Bill Goodwine's Wiki - User contributions [en]

4/4/2011: Sundstrand Personal Brief - Stulc

2011-04-05T18:24:07Z

Andy Stulc: Created page with "As a representative for Sundstrand, I lay out my following arguments for why our product does not infringe on Honeywell’s patent. As a starting point, both sides agree that th..."

As a representative for Sundstrand, I lay out my following arguments for why our product does not infringe on Honeywell’s patent.

As a starting point, both sides agree that the product does not literally infringe on any part of the patent. Therefore, if infringement was occurring it would have to occur in accordance with the doctrine of equivalents. The doctrine of equivalents holds that technologies can be considered the same when they perform substantially the same task in substantially the same way to get the same result. The most concise way to show that Sundstrand’s product does not infringe on Honeywell’s patent is through comparing the result achieved for the process. Sundstrand’s use of the inlet guide vanes is to determine when “block the control signals used to operate the surge bleed valve” (Section II, d). This is in contrast to the protected function of using the guide vane position to “establish a set point” (Section II, d). Thus, there should be no infringement.

In addition, the relevant claims from the Honeywell patents in question were at one point dependent on other claims. These other claims were ruled invalid during the prosecution of the Honeywell patents because they were obvious when looked at with the prior art. The relevant claims to this case were amended to be independent claims that fit within the reach defined by the patent office. In this change, these claims have been narrowly defined and therefore they are ineligible to considered equivalent with anything except a literal copy.

These arguments fall in line with the judicial precedence from the Warner-Jenkinson case which discusses limiting claims based on amendment. This judgment is summarized as the “amendment will give rise to a presumptive estoppels if made for a reason related to patentability”. In this case, Honeywell’s amendment was clearly made for reasons related to patentability.

User:Andy Stulc

2011-04-05T18:23:54Z

Andy Stulc:

[[1/24/2011:Rear Derailleur for a Bicycle Patent - Stulc]]

[[1/28/2011: Hotchkiss and A&P reasoning - Stulc]]

[[2/4/2011: Arguing for Obviousness and Nonobviousness - Stulc]]

[[2/9/2011: Nonobviousness Page - Stulc]]

[[3/21/2011: MIT v. Harman International Industries - Stulc]]

[[4/4/2011: Sundstrand Personal Brief - Stulc ]]

Doctrine of Equivalents Case List

2011-04-04T08:15:08Z

Andy Stulc:

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

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

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

Bill Goodwine

* Adkins v. Lear, Inc. (1968), (67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)
This case was discussed in class and presented by another student, but I read it as well. This case concerned a patent for a gyroscope owned by Adkins, the inventor of an improved gyroscope, and Lear, the company that sells gyroscopes. Lear and Adkins had a written agreement that allowed Lear to sell Adkin’s patented invention, where Adkins received a small percentage of the net sales price as royalties. In 1957, Lear refused to pay royalties to Adkins with the claim that they were selling gyroscopes that differed from Adkin’s invention. However, the “new” gyroscopes differed only in “size, form, and shape,” but “contain[ed] the same elements.” The essential elements were the same between Adkin’s patent and Lear’s other steel gyroscopes, but the scale and exact assembly was different. Since those did not constitute a substantial difference, the jury of the Supreme Court of California held Adkins in favor and required Lear to pay royalties to Adkins for the sales price of the other gyroscopes sold. This case is an example of clear infringement.

901431048

* Adkins v. Lear, Inc. (1968)(67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)
I am the other student^^^(see case above). Other items of note in the case, aside from the summary above, include that the court ruled that infringing the doctrine of equivalence is a matter of fact and that the jury should be the one to establish it. This brings up an interesting qualification, as it seems almost every other case considered with respect to the doctrine of equivalence was decided by judges, not juries.

Brobins

*AMEC Liquidating Trust v. IVAC Corporation, 885 F.2d 1574 (1989)

AMEC had a patent for a thermometer with a plastic cover held on by a hooking type mechanism. IVAC created a thermometer with a cover held on by a ring that created a friction lock. The CAFC held the IVAC invention was non-infringing on the AMEC patent because under the doctrine of equivalents, it did not perform the same function in the same way. The AMEC thermometer cover used an inscription fit, which created deep scratches in the cover. The IVAC thermometer used a friction fit, which only created superficial scratches in the cover. The CAFC found that the superficial scratches did not constitute an inscription fit. Also, the CAFC decided that AMEC did not present any evidence proving that the ring in the IVAC patent was equivalent to the “hook” in the AMEC patent. Because of this, the patent was non-infringing under the doctrine of equivalents.

901444263

*Johnston v. IVAC Corp., 885 F.2d 1574 (1989)

The inventor, Turner, invented a thermometer probe cover that stays on (this was owned by AMEC). It kept the cover on via a sharp metal hook to tear into the cover’s plastic. IVAC developed a thermometer that served a similar purpose of keeping the probe cover on, except that it did so with a ring on the probe (to hold the cover via friction). IVAC intentionally left the probe free of any sharp edge to ease the removal of the probe cover when needed. District Court of Southern California ruled in summary judgment that IVAC’s thermometer probe covers do not infringe AMEC’s. On appeal from AMEC, the Court of Appeals affirmed the judgment. A ring that does not tear the plastic cover is not equivalent to the hook that does. [http://campus.westlaw.com.proxy.library.nd.edu/result/default.wl?mt=CampusLaw&db=ALLCASES&rlt=CLID_QRYRLT4121840350313&origin=Search&sp=003654480-2000&method=TNC&cfid=1&rp=%2fwelcome%2fCampusLaw%2fdefault.wl&eq=welcome%2fCampusLaw&rltdb=CLID_DB1095239350313&srch=TRUE&query=TI(JOHNSTON+%26+IVAC)&vr=2.0&fmqv=s&action=Search&fn=_top&service=Search&sv=Split&rs=WLW11.01]

901471466

*Wilson Sporting Goods Co. v. David Geoffrey & Associates (1990)

Wilson is suing DGA/Dunlop for infringement under the doctrine of equivalents of its patented design for a golf ball. Wilson's patent is for a golf ball modeled as an icosahedron with dimples placed in such a way as to have 6 "great circles" of symmetry instead of the typical 1. The patent specifies where dimples should be placed on the ball and requires that no dimples be placed on the great circles. The accused DGA balls use the same "great circles" design, but with dimples placed on the great circles. DGA's defense is that there is "no principled difference" between its design and a design of the prior art (prior to Wilson's patent). Therefore, allowing Wilson to utilize the doctrine of equivalents would extend protection of claims already in the prior art to Wilson's patent. The CAFC decided that Wilson can only utilize the doctrine of equivalents if it can make a hypothetical claim that literally covers Dunlop's design (in this case, claim a ball with dimples placed on the great circles) and is also nonobvious considering the prior art. Wilson is unable to make such a nonobvious hypothetical claim and therefore no infringement was found.

901338276

* Lemelson v. General Mills, Inc., 968 F.2d 1202 (1992)

Lemelson sued Mattel, alleging that Mattel's "Hot Wheels" toy car track infringed on his patented toy track. The U.S. District Court for the Northern District of Illinois found in favor of the plaintiff. Mattel appealed to the CAFC. The Court held that the "Hot Wheels" track did not contain all the limitations of the patent; it was equivalent to the prior art. That is, Lemelson's patent could not be both valid in light of the prior art and infringed upon by Mattel. Furthermore, upon his first application, claim 3 of Lemelson's patent had five clauses. The PTO examiner found the patent to be indistinguishable from the prior art. Lemelson added clauses [f] and [g] and received a patent. The important parts of the claim were, "[f] said guide means include a pair of spaced apart runner portions for defining the pathway of a vehicle moving over said track, [g] said spaced apart runner portions include upwardly extending rails for guiding the wheels of a vehicle." The Court held that "Hot wheels" did not contain any elements equivalent to the clauses [f] and [g]. The Court also noted that the public is entitled to the PTO record to determine the scope and meaning of claims.

901330223

*Valmont Industries Inc. v. Reinke Manufacturing Company Inc., 983 F.2d 1039 (1993)

901316153

This case concerns an adaption for center-pivot (i.e. rotating) irrigation systems. The adaption (an apparatus that attaches to the main frame of the sprinkler) allows the corners of a field, normally missed by the standard rotating irrigation system, to be watered. The infringement issue relates to the means by which the position of the sprinkler is detected, relative to the field. The patent uses a method of pivot angle encoders, while the "infringing" patent uses buried electromagnetic cables to guide the sprinkler around the field.

The CAFC ruled that the second device was not infringing, reversing the decision of the district court. The district court argued that the means of controlling the system were equivalent. The CAFC's argument was that while the two irrigation systems performed substantially the same overall function to obtain substantially the same overall result as the claimed invention, the way those results were achieved was substantially different. "Comparison of these two control means compels the conclusion that the claimed control means and Reinke's control means are not structurally equivalent.[...][E]ven though both the control means in the specification and the control means on Reinke's device use electric signals, the structures generating those signals are strikingly different."

Because the doctrine of equivalence requires that the two devices perform substantially the same function in substantially the same way to achieve substantially the same results, the two control systems were not equivalent under the doctrine of equivalence because they did not meet the "way" requirement of the doctrine of equivalence.

*William Bradshaw and Robert Shepherd v. Igloo Products Corp. 1997 WL 543109 (US District Court, N.D.Ill.)

William Bradshaw sued Igloo Products for infringement of a wheeled cooler. Bradshaw’s patent was for a cooler with a pulling handle and two lifting handles, one of which was connected on the same axle as the pulling handle. The Igloo products in question were the Rolling Kool Locker which had a rotatable lifting hand that can also be used to pull the cooler and the Cool Roller which had separate lifting and pulling handles coupled to separate axles. The court decided that the prior art for the Cool Roller was a different patent, the Mason patent. This patent was for a wheeled cooler with separate lifting and pulling handles. The Mason patent was granted before Bradshaw’s patent. The court ruled that the Cool Roller fell under the Mason patent. Therefore, if Bradshaw’s patent were to be expanded to include the Cool Roller’s handles, it would be an invalid patent as a result of the prior art, the Mason patent. This leads to a method of deciding infringement. If the product in question mimics prior art, then it cannot infringe the patent otherwise that patent would be invalid. In deciding infringement for the Rolling Kool Locker, the court decided that it was up to a jury to decide whether the Kool Lockers handles were equivalent to Bradshaw’s patent, since there was no other glaring evidence.

Eric Paul

* Dr. Raymond G. Tronzo v. Biomet Inc. 1998 156 F.3d 1154 (United States Court of Appeals, Federal Circuit)
In this case Biomet was accused of infringement of an artificial hip prosthesis patented by Dr. Tronzo (patent 4,743,262). The alleged infringement revolved around the shape of the artificial hip socket and the hinge that was inserted into the socket. Patent ‘262 claimed a “generally conical” shape of the hip socket. Biomet’s design contained a strictly hemispherical shape. The court heard evidence in which it was claimed that even though the shapes would have at first glance performed in the same manner, the forces generated on the surface of each implant would be different depending on the shape. Additionally, after hearing expert testimony that suggested any shape would have been equivalent to the conical limitations of the patent claims, the court said that such a ruling would have been impermissible under the all-elements rule of Warner Jenkinson because it would write the “generally conical” shape limitation out of the claims. Therefore, the court held that the accused design did not infringe upon the patent claims under the doctrine of equivalence.

Peter Mitros (901461727)

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

Gillian Allsup

901281608

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

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

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

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

*Sunbeam Products, Inc. v. Homedics, Inc., Slip Copy, 2010 WL 5230892 (2010)

This case involved a patent for a force-transmitting bearing used with a platform scale. Sunbeam held a patent which specified bearings which were attached to the platform via loose tabs which allowed the bearings to move horizontally. The patent claims required the base of the bearing to be oriented parallel to the platform and remain parallel to the platform at all times. The structure of the accused device was such that the bearings were connection to the platforms using dimples on the lower surface of the platform which the bearings fit into. Sunbeam had criticized prior art which used a similar dimple connection during prosecution beacuse of the potential for unwanted force moments applied by the bearing. The CAFC upheld the District Court's finding of no infringement based on the doctrine of equivalents because bearings which rocked and pivoted, as the accused device did, did not fall within the reach of the patent claims because they did not remain parallel to the platform at all times.

901422128

*Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326 (2001)
Kustom Signals held a patent for a multimode traffic radar system which will show either the fastest speed or the strongest signal. Three of the claims used the word "or" in their wording. Kustom claimed that the "or" was a logical operator meaning one, the other, or both. Applied Concepts had designed a radar system which returned both the fastest speed and the strongest signal. The Court held that the word "or" was to hold its traditional, customary meaning as being exclusive, not inclusive, of the two statements.

901 41 7852

*Sage Products, Inc. v. Devon Industries, Inc., 126 F. 3d 1420 (1997)

Sage Products sued Devon Industries for infringement of several patents relating to containers for disposing of hazardous medical waste (needles etc.). Devon counter-sued for infringement of one of its similar patents. The district court held (on summary judgment) that there was no infringement by either party literally or equivalently. The appellate court affirmed.

Devon’s first alleged infringement was of Sage’s container claiming an elongated slot "at the top" of the apparatus for which to deposit waste, and a "barrier over the slot" to prevent contamination. Devon's patent involved a type of elongated slot that was embedded within the container and a hinged element at the opening. The court ruled no literal infringement because the Devon patent did not include the "at the top" and "over" features of the Sage claim. Even though the devices perform the same function the court ruled no equivalent infringement because the hinged element did not "substantially constrict access" to the container, and the slot was not "substantially at the top" of the container. The court was adamant that equivalent function could not negate the “at the top” and “over” limitations of the patent, stating that such power would reduce patent claims to "functional abstracts" devoid of meaningful structure limitations for the public to reference. A second infringement involved in this case resulted in the court ruling that if patent claims specify a function and recite its importance the patentee cannot later accuse an invention devoid of the specified function of infringement.

901419437

*Siemens Medical Solutions USA, INC. v. Saint-Gobain Ceramics & Plastics., F.3d, 2011 WL 651790 (2011)

Siemens developed, manufactured, and sold PET scanners which made use of scintillator crystals consisting of cerium-doped lutetium oxyorthosilicate (LSO). Saint-Gobain manufactures and sells scintillator crystals for use in PET scanners which consisted of cerium-doped lutetium-yttrium orthosilicate (LYSO). This is chemically different from LSO in that some of the lutetium is substituted for by yttrium. In Saint-Gobain's crystals, 10% of the lutetium atoms are substituted for by yttrium atoms (crystals are 10% Y LYSO). In April of 2007, Siemens sued Saint-Gobain for infringement of claims 1 and 2 of Siemens '080 patent for LSO scintillator crystals and photodetectors. Saint-Gobain aregued that its LYSO crystals are not equivalent to those claimed in the '080 patent because their crystals are separately claimed by their '420 patent. A jury trial found Saint-Gobain infringing upon the claims held by Siemens. Saint-Gobains appeals, and claims that the district court erred in jury instructions, claiming that in cases where an alleged equivalent is separately patented, a higher burden of evidence is required. Their reasoning was that the jury's finding of infringement effectively invalidated their '420 patent for LYSO crystals as the ruling of equivalence implied a conclusion of obviousness. The Court of Appeals disagrees, stating that it is well established that separate patentability does not avoid equivalency as a matter of law. The Court of Appeals also disagrees that the jury's finding of infringement invalidates the '420 patent; it only finds the level of LYSO used in practice (10%) is equivalent to Siemen's LSO crystals. Other compositions of LYSO could well be non-equivalent. Using the function-way-result test which asks whether an element of the an accused product performs substantially the same function in substantially the same way, the Court of Appeals affirms the juries finding of infringement.

Erich Wolz

*Sunbeam Products Inc. v. Homedics Products Inc. , US Court of Appeals, District Court of Wisconsin (2010)
This case involved a clear example of non-equivalence relating to the doctrine of equivalence. The patent holder Sunbeam Products brought action against competitor Homedics, alleging infringement of its patent for force-transmitting bearings for a platform scale. This case was decided under the district court of Wisconsin. Sunbeam Products had created platform bearings which translated purely horizontally along a platform which transferred all platform loads into purely vertical loads supported by the bearings. A previous patent, ‘326 patent, encompassed bearings which rocked and pivoted. HoMedics's accused scales all include bearings similar to the bearing disclosed in the ′326 patent. Each of the HoMedics bearings is machined with a nose-like protrusion that fits into a corresponding dimple on the underside of the platform. The trial court noted that the accused bearings all rock and pivot within their corresponding dimples in the underside of the platform. Sunbeam did not dispute that the HoMedics bearings rock and pivot in that manner. Sunbeam's argument was that in addition to rocking and pivoting, the HoMedics bearings were capable of some horizontal movement and therefore infringe the ′420 patent.
In light of its claim construction and the undisputed evidence regarding the operation of the bearings in the accused HoMedics products, the district court granted summary judgment of noninfringement. The court determined that no reasonable juror could find that bearings that rock and pivot remain parallel to the underside of the platform; accordingly, it held that the pivoting bearings in all of the accused products do not literally infringe the ′420 patent.

The most important distinction that was made in this case was the following statement. “The doctrine of equivalents is not a license to rewrite the claims to encompass what a patentee believes to be an equivalent structure. That is especially true in a case such as this one, where the accused product is not later-developed technology that is insubstantially different from the claimed invention, but instead embodies disavowed prior art. Thus, the district court correctly held that the accused bearings do not infringe the ′420 patent under the doctrine of equivalents.”

Christine Roetzel - 901425022

*Hughes Aircraft Co. v. U.S. 717 F.2d 1351

NASA and Department of Defense, were trying to build a satellite that would orbit the earth. However, they were unable to do so they had problems with the attitude control. Williams, a man who was working for Hughes Co. was able to figure out the problem. He was able to have lab model on 4/2/60 and it was called "dynamic wheel." Williams presented it to NASA and then Hughes Co and NASA entered an agreement to build the satellite. Williams filed for a patent on 4/18/60 and that became known as "Williams patent."
However, the govt started to build these spacecrafts that used the same systems from the satellite and did not give compensation to Williams. It went to court and the govt said that Williams patent was invalid because it infringed McLean's telescope. Williams rewrote his claims and stated “McLean's infrared telescope does not indicate the instantaneous spin angle position of his body with reference to a fixed external coordinate system, and it does not indicate the orientation of the axis with reference to a fixed external coordinate system." The court found Williams patent valid.
Then, the court looked at the spacecraft and compared it to Williams satellite. They found the following similarites: "(1) each is spin-stabilized; (2) each contains a jet on the periphery, connected by a valve to a tank containing fluid for expulsion substantially parallel to the spin axis; (3) each employs sun sensors to sense ISA position; (4) each requires knowledge of orientation relative to a fixed external coordinate system; (5) each contains radio equipment for communicating with the ground; (6) each transmits spin rate and sun angle information to a ground crew; and (7) in each, jet firing is synchronized with ISA position to effect controlled precession and thus to achieve a desired orientation."
Needless to say the court ruled that govt infringed Williams patent.

901439143

* Sage Products, Inc. v. Devon Industries, Inc. 126 F.3d. 1420 (1997)

In this case, Sage Products sued Devon Industries for infringement of two of its patents and Devon countersued Sage for infringement of one of its own patents, all of which relate to the disposal of medical waste products such as needles. In trial and on appeal, the courts held that there was no literal infringement nor infringement by the doctrine of equivalents by any party. Sage claimed that Devon's '251 for a "tortuous path" disposal container infringed on both its '728 patent for a sharps disposal container and its '849 patent for the removal and storage of syringe needles. Devon claimed that Sage's '728 patent infringed on its '592 patent for a disposal container.
** The '728 patent consists of an opening with a curved arc extending above it and another below it (inside the container) with a rotatable L-shaped flap such that waste can be deposited without exposing it again.
** The '849 patent covers a container with notches for removing needles and a "moveable closure" that allows the container to be closed and reopened as needed.
** The '251 patent covers a disposal container with a slotted opening at the top and 2 overlapping but displaced obstructions within the container to prevent accessing material that has been disposed of. It also has a closure that permanently locks once closed.
** The 592 patent covers a container that has a slotted opening and another "baffle" within the container that has another slotted opening horizontally displaced from the first
The courts held that the '251 patent did not infringe on the '728 patent because the patent explicitly described a precise configuration of an opening at the "top of the container" with one obstruction "over said slot" and another below, and that '251 configuration was different. They also held that the '251 patent did not infringe on the '849 patent because there was an important difference between permanent closure and closure that can be reopened. Finally, the '728 patent did not infringe on the '592 patents for similar reasons as the first: the configurations were very different. The '592 patent emphasized a horizontal displacement, which was not part of the '728 patent. The courts held that the use of precise language in patents limited the claims and because disposal containers were reasonably simple and straightforward, different configurations could not be equated.

Julia Potter (jpotter2)

* Kudlacek v. DBC, Inc. 115 F. Supp. 2d 996 (2000)

Owner of Patent No. 5,611,325 for an archery bow stabilizer, Donald Kudlacek, brought an infringement suit against competitor DBC, Inc. DBC counterclaimed, stating that its patent for a peep sight targeting system was being infringed. The claim in question was a "threading" limitation on the stabilizer describing how it is adjusted and secured. The District Court decided that neither Kudlacek's stabilizer nor DBC's peep sight target system were infringed. This was because the accused device, the "Super Stix," was found to not be equivalent to the patented device because it did not infringe all the elements of claim 1. Though the accused device performs, basically, the same function, it does so in a substantially different way; therefore the Doctrine of Equivalents does not apply. Note that the invalidity issue was not settled by finding that the patent was not infringed.

901437068

* Adkins v. Lear, Inc. (1968), (67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)

Adkins v. Lear discussed the assembly and sale of a certain type of gyroscope. The gyroscope design had originally been borrowed by Lear, from Adkins under the terms that Lear would pay a small percentage of their profits to Adkins since Lear was not the original inventor of the gyroscope mechanical design. Conflicts arose when Lear refused to pay Adkins under the claim that their new gyroscope was a unique design that differed from the original design contracted from Adkins. The judges determined that since the new design was similar to the original in all the necessary inner working components and only differed in the external aesthetic features, the new design infringed on the old since it did not provide any new or useful feature. Based on this judgment Lear was required to pay Adkins for any sales of the new gyroscope.

901438174

* Adkins v. Lear, Inc. (1968), (67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)

I hate to be repetitive, but I read the same case. I will reiterate, it is a case about a dispute over profit sharing. Adkins invented the gyroscope and required Lear to share profits if he used the design. The dispute arose when Lear made an improvement upon the designed and refused to pay profits on this "new and improved" design. This design was really just the innards reworked into a new shape without altering the size or scale. This was ruled to be equivalent to the original design, reinforcing the underlying ideas of the doctrine of equivalents.

cmadiga1

Lemelson v. Mattel (1992), (968 F.2d 1202)

Lemelson sued Mattel, saying that their hotwheels toys infringed on his patent for a flexible track for toy cars. In the original case, Hotwheels was ruled to have infringed on Lemelson's patent. The history of the patents in the toy race car tracks was important in this case. Before Lemelson received his patent, Giardiol had a patent for a flexible car track with an internal support. Mattel's track was very similar in all aspects of the Giardiol patent, but did not have an internal frame. Lemelson's patent was originally denied as being completely anticipated by Giardiol. However by adding claims to the vertical supports which define the track and keep the car on the track Lemelson was able to distinguish his product and obtain a patent. Therefore, these were ruled as the defining characteristics of Lemelson's patent. In the original case, the jury found that Hotwheels product did not contain these characteristics. Therefore, the Court of Appeals reversed the previous ruling saying that the jury had made a logical error.

Andy Stulc

3/21/2011: MIT v. Harman International Industries - Stulc

2011-03-23T01:21:47Z

Andy Stulc: Created page with "In U.S. District Court, MIT argued with Harman International Industries over the validity of a patent that stemmed from a MIT graduate student's thesis project dealing with autom..."

In U.S. District Court, MIT argued with Harman International Industries over the validity of a patent that stemmed from a MIT graduate student's thesis project dealing with automated driving directions. The major issues reviewed in the case are at which point the doctoral thesis became available to the public. Depending on the court's ruling, the date could fall before or after the critical date, August 9, 1989. MIT held that the information was made public on February 27, 1990 when the dissertation was added to the MIT library. Harman argued that because the experimentation before the critical date was not tightly controlled and because the thesis was signed before the critical date, the information was readily available to the public and the patent should be invalid. The court dismissed Harman's arguments, appealing to the internal proceedings of the university and the lack of commercial exploitation to support the experimentation process. The court ruled that this public use bar did not factor into the validity of the patent and that the patent remained valid because there was a clear record present that it did not reach the public until after the critical date.

User:Andy Stulc

2011-03-23T01:09:29Z

Andy Stulc:

ESB Briefs

2011-03-03T19:31:12Z

Andy Stulc:

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
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* Reply Brief for Petitioner. (Feb. 7, 1939)
#Cmadiga1
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* Brief for Respondents (Jan. 28, 1939)
#LMiller
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* Brief for Petitioner. (Jan. 1939)
#Kschlax
#Andy Stulc
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Bilski brief list

2011-02-13T15:25:33Z

Andy Stulc:

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)
#KyleR
#Andy Stulc
#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)
#Mzahm
#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)

2/9/2011: Nonobviousness Page - Stulc

2011-02-09T04:02:31Z

Andy Stulc: /* Relationship Between Invention, Novelty, and Nonobviousness */

==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.

===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.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===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)===

''History and Changes in Patent Laws''

This beginning of this case traces back the history and reasoning behind the U.S. government’s ability to grant patents to individuals. The American patent policy was shaped in a large way by the philosophy of Thomas Jefferson and his recognition that the patent system provides economic incentives to incite continuous innovation and progress. However, early on it was clear that it was a difficult task to “draw a line between the things which are worth to the public the embarrassment of an exclusive patent and those which are not” (Section II, Graham v. John Deere). The courts took up the task of interpreting the patent law into a system of principles that would help the public understand the law.

In the case of Hotchkiss v. Greenwood (1851), the court set forth a general principle that a patent must have enough ingenuity and skill introduced so that it would not be obvious to person with ordinary skill in the art. This offered a significant aspect to the definition of “invention” and officially introduced the notion of nonobviousness into the evaluation of patents. The 1952 Patent Act officially added this judicial ruling into the letter of law. In Section 103 of the U.S. code it now states, “A patent may not be obtained… if the differences between the subject matter sought to be patented and the prior are 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” (Section IV, Graham v. John Deere). As ruled in this case, Section 103 of the U.S. Code merely served as “a codification of the judicial precedents embracing the Hotchkiss decision” (Section IV, Graham v. John Deere). It did not alter or nullify the precedents or introduce new elements into consideration. The court sees the practical application of revamping Section 103 as to “bring about a closer concurrence between administrative and judicial precedent” (Section V, Graham v. John Deere).

''Patents in Question''

The first patent in question deals with a plow that has flexible blades so that the plow does not break if it encounters hard objects or soil. The question that the court is trying to answer is: was the new technology presented in the plow nonobvious based on previous patents and an ordinary understanding of the art? This question was answered by evaluating two of the patents cited in claims. The court found that the patent in question added no nonobvious advancements.

The second patent in question relates to a pump sprayer mounted on a container or bottle. It is a combination of a hand operated pump with a plastic top for a container. Cook argued that the device may appear obvious at first, but the secondary considerations such as the long unmet industry need. Once again, the court reviewed two patents pertaining to the patent at hand and concluded that the Cook design, although solving a longstanding problem, did not introduce any nonobvious knowledge.

''Takeaways from the Cas''e

*The new Patent Act of 1952 does not eliminate the judicial precedents dating back over a century
*In the eyes of the law, nonobviousness is an essential component of an invention
*Nonobviousness can be confirmed by secondary considerations such as commercial success, long-felt but unsolved need, or failure of others to find a solution, but these considerations by themselves do not constitute non obviousness
*A patent must include an element of ingenuity that is not obvious to a person with ordinary skill in the art

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==

In accordance with judicial precedent and the updated Section 103 of the U.S. code, the inventive step needs to include elements of ingenuity beyond something that would be obvious to a person with ordinary knowledge of the art.

Through court decisions, it was decided this inventive step needs to be more than a simple combination, rearrangement, or substitution of previous elements. It must include the elements of ingenuity to make it eligible for a patent.

Cases where patents have been turned down because they lacked the inventive step was obvious include:
*Hotchkiss v. Greenwood: the substitution of a material does not constitute an inventive step
*Anderson's Black Rock, Inc v. Pavement Co: the combination of previous technologies with no new function, besides the previous functions, does not constitute an inventive step
*Graham v. John Deere: the only changes made from previous patents were those that would be obvious to a person with ordinary knowledge of the art. Thus the inventive step was not innovative enough.

Cases where patents have been upheld because the inventive step was sufficient include:
*Lyon v. Bausch & Lomb: The unmet need in society testifies that it was a nonobvious solution and upholds the inventive step
*U.S. v. Adams: Despite the fact that it is a combination of known elements, because those elements behave in a new manner it is nonobvious and a legitimate inventive step.

==Relationship Between Invention, Novelty, and Nonobviousness==
The United States’ patent system stems directly from the Section 8 of the Constitution. It gives Congress the power “to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” (U.S. Constitution, Section 8). Within this legislative power, there are certain words that bring out ambiguity and do not apply easily to practical scenarios. In this case, inventor is one of those words.

The patent office seeks to give out exclusive monopolies on inventions to the inventors for their personal and commercial use of the technology. It is the major public policy in place to combat the tragedy of the commons and promote investment in technological progress by individuals and private companies. However, this comes at a cost to society. For a limited time period after an invention is introduced to the public, the principles of the free market do not apply to the technologies preserved by the patent. This means it is important that the patented technologies are really helping to accomplish the goal laid out by the Constitution, “to promote the progress of science and useful arts”. However, as Thomas Jefferson recognized, there is a difficulty in “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, Section III). This is where it becomes necessary to strictly define inventions.

Judicial precedent has provided a context by which patents are approved based on their contribution to technological progress. Until 1850, patents were required to be novel, to introduce some new process, product, or composition into public knowledge. If this did not explicitly add a new element to public life, it needed to improve an old element by making it more efficient, cheaper, or some other tangible improvement. In the Hotchkiss v. Greenwood case of 1850 this notion of novelty became more muddled.

The Hotchkiss case dealt with a “new” door handle that was essentially the combination of a ceramic material with a traditional handle design that would still support and attach to the door in the traditional sense. The court conceded that there was novelty in “the substitution of the clay knob in the place of one made of metal or wood”, but it did not recognize this novelty as enough to constitute a patent. It ruled, “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 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 the patent” (Hotchkiss v. Greenwod). This case introduced a new concept into the patent discussion: nonobviousness.

The precedent set by the Hotchkiss ruling essentially adds an element to the definition of invention. Now, an invention needs to be both novel, and nonobvious. This notion of nonobviousness over the course of the next 150 years developed a more refined definition and encompasses the current state of the art and the knowledge of someone educated in this art, as well as the secondary factors such as long unmet need, commercial success, and previous failures.

In this sense, invention is the overarching term. In the eyes of the patent law, invention needs to incorporate a novel technology that meets the requirements of nonobviousness. Novelty and Nonobviousness are two separate requirements that need to be met for a patent to be valid.

==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]]

2/9/2011: Nonobviousness Page - Stulc

2011-02-09T03:52:06Z

Andy Stulc: /* 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 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.

===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.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===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)===

''History and Changes in Patent Laws''

This beginning of this case traces back the history and reasoning behind the U.S. government’s ability to grant patents to individuals. The American patent policy was shaped in a large way by the philosophy of Thomas Jefferson and his recognition that the patent system provides economic incentives to incite continuous innovation and progress. However, early on it was clear that it was a difficult task to “draw a line between the things which are worth to the public the embarrassment of an exclusive patent and those which are not” (Section II, Graham v. John Deere). The courts took up the task of interpreting the patent law into a system of principles that would help the public understand the law.

In the case of Hotchkiss v. Greenwood (1851), the court set forth a general principle that a patent must have enough ingenuity and skill introduced so that it would not be obvious to person with ordinary skill in the art. This offered a significant aspect to the definition of “invention” and officially introduced the notion of nonobviousness into the evaluation of patents. The 1952 Patent Act officially added this judicial ruling into the letter of law. In Section 103 of the U.S. code it now states, “A patent may not be obtained… if the differences between the subject matter sought to be patented and the prior are 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” (Section IV, Graham v. John Deere). As ruled in this case, Section 103 of the U.S. Code merely served as “a codification of the judicial precedents embracing the Hotchkiss decision” (Section IV, Graham v. John Deere). It did not alter or nullify the precedents or introduce new elements into consideration. The court sees the practical application of revamping Section 103 as to “bring about a closer concurrence between administrative and judicial precedent” (Section V, Graham v. John Deere).

''Patents in Question''

The first patent in question deals with a plow that has flexible blades so that the plow does not break if it encounters hard objects or soil. The question that the court is trying to answer is: was the new technology presented in the plow nonobvious based on previous patents and an ordinary understanding of the art? This question was answered by evaluating two of the patents cited in claims. The court found that the patent in question added no nonobvious advancements.

The second patent in question relates to a pump sprayer mounted on a container or bottle. It is a combination of a hand operated pump with a plastic top for a container. Cook argued that the device may appear obvious at first, but the secondary considerations such as the long unmet industry need. Once again, the court reviewed two patents pertaining to the patent at hand and concluded that the Cook design, although solving a longstanding problem, did not introduce any nonobvious knowledge.

''Takeaways from the Cas''e

*The new Patent Act of 1952 does not eliminate the judicial precedents dating back over a century
*In the eyes of the law, nonobviousness is an essential component of an invention
*Nonobviousness can be confirmed by secondary considerations such as commercial success, long-felt but unsolved need, or failure of others to find a solution, but these considerations by themselves do not constitute non obviousness
*A patent must include an element of ingenuity that is not obvious to a person with ordinary skill in the art

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==

In accordance with judicial precedent and the updated Section 103 of the U.S. code, the inventive step needs to include elements of ingenuity beyond something that would be obvious to a person with ordinary knowledge of the art.

Through court decisions, it was decided this inventive step needs to be more than a simple combination, rearrangement, or substitution of previous elements. It must include the elements of ingenuity to make it eligible for a patent.

Cases where patents have been turned down because they lacked the inventive step was obvious include:
*Hotchkiss v. Greenwood: the substitution of a material does not constitute an inventive step
*Anderson's Black Rock, Inc v. Pavement Co: the combination of previous technologies with no new function, besides the previous functions, does not constitute an inventive step
*Graham v. John Deere: the only changes made from previous patents were those that would be obvious to a person with ordinary knowledge of the art. Thus the inventive step was not innovative enough.

Cases where patents have been upheld because the inventive step was sufficient include:
*Lyon v. Bausch & Lomb: The unmet need in society testifies that it was a nonobvious solution and upholds the inventive step
*U.S. v. Adams: Despite the fact that it is a combination of known elements, because those elements behave in a new manner it is nonobvious and a legitimate inventive step.

==Relationship Between Invention, Novelty, and Nonobviousness==
The United States’ patent system stems directly from the Section 8 of the Constitution. It gives Congress the power “to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” (U.S. Constitution, Section 8). Within this legislative power, there are certain words that bring out ambiguity and do not apply easily to practical scenarios. In this case, inventor is one of those words.

The patent office seeks to give out exclusive monopolies on inventions to the inventors for their personal and commercial use of the technology. It is the major public policy in place to combat the tragedy of the commons and promote investment in technological progress by individuals and private companies. However, this comes at a cost to society. For a limited time period after an invention is introduced to the public, the principles of the free market do not apply to the technologies preserved by the patent. This means it is important that the patented technologies are really helping to accomplish the goal laid out by the Constitution, “to promote the progress of science and useful arts”. However, as Thomas Jefferson recognized, there is a difficulty in “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, Section III). This is where it becomes necessary to strictly define inventions.
Judicial precedent has provided a context by which patents are approved based on their contribution to technological progress. Until 1850, patents were required to be novel, to introduce some new process, product, or composition into public knowledge. If this did not explicitly add a new element to public life, it needed to improve an old element by making it more efficient, cheaper, or some other tangible improvement. In the Hotchkiss v. Greenwood case of 1850 this notion of novelty became more muddled.
The Hotchkiss case dealt with a “new” door handle that was essentially the combination of a ceramic material with a traditional handle design that would still support and attach to the door in the traditional sense. The court conceded that there was novelty in “the substitution of the clay knob in the place of one made of metal or wood”, but it did not recognize this novelty as enough to constitute a patent. It ruled, “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 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 the patent” (Hotchkiss v. Greenwod). This case introduced a new concept into the patent discussion: nonobviousness.

The precedent set by the Hotchkiss ruling essentially adds an element to the definition of invention. Now, an invention needs to be both novel, and nonobvious. This notion of nonobviousness over the course of the next 150 years developed a more refined definition and encompasses the current state of the art and the knowledge of someone educated in this art, as well as the secondary factors such as long unmet need, commercial success, and previous failures.

In this sense, invention is the overarching term. In the eyes of the patent law, invention needs to incorporate a novel technology that meets the requirements of nonobviousness. Novelty and Nonobviousness are two separate requirements that need to be met for a patent to be valid.

==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]]

2/9/2011: Nonobviousness Page - Stulc

2011-02-09T02:53:42Z

Andy Stulc:

==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.

===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.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===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)===

''History and Changes in Patent Laws''

This beginning of this case traces back the history and reasoning behind the U.S. government’s ability to grant patents to individuals. The American patent policy was shaped in a large way by the philosophy of Thomas Jefferson and his recognition that the patent system provides economic incentives to incite continuous innovation and progress. However, early on it was clear that it was a difficult task to “draw a line between the things which are worth to the public the embarrassment of an exclusive patent and those which are not” (Section II, Graham v. John Deere). The courts took up the task of interpreting the patent law into a system of principles that would help the public understand the law.

In the case of Hotchkiss v. Greenwood (1851), the court set forth a general principle that a patent must have enough ingenuity and skill introduced so that it would not be obvious to person with ordinary skill in the art. This offered a significant aspect to the definition of “invention” and officially introduced the notion of nonobviousness into the evaluation of patents. The 1952 Patent Act officially added this judicial ruling into the letter of law. In Section 103 of the U.S. code it now states, “A patent may not be obtained… if the differences between the subject matter sought to be patented and the prior are 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” (Section IV, Graham v. John Deere). As ruled in this case, Section 103 of the U.S. Code merely served as “a codification of the judicial precedents embracing the Hotchkiss decision” (Section IV, Graham v. John Deere). It did not alter or nullify the precedents or introduce new elements into consideration. The court sees the practical application of revamping Section 103 as to “bring about a closer concurrence between administrative and judicial precedent” (Section V, Graham v. John Deere).

''Patents in Question''

The first patent in question deals with a plow that has flexible blades so that the plow does not break if it encounters hard objects or soil. The question that the court is trying to answer is: was the new technology presented in the plow nonobvious based on previous patents and an ordinary understanding of the art? This question was answered by evaluating two of the patents cited in claims. The court found that the patent in question added no nonobvious advancements.

The second patent in question relates to a pump sprayer mounted on a container or bottle. It is a combination of a hand operated pump with a plastic top for a container. Cook argued that the device may appear obvious at first, but the secondary considerations such as the long unmet industry need. Once again, the court reviewed two patents pertaining to the patent at hand and concluded that the Cook design, although solving a longstanding problem, did not introduce any nonobvious knowledge.

''Takeaways from the Cas''e

*The new Patent Act of 1952 does not eliminate the judicial precedents dating back over a century
*In the eyes of the law, nonobviousness is an essential component of an invention
*Nonobviousness can be confirmed by secondary considerations such as commercial success, long-felt but unsolved need, or failure of others to find a solution, but these considerations by themselves do not constitute non obviousness
*A patent must include an element of ingenuity that is not obvious to a person with ordinary skill in the art

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 Between Invention, Novelty, and Nonobviousness==
The United States’ patent system stems directly from the Section 8 of the Constitution. It gives Congress the power “to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” (U.S. Constitution, Section 8). Within this legislative power, there are certain words that bring out ambiguity and do not apply easily to practical scenarios. In this case, inventor is one of those words.

The patent office seeks to give out exclusive monopolies on inventions to the inventors for their personal and commercial use of the technology. It is the major public policy in place to combat the tragedy of the commons and promote investment in technological progress by individuals and private companies. However, this comes at a cost to society. For a limited time period after an invention is introduced to the public, the principles of the free market do not apply to the technologies preserved by the patent. This means it is important that the patented technologies are really helping to accomplish the goal laid out by the Constitution, “to promote the progress of science and useful arts”. However, as Thomas Jefferson recognized, there is a difficulty in “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, Section III). This is where it becomes necessary to strictly define inventions.
Judicial precedent has provided a context by which patents are approved based on their contribution to technological progress. Until 1850, patents were required to be novel, to introduce some new process, product, or composition into public knowledge. If this did not explicitly add a new element to public life, it needed to improve an old element by making it more efficient, cheaper, or some other tangible improvement. In the Hotchkiss v. Greenwood case of 1850 this notion of novelty became more muddled.
The Hotchkiss case dealt with a “new” door handle that was essentially the combination of a ceramic material with a traditional handle design that would still support and attach to the door in the traditional sense. The court conceded that there was novelty in “the substitution of the clay knob in the place of one made of metal or wood”, but it did not recognize this novelty as enough to constitute a patent. It ruled, “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 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 the patent” (Hotchkiss v. Greenwod). This case introduced a new concept into the patent discussion: nonobviousness.

The precedent set by the Hotchkiss ruling essentially adds an element to the definition of invention. Now, an invention needs to be both novel, and nonobvious. This notion of nonobviousness over the course of the next 150 years developed a more refined definition and encompasses the current state of the art and the knowledge of someone educated in this art, as well as the secondary factors such as long unmet need, commercial success, and previous failures.

In this sense, invention is the overarching term. In the eyes of the patent law, invention needs to incorporate a novel technology that meets the requirements of nonobviousness. Novelty and Nonobviousness are two separate requirements that need to be met for a patent to be valid.

==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]]

2/9/2011: Nonobviousness Page - Stulc

2011-02-09T00:55:09Z

Andy Stulc:

==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.

===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.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===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)===

''History and Changes in Patent Laws''

This beginning of this case traces back the history and reasoning behind the U.S. government’s ability to grant patents to individuals. The American patent policy was shaped in a large way by the philosophy of Thomas Jefferson and his recognition that the patent system provides economic incentives to incite continuous innovation and progress. However, early on it was clear that it was a difficult task to “draw a line between the things which are worth to the public the embarrassment of an exclusive patent and those which are not” (Section II, Graham v. John Deere). The courts took up the task of interpreting the patent law into a system of principles that would help the public understand the law.

In the case of Hotchkiss v. Greenwood (1851), the court set forth a general principle that a patent must have enough ingenuity and skill introduced so that it would not be obvious to person with ordinary skill in the art. This offered a significant aspect to the definition of “invention” and officially introduced the notion of nonobviousness into the evaluation of patents. The 1952 Patent Act officially added this judicial ruling into the letter of law. In Section 103 of the U.S. code it now states, “A patent may not be obtained… if the differences between the subject matter sought to be patented and the prior are 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” (Section IV, Graham v. John Deere). As ruled in this case, Section 103 of the U.S. Code merely served as “a codification of the judicial precedents embracing the Hotchkiss decision” (Section IV, Graham v. John Deere). It did not alter or nullify the precedents or introduce new elements into consideration. The court sees the practical application of revamping Section 103 as to “bring about a closer concurrence between administrative and judicial precedent” (Section V, Graham v. John Deere).

''Patents in Question''

The first patent in question deals with a plow that has flexible blades so that the plow does not break if it encounters hard objects or soil. The question that the court is trying to answer is: was the new technology presented in the plow nonobvious based on previous patents and an ordinary understanding of the art? This question was answered by evaluating two of the patents cited in claims. The court found that the patent in question added no nonobvious advancements.

The second patent in question relates to a pump sprayer mounted on a container or bottle. It is a combination of a hand operated pump with a plastic top for a container. Cook argued that the device may appear obvious at first, but the secondary considerations such as the long unmet industry need. Once again, the court reviewed two patents pertaining to the patent at hand and concluded that the Cook design, although solving a longstanding problem, did not introduce any nonobvious knowledge.

''Takeaways from the Cas''e

*The new Patent Act of 1952 does not eliminate the judicial precedents dating back over a century
*In the eyes of the law, nonobviousness is an essential component of an invention
*Nonobviousness can be confirmed by secondary considerations such as commercial success, long-felt but unsolved need, or failure of others to find a solution, but these considerations by themselves do not constitute non obviousness
*A patent must include an element of ingenuity that is not obvious to a person with ordinary skill in the art

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]]

2/9/2011: Nonobviousness Page - Stulc

2011-02-09T00:54:49Z

Andy Stulc:

==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.

===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.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===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)===
Graham v. John Deere

''History and Changes in Patent Laws''

This beginning of this case traces back the history and reasoning behind the U.S. government’s ability to grant patents to individuals. The American patent policy was shaped in a large way by the philosophy of Thomas Jefferson and his recognition that the patent system provides economic incentives to incite continuous innovation and progress. However, early on it was clear that it was a difficult task to “draw a line between the things which are worth to the public the embarrassment of an exclusive patent and those which are not” (Section II, Graham v. John Deere). The courts took up the task of interpreting the patent law into a system of principles that would help the public understand the law.

In the case of Hotchkiss v. Greenwood (1851), the court set forth a general principle that a patent must have enough ingenuity and skill introduced so that it would not be obvious to person with ordinary skill in the art. This offered a significant aspect to the definition of “invention” and officially introduced the notion of nonobviousness into the evaluation of patents. The 1952 Patent Act officially added this judicial ruling into the letter of law. In Section 103 of the U.S. code it now states, “A patent may not be obtained… if the differences between the subject matter sought to be patented and the prior are 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” (Section IV, Graham v. John Deere). As ruled in this case, Section 103 of the U.S. Code merely served as “a codification of the judicial precedents embracing the Hotchkiss decision” (Section IV, Graham v. John Deere). It did not alter or nullify the precedents or introduce new elements into consideration. The court sees the practical application of revamping Section 103 as to “bring about a closer concurrence between administrative and judicial precedent” (Section V, Graham v. John Deere).

''Patents in Question''

The first patent in question deals with a plow that has flexible blades so that the plow does not break if it encounters hard objects or soil. The question that the court is trying to answer is: was the new technology presented in the plow nonobvious based on previous patents and an ordinary understanding of the art? This question was answered by evaluating two of the patents cited in claims. The court found that the patent in question added no nonobvious advancements.

The second patent in question relates to a pump sprayer mounted on a container or bottle. It is a combination of a hand operated pump with a plastic top for a container. Cook argued that the device may appear obvious at first, but the secondary considerations such as the long unmet industry need. Once again, the court reviewed two patents pertaining to the patent at hand and concluded that the Cook design, although solving a longstanding problem, did not introduce any nonobvious knowledge.

''Takeaways from the Cas''e

*The new Patent Act of 1952 does not eliminate the judicial precedents dating back over a century
*In the eyes of the law, nonobviousness is an essential component of an invention
*Nonobviousness can be confirmed by secondary considerations such as commercial success, long-felt but unsolved need, or failure of others to find a solution, but these considerations by themselves do not constitute non obviousness
*A patent must include an element of ingenuity that is not obvious to a person with ordinary skill in the art

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]]

2/9/2011: Nonobviousness Page - Stulc

2011-02-08T19:51:55Z

Andy Stulc: 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 (185..."

User:Andy Stulc

2011-02-08T19:51:44Z

Andy Stulc:

User:Andy Stulc

2011-02-08T19:51:06Z

Andy Stulc:

[[1/24/2011:Rear Derailleur for a Bicycle Patent - Stulc]]

[[1/28/2011: Hotchkiss and A&P reasoning - Stulc]]

[[2/4/2011: Arguing for Obviousness and Nonobviousness - Stulc]]

HW3: Arguing for Obviousness and Nonobviousness - Stulc

2011-02-08T19:50:45Z

Andy Stulc: moved HW3: Arguing for Obviousness and Nonobviousness - Stulc to 2/4/2011: Arguing for Obviousness and Nonobviousness - Stulc

#REDIRECT [[2/4/2011: Arguing for Obviousness and Nonobviousness - Stulc]]

2/4/2011: Arguing for Obviousness and Nonobviousness - Stulc

2011-02-08T19:50:45Z

Andy Stulc: moved HW3: Arguing for Obviousness and Nonobviousness - Stulc to 2/4/2011: Arguing for Obviousness and Nonobviousness - Stulc

Graham Patent 2,493,811 makes claims to a mechanism that allows a plow to yield when it encounters a hard spot in the ground. It accomplishes this task by using a U-shaped bracket that connects the frame, a shaft, a fulcrum, and the blade. The blade is able to rotate relative to the frame about the fulcrum when it encounters hard material allowing the plow to be more robust than previous plows.

Graham Patent 2,627,798 makes a claim to a plow mechanism that is able to rock relatively to the frame when the plow is in operation. It deals principally with the attachment mechanism for attaching the blade of the plow to the frame and still allowing the blade to yield to hard object.

Pfeifer 2,014,451 makes a claim to a bracket fastening device that is specifically aimed at anchoring or securing corrugated or other metal sheeting to elements of a supporting frame. It utilizes a U-shaped sheet to wrap around a corner of the sheet metal and secure the sheet to the frame.

The Graham Patent '811 was under scrutiny for being an obvious invention due to the prior state of the art. With these two "prior art" patents in mind, here are arguments for obviousness and nonobviousness of the invention in '811.

Arguments for Obviousness:

-The general parts are essentially the same and each part serves the same purpose (spring, bracket, nut, bolt, frame, etc). Therefore the part is an obvious utilization of old technology (specifically from the '798).

-It is reasonable to believe that an educated person with ordinary skill in mechanical engineering could develop this configuration of parts based on the prior patents.

-The method for attaching the blade to the frame is essentially a new application for the fastening device presented in Pfeifer's 451.

Arguments for Nonobviousness:

-The new mechanism adapts the '451 technology to serve a new market in the plow industry. It is commercially lucrative and has not yet been accomplished, making a case for it being a nonobvious solution.

-The stirrup and the bolt connection constitute enough of an innovation to justify the patent. They add

User:Andy Stulc

2011-02-08T19:50:16Z

Andy Stulc:

[[1/24/2011:Rear Derailleur for a Bicycle Patent - Stulc]]

[[1/28/2011: Hotchkiss and A&P reasoning - Stulc]]

[[HW3: Arguing for Obviousness and Nonobviousness - Stulc]]

HW2 Hotchkiss and A&P reasoning

2011-02-08T19:50:05Z

Andy Stulc: moved HW2 Hotchkiss and A&P reasoning to 1/28/2011: Hotchkiss and A&P reasoning - Stulc

#REDIRECT [[1/28/2011: Hotchkiss and A&P reasoning - Stulc]]

1/28/2011: Hotchkiss and A&P reasoning - Stulc

2011-02-08T19:50:05Z

Andy Stulc: moved HW2 Hotchkiss and A&P reasoning to 1/28/2011: Hotchkiss and A&P reasoning - Stulc

'''HW2'''

The Hotchkiss case and the A&P cases both present different decisions that pertain to the notion that an invention must be non-obvious.

The Hotchkiss case from 1850 holds that in order for an object to be patentable, the object or process needs to present a new element of ingenuity that extends it past the ability to be made or performed by any “ordinary mechanic acquainted with the business”. It deals directly with the use of new materials in otherwise old parts. Ultimately, it holds that the improvement brought forth by the use of these new materials is the work of a mechanic not an inventor, thus rendering it unpatentable.

The A&P case from 1950 distinguishes an invention as something different than a group of previously public parts assembled together. It holds that “the key to patentability of a mechanical device that brings old factors into cooperation is presence or lack of invention”. They found that the cash register patent was not valid because the standard of invention appeared to be less exacting that that required where a combination is made up entirely of old components. In addition, court examines the grow of power in the patent office and traces the powers back to its constitutional basis, promoting more discretion in the granting of patent rights.

The patent I wrote about for the first homework assignment describes a rear bike derailleur that has an improved mechanism for transitioning the chain between gears. It will be more robust than previous derailleur, as well as less noisy during riding. It was issued in 1986. This patent references three other patents that describe various components of the derailleur that are utilized in the design of the new derailleur.

The first of these patents describes a completely new mechanism to use as a rear derailleur. Instead of using two parallel links to comprise a moving arm to the fixed link on the derailleur, the Shimano company devised a way to use only one arm. This patent claims that the new design offers benefits in the performance of the bicycle because the derailleur will maintain a constant chain orientation, decreasing the amount that the “drive chain rocks”. In addition, the patent holds that the new mechanism can be manufactured simpler and more reliably. This patent was issued in 1981.
[http://www.google.com/patents?id=WsE4AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]

In regards to this patent, the 1986 patented derailleur design would stand as a clear invention. Although it is comprised of the general mechanism used from the 1981 derailleur, it makes subtle changes to the gear shifting mechanism that helps the chain shift more fluidly. This innovation in the mechanism is outside the bounds of a standard bike mechanic and improves the function of the derailleur. This would make the device patentable using the A&P reasoning. In addition, the Hotchkiss reasoning would also probably support the patent because it elaborates on the existing sub-units and includes actual new mechanisms.

The second patent referenced by my original patent is a bicycle derailleur with a reduced lateral width. This decreased size makes the derailleur less likely to be struck by a foreign object while riding and thus more likely to remain functioning. It manages to accomplish the smaller size be rearranging the mounting position of the fixed member on the derailleur. The smaller size can be applicable to many different types of the derailleur because the invention does not encompass the helical spring. This versatility makes the patent very applicable to the Shimano Industrial Company. It was issued in 1982.
[http://www.google.com/patents?id=j6o2AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]

Once again, the patent from 1986 utilizes the technology from the old patent (which is fine because they are held by the same company), but expands on that patent to include a new element that improves the function of the derailleur. The fact that it is an innovation in components and an improvement that required a nonobvious innovation lends itself to be a legitimate innovation in both the thought processes of Hotchkiss and A&P.

The third patent describes a rear derailleur that prevents the possibility of the chain being thrown into the spokes of the wheel. It adds a protective synthetic plastic disc to the inside of the derailleur. When the derailleur kicks the chain off the inside of the cassette, this ring stops the chain from entering the spokes and damaging the wheel. Once again, this is also patented by the Shimano Industrial Company and the patent was issued in 1983.
[http://www.google.com/patents?id=kKYzAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]

This particular innovation seems like it could be questionable in itself. The inclusion of a plastic disc seems like the obvious solution to the problem of the chain falling into the spokes and does not require excess time or resources to compose. It is an improvement, but not one that merits exclusive rights according to the A&P decision. However, when judging the 1986 patent against this 1983 patent, Shimano once again combined the element of the old patent with its new mechanism to create an improved part that benefits the user, leading to the belief that both Hotchkiss reasoning and A&P reasoning would grant this patent.
Through the examination of the referenced patents, the 1986 Rear Bicycle Derailleur seems to be justifiable innovation that is worthy of exclusive rights granted by a patent.

User:Andy Stulc

2011-02-08T19:49:03Z

Andy Stulc:

[[1/24/2011:Rear Derailleur for a Bicycle Patent - Stulc]]

[[HW2 Hotchkiss and A&P reasoning]]

[[HW3: Arguing for Obviousness and Nonobviousness - Stulc]]

1/24/2011 Patent : Rear Derailleur for a Bicycle - Stulc

2011-02-08T19:48:32Z

Andy Stulc: moved 1/24/2011 Patent : Rear Derailleur for a Bicycle - Stulc to 1/24/2011:Rear Derailleur for a Bicycle Patent - Stulc

#REDIRECT [[1/24/2011:Rear Derailleur for a Bicycle Patent - Stulc]]

1/24/2011:Rear Derailleur for a Bicycle Patent - Stulc

2011-02-08T19:48:32Z

Andy Stulc: moved 1/24/2011 Patent : Rear Derailleur for a Bicycle - Stulc to 1/24/2011:Rear Derailleur for a Bicycle Patent - Stulc

Patent 4575365: Rear Derailleur for a Bicycle, March 1986

This patent improves the typical rear derailleur for a bicycle by adding a mechanism that makes the bike less noisy when shifting gears and causes less wear for the rear cassette, chain, and derailleur. It is a new invention because it makes use of the tension in the chain to hold the skewed portion of the chain straight, thus reducing noise. This is interesting to me because I have done a lot of work on bicycles and enjoy understanding how they work. It is a completely mechanical system that works very well in its purpose. I find it interesting to see how even an idea that had been around for years, like the rear derailleur, can still be improved upon and then patented. I found this patent on google patents by searching for the bike component company Shimano. This patent was developed for Shimano Industrial Company.

[http://www.google.com/patents?id=7O8zAAAAEBAJ&zoom=4&pg=PA1#v=onepage&q&f=false]Patent 4575365, Rear Derailleur for a Bicycle

HW1 Patent : Rear Derailleur for a Bicycle

2011-02-08T19:47:53Z

Andy Stulc: moved HW1 Patent : Rear Derailleur for a Bicycle to 1/24/2011 Patent : Rear Derailleur for a Bicycle - Stulc

#REDIRECT [[1/24/2011 Patent : Rear Derailleur for a Bicycle - Stulc]]

1/24/2011:Rear Derailleur for a Bicycle Patent - Stulc

2011-02-08T19:47:53Z

Andy Stulc: moved HW1 Patent : Rear Derailleur for a Bicycle to 1/24/2011 Patent : Rear Derailleur for a Bicycle - Stulc

2/4/2011: Arguing for Obviousness and Nonobviousness - Stulc

2011-02-04T18:58:39Z

Andy Stulc:

2/4/2011: Arguing for Obviousness and Nonobviousness - Stulc

2011-02-04T06:15:55Z

Andy Stulc:

2/4/2011: Arguing for Obviousness and Nonobviousness - Stulc

2011-02-04T06:05:09Z

Andy Stulc: Created page with "Graham Patent 2,493,811 makes claims to a mechanism that allows a plow to yield when it encounters a hard spot in the ground. It accomplishes this task by using a U-shaped bracke..."

Graham Patent 2,493,811 makes claims to a mechanism that allows a plow to yield when it encounters a hard spot in the ground. It accomplishes this task by using a U-shaped bracket that connects the frame, a shaft, a fulcrum, and the blade. The blade is able to rotate relative to the frame about the fulcrum when it encounters hard material allowing the plow to be more robust than previous plows.

Graham Patent 2,627,798 makes a claim to a plow mechanism that is able to rock relatively to the frame when the plow is in operation. It deals principally with the attachment mechanism for attaching the blade of the plow to the frame and still allowing the blade to yield to hard object.

Pfeifer 2,014,451 makes a claim to a bracket fastening device that is specifically aimed at anchoring or securing corrugated or other metal sheeting to elements of a supporting frame. It utilizes a U-shaped sheet to wrap around a corner of the sheet metal and secure the sheet to the frame.

The Graham Patent '811 was under scrutiny for being an obvious invention due to the prior state of the art. With these two "prior art" patents in mind, here are arguments for obviousness and nonobviousness of the invention in '811.

Arguments for Obviousness:
-The general parts are essentially the same and each part serves the same purpose (spring, bracket, nut, bolt, frame, etc). Therefore the part is an obvious utilization of old technology (specifically from the '798).
-It is reasonable to believe that an educated person with ordinary skill in mechanical engineering could develop this configuration of parts based on the prior patents.
-The method for attaching the blade to the frame is essentially a new application for the fastening device presented in Pfeifer's 451.

Arguments for Nonobviousness:
-The new mechanism adapts the '451 technology to serve a new market in the plow industry. It is commercially lucrative and has not yet been accomplished, making a case for it being a nonobvious solution.
-

User:Andy Stulc

2011-02-04T05:14:40Z

Andy Stulc:

[[HW1 Patent : Rear Derailleur for a Bicycle]]

[[HW2 Hotchkiss and A&P reasoning]]

[[HW3: Arguing for Obviousness and Nonobviousness - Stulc]]

User:Andy Stulc

2011-02-04T05:14:29Z

Andy Stulc:

[[HW1 Patent : Rear Derailleur for a Bicycle]]

[[HW2 Hotchkiss and A&P reasoning]]
[[HW3: Arguing for Obviousness and Nonobviousness - Stulc]]

1/28/2011: Hotchkiss and A&P reasoning - Stulc

2011-01-28T06:18:56Z

Andy Stulc: Created page with "'''HW2''' The Hotchkiss case and the A&P cases both present different decisions that pertain to the notion that an invention must be non-obvious. The Hotchkiss case from 1850 ..."

User:Andy Stulc

2011-01-28T06:14:02Z

Andy Stulc:

[[HW1 Patent : Rear Derailleur for a Bicycle]]

[[HW2 Hotchkiss and A&P reasoning]]

User:Andy Stulc

2011-01-28T06:13:38Z

Andy Stulc:

[[HW1 Patent : Rear Derailleur for a Bicycle]] [[HW2 Hotchkiss and A&P reasoning]]

User:Andy Stulc

2011-01-28T06:13:08Z

Andy Stulc:

[[HW1 Patent : Rear Derailleur for a Bicycle]]
[[HW2 Hotchkiss and A&P reasoning]]

1/24/2011:Rear Derailleur for a Bicycle Patent - Stulc

2011-01-23T22:17:22Z

Andy Stulc:

1/24/2011:Rear Derailleur for a Bicycle Patent - Stulc

2011-01-23T04:57:49Z

Andy Stulc: Created page with "[http://www.google.com/patents?id=7O8zAAAAEBAJ&zoom=4&pg=PA1#v=onepage&q&f=false]Patent 4575365, Rear Derailleur for a Bicycle"

[http://www.google.com/patents?id=7O8zAAAAEBAJ&zoom=4&pg=PA1#v=onepage&q&f=false]Patent 4575365, Rear Derailleur for a Bicycle

User:Andy Stulc

2011-01-23T04:36:06Z

Andy Stulc:

[[HW1 Patent : Rear Derailleur for a Bicycle]]

My Patent : Rear Derailleur for a Bicycle

2011-01-23T04:27:40Z

Andy Stulc:

[http://www.google.com/patents?id=7O8zAAAAEBAJ&zoom=4&pg=PA1#v=onepage&q&f=false]U.S. Patent 4575365, Rear Derailleur for a Bicycle

My Patent : Rear Derailleur for a Bicycle

2011-01-23T04:26:31Z

Andy Stulc: Created page with "[http://www.google.com/patents?id=7O8zAAAAEBAJ&zoom=4&pg=PA1#v=onepage&q&f=false]"

[http://www.google.com/patents?id=7O8zAAAAEBAJ&zoom=4&pg=PA1#v=onepage&q&f=false]

User:Andy Stulc

2011-01-23T04:21:00Z

Andy Stulc: Created page with "My Patent : Rear Derailleur for a Bicycle"

[[My Patent : Rear Derailleur for a Bicycle]]