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

The importance of a "long felt but unsatisfied need" in the determination of nonobviousness is that it is difficult to claim that an invention is obvious if there has been a demand for a certain product and no one has been able to fulfill that need. However, it is important to note that there are two requirements that must be met here. There must be a need for the product and the need must have existed for a long time. If the need is relatively new, then it is difficult to claim that a person with ordinary skill in the field would have not developed such a design had he been aware of demand for such a device. On the other hand, if the market related to a certain field has provided no sign that there is a need for such an improvement, then it can be argued that the design would have been obvious had anyone expressed interest in the proposed device.

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

In Graham v. John Deere, the history of the patent process is discussed, particularly Thomas Jefferson's outlook on the purpose of providing a patent. Jefferson made it clear that patents were only to be granted for inventions that furthered human knowledge and were new and useful. The granting of patents for small details, obvious improvements, or frivolous devices was neither worthwhile nor helpful. In A&P v. Supermarket Corp., Jefferson's sentiment is echoed, except the focus of the court is narrowed further to the important frontier of science and engineering. As Justice Douglas states, "the purpose is to promote the Progress of Science and Useful Arts," and the two disciplines most associated with progress at that time (and still currently) are science and engineering. Even later, the court states, "patents serve a higher end-the advancement of science," which make this point very clear.

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

The court's outlook on the evaluation of patents in regard to the combination of prior elements is best summarized in the following explanation. "The mere aggregation of a number of old parts or elements which, in the aggregation, peform or produce no new or different function or operation than that theretofore performed or produced by them is not patentable invention....only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

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

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4

===Graham v. John Deere (1966)===

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

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

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

===Anderson's Black Rock v. Pavement Salvage (1969)===
Things seem relatively clear at this point, but the Supreme Court seemingly basically messed it all up again in [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] by returning the focus to "inventiveness" by revisiting the old problem of when a combination of old or know elements can become patentable.

==Suggestion to Combine==
[[In Re Rouffet]] deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.

:"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
:"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Objective Tests==
Two important considerations were the focus of [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375]].
*A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
*The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court.
*This case also considers the concept of ''enablement'' which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.

==The Inventive Step==

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==

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

[[Reiner v. I. Leon Co.]]

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

[[South Corp. v. US]]

User:Andrew McBride

2011-02-09T11:36:53Z

Andrew McBride: /* Homework Assignments */

== Homework Assignments ==

[[Jan. 24th: Patent Description - Andrew McBride]]

[[Jan. 28th: Patentability Analysis - Andrew McBride]]

[[Jan. 28th: NONOBVIOUSNESS - Andrew McBride]]

Jan. 28th: Patentability Analysis - Andrew McBride

2011-01-28T07:31:03Z

Andrew McBride: Homework assignment due for 1/28

I have read three patents ([http://www.google.com/patents?id=G8FhAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false 3136205],
[http://www.google.com/patents?id=L5NOAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false 1235626],
[http://www.google.com/patents?id=fXJpAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false 877131]) referenced in the patent for an improved wood screw that was analyzed for the January 24th homework assignment ([http://www.google.com/patents?id=P5U1AAAAEBAJ&printsec=abstract&zoom=4#v=onepage&q&f=false 4697969]). Patent number [http://www.google.com/patents?id=G8FhAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false 3136205] details a "Self-Tapping Wood Screw" pertaining to wood screws with single or multiple threads which have either cut or rolled threads. The main feature of this patent is to have a the main threadings interrupted to form cutting or chisel formations, and also to have a groove or flute to guide wood cuttings out of the screw's path and towards the surface of wood that the screw is penetrating. An older patent, patent number [http://www.google.com/patents?id=L5NOAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false 1235626], details a new and useful screw which improves upon countersinking screws. This new and improved countersinking screw uses a "spiral groove", which serves to form a cutter at the screw's largest diameter (near the tip) which can chip away wood particles while the screw is being inserted. A third patent, older yet, is patent number [http://www.google.com/patents?id=fXJpAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false 877131]. This patent details a screw with spiral grooves that are undercut and beveled to provide a sharp cutting edge. All of these patents share the common feature of having a spiral cutting groove as a drill bit would have. In fact, the only thing novel in the newest patent (which I've chosen to analyze throughout the semester) is to have a second flute starting from the screw's tip which only extends a few screw-heads up the length of the screw's shank.

In light of these prior works and the [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]] case, I do not think that patent [http://www.google.com/patents?id=P5U1AAAAEBAJ&printsec=abstract&zoom=4#v=onepage&q&f=false 4697969] would be deemed valid. The Hotchkiss case decided that the doorknob patent was invalid because a mere substitution of material or combination of existing technology in the field was not inventive enough to qualify for a patent. The patent I am analyzing is novel only in that it adds a second flute presumably to increase cutting effectiveness near the screw's tip. Simply double the available cutting surfaces would not seem like an invention to the Supreme Court in session in 1850. It's too simple, too obvious to a professional in the field.

As for the Supreme Court that ruled in the [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]], I think that this patent would still not have been allowed. This court seems to highly scrutinize combinations of existing technologies: "The function of a patent is to add to the sum useful knowledge... 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." I think that the screw claimed by patent [http://www.google.com/patents?id=P5U1AAAAEBAJ&printsec=abstract&zoom=4#v=onepage&q&f=false 4697969], which introduces no novel concept or invention other than having two flutes instead of one, could not possibly be valid under the rule concurrent with the [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] case.

The section of law pertaining to non-obvious subject matter and patentability ([http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000103----000-.html 35 USC 103]) does not invalidate this patent as the rulings from the two court cases did. 35 USC 103 does not mention combinations as invalidating patents--unless the combinations are obvious. For the wood screw with two flutes instead of one, the jump may be seen as non-obvious, since clearly no one else had attempted to or conceived the idea to use two flutes to improve a wood screw.

User:Andrew McBride

2011-01-28T03:23:00Z

Andrew McBride: /* Homework Assignments */

== Homework Assignments ==

[[Jan. 24th: Patent Description - Andrew McBride]]

[[Jan. 28th: Patentability Analysis - Andrew McBride]]

User:Andrew McBride

2011-01-28T03:22:40Z

Andrew McBride: /* Homework Assignments */

== Homework Assignments ==

[[Jan. 24th: Patent Description - Andrew McBride]]
[[Jan. 28th: Patentability Analysis - Andrew McBride]]

Jan. 24th: Patent Description - Andrew McBride

2011-01-26T07:54:04Z

Andrew McBride: /* Wood Screw */

Author: Andrew McBride

== Wood Screw ==

Patent number: 4697969

Filing date: Sep 6, 1985

Issue date: Oct 6, 1987

This patent claims an improved wood screw with either a flat head, hex head or phillips head, and having two flutes of semi-circular cross-section, the first beginning at the tip of the screw and ending near the head of the screw, and the second beginning at the tip of the screw and continuing a length of about three screw heads from the tip. Both flutes have a diameter about a third of the screw's root diameter, and the tangent lines to each flute axis form an angle of 30º with the screw's axis.

Jan. 24th: Patent Description

2011-01-26T07:53:38Z

Andrew McBride: moved Jan. 24th: Patent Description to Jan. 24th: Patent Description - Andrew McBride: disambiguation

#REDIRECT [[Jan. 24th: Patent Description - Andrew McBride]]

Jan. 24th: Patent Description - Andrew McBride

2011-01-26T07:53:38Z

Andrew McBride: moved Jan. 24th: Patent Description to Jan. 24th: Patent Description - Andrew McBride: disambiguation

== Wood Screw ==

Patent number: 4697969

Filing date: Sep 6, 1985

Issue date: Oct 6, 1987

This patent claims an improved wood screw with either a flat head, hex head or phillips head, and having two flutes of semi-circular cross-section, the first beginning at the tip of the screw and ending near the head of the screw, and the second beginning at the tip of the screw and continuing a length of about three screw heads from the tip. Both flutes have a diameter about a third of the screw's root diameter, and the tangent lines to each flute axis form an angle of 30º with the screw's axis.

Jan. 24th: Patent Description - Andrew McBride

2011-01-26T01:07:21Z

Andrew McBride: /* Wood Screw */

Jan. 24: Patent Description

2011-01-26T01:06:45Z

Andrew McBride: moved Jan. 24: Patent Description to Jan. 24th: Patent Description: Retitling page

#REDIRECT [[Jan. 24th: Patent Description]]

Jan. 24th: Patent Description - Andrew McBride

2011-01-26T01:06:45Z

Andrew McBride: moved Jan. 24: Patent Description to Jan. 24th: Patent Description: Retitling page

== Wood Screw ==

Patent number: 4697969
Filing date: Sep 6, 1985
Issue date: Oct 6, 1987

This patent claims an improved wood screw with either a flat head, hex head or phillips head, and having two flutes of semi-circular cross-section, the first beginning at the tip of the screw and ending near the head of the screw, and the second beginning at the tip of the screw and continuing a length of about three screw heads from the tip. Both flutes have a diameter about a third of the screw's root diameter, and the tangent lines to each flute axis form an angle of 30º with the screw's axis.

Homework 2 -- Patent Description

2011-01-26T01:06:18Z

Andrew McBride: moved Homework 2 -- Patent Description to Jan. 24: Patent Description: Retitling page

#REDIRECT [[Jan. 24: Patent Description]]

Jan. 24th: Patent Description - Andrew McBride

2011-01-26T01:06:18Z

Andrew McBride: moved Homework 2 -- Patent Description to Jan. 24: Patent Description: Retitling page

== Wood Screw ==

Patent number: 4697969
Filing date: Sep 6, 1985
Issue date: Oct 6, 1987

This patent claims an improved wood screw with either a flat head, hex head or phillips head, and having two flutes of semi-circular cross-section, the first beginning at the tip of the screw and ending near the head of the screw, and the second beginning at the tip of the screw and continuing a length of about three screw heads from the tip. Both flutes have a diameter about a third of the screw's root diameter, and the tangent lines to each flute axis form an angle of 30º with the screw's axis.

User:Andrew McBride

2011-01-26T01:04:33Z

Andrew McBride: /* Homework Assignments */

== Homework Assignments ==

[[Jan. 24th: Patent Description]]

User:Andrew McBride

2011-01-26T01:02:54Z

Andrew McBride: /* Homework Assignments: */

== Homework Assignments ==

[[Homework 2 -- Patent Description]]

Jan. 24th: Patent Description - Andrew McBride

2011-01-26T01:02:25Z

Andrew McBride: Created page with " == Wood Screw == Patent number: 4697969 Filing date: Sep 6, 1985 Issue date: Oct 6, 1987 This patent claims an improved wood screw with either a flat head, hex head or philli..."

== Wood Screw ==

Patent number: 4697969
Filing date: Sep 6, 1985
Issue date: Oct 6, 1987

This patent claims an improved wood screw with either a flat head, hex head or phillips head, and having two flutes of semi-circular cross-section, the first beginning at the tip of the screw and ending near the head of the screw, and the second beginning at the tip of the screw and continuing a length of about three screw heads from the tip. Both flutes have a diameter about a third of the screw's root diameter, and the tangent lines to each flute axis form an angle of 30º with the screw's axis.

User:Andrew McBride

2011-01-26T00:39:17Z

Andrew McBride: Created page with " == Homework Assignments: == Homework 2 -- Patent Description"

== Homework Assignments: ==

[[Homework 2 -- Patent Description]]