Bill Goodwine's Wiki - User contributions [en]

Quanta Brief - ewolz

2011-04-29T20:46:11Z

Ewolz: /* Brief of Dell Inc., Hewlett-Packard, Co., and Gateway, Inc. as Amici Curiae in Support of Petitioners */

== Brief of Dell Inc., Hewlett-Packard, Co., and Gateway, Inc. as Amici Curiae in Support of Petitioners ==

Dell, Hewlett-Packard, and Gateway argue in support of Quanta Computer. They begin by pointing out that LG Electronics has already taken a royalty from Intel for allowing them the use of LG's patents in Intel's microprocessors. Computer products manufactured by amici and other companies consist of thousands of components which are often manufactured and assembled in multiple steps by multiple companies. The Federal Circuits ruling in this case would imply that LG is entitled to a royalty at each step of the manufacturing stage for the same invention, giving LG more reward than is due for its its invention which will lead to substantial increases in cost of the manufacturing process of computer components.

Instead of following the doctrine of patent exhaustion, which is well established by the Court for over a century, the Federal Circuit has replaced it with a system that allows patent holders to be multiplicably rewarded for its invention at every stage of the manufacturing process. Amici argue that this decision is inconsistent with the patent system in that it is impractical, unfair, and inefficient. It doesn't promote the progress of science and the useful arts, but only furthers the goals of the company holding the patent. The patent law grants the inventor a "limited monopoly" by which to secure financial rewards for the invention. Amici argue that the first vending of an article manufactured under a patent puts the article beyond the reach of the monopoly. Any conditions on the use of the patented article after an authorized sale is not supported by patent law; the conditions must be treated in the same manner that conditions on unpatented commodities are.

Quanta Brief - ewolz

2011-04-29T20:34:07Z

Ewolz: Created page with "== Brief of Dell Inc., Hewlett-Packard, Co., and Gateway, Inc. as Amici Curiae in Support of Petitioners =="

== Brief of Dell Inc., Hewlett-Packard, Co., and Gateway, Inc. as Amici Curiae in Support of Petitioners ==

Here in list of arguments in Quanta

2011-04-29T20:33:28Z

Ewolz:

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

[[Quanta Brief Summary 901330223]]

[[901349446 Quanta Brief]]

[[Quanta Brief Summary 901471466]]

[[Quanta Brief Summary 901422128]]

[[Quanta Brief Summary Jacob Marmolejo]]

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

[[Mitros: Quanta Brief]]

[[Zahm Homework 31: Quanta Brief]]

[[901419437 Quanta v. LGE Brief Summary]]

[[Quanta Brief 901437068]]

[[901281608: Quanta Brief]]

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

[[901479977: Quanta for Petitioners]]

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

[[Reply Brief of Petitioners (Quanta) - Adam Mahood]]

[[Quanta Brief Summary 901360293]]

[[Quanta Brief Summary 901431048]]

[[Quanta Brief Brobins]]

[[Quanta Brief hwong1]]

[[Quanta Brief: Tennant]]

[[Quanta Brief - Snooki]]

[[Quanta Brief (John Gallagher)]]

[[Quanta brief - 901338276]]

[[Brief of Amici Curiae for Respondent - Eric Leis]]

[[Quanta Brief - Kschlax]]

[[Quanta Brief - Christine Roetzel]]

[[Quanta Brief: In support of Federal Circuit Ruling (eguilbea)]]

[[Quanta Brief: 901424607]]

[[Quanta Brief - 901425018]]

[[Quanta Brief- Xiao Dong]]

[[Quanta Brief - Ackroyd]]

[[Quanta Brief - Karch]]

[[Quanta_Brief_Carter]]

[[Quanta Brief - ewolz]]

Homework 6 - ewolz

2011-04-05T21:15:56Z

Ewolz: /* Opinion on Honeywell International, Inc. v. Hamilton Sundstrand Corporation */

== Opinion on Honeywell International, Inc. v. Hamilton Sundstrand Corporation given by Justice Erich Wolz ==

Honeywell's opening argument was based on the argument of how prosecution estoppel was misapplied, and that the presumption that they surrendered all subject matter under the original claim when they rewrote their dependent claims into independent claims was unfair. During the act of rewriting their claims, Honeywell argues that they didn't revise anything with regard to Inlet Guide Vanes (IGVs) and still ended up losing material according to the lower courts. Honeywell argues that Sundstrand should be found infringing for their APS 3200, an APU device that uses IGVs to help measure high-flow or low-flow situations.

In response, Sundstrand tried to argue that estoppel was due to Honeywell's failure to include markings on patents and thus didn't disclose all information to the public. However, let it be known that markings are not required for patent protection, but are merely used secure damages for the patent holder. Sundstrand then argues non-infrigement due to prosecution estoppel, arguing that Honeywell gave up claims when they made amendments to their original claims. Sundstrand argues that because their is no literal infringement and Honeywell is barred from using the Doctrine of Equivalents due to prosecution estoppel, they can't be found guilty of infringement. When asked by the Justices whether they could provide evidence showing that their product is non-equivalent to Honeywell's claims, they responded that it doesn't matter whether or not they are equivalent so long as Honeywell is barred from using the Doctrine of Equivalents.

Honeywell contends that Sundstrand used all parts of their claims and added the single step of using IGVs to detect high-flow and low-flow. Sundstrand further argues its position that Honeywell is barred from using the Doctrine of Equivalents due to the use of IGVs being forseeable at the time of the narrowing amendment due to an APU developed in the 1970s which also measured static pressure differential to solve the double solution problem. In response to Honeywell's argument that it took Sundstrand four years to develop their APU ten years after Honeywell's and thus couldn't be forseeable, Sundstrand counters saying that it only took two months to solve the double solution problem using IGVs and that the other time is not relevant to the case at hand.

While I agree with Sundstrands assertion that the four years taken to develop an APU is irrelevant to the case at hand, I disagree with their arguments for prosecution estoppel. In Warner-Jenkinson Company v. Hilton Davis Chemicals Co., it was found that the upper limit of 9.0 pH was added to the patent to distinguish it from prior art, while no record could be ascertained to determine why the lower limit of 6.0 pH was added. In order to determine if prosecution estoppel applied, the CAFC remanded to the district court to determine if Hilton could override the presumption that the pH limit of 6.0 was added with good reason and thus determine if prosecution estoppel applied at that lower pH limit.

However, the circumstances in Honeywell v. Sunstrand are significantly different from Warner-Jenkinson v. Hilton Davis. In Warner v. Hilton, the case hinged on whether prosecution estoppel for amending claims to include a pH limit of 6-9 prevented the Doctrine of Equivalents from being applied to determine whether a process performed at pH values of 6-9 were equivalent to similar processes performed at a pH below 6.0. In Warner v. Hilton, the amendments to the claims had a direct relationship with determining equivalence. In Honeywell v. Sunstrand however, the independent claim that was denied had nothing to do with the claims for IGVs which Honeywell uses to show infringement. In rewriting their dependent claims with IGVs to independent claims, Honeywell incorporated no further limitations. As a result, it is my opinion that prosecution estoppel does not apply. I remand to lower courts to determine whether infringement has occurred under the Doctrine of Equivalents.

Homework 6 - ewolz

2011-04-05T21:15:15Z

Ewolz:

== Opinion on Honeywell International, Inc. v. Hamilton Sundstrand Corporation ==

Honeywell's opening argument was based on the argument of how prosecution estoppel was misapplied, and that the presumption that they surrendered all subject matter under the original claim when they rewrote their dependent claims into independent claims was unfair. During the act of rewriting their claims, Honeywell argues that they didn't revise anything with regard to Inlet Guide Vanes (IGVs) and still ended up losing material according to the lower courts. Honeywell argues that Sundstrand should be found infringing for their APS 3200, an APU device that uses IGVs to help measure high-flow or low-flow situations.

In response, Sundstrand tried to argue that estoppel was due to Honeywell's failure to include markings on patents and thus didn't disclose all information to the public. However, let it be known that markings are not required for patent protection, but are merely used secure damages for the patent holder. Sundstrand then argues non-infrigement due to prosecution estoppel, arguing that Honeywell gave up claims when they made amendments to their original claims. Sundstrand argues that because their is no literal infringement and Honeywell is barred from using the Doctrine of Equivalents due to prosecution estoppel, they can't be found guilty of infringement. When asked by the Justices whether they could provide evidence showing that their product is non-equivalent to Honeywell's claims, they responded that it doesn't matter whether or not they are equivalent so long as Honeywell is barred from using the Doctrine of Equivalents.

Honeywell contends that Sundstrand used all parts of their claims and added the single step of using IGVs to detect high-flow and low-flow. Sundstrand further argues its position that Honeywell is barred from using the Doctrine of Equivalents due to the use of IGVs being forseeable at the time of the narrowing amendment due to an APU developed in the 1970s which also measured static pressure differential to solve the double solution problem. In response to Honeywell's argument that it took Sundstrand four years to develop their APU ten years after Honeywell's and thus couldn't be forseeable, Sundstrand counters saying that it only took two months to solve the double solution problem using IGVs and that the other time is not relevant to the case at hand.

While I agree with Sundstrands assertion that the four years taken to develop an APU is irrelevant to the case at hand, I disagree with their arguments for prosecution estoppel. In Warner-Jenkinson Company v. Hilton Davis Chemicals Co., it was found that the upper limit of 9.0 pH was added to the patent to distinguish it from prior art, while no record could be ascertained to determine why the lower limit of 6.0 pH was added. In order to determine if prosecution estoppel applied, the CAFC remanded to the district court to determine if Hilton could override the presumption that the pH limit of 6.0 was added with good reason and thus determine if prosecution estoppel applied at that lower pH limit.

However, the circumstances in Honeywell v. Sunstrand are significantly different from Warner-Jenkinson v. Hilton Davis. In Warner v. Hilton, the case hinged on whether prosecution estoppel for amending claims to include a pH limit of 6-9 prevented the Doctrine of Equivalents from being applied to determine whether a process performed at pH values of 6-9 were equivalent to similar processes performed at a pH below 6.0. In Warner v. Hilton, the amendments to the claims had a direct relationship with determining equivalence. In Honeywell v. Sunstrand however, the independent claim that was denied had nothing to do with the claims for IGVs which Honeywell uses to show infringement. In rewriting their dependent claims with IGVs to independent claims, Honeywell incorporated no further limitations. As a result, it is my opinion that prosecution estoppel does not apply. I remand to lower courts to determine whether infringement has occurred under the Doctrine of Equivalents.

--Justice Erich Wolz

Homework 6 - ewolz

2011-04-05T21:14:45Z

Ewolz:

Homework 6 - ewolz

2011-04-05T20:56:20Z

Ewolz: Created page with "== Opinion on Honeywell International, Inc. v. Hamilton Sundstrand Corporation == Honeywell's opening argument was based on the argument of how prosecution estoppel was misappli..."

User:Ewolz

2011-04-05T20:25:20Z

Ewolz:

== Homeworks ==

[[Homework 1 - Due Monday, January 24]]

[[Homework 2 - Due Friday, January 28]]

[[Homework 3 - ewolz]]

[[Homework 4 - ewolz]]

Brief of Amicus Curiae Timothy F. McDonough, Ph.D. in Support of Petitioners (Jul. 22, 2009)

[[Homework 5 - ewolz]]

[[Homework 6 - ewolz]]

Doctrine of Equivalents Case List

2011-04-03T22:30:10Z

Ewolz:

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

*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

* 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

*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

Homework 5 - ewolz

2011-03-22T18:23:46Z

Ewolz:

== Printed Publication ==

In the US Court of Appeals case MEHL/Biophile Itern. Corp. v. Milgraum, the court held that a method for laser hair removal was invalid on the grounds of anticipation in the prior art. MEHL/Biophile accused Dr. Milgraum infringed on US Patent [http://www.google.com/patents/about?id=670pAAAAEBAJ&dq=5059192/ 5059192]. In a summary judgment, Milgraum claimed the patent was anticipated in two prior arts. The first was an instruction manual for the Spectrum RD-1200 laser used in tattoo removal, and the second was an article in the 1987 Journal of Investigative Dermatology authored by Dr. Luigi Polla. The District Court agreed that the manual anticipated the claims and granted a judgement of invalidity. Upon appeal, the US Court of Appeals disagrees that the RD-1200 manual anticipated the claimed invention, but found the Polla article did and thus affirms the lower courts decision. The Court of Appeals bases this decision on In re Schreiber 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) which stated that "to anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently." The court qualifies the the use of the term inherently by referencing In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981) which stated "inherency...may not be established by probabilities or possibilities." Because the Spectrum manual does not discuss hair follicles or the act of aligning a laser over a hair follicle opening, it does not teach all the limitations of the claimed invention. However, the Court of Appeals found that the Polla article did teach all the limitations of the claimed article. The Polla article dealt with the aligning of a laser light over a guinea pigs back (which no one disputes is hairy) and provides images depicting follicular damage induced by the laser. Lastly, the method used to expose the Q-switched ruby laser to the guinea pigs back inherently taught the vertical alignment of the laser over follicle openings. The court found that the Polla laser anticipated claim 1 of the '192 patent; because MEHL/Biophile didn't argue separately the validity of other dependent claims, the court also found those claims to be invalid as well.

Homework 5 - ewolz

2011-03-22T18:23:17Z

Ewolz:

== Printed Publication ==

In the US Court of Appeals case [http://campus.westlaw.com.proxy.library.nd.edu/result/default.wl?sv=Split&historytype=F&service=Find&spa=003654480-2000&mqv=d&fn=_top&rp=%2fFind%2fdefault.wl&vr=2.0&mt=CampusLaw&pbc=5095DFBF&rlti=1&tc=-1&scxt=WL&n=1&showhitsonly=False&rs=WLW11.01&rlt=CLID_FQRLT27498334612223&serialnum=1999224124&cnt=DOC&method=None&ss=CNT&findtype=Y&rltkclimit=None&tf=-1&cxt=DC&nn=-1/ MEHL/Biophile Itern. Corp. v. Milgraum], the court held that a method for laser hair removal was invalid on the grounds of anticipation in the prior art. MEHL/Biophile accused Dr. Milgraum infringed on US Patent [http://www.google.com/patents/about?id=670pAAAAEBAJ&dq=5059192/ 5059192]. In a summary judgment, Milgraum claimed the patent was anticipated in two prior arts. The first was an instruction manual for the Spectrum RD-1200 laser used in tattoo removal, and the second was an article in the 1987 Journal of Investigative Dermatology authored by Dr. Luigi Polla. The District Court agreed that the manual anticipated the claims and granted a judgement of invalidity. Upon appeal, the US Court of Appeals disagrees that the RD-1200 manual anticipated the claimed invention, but found the Polla article did and thus affirms the lower courts decision. The Court of Appeals bases this decision on In re Schreiber 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) which stated that "to anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently." The court qualifies the the use of the term inherently by referencing In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981) which stated "inherency...may not be established by probabilities or possibilities." Because the Spectrum manual does not discuss hair follicles or the act of aligning a laser over a hair follicle opening, it does not teach all the limitations of the claimed invention. However, the Court of Appeals found that the Polla article did teach all the limitations of the claimed article. The Polla article dealt with the aligning of a laser light over a guinea pigs back (which no one disputes is hairy) and provides images depicting follicular damage induced by the laser. Lastly, the method used to expose the Q-switched ruby laser to the guinea pigs back inherently taught the vertical alignment of the laser over follicle openings. The court found that the Polla laser anticipated claim 1 of the '192 patent; because MEHL/Biophile didn't argue separately the validity of other dependent claims, the court also found those claims to be invalid as well.

Homework 5 - ewolz

2011-03-22T18:17:43Z

Ewolz:

Homework 5 - ewolz

2011-03-22T18:03:33Z

Ewolz: Created page with "== Printed Publication == In the US Court of Appeals case [http://campus.westlaw.com.proxy.library.nd.edu/result/default.wl?sv=Split&historytype=F&service=Find&spa=003654480-200..."

User:Ewolz

2011-03-22T18:00:44Z

Ewolz: /* Homeworks */

ESB Briefs

2011-03-03T23:05:04Z

Ewolz:

Here is a list of briefs for the Electric Storage Battery Co v. Shimadzu case. Add your name next to the list for the one with the fewest names and read that one.
* Reply Brief for Respondents. (Feb. 27, 1939)
#Michael Madden
#Hwong1
#croetzel
#kroshak
#Adam Mahood
#
#
#
#
#
* Reply Brief for Petitioner. (Feb. 7, 1939)
#Cmadiga1
#90144463
#901422128
#jpotter2
#ewolz
#
#
#
#
#
* Brief for Respondents (Jan. 28, 1939)
#LMiller
#Josh Bradley
#Brobins
#Ebingle
#
#
#
#
#
#
* Brief for Petitioner. (Jan. 1939)
#Kschlax
#Andy Stulc
#Mzahm
#Rabot
#Peter Mitros
#
#
#
#
#

Bilski brief list

2011-02-13T18:58:09Z

Ewolz:

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)
#Pmitros
#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)
#Bobby Powers
#Brief of Amici Curiae Association Internationale Pour la Protection de la Propriete Intellectuelle and International Association For The Protection Of Intellectual Property (U.S.) in Support of Reversal (Aug. 5, 2009)
#Brief of Amicus Curiae Caris Diagnostics, Inc. in Support of Petitioners (Aug. 5, 2009)
#Brief of the Intellectual Property Law Association of Chicago as Amicus Curiae Supporting Neither Party (Aug. 5, 2009)
#Brief of Monogram Biosciences, Inc. and Genomic Health, Inc. as Amici Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Raymond C. Meiers in Support of Neither Party (Aug. 5, 2009)
#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)
#ewolz
#Petitioners' Reply Brief (May 8, 2009)
#Brief for the Respondent in Opposition (May 1, 2009)
#Brief of Koninklijke Philips Electronics N.V. as Amicus Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Mar. 2, 2009)
#Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief Amicus Curiae of Franklin Pierce Law Center in Support of Certiorari (Mar. 2, 2009)
#Brief of Amica Curiae Anne E. Barschall, Pro Se in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of the Petition for a Writ of Certiorari (Mar. 2, 2009)
#Jmarmole
#Brief of John P. Sutton Amicus Curiae Supporting Petitioners (Feb. 25, 2009)

User:Ewolz

2011-02-13T18:57:43Z

Ewolz:

Homework 4 - ewolz

2011-02-09T02:44:14Z

Ewolz: /* Nonobviousness vs. Invention */

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

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to 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.

In Hotchkiss v. Greenwood, Hotchkiss alleged that he had invented a new and useful improvement by making knobs of clay and porcelain with dovetail cavities used to assist in attaching the knobs to the shank and spindle. The court found however that while there was no evidence of clay knobs being made with dovetail cavities, the art of making knobs of clay was "known and practiced". Likewise, dovetail cavities were not novel either, having been the mode of connecting doorknobs of wood or metal in the United States for many years.

It was found that simply substituting one material for another without any further changes was not an invention and not patentable. Within this case, it was said that if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void". By substituting clay for wood or metal, it was found that the improvement of the work (creating better knobs cheaper) was simply the work of the skillful mechanic and not the inventor.

===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.

In this court case, the patent in question claims invention of a cashier counter with a three-sided frame/rack which when pushed or pulled would move groceries deposited within. The frame is kept on the counter by guides. The District Court recognized that each element in the device was known in prior-art, yet the combination of a counter with an extension to receive the unloading tray was a novel feature and thus qualifies as a "new and useful combination". The Court of Appeals agreed that this counter qualified as an invention, and pointed at the counters commercial success as evidence of it being a new invention.

The Supreme Court however decided otherwise. Initially, it reviewed the extension of the counter, which the lower courts perceived as an invention. The Supreme Court decided the extension was not an invention for two reasons. One, it was not mentioned in the claims of the patent, and two, even if it was mentioned in the claims, the length of the counter has traditionally been whatever length needed by the merchant. The Supreme Court then reviews the fact that the "invention" is a combination of previously known elements. The court states that "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable". As all the parts within the merchant counter performed the same function, the act of giving a patent to this device would "withdraw what already is known into the field of its monopoly and diminish the resources available to skillful men".

The court then addresses the evidence used by the Court of Appeals and respondents in saying this device is patentable due to it fulfilling a long-felt want and its commercial success. The Supreme Court explicitly states that "commercial success without invention will not make patentability".

Lastly, Justice Douglas discusses the original purpose of patents, and makes a distinction between "inventions" and "gadgets". Justice Douglas recalls that patents serve to "promote the progress of science and useful arts", and that the reward for doing so was a limited time monopoly given to the inventor for making a contribution to scientific knowledge. As a result, the courts have commonly taken "inventive genius" as the test for patentability. He states the intention of patents were not to provide monopolies for "every trifling device, every shadow of shade of an idea" which would occur to any skilled mechanic.

===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

This case was brought to court shortly after 35 US 103 was adopted in 1952, which attempted to codify the standard of non-obviousness that had been in use by the courts since Hotchkiss v. Greenwood. This case dealt with two main questions, the first being whether or not the invention had been disclosed in any earlier patent, and secondly, whether or not Lyon's contributions would support a patent. Of these two questions, it is the second one that needs to be focused on as it is the one that deals with non-obviousness while the former deals with novelty.

Lyon's process for coating optical elements([http://www.google.com/patents/about?id=zPdfAAAAEBAJ&dq=2398382/ 2398382]) consisted of two steps. The first consisted of heating an optical surface in a vacuum until water and grease on the surface have evaporated. The second was to vaporize an inorganic salt within the vacuum while keeping the optical surface heated. Of all the similar patents found, none suggested that the optical surface should be kept heated while being coated. It is here that Lyon makes his contribution to the process-keeping the optical surface heated while being coated.

In order to show that Lyon's process was non-obvious, Learned Hand points to the fact that "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". Evidence existed that showed people searched for a solution for many years but could not find one. Perhaps most interesting, even when experts in the field attempted to apply the coating to the heated surface, they were unable to get it to work completely (Hewlett) and eventually abandoned further work in this area. This abandonment gives more credence to the non-obviousness of Lyon's addition to the process, as not only did the abandoned project "fail to advance the art; it put the process among those efforts that are proved useless".

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

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

In this case, two District Courts ruled in opposite ways which led to the intervention of the Supreme Court. This case dealt with improvements to plows made by Graham that reduce damage to plow shanks when they come across obstructions such as rocks in the soil. This case is the first time that the court literally deals with section 103 of the US Code since its adoption in 1952. The court begins by going through the history of the patent laws, and points out that though the language of the patent laws have changed completely since the 1850s by congress, the court believes it represents the same standard.

When the court reviewed the Patent Act of 1952, it states that the distinction emphasized by Congress was "nonobviousness", which was to be used as the operative test rather than the less definite "invention" language that was a result of Hotchkiss v. Greenwood. Section 103 of Title 35 of the US code is the first statutory expression of an additional requirement for patentability. Under 103, the obviousness or nonobviousness of the subject matter is determined by "the scope and content of prior art are to be determined, differences between prior art and claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved". While these are the primary considerations, secondary considerations such as "commercial success, long felt but unsolved needs, and failures of others" ''may possibly'' be relevant although not statutorily required.

The patent in question([http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2627798]) made several slight changes to a previous patent([http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2493811]) which amounted to moving the plow shank so that it is situated underneath the lower hinge plate with an attaching rod at the end of it rather than sandwiched between the upper and lower hinge plates. The motivation for this change was the fact that when the plow shank was sandwiched between the hinge plates and rotated in its upward position, the shank would apply pressure to the upper plate and cause damage to a part of the plow that was hard to repair.

In the end, the court found no operative mechanical distinctions or nonobvious differences between Graham's '798 patent and the prior art (his '811 patent as well as other plows such as those made by Glencoe). The "free flexing" qualities of the shank due to it being placed below the lower hinge plate and argued for as a crucial difference by the petitioners wasn't even referenced in the patent application. Additionally, it was found that such free flexing played a very small part in the plow as a whole, and that if mechanics wanted to prevent the sandwiching of the shank between the hinge plates while maintaining its rotating capabilities, the obvious location would have been to place it below the lower hinge plate.

===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.

The patent in question in this case regards the first practical, water-activated "wet" battery filed by Adams. The object of this battery was to provide a constant voltage and current without the use of acids. Additionally, the battery operates without generation dangerous fumes, is light in weight with respect to capacity, and can be manufactured and distributed in a dry condition and is activated by adding water. The battery could also perform over a very wide range of temperatures.

When Adams brought his battery to the US Navy, they did not believe his claims and decided the battery was not workable. About two years later however, the government concluded the battery was feasible and entered into contracts with various battery companies to produce it without notifying Adams, leading to this lawsuit.

In defense, the US Government challenged the patent under sections 102 (novelty) and 103 (non-obviousness). Again, it is the second of these challenges that are relevant for this section. The government states that the electrodes in Adam's battery were merely substitutions of pre-existing battery designs used by prior art. If this was the case, the patent could have been invalidated in a similar way to the Hotchkiss patent discussed earlier. However, it was found by the court that Adam's battery "wholly unexpectedly" demonstrates several operating advantages over other batteries that a simple substitution of materials wouldn't have predicted. The court concludes that though the individual elements of Adams' battery were well known in prior art, combining them led to unexpected results that went ''against'' the mainstream scientific view. Therefore, the court rules that Adams' battery was non-obvious because it required that a person skilled in the prior art ignore consenting thoughts that batteries which continued to operate on an open circuit and heated during normal use were impractical as well as ignore the thought that water-activated batteries were only successful when combined with electrolytes "detrimental to the use of magnesium".

===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==

The idea of the "inventive step" first came about in Hotchkiss v. Greenwood when the court realized that in order for an invention to be patentable, it must display that it is more than just "new or useful." The court decided that simply substituting one material for another, even if it was an improvement of the work, didn't have an inventive step. Inventiveness was determined by the test if the new device required "more ingenuity and skill than possessed by an ordinary mechanic."

The "inventive step" eventually transformed into the idea of "non-obviousness", which was codified in 1952 in 35 US 103.

==Relationship with Novelty==

It isn't enough that an invention or improvement thereupon be non-obvious, in order to obtain a patent, it must still conform to all the regulations of 35 US 102. That is to say, an invention must be both novel ''and'' non-obvious. In light of this, the validity of a patent can be attacked under both terms. In the case US v. Adams, 383 U.S. 39 (1966), the United States government challenged the validity of Adams patent both on the grounds that it lacked novelty (35 USC 102a) as well as obviousness (35 US 103). Novelty and non-obviousness are separate tests of patentability and both must be satisfied in a valid patent.

==Nonobviousness vs. Invention==

In Graham v. John Deere, the Supreme Court explores 35 USC Section 103 for the first time since the patent act of 1952. Justice Clark states that "patentability is to depend, in addition to novelty and utility, upon the 'non-obvious' nature of the 'subject matter sought to be patented' to a person having ordinary skill in the pertinent art." He notes that the first sentence of this section is "strongly reminiscent of the language in Hotchkiss." In both the precedent set by Hotchkiss and section 103, emphasis is placed on the pertinent art existing at the time of the invention as well as advances made in that art. Clark states however that in 103, Congress places an emphasis on "nonobviousness" as the operative test of the section, instead of the less definite "invention" language of Hotchkiss. As part of this new emphasis and understanding, it is thought that Congress attempted to abolish the controversial phrase "flash of creative genius" used in previous court cases. Though different wording, this new section sought to merely provide a statutory expression for the additional requirement of non-obvious while retaining the same level of patentability.

==Secondary Considerations==

As mentioned previously, the Supreme Court case Graham v. John Deere was the first case to deal explicitly with section 103 of the US code. Within this case, Justice Clark reminds the court that non-obviousness is one of three conditions that must be satisfied in order to obtain a patent. Determining non-obviousness can't just be a matter of opinion, but must be based on law. With that in mind, primary considerations for determining non-obviousness are the scope and content of prior art, the differences between prior art and the claims at issue, and the level of ordinary skill in the relevant art.

Justice Clark makes a distinction between these and secondary considerations such as commercial success, long felt but unsolved needs, and failure of others. These secondary considerations can help give light to the circumstances, but they are not grounded in statutes and cannot solely be used to determine non-obviousness.

This distinction between primary and secondary considerations can be grounded in Learned Hands conclusion in Lyon v. Bausch & Lomb. In this case, Learned Hand makes obvious that the scope of the prior art doesn't include Lyon's method of keeping the surface heated while applying the coating and that more than ordinary skill was required in creating this coating on the glass as several inventors had tried similar things and failed or abandoned their project. With this in mind, Hand then goes on to reference what we now call secondary considerations and states the fact that "the most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection;...number of attempts, none satisfactory;...supplanted the existing practice and occupied substantially the whole field" and that he sees no combination of evidence that could more clearly show that the change had not been obvious.

==Ordinary Skill in the Art==

Originally expressed in the bill of exceptions in Hotchkiss v. Greenwood, if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void" became a test used by the court to determine patentability. This test eventually became codified in Title 35 Section 103 of the US code, which requires that a patentable invention or improvement must be non-obvious. The idea is that patents are supposed to bring forth progress in science and the arts, and if something is obvious to a "mechanic of ordinary skill", than patenting such an "invention" reduces the knowledge available to skilled men.

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

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

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

[[South Corp. v. US]]

Homework 4 - ewolz

2011-02-09T02:40:03Z

Ewolz: /* Nonobviousness vs. Invention */

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

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to 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.

In Hotchkiss v. Greenwood, Hotchkiss alleged that he had invented a new and useful improvement by making knobs of clay and porcelain with dovetail cavities used to assist in attaching the knobs to the shank and spindle. The court found however that while there was no evidence of clay knobs being made with dovetail cavities, the art of making knobs of clay was "known and practiced". Likewise, dovetail cavities were not novel either, having been the mode of connecting doorknobs of wood or metal in the United States for many years.

It was found that simply substituting one material for another without any further changes was not an invention and not patentable. Within this case, it was said that if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void". By substituting clay for wood or metal, it was found that the improvement of the work (creating better knobs cheaper) was simply the work of the skillful mechanic and not the inventor.

===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.

In this court case, the patent in question claims invention of a cashier counter with a three-sided frame/rack which when pushed or pulled would move groceries deposited within. The frame is kept on the counter by guides. The District Court recognized that each element in the device was known in prior-art, yet the combination of a counter with an extension to receive the unloading tray was a novel feature and thus qualifies as a "new and useful combination". The Court of Appeals agreed that this counter qualified as an invention, and pointed at the counters commercial success as evidence of it being a new invention.

The Supreme Court however decided otherwise. Initially, it reviewed the extension of the counter, which the lower courts perceived as an invention. The Supreme Court decided the extension was not an invention for two reasons. One, it was not mentioned in the claims of the patent, and two, even if it was mentioned in the claims, the length of the counter has traditionally been whatever length needed by the merchant. The Supreme Court then reviews the fact that the "invention" is a combination of previously known elements. The court states that "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable". As all the parts within the merchant counter performed the same function, the act of giving a patent to this device would "withdraw what already is known into the field of its monopoly and diminish the resources available to skillful men".

The court then addresses the evidence used by the Court of Appeals and respondents in saying this device is patentable due to it fulfilling a long-felt want and its commercial success. The Supreme Court explicitly states that "commercial success without invention will not make patentability".

Lastly, Justice Douglas discusses the original purpose of patents, and makes a distinction between "inventions" and "gadgets". Justice Douglas recalls that patents serve to "promote the progress of science and useful arts", and that the reward for doing so was a limited time monopoly given to the inventor for making a contribution to scientific knowledge. As a result, the courts have commonly taken "inventive genius" as the test for patentability. He states the intention of patents were not to provide monopolies for "every trifling device, every shadow of shade of an idea" which would occur to any skilled mechanic.

===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

This case was brought to court shortly after 35 US 103 was adopted in 1952, which attempted to codify the standard of non-obviousness that had been in use by the courts since Hotchkiss v. Greenwood. This case dealt with two main questions, the first being whether or not the invention had been disclosed in any earlier patent, and secondly, whether or not Lyon's contributions would support a patent. Of these two questions, it is the second one that needs to be focused on as it is the one that deals with non-obviousness while the former deals with novelty.

Lyon's process for coating optical elements([http://www.google.com/patents/about?id=zPdfAAAAEBAJ&dq=2398382/ 2398382]) consisted of two steps. The first consisted of heating an optical surface in a vacuum until water and grease on the surface have evaporated. The second was to vaporize an inorganic salt within the vacuum while keeping the optical surface heated. Of all the similar patents found, none suggested that the optical surface should be kept heated while being coated. It is here that Lyon makes his contribution to the process-keeping the optical surface heated while being coated.

In order to show that Lyon's process was non-obvious, Learned Hand points to the fact that "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". Evidence existed that showed people searched for a solution for many years but could not find one. Perhaps most interesting, even when experts in the field attempted to apply the coating to the heated surface, they were unable to get it to work completely (Hewlett) and eventually abandoned further work in this area. This abandonment gives more credence to the non-obviousness of Lyon's addition to the process, as not only did the abandoned project "fail to advance the art; it put the process among those efforts that are proved useless".

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

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

In this case, two District Courts ruled in opposite ways which led to the intervention of the Supreme Court. This case dealt with improvements to plows made by Graham that reduce damage to plow shanks when they come across obstructions such as rocks in the soil. This case is the first time that the court literally deals with section 103 of the US Code since its adoption in 1952. The court begins by going through the history of the patent laws, and points out that though the language of the patent laws have changed completely since the 1850s by congress, the court believes it represents the same standard.

When the court reviewed the Patent Act of 1952, it states that the distinction emphasized by Congress was "nonobviousness", which was to be used as the operative test rather than the less definite "invention" language that was a result of Hotchkiss v. Greenwood. Section 103 of Title 35 of the US code is the first statutory expression of an additional requirement for patentability. Under 103, the obviousness or nonobviousness of the subject matter is determined by "the scope and content of prior art are to be determined, differences between prior art and claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved". While these are the primary considerations, secondary considerations such as "commercial success, long felt but unsolved needs, and failures of others" ''may possibly'' be relevant although not statutorily required.

The patent in question([http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2627798]) made several slight changes to a previous patent([http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2493811]) which amounted to moving the plow shank so that it is situated underneath the lower hinge plate with an attaching rod at the end of it rather than sandwiched between the upper and lower hinge plates. The motivation for this change was the fact that when the plow shank was sandwiched between the hinge plates and rotated in its upward position, the shank would apply pressure to the upper plate and cause damage to a part of the plow that was hard to repair.

In the end, the court found no operative mechanical distinctions or nonobvious differences between Graham's '798 patent and the prior art (his '811 patent as well as other plows such as those made by Glencoe). The "free flexing" qualities of the shank due to it being placed below the lower hinge plate and argued for as a crucial difference by the petitioners wasn't even referenced in the patent application. Additionally, it was found that such free flexing played a very small part in the plow as a whole, and that if mechanics wanted to prevent the sandwiching of the shank between the hinge plates while maintaining its rotating capabilities, the obvious location would have been to place it below the lower hinge plate.

===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.

The patent in question in this case regards the first practical, water-activated "wet" battery filed by Adams. The object of this battery was to provide a constant voltage and current without the use of acids. Additionally, the battery operates without generation dangerous fumes, is light in weight with respect to capacity, and can be manufactured and distributed in a dry condition and is activated by adding water. The battery could also perform over a very wide range of temperatures.

When Adams brought his battery to the US Navy, they did not believe his claims and decided the battery was not workable. About two years later however, the government concluded the battery was feasible and entered into contracts with various battery companies to produce it without notifying Adams, leading to this lawsuit.

In defense, the US Government challenged the patent under sections 102 (novelty) and 103 (non-obviousness). Again, it is the second of these challenges that are relevant for this section. The government states that the electrodes in Adam's battery were merely substitutions of pre-existing battery designs used by prior art. If this was the case, the patent could have been invalidated in a similar way to the Hotchkiss patent discussed earlier. However, it was found by the court that Adam's battery "wholly unexpectedly" demonstrates several operating advantages over other batteries that a simple substitution of materials wouldn't have predicted. The court concludes that though the individual elements of Adams' battery were well known in prior art, combining them led to unexpected results that went ''against'' the mainstream scientific view. Therefore, the court rules that Adams' battery was non-obvious because it required that a person skilled in the prior art ignore consenting thoughts that batteries which continued to operate on an open circuit and heated during normal use were impractical as well as ignore the thought that water-activated batteries were only successful when combined with electrolytes "detrimental to the use of magnesium".

===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==

The idea of the "inventive step" first came about in Hotchkiss v. Greenwood when the court realized that in order for an invention to be patentable, it must display that it is more than just "new or useful." The court decided that simply substituting one material for another, even if it was an improvement of the work, didn't have an inventive step. Inventiveness was determined by the test if the new device required "more ingenuity and skill than possessed by an ordinary mechanic."

The "inventive step" eventually transformed into the idea of "non-obviousness", which was codified in 1952 in 35 US 103.

==Relationship with Novelty==

It isn't enough that an invention or improvement thereupon be non-obvious, in order to obtain a patent, it must still conform to all the regulations of 35 US 102. That is to say, an invention must be both novel ''and'' non-obvious. In light of this, the validity of a patent can be attacked under both terms. In the case US v. Adams, 383 U.S. 39 (1966), the United States government challenged the validity of Adams patent both on the grounds that it lacked novelty (35 USC 102a) as well as obviousness (35 US 103). Novelty and non-obviousness are separate tests of patentability and both must be satisfied in a valid patent.

==Nonobviousness vs. Invention==

In Graham v. John Deere, the Supreme Court explores 35 USC Section 103 for the first time since the patent act of 1952. Justice Clark states that "patentability is to depend, in addition to novelty and utility, upon the 'non-obvious' nature of the 'subject matter sought to be patented' to a person having ordinary skill in the pertinent art."

==Secondary Considerations==

As mentioned previously, the Supreme Court case Graham v. John Deere was the first case to deal explicitly with section 103 of the US code. Within this case, Justice Clark reminds the court that non-obviousness is one of three conditions that must be satisfied in order to obtain a patent. Determining non-obviousness can't just be a matter of opinion, but must be based on law. With that in mind, primary considerations for determining non-obviousness are the scope and content of prior art, the differences between prior art and the claims at issue, and the level of ordinary skill in the relevant art.

Justice Clark makes a distinction between these and secondary considerations such as commercial success, long felt but unsolved needs, and failure of others. These secondary considerations can help give light to the circumstances, but they are not grounded in statutes and cannot solely be used to determine non-obviousness.

This distinction between primary and secondary considerations can be grounded in Learned Hands conclusion in Lyon v. Bausch & Lomb. In this case, Learned Hand makes obvious that the scope of the prior art doesn't include Lyon's method of keeping the surface heated while applying the coating and that more than ordinary skill was required in creating this coating on the glass as several inventors had tried similar things and failed or abandoned their project. With this in mind, Hand then goes on to reference what we now call secondary considerations and states the fact that "the most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection;...number of attempts, none satisfactory;...supplanted the existing practice and occupied substantially the whole field" and that he sees no combination of evidence that could more clearly show that the change had not been obvious.

==Ordinary Skill in the Art==

Originally expressed in the bill of exceptions in Hotchkiss v. Greenwood, if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void" became a test used by the court to determine patentability. This test eventually became codified in Title 35 Section 103 of the US code, which requires that a patentable invention or improvement must be non-obvious. The idea is that patents are supposed to bring forth progress in science and the arts, and if something is obvious to a "mechanic of ordinary skill", than patenting such an "invention" reduces the knowledge available to skilled men.

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

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

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

[[South Corp. v. US]]

Homework 4 - ewolz

2011-02-09T02:37:07Z

Ewolz: /* Relationship with Novelty */

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

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to 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.

In Hotchkiss v. Greenwood, Hotchkiss alleged that he had invented a new and useful improvement by making knobs of clay and porcelain with dovetail cavities used to assist in attaching the knobs to the shank and spindle. The court found however that while there was no evidence of clay knobs being made with dovetail cavities, the art of making knobs of clay was "known and practiced". Likewise, dovetail cavities were not novel either, having been the mode of connecting doorknobs of wood or metal in the United States for many years.

It was found that simply substituting one material for another without any further changes was not an invention and not patentable. Within this case, it was said that if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void". By substituting clay for wood or metal, it was found that the improvement of the work (creating better knobs cheaper) was simply the work of the skillful mechanic and not the inventor.

===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.

In this court case, the patent in question claims invention of a cashier counter with a three-sided frame/rack which when pushed or pulled would move groceries deposited within. The frame is kept on the counter by guides. The District Court recognized that each element in the device was known in prior-art, yet the combination of a counter with an extension to receive the unloading tray was a novel feature and thus qualifies as a "new and useful combination". The Court of Appeals agreed that this counter qualified as an invention, and pointed at the counters commercial success as evidence of it being a new invention.

The Supreme Court however decided otherwise. Initially, it reviewed the extension of the counter, which the lower courts perceived as an invention. The Supreme Court decided the extension was not an invention for two reasons. One, it was not mentioned in the claims of the patent, and two, even if it was mentioned in the claims, the length of the counter has traditionally been whatever length needed by the merchant. The Supreme Court then reviews the fact that the "invention" is a combination of previously known elements. The court states that "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable". As all the parts within the merchant counter performed the same function, the act of giving a patent to this device would "withdraw what already is known into the field of its monopoly and diminish the resources available to skillful men".

The court then addresses the evidence used by the Court of Appeals and respondents in saying this device is patentable due to it fulfilling a long-felt want and its commercial success. The Supreme Court explicitly states that "commercial success without invention will not make patentability".

Lastly, Justice Douglas discusses the original purpose of patents, and makes a distinction between "inventions" and "gadgets". Justice Douglas recalls that patents serve to "promote the progress of science and useful arts", and that the reward for doing so was a limited time monopoly given to the inventor for making a contribution to scientific knowledge. As a result, the courts have commonly taken "inventive genius" as the test for patentability. He states the intention of patents were not to provide monopolies for "every trifling device, every shadow of shade of an idea" which would occur to any skilled mechanic.

===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

This case was brought to court shortly after 35 US 103 was adopted in 1952, which attempted to codify the standard of non-obviousness that had been in use by the courts since Hotchkiss v. Greenwood. This case dealt with two main questions, the first being whether or not the invention had been disclosed in any earlier patent, and secondly, whether or not Lyon's contributions would support a patent. Of these two questions, it is the second one that needs to be focused on as it is the one that deals with non-obviousness while the former deals with novelty.

Lyon's process for coating optical elements([http://www.google.com/patents/about?id=zPdfAAAAEBAJ&dq=2398382/ 2398382]) consisted of two steps. The first consisted of heating an optical surface in a vacuum until water and grease on the surface have evaporated. The second was to vaporize an inorganic salt within the vacuum while keeping the optical surface heated. Of all the similar patents found, none suggested that the optical surface should be kept heated while being coated. It is here that Lyon makes his contribution to the process-keeping the optical surface heated while being coated.

In order to show that Lyon's process was non-obvious, Learned Hand points to the fact that "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". Evidence existed that showed people searched for a solution for many years but could not find one. Perhaps most interesting, even when experts in the field attempted to apply the coating to the heated surface, they were unable to get it to work completely (Hewlett) and eventually abandoned further work in this area. This abandonment gives more credence to the non-obviousness of Lyon's addition to the process, as not only did the abandoned project "fail to advance the art; it put the process among those efforts that are proved useless".

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

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

In this case, two District Courts ruled in opposite ways which led to the intervention of the Supreme Court. This case dealt with improvements to plows made by Graham that reduce damage to plow shanks when they come across obstructions such as rocks in the soil. This case is the first time that the court literally deals with section 103 of the US Code since its adoption in 1952. The court begins by going through the history of the patent laws, and points out that though the language of the patent laws have changed completely since the 1850s by congress, the court believes it represents the same standard.

When the court reviewed the Patent Act of 1952, it states that the distinction emphasized by Congress was "nonobviousness", which was to be used as the operative test rather than the less definite "invention" language that was a result of Hotchkiss v. Greenwood. Section 103 of Title 35 of the US code is the first statutory expression of an additional requirement for patentability. Under 103, the obviousness or nonobviousness of the subject matter is determined by "the scope and content of prior art are to be determined, differences between prior art and claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved". While these are the primary considerations, secondary considerations such as "commercial success, long felt but unsolved needs, and failures of others" ''may possibly'' be relevant although not statutorily required.

The patent in question([http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2627798]) made several slight changes to a previous patent([http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2493811]) which amounted to moving the plow shank so that it is situated underneath the lower hinge plate with an attaching rod at the end of it rather than sandwiched between the upper and lower hinge plates. The motivation for this change was the fact that when the plow shank was sandwiched between the hinge plates and rotated in its upward position, the shank would apply pressure to the upper plate and cause damage to a part of the plow that was hard to repair.

In the end, the court found no operative mechanical distinctions or nonobvious differences between Graham's '798 patent and the prior art (his '811 patent as well as other plows such as those made by Glencoe). The "free flexing" qualities of the shank due to it being placed below the lower hinge plate and argued for as a crucial difference by the petitioners wasn't even referenced in the patent application. Additionally, it was found that such free flexing played a very small part in the plow as a whole, and that if mechanics wanted to prevent the sandwiching of the shank between the hinge plates while maintaining its rotating capabilities, the obvious location would have been to place it below the lower hinge plate.

===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.

The patent in question in this case regards the first practical, water-activated "wet" battery filed by Adams. The object of this battery was to provide a constant voltage and current without the use of acids. Additionally, the battery operates without generation dangerous fumes, is light in weight with respect to capacity, and can be manufactured and distributed in a dry condition and is activated by adding water. The battery could also perform over a very wide range of temperatures.

When Adams brought his battery to the US Navy, they did not believe his claims and decided the battery was not workable. About two years later however, the government concluded the battery was feasible and entered into contracts with various battery companies to produce it without notifying Adams, leading to this lawsuit.

In defense, the US Government challenged the patent under sections 102 (novelty) and 103 (non-obviousness). Again, it is the second of these challenges that are relevant for this section. The government states that the electrodes in Adam's battery were merely substitutions of pre-existing battery designs used by prior art. If this was the case, the patent could have been invalidated in a similar way to the Hotchkiss patent discussed earlier. However, it was found by the court that Adam's battery "wholly unexpectedly" demonstrates several operating advantages over other batteries that a simple substitution of materials wouldn't have predicted. The court concludes that though the individual elements of Adams' battery were well known in prior art, combining them led to unexpected results that went ''against'' the mainstream scientific view. Therefore, the court rules that Adams' battery was non-obvious because it required that a person skilled in the prior art ignore consenting thoughts that batteries which continued to operate on an open circuit and heated during normal use were impractical as well as ignore the thought that water-activated batteries were only successful when combined with electrolytes "detrimental to the use of magnesium".

===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==

The idea of the "inventive step" first came about in Hotchkiss v. Greenwood when the court realized that in order for an invention to be patentable, it must display that it is more than just "new or useful." The court decided that simply substituting one material for another, even if it was an improvement of the work, didn't have an inventive step. Inventiveness was determined by the test if the new device required "more ingenuity and skill than possessed by an ordinary mechanic."

The "inventive step" eventually transformed into the idea of "non-obviousness", which was codified in 1952 in 35 US 103.

==Relationship with Novelty==

It isn't enough that an invention or improvement thereupon be non-obvious, in order to obtain a patent, it must still conform to all the regulations of 35 US 102. That is to say, an invention must be both novel ''and'' non-obvious. In light of this, the validity of a patent can be attacked under both terms. In the case US v. Adams, 383 U.S. 39 (1966), the United States government challenged the validity of Adams patent both on the grounds that it lacked novelty (35 USC 102a) as well as obviousness (35 US 103). Novelty and non-obviousness are separate tests of patentability and both must be satisfied in a valid patent.

==Nonobviousness vs. Invention==
==Secondary Considerations==

As mentioned previously, the Supreme Court case Graham v. John Deere was the first case to deal explicitly with section 103 of the US code. Within this case, Justice Clark reminds the court that non-obviousness is one of three conditions that must be satisfied in order to obtain a patent. Determining non-obviousness can't just be a matter of opinion, but must be based on law. With that in mind, primary considerations for determining non-obviousness are the scope and content of prior art, the differences between prior art and the claims at issue, and the level of ordinary skill in the relevant art.

Justice Clark makes a distinction between these and secondary considerations such as commercial success, long felt but unsolved needs, and failure of others. These secondary considerations can help give light to the circumstances, but they are not grounded in statutes and cannot solely be used to determine non-obviousness.

This distinction between primary and secondary considerations can be grounded in Learned Hands conclusion in Lyon v. Bausch & Lomb. In this case, Learned Hand makes obvious that the scope of the prior art doesn't include Lyon's method of keeping the surface heated while applying the coating and that more than ordinary skill was required in creating this coating on the glass as several inventors had tried similar things and failed or abandoned their project. With this in mind, Hand then goes on to reference what we now call secondary considerations and states the fact that "the most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection;...number of attempts, none satisfactory;...supplanted the existing practice and occupied substantially the whole field" and that he sees no combination of evidence that could more clearly show that the change had not been obvious.

==Ordinary Skill in the Art==

Originally expressed in the bill of exceptions in Hotchkiss v. Greenwood, if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void" became a test used by the court to determine patentability. This test eventually became codified in Title 35 Section 103 of the US code, which requires that a patentable invention or improvement must be non-obvious. The idea is that patents are supposed to bring forth progress in science and the arts, and if something is obvious to a "mechanic of ordinary skill", than patenting such an "invention" reduces the knowledge available to skilled men.

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

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

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

[[South Corp. v. US]]

Homework 4 - ewolz

2011-02-09T02:31:49Z

Ewolz: /* Relationship with Novelty */

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

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to 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.

In Hotchkiss v. Greenwood, Hotchkiss alleged that he had invented a new and useful improvement by making knobs of clay and porcelain with dovetail cavities used to assist in attaching the knobs to the shank and spindle. The court found however that while there was no evidence of clay knobs being made with dovetail cavities, the art of making knobs of clay was "known and practiced". Likewise, dovetail cavities were not novel either, having been the mode of connecting doorknobs of wood or metal in the United States for many years.

It was found that simply substituting one material for another without any further changes was not an invention and not patentable. Within this case, it was said that if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void". By substituting clay for wood or metal, it was found that the improvement of the work (creating better knobs cheaper) was simply the work of the skillful mechanic and not the inventor.

===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.

In this court case, the patent in question claims invention of a cashier counter with a three-sided frame/rack which when pushed or pulled would move groceries deposited within. The frame is kept on the counter by guides. The District Court recognized that each element in the device was known in prior-art, yet the combination of a counter with an extension to receive the unloading tray was a novel feature and thus qualifies as a "new and useful combination". The Court of Appeals agreed that this counter qualified as an invention, and pointed at the counters commercial success as evidence of it being a new invention.

The Supreme Court however decided otherwise. Initially, it reviewed the extension of the counter, which the lower courts perceived as an invention. The Supreme Court decided the extension was not an invention for two reasons. One, it was not mentioned in the claims of the patent, and two, even if it was mentioned in the claims, the length of the counter has traditionally been whatever length needed by the merchant. The Supreme Court then reviews the fact that the "invention" is a combination of previously known elements. The court states that "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable". As all the parts within the merchant counter performed the same function, the act of giving a patent to this device would "withdraw what already is known into the field of its monopoly and diminish the resources available to skillful men".

The court then addresses the evidence used by the Court of Appeals and respondents in saying this device is patentable due to it fulfilling a long-felt want and its commercial success. The Supreme Court explicitly states that "commercial success without invention will not make patentability".

Lastly, Justice Douglas discusses the original purpose of patents, and makes a distinction between "inventions" and "gadgets". Justice Douglas recalls that patents serve to "promote the progress of science and useful arts", and that the reward for doing so was a limited time monopoly given to the inventor for making a contribution to scientific knowledge. As a result, the courts have commonly taken "inventive genius" as the test for patentability. He states the intention of patents were not to provide monopolies for "every trifling device, every shadow of shade of an idea" which would occur to any skilled mechanic.

===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

This case was brought to court shortly after 35 US 103 was adopted in 1952, which attempted to codify the standard of non-obviousness that had been in use by the courts since Hotchkiss v. Greenwood. This case dealt with two main questions, the first being whether or not the invention had been disclosed in any earlier patent, and secondly, whether or not Lyon's contributions would support a patent. Of these two questions, it is the second one that needs to be focused on as it is the one that deals with non-obviousness while the former deals with novelty.

Lyon's process for coating optical elements([http://www.google.com/patents/about?id=zPdfAAAAEBAJ&dq=2398382/ 2398382]) consisted of two steps. The first consisted of heating an optical surface in a vacuum until water and grease on the surface have evaporated. The second was to vaporize an inorganic salt within the vacuum while keeping the optical surface heated. Of all the similar patents found, none suggested that the optical surface should be kept heated while being coated. It is here that Lyon makes his contribution to the process-keeping the optical surface heated while being coated.

In order to show that Lyon's process was non-obvious, Learned Hand points to the fact that "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". Evidence existed that showed people searched for a solution for many years but could not find one. Perhaps most interesting, even when experts in the field attempted to apply the coating to the heated surface, they were unable to get it to work completely (Hewlett) and eventually abandoned further work in this area. This abandonment gives more credence to the non-obviousness of Lyon's addition to the process, as not only did the abandoned project "fail to advance the art; it put the process among those efforts that are proved useless".

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

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

In this case, two District Courts ruled in opposite ways which led to the intervention of the Supreme Court. This case dealt with improvements to plows made by Graham that reduce damage to plow shanks when they come across obstructions such as rocks in the soil. This case is the first time that the court literally deals with section 103 of the US Code since its adoption in 1952. The court begins by going through the history of the patent laws, and points out that though the language of the patent laws have changed completely since the 1850s by congress, the court believes it represents the same standard.

When the court reviewed the Patent Act of 1952, it states that the distinction emphasized by Congress was "nonobviousness", which was to be used as the operative test rather than the less definite "invention" language that was a result of Hotchkiss v. Greenwood. Section 103 of Title 35 of the US code is the first statutory expression of an additional requirement for patentability. Under 103, the obviousness or nonobviousness of the subject matter is determined by "the scope and content of prior art are to be determined, differences between prior art and claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved". While these are the primary considerations, secondary considerations such as "commercial success, long felt but unsolved needs, and failures of others" ''may possibly'' be relevant although not statutorily required.

The patent in question([http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2627798]) made several slight changes to a previous patent([http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2493811]) which amounted to moving the plow shank so that it is situated underneath the lower hinge plate with an attaching rod at the end of it rather than sandwiched between the upper and lower hinge plates. The motivation for this change was the fact that when the plow shank was sandwiched between the hinge plates and rotated in its upward position, the shank would apply pressure to the upper plate and cause damage to a part of the plow that was hard to repair.

In the end, the court found no operative mechanical distinctions or nonobvious differences between Graham's '798 patent and the prior art (his '811 patent as well as other plows such as those made by Glencoe). The "free flexing" qualities of the shank due to it being placed below the lower hinge plate and argued for as a crucial difference by the petitioners wasn't even referenced in the patent application. Additionally, it was found that such free flexing played a very small part in the plow as a whole, and that if mechanics wanted to prevent the sandwiching of the shank between the hinge plates while maintaining its rotating capabilities, the obvious location would have been to place it below the lower hinge plate.

===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.

The patent in question in this case regards the first practical, water-activated "wet" battery filed by Adams. The object of this battery was to provide a constant voltage and current without the use of acids. Additionally, the battery operates without generation dangerous fumes, is light in weight with respect to capacity, and can be manufactured and distributed in a dry condition and is activated by adding water. The battery could also perform over a very wide range of temperatures.

When Adams brought his battery to the US Navy, they did not believe his claims and decided the battery was not workable. About two years later however, the government concluded the battery was feasible and entered into contracts with various battery companies to produce it without notifying Adams, leading to this lawsuit.

In defense, the US Government challenged the patent under sections 102 (novelty) and 103 (non-obviousness). Again, it is the second of these challenges that are relevant for this section. The government states that the electrodes in Adam's battery were merely substitutions of pre-existing battery designs used by prior art. If this was the case, the patent could have been invalidated in a similar way to the Hotchkiss patent discussed earlier. However, it was found by the court that Adam's battery "wholly unexpectedly" demonstrates several operating advantages over other batteries that a simple substitution of materials wouldn't have predicted. The court concludes that though the individual elements of Adams' battery were well known in prior art, combining them led to unexpected results that went ''against'' the mainstream scientific view. Therefore, the court rules that Adams' battery was non-obvious because it required that a person skilled in the prior art ignore consenting thoughts that batteries which continued to operate on an open circuit and heated during normal use were impractical as well as ignore the thought that water-activated batteries were only successful when combined with electrolytes "detrimental to the use of magnesium".

===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==

The idea of the "inventive step" first came about in Hotchkiss v. Greenwood when the court realized that in order for an invention to be patentable, it must display that it is more than just "new or useful." The court decided that simply substituting one material for another, even if it was an improvement of the work, didn't have an inventive step. Inventiveness was determined by the test if the new device required "more ingenuity and skill than possessed by an ordinary mechanic."

The "inventive step" eventually transformed into the idea of "non-obviousness", which was codified in 1952 in 35 US 103.

==Relationship with Novelty==

It isn't enough that an invention or improvement thereupon be non-obvious, in order to obtain a patent, it must still conform to all the regulations of 35 US 102. That is to say, an invention must be both novel ''and'' non-obvious. In light of this, the validity of a patent can be attacked under both terms.

==Nonobviousness vs. Invention==
==Secondary Considerations==

As mentioned previously, the Supreme Court case Graham v. John Deere was the first case to deal explicitly with section 103 of the US code. Within this case, Justice Clark reminds the court that non-obviousness is one of three conditions that must be satisfied in order to obtain a patent. Determining non-obviousness can't just be a matter of opinion, but must be based on law. With that in mind, primary considerations for determining non-obviousness are the scope and content of prior art, the differences between prior art and the claims at issue, and the level of ordinary skill in the relevant art.

Justice Clark makes a distinction between these and secondary considerations such as commercial success, long felt but unsolved needs, and failure of others. These secondary considerations can help give light to the circumstances, but they are not grounded in statutes and cannot solely be used to determine non-obviousness.

This distinction between primary and secondary considerations can be grounded in Learned Hands conclusion in Lyon v. Bausch & Lomb. In this case, Learned Hand makes obvious that the scope of the prior art doesn't include Lyon's method of keeping the surface heated while applying the coating and that more than ordinary skill was required in creating this coating on the glass as several inventors had tried similar things and failed or abandoned their project. With this in mind, Hand then goes on to reference what we now call secondary considerations and states the fact that "the most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection;...number of attempts, none satisfactory;...supplanted the existing practice and occupied substantially the whole field" and that he sees no combination of evidence that could more clearly show that the change had not been obvious.

==Ordinary Skill in the Art==

Originally expressed in the bill of exceptions in Hotchkiss v. Greenwood, if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void" became a test used by the court to determine patentability. This test eventually became codified in Title 35 Section 103 of the US code, which requires that a patentable invention or improvement must be non-obvious. The idea is that patents are supposed to bring forth progress in science and the arts, and if something is obvious to a "mechanic of ordinary skill", than patenting such an "invention" reduces the knowledge available to skilled men.

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

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

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

[[South Corp. v. US]]

Homework 4 - ewolz

2011-02-09T02:23:25Z

Ewolz: /* 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.

In Hotchkiss v. Greenwood, Hotchkiss alleged that he had invented a new and useful improvement by making knobs of clay and porcelain with dovetail cavities used to assist in attaching the knobs to the shank and spindle. The court found however that while there was no evidence of clay knobs being made with dovetail cavities, the art of making knobs of clay was "known and practiced". Likewise, dovetail cavities were not novel either, having been the mode of connecting doorknobs of wood or metal in the United States for many years.

It was found that simply substituting one material for another without any further changes was not an invention and not patentable. Within this case, it was said that if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void". By substituting clay for wood or metal, it was found that the improvement of the work (creating better knobs cheaper) was simply the work of the skillful mechanic and not the inventor.

===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.

In this court case, the patent in question claims invention of a cashier counter with a three-sided frame/rack which when pushed or pulled would move groceries deposited within. The frame is kept on the counter by guides. The District Court recognized that each element in the device was known in prior-art, yet the combination of a counter with an extension to receive the unloading tray was a novel feature and thus qualifies as a "new and useful combination". The Court of Appeals agreed that this counter qualified as an invention, and pointed at the counters commercial success as evidence of it being a new invention.

The Supreme Court however decided otherwise. Initially, it reviewed the extension of the counter, which the lower courts perceived as an invention. The Supreme Court decided the extension was not an invention for two reasons. One, it was not mentioned in the claims of the patent, and two, even if it was mentioned in the claims, the length of the counter has traditionally been whatever length needed by the merchant. The Supreme Court then reviews the fact that the "invention" is a combination of previously known elements. The court states that "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable". As all the parts within the merchant counter performed the same function, the act of giving a patent to this device would "withdraw what already is known into the field of its monopoly and diminish the resources available to skillful men".

The court then addresses the evidence used by the Court of Appeals and respondents in saying this device is patentable due to it fulfilling a long-felt want and its commercial success. The Supreme Court explicitly states that "commercial success without invention will not make patentability".

Lastly, Justice Douglas discusses the original purpose of patents, and makes a distinction between "inventions" and "gadgets". Justice Douglas recalls that patents serve to "promote the progress of science and useful arts", and that the reward for doing so was a limited time monopoly given to the inventor for making a contribution to scientific knowledge. As a result, the courts have commonly taken "inventive genius" as the test for patentability. He states the intention of patents were not to provide monopolies for "every trifling device, every shadow of shade of an idea" which would occur to any skilled mechanic.

===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

This case was brought to court shortly after 35 US 103 was adopted in 1952, which attempted to codify the standard of non-obviousness that had been in use by the courts since Hotchkiss v. Greenwood. This case dealt with two main questions, the first being whether or not the invention had been disclosed in any earlier patent, and secondly, whether or not Lyon's contributions would support a patent. Of these two questions, it is the second one that needs to be focused on as it is the one that deals with non-obviousness while the former deals with novelty.

Lyon's process for coating optical elements([http://www.google.com/patents/about?id=zPdfAAAAEBAJ&dq=2398382/ 2398382]) consisted of two steps. The first consisted of heating an optical surface in a vacuum until water and grease on the surface have evaporated. The second was to vaporize an inorganic salt within the vacuum while keeping the optical surface heated. Of all the similar patents found, none suggested that the optical surface should be kept heated while being coated. It is here that Lyon makes his contribution to the process-keeping the optical surface heated while being coated.

In order to show that Lyon's process was non-obvious, Learned Hand points to the fact that "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". Evidence existed that showed people searched for a solution for many years but could not find one. Perhaps most interesting, even when experts in the field attempted to apply the coating to the heated surface, they were unable to get it to work completely (Hewlett) and eventually abandoned further work in this area. This abandonment gives more credence to the non-obviousness of Lyon's addition to the process, as not only did the abandoned project "fail to advance the art; it put the process among those efforts that are proved useless".

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

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

In this case, two District Courts ruled in opposite ways which led to the intervention of the Supreme Court. This case dealt with improvements to plows made by Graham that reduce damage to plow shanks when they come across obstructions such as rocks in the soil. This case is the first time that the court literally deals with section 103 of the US Code since its adoption in 1952. The court begins by going through the history of the patent laws, and points out that though the language of the patent laws have changed completely since the 1850s by congress, the court believes it represents the same standard.

When the court reviewed the Patent Act of 1952, it states that the distinction emphasized by Congress was "nonobviousness", which was to be used as the operative test rather than the less definite "invention" language that was a result of Hotchkiss v. Greenwood. Section 103 of Title 35 of the US code is the first statutory expression of an additional requirement for patentability. Under 103, the obviousness or nonobviousness of the subject matter is determined by "the scope and content of prior art are to be determined, differences between prior art and claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved". While these are the primary considerations, secondary considerations such as "commercial success, long felt but unsolved needs, and failures of others" ''may possibly'' be relevant although not statutorily required.

The patent in question([http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2627798]) made several slight changes to a previous patent([http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2493811]) which amounted to moving the plow shank so that it is situated underneath the lower hinge plate with an attaching rod at the end of it rather than sandwiched between the upper and lower hinge plates. The motivation for this change was the fact that when the plow shank was sandwiched between the hinge plates and rotated in its upward position, the shank would apply pressure to the upper plate and cause damage to a part of the plow that was hard to repair.

In the end, the court found no operative mechanical distinctions or nonobvious differences between Graham's '798 patent and the prior art (his '811 patent as well as other plows such as those made by Glencoe). The "free flexing" qualities of the shank due to it being placed below the lower hinge plate and argued for as a crucial difference by the petitioners wasn't even referenced in the patent application. Additionally, it was found that such free flexing played a very small part in the plow as a whole, and that if mechanics wanted to prevent the sandwiching of the shank between the hinge plates while maintaining its rotating capabilities, the obvious location would have been to place it below the lower hinge plate.

===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.

The patent in question in this case regards the first practical, water-activated "wet" battery filed by Adams. The object of this battery was to provide a constant voltage and current without the use of acids. Additionally, the battery operates without generation dangerous fumes, is light in weight with respect to capacity, and can be manufactured and distributed in a dry condition and is activated by adding water. The battery could also perform over a very wide range of temperatures.

When Adams brought his battery to the US Navy, they did not believe his claims and decided the battery was not workable. About two years later however, the government concluded the battery was feasible and entered into contracts with various battery companies to produce it without notifying Adams, leading to this lawsuit.

In defense, the US Government challenged the patent under sections 102 (novelty) and 103 (non-obviousness). Again, it is the second of these challenges that are relevant for this section. The government states that the electrodes in Adam's battery were merely substitutions of pre-existing battery designs used by prior art. If this was the case, the patent could have been invalidated in a similar way to the Hotchkiss patent discussed earlier. However, it was found by the court that Adam's battery "wholly unexpectedly" demonstrates several operating advantages over other batteries that a simple substitution of materials wouldn't have predicted. The court concludes that though the individual elements of Adams' battery were well known in prior art, combining them led to unexpected results that went ''against'' the mainstream scientific view. Therefore, the court rules that Adams' battery was non-obvious because it required that a person skilled in the prior art ignore consenting thoughts that batteries which continued to operate on an open circuit and heated during normal use were impractical as well as ignore the thought that water-activated batteries were only successful when combined with electrolytes "detrimental to the use of magnesium".

===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==

The idea of the "inventive step" first came about in Hotchkiss v. Greenwood when the court realized that in order for an invention to be patentable, it must display that it is more than just "new or useful." The court decided that simply substituting one material for another, even if it was an improvement of the work, didn't have an inventive step. Inventiveness was determined by the test if the new device required "more ingenuity and skill than possessed by an ordinary mechanic."

The "inventive step" eventually transformed into the idea of "non-obviousness", which was codified in 1952 in 35 US 103.

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==

As mentioned previously, the Supreme Court case Graham v. John Deere was the first case to deal explicitly with section 103 of the US code. Within this case, Justice Clark reminds the court that non-obviousness is one of three conditions that must be satisfied in order to obtain a patent. Determining non-obviousness can't just be a matter of opinion, but must be based on law. With that in mind, primary considerations for determining non-obviousness are the scope and content of prior art, the differences between prior art and the claims at issue, and the level of ordinary skill in the relevant art.

Justice Clark makes a distinction between these and secondary considerations such as commercial success, long felt but unsolved needs, and failure of others. These secondary considerations can help give light to the circumstances, but they are not grounded in statutes and cannot solely be used to determine non-obviousness.

This distinction between primary and secondary considerations can be grounded in Learned Hands conclusion in Lyon v. Bausch & Lomb. In this case, Learned Hand makes obvious that the scope of the prior art doesn't include Lyon's method of keeping the surface heated while applying the coating and that more than ordinary skill was required in creating this coating on the glass as several inventors had tried similar things and failed or abandoned their project. With this in mind, Hand then goes on to reference what we now call secondary considerations and states the fact that "the most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection;...number of attempts, none satisfactory;...supplanted the existing practice and occupied substantially the whole field" and that he sees no combination of evidence that could more clearly show that the change had not been obvious.

==Ordinary Skill in the Art==

Originally expressed in the bill of exceptions in Hotchkiss v. Greenwood, if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void" became a test used by the court to determine patentability. This test eventually became codified in Title 35 Section 103 of the US code, which requires that a patentable invention or improvement must be non-obvious. The idea is that patents are supposed to bring forth progress in science and the arts, and if something is obvious to a "mechanic of ordinary skill", than patenting such an "invention" reduces the knowledge available to skilled men.

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

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

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

[[South Corp. v. US]]

Homework 4 - ewolz

2011-02-09T02:21:52Z

Ewolz: /* 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.

In Hotchkiss v. Greenwood, Hotchkiss alleged that he had invented a new and useful improvement by making knobs of clay and porcelain with dovetail cavities used to assist in attaching the knobs to the shank and spindle. The court found however that while there was no evidence of clay knobs being made with dovetail cavities, the art of making knobs of clay was "known and practiced". Likewise, dovetail cavities were not novel either, having been the mode of connecting doorknobs of wood or metal in the United States for many years.

It was found that simply substituting one material for another without any further changes was not an invention and not patentable. Within this case, it was said that if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void". By substituting clay for wood or metal, it was found that the improvement of the work (creating better knobs cheaper) was simply the work of the skillful mechanic and not the inventor.

===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.

In this court case, the patent in question claims invention of a cashier counter with a three-sided frame/rack which when pushed or pulled would move groceries deposited within. The frame is kept on the counter by guides. The District Court recognized that each element in the device was known in prior-art, yet the combination of a counter with an extension to receive the unloading tray was a novel feature and thus qualifies as a "new and useful combination". The Court of Appeals agreed that this counter qualified as an invention, and pointed at the counters commercial success as evidence of it being a new invention.

The Supreme Court however decided otherwise. Initially, it reviewed the extension of the counter, which the lower courts perceived as an invention. The Supreme Court decided the extension was not an invention for two reasons. One, it was not mentioned in the claims of the patent, and two, even if it was mentioned in the claims, the length of the counter has traditionally been whatever length needed by the merchant. The Supreme Court then reviews the fact that the "invention" is a combination of previously known elements. The court states that "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable". As all the parts within the merchant counter performed the same function, the act of giving a patent to this device would "withdraw what already is known into the field of its monopoly and diminish the resources available to skillful men".

The court then addresses the evidence used by the Court of Appeals and respondents in saying this device is patentable due to it fulfilling a long-felt want and its commercial success. The Supreme Court explicitly states that "commercial success without invention will not make patentability".

Lastly, Justice Douglas discusses the original purpose of patents, and makes a distinction between "inventions" and "gadgets". Justice Douglas recalls that patents serve to "promote the progress of science and useful arts", and that the reward for doing so was a limited time monopoly given to the inventor for making a contribution to scientific knowledge. As a result, the courts have commonly taken "inventive genius" as the test for patentability. He states the intention of patents were not to provide monopolies for "every trifling device, every shadow of shade of an idea" which would occur to any skilled mechanic.

===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

This case was brought to court shortly after 35 US 103 was adopted in 1952, which attempted to codify the standard of non-obviousness that had been in use by the courts since Hotchkiss v. Greenwood. This case dealt with two main questions, the first being whether or not the invention had been disclosed in any earlier patent, and secondly, whether or not Lyon's contributions would support a patent. Of these two questions, it is the second one that needs to be focused on as it is the one that deals with non-obviousness while the former deals with novelty.

Lyon's process for coating optical elements([http://www.google.com/patents/about?id=zPdfAAAAEBAJ&dq=2398382/ 2398382]) consisted of two steps. The first consisted of heating an optical surface in a vacuum until water and grease on the surface have evaporated. The second was to vaporize an inorganic salt within the vacuum while keeping the optical surface heated. Of all the similar patents found, none suggested that the optical surface should be kept heated while being coated. It is here that Lyon makes his contribution to the process-keeping the optical surface heated while being coated.

In order to show that Lyon's process was non-obvious, Learned Hand points to the fact that "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". Evidence existed that showed people searched for a solution for many years but could not find one. Perhaps most interesting, even when experts in the field attempted to apply the coating to the heated surface, they were unable to get it to work completely (Hewlett) and eventually abandoned further work in this area. This abandonment gives more credence to the non-obviousness of Lyon's addition to the process, as not only did the abandoned project "fail to advance the art; it put the process among those efforts that are proved useless".

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

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

In this case, two District Courts ruled in opposite ways which led to the intervention of the Supreme Court. This case dealt with improvements to plows made by Graham that reduce damage to plow shanks when they come across obstructions such as rocks in the soil. This case is the first time that the court literally deals with section 103 of the US Code since its adoption in 1952. The court begins by going through the history of the patent laws, and points out that though the language of the patent laws have changed completely since the 1850s by congress, the court believes it represents the same standard.

When the court reviewed the Patent Act of 1952, it states that the distinction emphasized by Congress was "nonobviousness", which was to be used as the operative test rather than the less definite "invention" language that was a result of Hotchkiss v. Greenwood. Section 103 of Title 35 of the US code is the first statutory expression of an additional requirement for patentability. Under 103, the obviousness or nonobviousness of the subject matter is determined by "the scope and content of prior art are to be determined, differences between prior art and claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved". While these are the primary considerations, secondary considerations such as "commercial success, long felt but unsolved needs, and failures of others" ''may possibly'' be relevant although not statutorily required.

The patent in question([http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2627798]) made several slight changes to a previous patent([http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2493811]) which amounted to moving the plow shank so that it is situated underneath the lower hinge plate with an attaching rod at the end of it rather than sandwiched between the upper and lower hinge plates. The motivation for this change was the fact that when the plow shank was sandwiched between the hinge plates and rotated in its upward position, the shank would apply pressure to the upper plate and cause damage to a part of the plow that was hard to repair.

In the end, the court found no operative mechanical distinctions or nonobvious differences between Graham's '798 patent and the prior art (his '811 patent as well as other plows such as those made by Glencoe). The "free flexing" qualities of the shank due to it being placed below the lower hinge plate and argued for as a crucial difference by the petitioners wasn't even referenced in the patent application. Additionally, it was found that such free flexing played a very small part in the plow as a whole, and that if mechanics wanted to prevent the sandwiching of the shank between the hinge plates while maintaining its rotating capabilities, the obvious location would have been to place it below the lower hinge plate.

===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.

The patent in question in this case regards the first practical, water-activated "wet" battery filed by Adams. The object of this battery was to provide a constant voltage and current without the use of acids. Additionally, the battery operates without generation dangerous fumes, is light in weight with respect to capacity, and can be manufactured and distributed in a dry condition and is activated by adding water. The battery could also perform over a very wide range of temperatures.

When Adams brought his battery to the US Navy, they did not believe his claims and decided the battery was not workable. About two years later however, the government concluded the battery was feasible and entered into contracts with various battery companies to produce it without notifying Adams, leading to this lawsuit.

In defense, the US Government challenged the patent under sections 102 (novelty) and 103 (non-obviousness). Again, it is the second of these challenges that are relevant for this section. The government states that the electrodes in Adam's battery were merely substitutions of pre-existing battery designs used by prior art. If this was the case, the patent could have been invalidated in a similar way to the Hotchkiss patent discussed earlier. However, it was found by the court that Adam's battery "wholly unexpectedly" demonstrates several operating advantages over other batteries that a simple substitution of materials wouldn't have predicted. The court concludes that though the individual elements of Adams' battery were well known in prior art, combining them led to unexpected results that went ''against'' the mainstream scientific view. Therefore, the court rules that Adams' battery was non-obvious because it required that a person skilled in the prior art ignore consenting thoughts that batteries which continued to operate on an open circuit and heated during normal use were impractical as well as ignore the thought that water-activated batteries were only successful when combined with electrolytes "detrimental to the use of magnesium".

===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==

The idea of the "inventive step" first came about in Hotchkiss v. Greenwood when the court realized that in order for an invention to be patentable, it must display that it is more than just "new or useful." The court decided that simply substituting one material for another, even if it was an improvement of the work, didn't have an inventive step. Inventiveness was determined by the test if the new device required "more ingenuity and skill than possessed by an ordinary mechanic."

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==

As mentioned previously, the Supreme Court case Graham v. John Deere was the first case to deal explicitly with section 103 of the US code. Within this case, Justice Clark reminds the court that non-obviousness is one of three conditions that must be satisfied in order to obtain a patent. Determining non-obviousness can't just be a matter of opinion, but must be based on law. With that in mind, primary considerations for determining non-obviousness are the scope and content of prior art, the differences between prior art and the claims at issue, and the level of ordinary skill in the relevant art.

Justice Clark makes a distinction between these and secondary considerations such as commercial success, long felt but unsolved needs, and failure of others. These secondary considerations can help give light to the circumstances, but they are not grounded in statutes and cannot solely be used to determine non-obviousness.

This distinction between primary and secondary considerations can be grounded in Learned Hands conclusion in Lyon v. Bausch & Lomb. In this case, Learned Hand makes obvious that the scope of the prior art doesn't include Lyon's method of keeping the surface heated while applying the coating and that more than ordinary skill was required in creating this coating on the glass as several inventors had tried similar things and failed or abandoned their project. With this in mind, Hand then goes on to reference what we now call secondary considerations and states the fact that "the most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection;...number of attempts, none satisfactory;...supplanted the existing practice and occupied substantially the whole field" and that he sees no combination of evidence that could more clearly show that the change had not been obvious.

==Ordinary Skill in the Art==

Originally expressed in the bill of exceptions in Hotchkiss v. Greenwood, if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void" became a test used by the court to determine patentability. This test eventually became codified in Title 35 Section 103 of the US code, which requires that a patentable invention or improvement must be non-obvious. The idea is that patents are supposed to bring forth progress in science and the arts, and if something is obvious to a "mechanic of ordinary skill", than patenting such an "invention" reduces the knowledge available to skilled men.

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

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

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

[[South Corp. v. US]]

Homework 4 - ewolz

2011-02-09T02:08:23Z

Ewolz: /* Secondary Considerations */

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

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

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

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

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

:But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

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

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

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

In Hotchkiss v. Greenwood, Hotchkiss alleged that he had invented a new and useful improvement by making knobs of clay and porcelain with dovetail cavities used to assist in attaching the knobs to the shank and spindle. The court found however that while there was no evidence of clay knobs being made with dovetail cavities, the art of making knobs of clay was "known and practiced". Likewise, dovetail cavities were not novel either, having been the mode of connecting doorknobs of wood or metal in the United States for many years.

It was found that simply substituting one material for another without any further changes was not an invention and not patentable. Within this case, it was said that if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void". By substituting clay for wood or metal, it was found that the improvement of the work (creating better knobs cheaper) was simply the work of the skillful mechanic and not the inventor.

===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.

In this court case, the patent in question claims invention of a cashier counter with a three-sided frame/rack which when pushed or pulled would move groceries deposited within. The frame is kept on the counter by guides. The District Court recognized that each element in the device was known in prior-art, yet the combination of a counter with an extension to receive the unloading tray was a novel feature and thus qualifies as a "new and useful combination". The Court of Appeals agreed that this counter qualified as an invention, and pointed at the counters commercial success as evidence of it being a new invention.

The Supreme Court however decided otherwise. Initially, it reviewed the extension of the counter, which the lower courts perceived as an invention. The Supreme Court decided the extension was not an invention for two reasons. One, it was not mentioned in the claims of the patent, and two, even if it was mentioned in the claims, the length of the counter has traditionally been whatever length needed by the merchant. The Supreme Court then reviews the fact that the "invention" is a combination of previously known elements. The court states that "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable". As all the parts within the merchant counter performed the same function, the act of giving a patent to this device would "withdraw what already is known into the field of its monopoly and diminish the resources available to skillful men".

The court then addresses the evidence used by the Court of Appeals and respondents in saying this device is patentable due to it fulfilling a long-felt want and its commercial success. The Supreme Court explicitly states that "commercial success without invention will not make patentability".

Lastly, Justice Douglas discusses the original purpose of patents, and makes a distinction between "inventions" and "gadgets". Justice Douglas recalls that patents serve to "promote the progress of science and useful arts", and that the reward for doing so was a limited time monopoly given to the inventor for making a contribution to scientific knowledge. As a result, the courts have commonly taken "inventive genius" as the test for patentability. He states the intention of patents were not to provide monopolies for "every trifling device, every shadow of shade of an idea" which would occur to any skilled mechanic.

===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

This case was brought to court shortly after 35 US 103 was adopted in 1952, which attempted to codify the standard of non-obviousness that had been in use by the courts since Hotchkiss v. Greenwood. This case dealt with two main questions, the first being whether or not the invention had been disclosed in any earlier patent, and secondly, whether or not Lyon's contributions would support a patent. Of these two questions, it is the second one that needs to be focused on as it is the one that deals with non-obviousness while the former deals with novelty.

Lyon's process for coating optical elements([http://www.google.com/patents/about?id=zPdfAAAAEBAJ&dq=2398382/ 2398382]) consisted of two steps. The first consisted of heating an optical surface in a vacuum until water and grease on the surface have evaporated. The second was to vaporize an inorganic salt within the vacuum while keeping the optical surface heated. Of all the similar patents found, none suggested that the optical surface should be kept heated while being coated. It is here that Lyon makes his contribution to the process-keeping the optical surface heated while being coated.

In order to show that Lyon's process was non-obvious, Learned Hand points to the fact that "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". Evidence existed that showed people searched for a solution for many years but could not find one. Perhaps most interesting, even when experts in the field attempted to apply the coating to the heated surface, they were unable to get it to work completely (Hewlett) and eventually abandoned further work in this area. This abandonment gives more credence to the non-obviousness of Lyon's addition to the process, as not only did the abandoned project "fail to advance the art; it put the process among those efforts that are proved useless".

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

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

In this case, two District Courts ruled in opposite ways which led to the intervention of the Supreme Court. This case dealt with improvements to plows made by Graham that reduce damage to plow shanks when they come across obstructions such as rocks in the soil. This case is the first time that the court literally deals with section 103 of the US Code since its adoption in 1952. The court begins by going through the history of the patent laws, and points out that though the language of the patent laws have changed completely since the 1850s by congress, the court believes it represents the same standard.

When the court reviewed the Patent Act of 1952, it states that the distinction emphasized by Congress was "nonobviousness", which was to be used as the operative test rather than the less definite "invention" language that was a result of Hotchkiss v. Greenwood. Section 103 of Title 35 of the US code is the first statutory expression of an additional requirement for patentability. Under 103, the obviousness or nonobviousness of the subject matter is determined by "the scope and content of prior art are to be determined, differences between prior art and claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved". While these are the primary considerations, secondary considerations such as "commercial success, long felt but unsolved needs, and failures of others" ''may possibly'' be relevant although not statutorily required.

The patent in question([http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2627798]) made several slight changes to a previous patent([http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2493811]) which amounted to moving the plow shank so that it is situated underneath the lower hinge plate with an attaching rod at the end of it rather than sandwiched between the upper and lower hinge plates. The motivation for this change was the fact that when the plow shank was sandwiched between the hinge plates and rotated in its upward position, the shank would apply pressure to the upper plate and cause damage to a part of the plow that was hard to repair.

In the end, the court found no operative mechanical distinctions or nonobvious differences between Graham's '798 patent and the prior art (his '811 patent as well as other plows such as those made by Glencoe). The "free flexing" qualities of the shank due to it being placed below the lower hinge plate and argued for as a crucial difference by the petitioners wasn't even referenced in the patent application. Additionally, it was found that such free flexing played a very small part in the plow as a whole, and that if mechanics wanted to prevent the sandwiching of the shank between the hinge plates while maintaining its rotating capabilities, the obvious location would have been to place it below the lower hinge plate.

===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.

The patent in question in this case regards the first practical, water-activated "wet" battery filed by Adams. The object of this battery was to provide a constant voltage and current without the use of acids. Additionally, the battery operates without generation dangerous fumes, is light in weight with respect to capacity, and can be manufactured and distributed in a dry condition and is activated by adding water. The battery could also perform over a very wide range of temperatures.

When Adams brought his battery to the US Navy, they did not believe his claims and decided the battery was not workable. About two years later however, the government concluded the battery was feasible and entered into contracts with various battery companies to produce it without notifying Adams, leading to this lawsuit.

In defense, the US Government challenged the patent under sections 102 (novelty) and 103 (non-obviousness). Again, it is the second of these challenges that are relevant for this section. The government states that the electrodes in Adam's battery were merely substitutions of pre-existing battery designs used by prior art. If this was the case, the patent could have been invalidated in a similar way to the Hotchkiss patent discussed earlier. However, it was found by the court that Adam's battery "wholly unexpectedly" demonstrates several operating advantages over other batteries that a simple substitution of materials wouldn't have predicted. The court concludes that though the individual elements of Adams' battery were well known in prior art, combining them led to unexpected results that went ''against'' the mainstream scientific view. Therefore, the court rules that Adams' battery was non-obvious because it required that a person skilled in the prior art ignore consenting thoughts that batteries which continued to operate on an open circuit and heated during normal use were impractical as well as ignore the thought that water-activated batteries were only successful when combined with electrolytes "detrimental to the use of magnesium".

===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==

As mentioned previously, the Supreme Court case Graham v. John Deere was the first case to deal explicitly with section 103 of the US code. Within this case, Justice Clark reminds the court that non-obviousness is one of three conditions that must be satisfied in order to obtain a patent. Determining non-obviousness can't just be a matter of opinion, but must be based on law. With that in mind, primary considerations for determining non-obviousness are the scope and content of prior art, the differences between prior art and the claims at issue, and the level of ordinary skill in the relevant art.

Justice Clark makes a distinction between these and secondary considerations such as commercial success, long felt but unsolved needs, and failure of others. These secondary considerations can help give light to the circumstances, but they are not grounded in statutes and cannot solely be used to determine non-obviousness.

This distinction between primary and secondary considerations can be grounded in Learned Hands conclusion in Lyon v. Bausch & Lomb. In this case, Learned Hand makes obvious that the scope of the prior art doesn't include Lyon's method of keeping the surface heated while applying the coating and that more than ordinary skill was required in creating this coating on the glass as several inventors had tried similar things and failed or abandoned their project. With this in mind, Hand then goes on to reference what we now call secondary considerations and states the fact that "the most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection;...number of attempts, none satisfactory;...supplanted the existing practice and occupied substantially the whole field" and that he sees no combination of evidence that could more clearly show that the change had not been obvious.

==Ordinary Skill in the Art==

Originally expressed in the bill of exceptions in Hotchkiss v. Greenwood, if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void" became a test used by the court to determine patentability. This test eventually became codified in Title 35 Section 103 of the US code, which requires that a patentable invention or improvement must be non-obvious. The idea is that patents are supposed to bring forth progress in science and the arts, and if something is obvious to a "mechanic of ordinary skill", than patenting such an "invention" reduces the knowledge available to skilled men.

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

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

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

[[South Corp. v. US]]

Homework 4 - ewolz

2011-02-09T02:01:21Z

Ewolz: /* Secondary Considerations */

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

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

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

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

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

:But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

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

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

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

In Hotchkiss v. Greenwood, Hotchkiss alleged that he had invented a new and useful improvement by making knobs of clay and porcelain with dovetail cavities used to assist in attaching the knobs to the shank and spindle. The court found however that while there was no evidence of clay knobs being made with dovetail cavities, the art of making knobs of clay was "known and practiced". Likewise, dovetail cavities were not novel either, having been the mode of connecting doorknobs of wood or metal in the United States for many years.

It was found that simply substituting one material for another without any further changes was not an invention and not patentable. Within this case, it was said that if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void". By substituting clay for wood or metal, it was found that the improvement of the work (creating better knobs cheaper) was simply the work of the skillful mechanic and not the inventor.

===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.

In this court case, the patent in question claims invention of a cashier counter with a three-sided frame/rack which when pushed or pulled would move groceries deposited within. The frame is kept on the counter by guides. The District Court recognized that each element in the device was known in prior-art, yet the combination of a counter with an extension to receive the unloading tray was a novel feature and thus qualifies as a "new and useful combination". The Court of Appeals agreed that this counter qualified as an invention, and pointed at the counters commercial success as evidence of it being a new invention.

The Supreme Court however decided otherwise. Initially, it reviewed the extension of the counter, which the lower courts perceived as an invention. The Supreme Court decided the extension was not an invention for two reasons. One, it was not mentioned in the claims of the patent, and two, even if it was mentioned in the claims, the length of the counter has traditionally been whatever length needed by the merchant. The Supreme Court then reviews the fact that the "invention" is a combination of previously known elements. The court states that "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable". As all the parts within the merchant counter performed the same function, the act of giving a patent to this device would "withdraw what already is known into the field of its monopoly and diminish the resources available to skillful men".

The court then addresses the evidence used by the Court of Appeals and respondents in saying this device is patentable due to it fulfilling a long-felt want and its commercial success. The Supreme Court explicitly states that "commercial success without invention will not make patentability".

Lastly, Justice Douglas discusses the original purpose of patents, and makes a distinction between "inventions" and "gadgets". Justice Douglas recalls that patents serve to "promote the progress of science and useful arts", and that the reward for doing so was a limited time monopoly given to the inventor for making a contribution to scientific knowledge. As a result, the courts have commonly taken "inventive genius" as the test for patentability. He states the intention of patents were not to provide monopolies for "every trifling device, every shadow of shade of an idea" which would occur to any skilled mechanic.

===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

This case was brought to court shortly after 35 US 103 was adopted in 1952, which attempted to codify the standard of non-obviousness that had been in use by the courts since Hotchkiss v. Greenwood. This case dealt with two main questions, the first being whether or not the invention had been disclosed in any earlier patent, and secondly, whether or not Lyon's contributions would support a patent. Of these two questions, it is the second one that needs to be focused on as it is the one that deals with non-obviousness while the former deals with novelty.

Lyon's process for coating optical elements([http://www.google.com/patents/about?id=zPdfAAAAEBAJ&dq=2398382/ 2398382]) consisted of two steps. The first consisted of heating an optical surface in a vacuum until water and grease on the surface have evaporated. The second was to vaporize an inorganic salt within the vacuum while keeping the optical surface heated. Of all the similar patents found, none suggested that the optical surface should be kept heated while being coated. It is here that Lyon makes his contribution to the process-keeping the optical surface heated while being coated.

In order to show that Lyon's process was non-obvious, Learned Hand points to the fact that "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". Evidence existed that showed people searched for a solution for many years but could not find one. Perhaps most interesting, even when experts in the field attempted to apply the coating to the heated surface, they were unable to get it to work completely (Hewlett) and eventually abandoned further work in this area. This abandonment gives more credence to the non-obviousness of Lyon's addition to the process, as not only did the abandoned project "fail to advance the art; it put the process among those efforts that are proved useless".

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

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

In this case, two District Courts ruled in opposite ways which led to the intervention of the Supreme Court. This case dealt with improvements to plows made by Graham that reduce damage to plow shanks when they come across obstructions such as rocks in the soil. This case is the first time that the court literally deals with section 103 of the US Code since its adoption in 1952. The court begins by going through the history of the patent laws, and points out that though the language of the patent laws have changed completely since the 1850s by congress, the court believes it represents the same standard.

When the court reviewed the Patent Act of 1952, it states that the distinction emphasized by Congress was "nonobviousness", which was to be used as the operative test rather than the less definite "invention" language that was a result of Hotchkiss v. Greenwood. Section 103 of Title 35 of the US code is the first statutory expression of an additional requirement for patentability. Under 103, the obviousness or nonobviousness of the subject matter is determined by "the scope and content of prior art are to be determined, differences between prior art and claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved". While these are the primary considerations, secondary considerations such as "commercial success, long felt but unsolved needs, and failures of others" ''may possibly'' be relevant although not statutorily required.

The patent in question([http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2627798]) made several slight changes to a previous patent([http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2493811]) which amounted to moving the plow shank so that it is situated underneath the lower hinge plate with an attaching rod at the end of it rather than sandwiched between the upper and lower hinge plates. The motivation for this change was the fact that when the plow shank was sandwiched between the hinge plates and rotated in its upward position, the shank would apply pressure to the upper plate and cause damage to a part of the plow that was hard to repair.

In the end, the court found no operative mechanical distinctions or nonobvious differences between Graham's '798 patent and the prior art (his '811 patent as well as other plows such as those made by Glencoe). The "free flexing" qualities of the shank due to it being placed below the lower hinge plate and argued for as a crucial difference by the petitioners wasn't even referenced in the patent application. Additionally, it was found that such free flexing played a very small part in the plow as a whole, and that if mechanics wanted to prevent the sandwiching of the shank between the hinge plates while maintaining its rotating capabilities, the obvious location would have been to place it below the lower hinge plate.

===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.

The patent in question in this case regards the first practical, water-activated "wet" battery filed by Adams. The object of this battery was to provide a constant voltage and current without the use of acids. Additionally, the battery operates without generation dangerous fumes, is light in weight with respect to capacity, and can be manufactured and distributed in a dry condition and is activated by adding water. The battery could also perform over a very wide range of temperatures.

When Adams brought his battery to the US Navy, they did not believe his claims and decided the battery was not workable. About two years later however, the government concluded the battery was feasible and entered into contracts with various battery companies to produce it without notifying Adams, leading to this lawsuit.

In defense, the US Government challenged the patent under sections 102 (novelty) and 103 (non-obviousness). Again, it is the second of these challenges that are relevant for this section. The government states that the electrodes in Adam's battery were merely substitutions of pre-existing battery designs used by prior art. If this was the case, the patent could have been invalidated in a similar way to the Hotchkiss patent discussed earlier. However, it was found by the court that Adam's battery "wholly unexpectedly" demonstrates several operating advantages over other batteries that a simple substitution of materials wouldn't have predicted. The court concludes that though the individual elements of Adams' battery were well known in prior art, combining them led to unexpected results that went ''against'' the mainstream scientific view. Therefore, the court rules that Adams' battery was non-obvious because it required that a person skilled in the prior art ignore consenting thoughts that batteries which continued to operate on an open circuit and heated during normal use were impractical as well as ignore the thought that water-activated batteries were only successful when combined with electrolytes "detrimental to the use of magnesium".

===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==

As mentioned previously, the Supreme Court case Graham v. John Deere was the first case to deal explicitly with section 103 of the US code. Within this case, Justice Clark reminds the court that non-obviousness is one of three conditions that must be satisfied in order to obtain a patent. Determining non-obviousness can't just be a matter of opinion, but must be based on law. With that in mind, primary considerations for determining non-obviousness are the scope and content of prior art, the differences between prior art and the claims at issue, and the level of ordinary skill in the relevant art.

Justice Clark makes a distinction between these and secondary considerations such as commercial success, long felt but unsolved needs, and failure of others. These secondary considerations can help give light to the circumstances, but they are not grounded in statutes and cannot solely be used to determine non-obviousness.

Interestingly, this almost seems to conflict Learned Hands conclusion in Lyon v. Bausch & Lomb. In this case, Learned Hand makes reference to the fact that "the most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection;...number of attempts, none satisfactory;...supplanted the existing practice and occupied substantially the whole field" and that he sees no combination of evidence that could "more completely demonstrate that, simple as it was, the change had not been obvious."

==Ordinary Skill in the Art==

Originally expressed in the bill of exceptions in Hotchkiss v. Greenwood, if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void" became a test used by the court to determine patentability. This test eventually became codified in Title 35 Section 103 of the US code, which requires that a patentable invention or improvement must be non-obvious. The idea is that patents are supposed to bring forth progress in science and the arts, and if something is obvious to a "mechanic of ordinary skill", than patenting such an "invention" reduces the knowledge available to skilled men.

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

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

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

[[South Corp. v. US]]

Homework 4 - ewolz

2011-02-09T01:45:12Z

Ewolz: /* Ordinary Skill in the Art */

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

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to 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.

In Hotchkiss v. Greenwood, Hotchkiss alleged that he had invented a new and useful improvement by making knobs of clay and porcelain with dovetail cavities used to assist in attaching the knobs to the shank and spindle. The court found however that while there was no evidence of clay knobs being made with dovetail cavities, the art of making knobs of clay was "known and practiced". Likewise, dovetail cavities were not novel either, having been the mode of connecting doorknobs of wood or metal in the United States for many years.

It was found that simply substituting one material for another without any further changes was not an invention and not patentable. Within this case, it was said that if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void". By substituting clay for wood or metal, it was found that the improvement of the work (creating better knobs cheaper) was simply the work of the skillful mechanic and not the inventor.

===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.

In this court case, the patent in question claims invention of a cashier counter with a three-sided frame/rack which when pushed or pulled would move groceries deposited within. The frame is kept on the counter by guides. The District Court recognized that each element in the device was known in prior-art, yet the combination of a counter with an extension to receive the unloading tray was a novel feature and thus qualifies as a "new and useful combination". The Court of Appeals agreed that this counter qualified as an invention, and pointed at the counters commercial success as evidence of it being a new invention.

The Supreme Court however decided otherwise. Initially, it reviewed the extension of the counter, which the lower courts perceived as an invention. The Supreme Court decided the extension was not an invention for two reasons. One, it was not mentioned in the claims of the patent, and two, even if it was mentioned in the claims, the length of the counter has traditionally been whatever length needed by the merchant. The Supreme Court then reviews the fact that the "invention" is a combination of previously known elements. The court states that "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable". As all the parts within the merchant counter performed the same function, the act of giving a patent to this device would "withdraw what already is known into the field of its monopoly and diminish the resources available to skillful men".

The court then addresses the evidence used by the Court of Appeals and respondents in saying this device is patentable due to it fulfilling a long-felt want and its commercial success. The Supreme Court explicitly states that "commercial success without invention will not make patentability".

Lastly, Justice Douglas discusses the original purpose of patents, and makes a distinction between "inventions" and "gadgets". Justice Douglas recalls that patents serve to "promote the progress of science and useful arts", and that the reward for doing so was a limited time monopoly given to the inventor for making a contribution to scientific knowledge. As a result, the courts have commonly taken "inventive genius" as the test for patentability. He states the intention of patents were not to provide monopolies for "every trifling device, every shadow of shade of an idea" which would occur to any skilled mechanic.

===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

This case was brought to court shortly after 35 US 103 was adopted in 1952, which attempted to codify the standard of non-obviousness that had been in use by the courts since Hotchkiss v. Greenwood. This case dealt with two main questions, the first being whether or not the invention had been disclosed in any earlier patent, and secondly, whether or not Lyon's contributions would support a patent. Of these two questions, it is the second one that needs to be focused on as it is the one that deals with non-obviousness while the former deals with novelty.

Lyon's process for coating optical elements([http://www.google.com/patents/about?id=zPdfAAAAEBAJ&dq=2398382/ 2398382]) consisted of two steps. The first consisted of heating an optical surface in a vacuum until water and grease on the surface have evaporated. The second was to vaporize an inorganic salt within the vacuum while keeping the optical surface heated. Of all the similar patents found, none suggested that the optical surface should be kept heated while being coated. It is here that Lyon makes his contribution to the process-keeping the optical surface heated while being coated.

In order to show that Lyon's process was non-obvious, Learned Hand points to the fact that "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". Evidence existed that showed people searched for a solution for many years but could not find one. Perhaps most interesting, even when experts in the field attempted to apply the coating to the heated surface, they were unable to get it to work completely (Hewlett) and eventually abandoned further work in this area. This abandonment gives more credence to the non-obviousness of Lyon's addition to the process, as not only did the abandoned project "fail to advance the art; it put the process among those efforts that are proved useless".

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

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

In this case, two District Courts ruled in opposite ways which led to the intervention of the Supreme Court. This case dealt with improvements to plows made by Graham that reduce damage to plow shanks when they come across obstructions such as rocks in the soil. This case is the first time that the court literally deals with section 103 of the US Code since its adoption in 1952. The court begins by going through the history of the patent laws, and points out that though the language of the patent laws have changed completely since the 1850s by congress, the court believes it represents the same standard.

When the court reviewed the Patent Act of 1952, it states that the distinction emphasized by Congress was "nonobviousness", which was to be used as the operative test rather than the less definite "invention" language that was a result of Hotchkiss v. Greenwood. Section 103 of Title 35 of the US code is the first statutory expression of an additional requirement for patentability. Under 103, the obviousness or nonobviousness of the subject matter is determined by "the scope and content of prior art are to be determined, differences between prior art and claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved". While these are the primary considerations, secondary considerations such as "commercial success, long felt but unsolved needs, and failures of others" ''may possibly'' be relevant although not statutorily required.

The patent in question([http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2627798]) made several slight changes to a previous patent([http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2493811]) which amounted to moving the plow shank so that it is situated underneath the lower hinge plate with an attaching rod at the end of it rather than sandwiched between the upper and lower hinge plates. The motivation for this change was the fact that when the plow shank was sandwiched between the hinge plates and rotated in its upward position, the shank would apply pressure to the upper plate and cause damage to a part of the plow that was hard to repair.

In the end, the court found no operative mechanical distinctions or nonobvious differences between Graham's '798 patent and the prior art (his '811 patent as well as other plows such as those made by Glencoe). The "free flexing" qualities of the shank due to it being placed below the lower hinge plate and argued for as a crucial difference by the petitioners wasn't even referenced in the patent application. Additionally, it was found that such free flexing played a very small part in the plow as a whole, and that if mechanics wanted to prevent the sandwiching of the shank between the hinge plates while maintaining its rotating capabilities, the obvious location would have been to place it below the lower hinge plate.

===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.

The patent in question in this case regards the first practical, water-activated "wet" battery filed by Adams. The object of this battery was to provide a constant voltage and current without the use of acids. Additionally, the battery operates without generation dangerous fumes, is light in weight with respect to capacity, and can be manufactured and distributed in a dry condition and is activated by adding water. The battery could also perform over a very wide range of temperatures.

When Adams brought his battery to the US Navy, they did not believe his claims and decided the battery was not workable. About two years later however, the government concluded the battery was feasible and entered into contracts with various battery companies to produce it without notifying Adams, leading to this lawsuit.

In defense, the US Government challenged the patent under sections 102 (novelty) and 103 (non-obviousness). Again, it is the second of these challenges that are relevant for this section. The government states that the electrodes in Adam's battery were merely substitutions of pre-existing battery designs used by prior art. If this was the case, the patent could have been invalidated in a similar way to the Hotchkiss patent discussed earlier. However, it was found by the court that Adam's battery "wholly unexpectedly" demonstrates several operating advantages over other batteries that a simple substitution of materials wouldn't have predicted. The court concludes that though the individual elements of Adams' battery were well known in prior art, combining them led to unexpected results that went ''against'' the mainstream scientific view. Therefore, the court rules that Adams' battery was non-obvious because it required that a person skilled in the prior art ignore consenting thoughts that batteries which continued to operate on an open circuit and heated during normal use were impractical as well as ignore the thought that water-activated batteries were only successful when combined with electrolytes "detrimental to the use of magnesium".

===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==

Originally expressed in the bill of exceptions in Hotchkiss v. Greenwood, if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void" became a test used by the court to determine patentability. This test eventually became codified in Title 35 Section 103 of the US code, which requires that a patentable invention or improvement must be non-obvious. The idea is that patents are supposed to bring forth progress in science and the arts, and if something is obvious to a "mechanic of ordinary skill", than patenting such an "invention" reduces the knowledge available to skilled men.

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

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

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

[[South Corp. v. US]]

Homework 4 - ewolz

2011-02-09T01:44:37Z

Ewolz: /* Ordinary Skill in the Art */

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

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to 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.

In Hotchkiss v. Greenwood, Hotchkiss alleged that he had invented a new and useful improvement by making knobs of clay and porcelain with dovetail cavities used to assist in attaching the knobs to the shank and spindle. The court found however that while there was no evidence of clay knobs being made with dovetail cavities, the art of making knobs of clay was "known and practiced". Likewise, dovetail cavities were not novel either, having been the mode of connecting doorknobs of wood or metal in the United States for many years.

It was found that simply substituting one material for another without any further changes was not an invention and not patentable. Within this case, it was said that if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void". By substituting clay for wood or metal, it was found that the improvement of the work (creating better knobs cheaper) was simply the work of the skillful mechanic and not the inventor.

===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.

In this court case, the patent in question claims invention of a cashier counter with a three-sided frame/rack which when pushed or pulled would move groceries deposited within. The frame is kept on the counter by guides. The District Court recognized that each element in the device was known in prior-art, yet the combination of a counter with an extension to receive the unloading tray was a novel feature and thus qualifies as a "new and useful combination". The Court of Appeals agreed that this counter qualified as an invention, and pointed at the counters commercial success as evidence of it being a new invention.

The Supreme Court however decided otherwise. Initially, it reviewed the extension of the counter, which the lower courts perceived as an invention. The Supreme Court decided the extension was not an invention for two reasons. One, it was not mentioned in the claims of the patent, and two, even if it was mentioned in the claims, the length of the counter has traditionally been whatever length needed by the merchant. The Supreme Court then reviews the fact that the "invention" is a combination of previously known elements. The court states that "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable". As all the parts within the merchant counter performed the same function, the act of giving a patent to this device would "withdraw what already is known into the field of its monopoly and diminish the resources available to skillful men".

The court then addresses the evidence used by the Court of Appeals and respondents in saying this device is patentable due to it fulfilling a long-felt want and its commercial success. The Supreme Court explicitly states that "commercial success without invention will not make patentability".

Lastly, Justice Douglas discusses the original purpose of patents, and makes a distinction between "inventions" and "gadgets". Justice Douglas recalls that patents serve to "promote the progress of science and useful arts", and that the reward for doing so was a limited time monopoly given to the inventor for making a contribution to scientific knowledge. As a result, the courts have commonly taken "inventive genius" as the test for patentability. He states the intention of patents were not to provide monopolies for "every trifling device, every shadow of shade of an idea" which would occur to any skilled mechanic.

===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

This case was brought to court shortly after 35 US 103 was adopted in 1952, which attempted to codify the standard of non-obviousness that had been in use by the courts since Hotchkiss v. Greenwood. This case dealt with two main questions, the first being whether or not the invention had been disclosed in any earlier patent, and secondly, whether or not Lyon's contributions would support a patent. Of these two questions, it is the second one that needs to be focused on as it is the one that deals with non-obviousness while the former deals with novelty.

Lyon's process for coating optical elements([http://www.google.com/patents/about?id=zPdfAAAAEBAJ&dq=2398382/ 2398382]) consisted of two steps. The first consisted of heating an optical surface in a vacuum until water and grease on the surface have evaporated. The second was to vaporize an inorganic salt within the vacuum while keeping the optical surface heated. Of all the similar patents found, none suggested that the optical surface should be kept heated while being coated. It is here that Lyon makes his contribution to the process-keeping the optical surface heated while being coated.

In order to show that Lyon's process was non-obvious, Learned Hand points to the fact that "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". Evidence existed that showed people searched for a solution for many years but could not find one. Perhaps most interesting, even when experts in the field attempted to apply the coating to the heated surface, they were unable to get it to work completely (Hewlett) and eventually abandoned further work in this area. This abandonment gives more credence to the non-obviousness of Lyon's addition to the process, as not only did the abandoned project "fail to advance the art; it put the process among those efforts that are proved useless".

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

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

In this case, two District Courts ruled in opposite ways which led to the intervention of the Supreme Court. This case dealt with improvements to plows made by Graham that reduce damage to plow shanks when they come across obstructions such as rocks in the soil. This case is the first time that the court literally deals with section 103 of the US Code since its adoption in 1952. The court begins by going through the history of the patent laws, and points out that though the language of the patent laws have changed completely since the 1850s by congress, the court believes it represents the same standard.

When the court reviewed the Patent Act of 1952, it states that the distinction emphasized by Congress was "nonobviousness", which was to be used as the operative test rather than the less definite "invention" language that was a result of Hotchkiss v. Greenwood. Section 103 of Title 35 of the US code is the first statutory expression of an additional requirement for patentability. Under 103, the obviousness or nonobviousness of the subject matter is determined by "the scope and content of prior art are to be determined, differences between prior art and claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved". While these are the primary considerations, secondary considerations such as "commercial success, long felt but unsolved needs, and failures of others" ''may possibly'' be relevant although not statutorily required.

The patent in question([http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2627798]) made several slight changes to a previous patent([http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2493811]) which amounted to moving the plow shank so that it is situated underneath the lower hinge plate with an attaching rod at the end of it rather than sandwiched between the upper and lower hinge plates. The motivation for this change was the fact that when the plow shank was sandwiched between the hinge plates and rotated in its upward position, the shank would apply pressure to the upper plate and cause damage to a part of the plow that was hard to repair.

In the end, the court found no operative mechanical distinctions or nonobvious differences between Graham's '798 patent and the prior art (his '811 patent as well as other plows such as those made by Glencoe). The "free flexing" qualities of the shank due to it being placed below the lower hinge plate and argued for as a crucial difference by the petitioners wasn't even referenced in the patent application. Additionally, it was found that such free flexing played a very small part in the plow as a whole, and that if mechanics wanted to prevent the sandwiching of the shank between the hinge plates while maintaining its rotating capabilities, the obvious location would have been to place it below the lower hinge plate.

===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.

The patent in question in this case regards the first practical, water-activated "wet" battery filed by Adams. The object of this battery was to provide a constant voltage and current without the use of acids. Additionally, the battery operates without generation dangerous fumes, is light in weight with respect to capacity, and can be manufactured and distributed in a dry condition and is activated by adding water. The battery could also perform over a very wide range of temperatures.

When Adams brought his battery to the US Navy, they did not believe his claims and decided the battery was not workable. About two years later however, the government concluded the battery was feasible and entered into contracts with various battery companies to produce it without notifying Adams, leading to this lawsuit.

In defense, the US Government challenged the patent under sections 102 (novelty) and 103 (non-obviousness). Again, it is the second of these challenges that are relevant for this section. The government states that the electrodes in Adam's battery were merely substitutions of pre-existing battery designs used by prior art. If this was the case, the patent could have been invalidated in a similar way to the Hotchkiss patent discussed earlier. However, it was found by the court that Adam's battery "wholly unexpectedly" demonstrates several operating advantages over other batteries that a simple substitution of materials wouldn't have predicted. The court concludes that though the individual elements of Adams' battery were well known in prior art, combining them led to unexpected results that went ''against'' the mainstream scientific view. Therefore, the court rules that Adams' battery was non-obvious because it required that a person skilled in the prior art ignore consenting thoughts that batteries which continued to operate on an open circuit and heated during normal use were impractical as well as ignore the thought that water-activated batteries were only successful when combined with electrolytes "detrimental to the use of magnesium".

===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==

Originally expressed in the bill of exceptions in Hotchkiss v. Greenwood, the idea that a device is not patentable if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void" became a test used by the court to determine patentability. This test eventually became codified in Title 35 Section 103 of the US code, which requires that a patentable invention or improvement must be non-obvious. The idea is that patents are supposed to bring forth progress in science and the arts, and if something is obvious to a "mechanic of ordinary skill", than patenting such an "invention" reduces the knowledge available to skilled men.

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

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

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

[[South Corp. v. US]]

Homework 4 - ewolz

2011-02-09T01:35:07Z

Ewolz: /* Graham v. John Deere (1966) */

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

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to 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.

In Hotchkiss v. Greenwood, Hotchkiss alleged that he had invented a new and useful improvement by making knobs of clay and porcelain with dovetail cavities used to assist in attaching the knobs to the shank and spindle. The court found however that while there was no evidence of clay knobs being made with dovetail cavities, the art of making knobs of clay was "known and practiced". Likewise, dovetail cavities were not novel either, having been the mode of connecting doorknobs of wood or metal in the United States for many years.

It was found that simply substituting one material for another without any further changes was not an invention and not patentable. Within this case, it was said that if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void". By substituting clay for wood or metal, it was found that the improvement of the work (creating better knobs cheaper) was simply the work of the skillful mechanic and not the inventor.

===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.

In this court case, the patent in question claims invention of a cashier counter with a three-sided frame/rack which when pushed or pulled would move groceries deposited within. The frame is kept on the counter by guides. The District Court recognized that each element in the device was known in prior-art, yet the combination of a counter with an extension to receive the unloading tray was a novel feature and thus qualifies as a "new and useful combination". The Court of Appeals agreed that this counter qualified as an invention, and pointed at the counters commercial success as evidence of it being a new invention.

The Supreme Court however decided otherwise. Initially, it reviewed the extension of the counter, which the lower courts perceived as an invention. The Supreme Court decided the extension was not an invention for two reasons. One, it was not mentioned in the claims of the patent, and two, even if it was mentioned in the claims, the length of the counter has traditionally been whatever length needed by the merchant. The Supreme Court then reviews the fact that the "invention" is a combination of previously known elements. The court states that "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable". As all the parts within the merchant counter performed the same function, the act of giving a patent to this device would "withdraw what already is known into the field of its monopoly and diminish the resources available to skillful men".

The court then addresses the evidence used by the Court of Appeals and respondents in saying this device is patentable due to it fulfilling a long-felt want and its commercial success. The Supreme Court explicitly states that "commercial success without invention will not make patentability".

Lastly, Justice Douglas discusses the original purpose of patents, and makes a distinction between "inventions" and "gadgets". Justice Douglas recalls that patents serve to "promote the progress of science and useful arts", and that the reward for doing so was a limited time monopoly given to the inventor for making a contribution to scientific knowledge. As a result, the courts have commonly taken "inventive genius" as the test for patentability. He states the intention of patents were not to provide monopolies for "every trifling device, every shadow of shade of an idea" which would occur to any skilled mechanic.

===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

This case was brought to court shortly after 35 US 103 was adopted in 1952, which attempted to codify the standard of non-obviousness that had been in use by the courts since Hotchkiss v. Greenwood. This case dealt with two main questions, the first being whether or not the invention had been disclosed in any earlier patent, and secondly, whether or not Lyon's contributions would support a patent. Of these two questions, it is the second one that needs to be focused on as it is the one that deals with non-obviousness while the former deals with novelty.

Lyon's process for coating optical elements([http://www.google.com/patents/about?id=zPdfAAAAEBAJ&dq=2398382/ 2398382]) consisted of two steps. The first consisted of heating an optical surface in a vacuum until water and grease on the surface have evaporated. The second was to vaporize an inorganic salt within the vacuum while keeping the optical surface heated. Of all the similar patents found, none suggested that the optical surface should be kept heated while being coated. It is here that Lyon makes his contribution to the process-keeping the optical surface heated while being coated.

In order to show that Lyon's process was non-obvious, Learned Hand points to the fact that "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". Evidence existed that showed people searched for a solution for many years but could not find one. Perhaps most interesting, even when experts in the field attempted to apply the coating to the heated surface, they were unable to get it to work completely (Hewlett) and eventually abandoned further work in this area. This abandonment gives more credence to the non-obviousness of Lyon's addition to the process, as not only did the abandoned project "fail to advance the art; it put the process among those efforts that are proved useless".

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

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

In this case, two District Courts ruled in opposite ways which led to the intervention of the Supreme Court. This case dealt with improvements to plows made by Graham that reduce damage to plow shanks when they come across obstructions such as rocks in the soil. This case is the first time that the court literally deals with section 103 of the US Code since its adoption in 1952. The court begins by going through the history of the patent laws, and points out that though the language of the patent laws have changed completely since the 1850s by congress, the court believes it represents the same standard.

When the court reviewed the Patent Act of 1952, it states that the distinction emphasized by Congress was "nonobviousness", which was to be used as the operative test rather than the less definite "invention" language that was a result of Hotchkiss v. Greenwood. Section 103 of Title 35 of the US code is the first statutory expression of an additional requirement for patentability. Under 103, the obviousness or nonobviousness of the subject matter is determined by "the scope and content of prior art are to be determined, differences between prior art and claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved". While these are the primary considerations, secondary considerations such as "commercial success, long felt but unsolved needs, and failures of others" ''may possibly'' be relevant although not statutorily required.

The patent in question([http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2627798]) made several slight changes to a previous patent([http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2493811]) which amounted to moving the plow shank so that it is situated underneath the lower hinge plate with an attaching rod at the end of it rather than sandwiched between the upper and lower hinge plates. The motivation for this change was the fact that when the plow shank was sandwiched between the hinge plates and rotated in its upward position, the shank would apply pressure to the upper plate and cause damage to a part of the plow that was hard to repair.

In the end, the court found no operative mechanical distinctions or nonobvious differences between Graham's '798 patent and the prior art (his '811 patent as well as other plows such as those made by Glencoe). The "free flexing" qualities of the shank due to it being placed below the lower hinge plate and argued for as a crucial difference by the petitioners wasn't even referenced in the patent application. Additionally, it was found that such free flexing played a very small part in the plow as a whole, and that if mechanics wanted to prevent the sandwiching of the shank between the hinge plates while maintaining its rotating capabilities, the obvious location would have been to place it below the lower hinge plate.

===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.

The patent in question in this case regards the first practical, water-activated "wet" battery filed by Adams. The object of this battery was to provide a constant voltage and current without the use of acids. Additionally, the battery operates without generation dangerous fumes, is light in weight with respect to capacity, and can be manufactured and distributed in a dry condition and is activated by adding water. The battery could also perform over a very wide range of temperatures.

When Adams brought his battery to the US Navy, they did not believe his claims and decided the battery was not workable. About two years later however, the government concluded the battery was feasible and entered into contracts with various battery companies to produce it without notifying Adams, leading to this lawsuit.

In defense, the US Government challenged the patent under sections 102 (novelty) and 103 (non-obviousness). Again, it is the second of these challenges that are relevant for this section. The government states that the electrodes in Adam's battery were merely substitutions of pre-existing battery designs used by prior art. If this was the case, the patent could have been invalidated in a similar way to the Hotchkiss patent discussed earlier. However, it was found by the court that Adam's battery "wholly unexpectedly" demonstrates several operating advantages over other batteries that a simple substitution of materials wouldn't have predicted. The court concludes that though the individual elements of Adams' battery were well known in prior art, combining them led to unexpected results that went ''against'' the mainstream scientific view. Therefore, the court rules that Adams' battery was non-obvious because it required that a person skilled in the prior art ignore consenting thoughts that batteries which continued to operate on an open circuit and heated during normal use were impractical as well as ignore the thought that water-activated batteries were only successful when combined with electrolytes "detrimental to the use of magnesium".

===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==

Originally expressed in Hotchkiss v. Greenwood, the phrase

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

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

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

[[South Corp. v. US]]

Homework 4 - ewolz

2011-02-09T01:34:46Z

Ewolz: /* Ordinary Skill in the Art */

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

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to 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.

In Hotchkiss v. Greenwood, Hotchkiss alleged that he had invented a new and useful improvement by making knobs of clay and porcelain with dovetail cavities used to assist in attaching the knobs to the shank and spindle. The court found however that while there was no evidence of clay knobs being made with dovetail cavities, the art of making knobs of clay was "known and practiced". Likewise, dovetail cavities were not novel either, having been the mode of connecting doorknobs of wood or metal in the United States for many years.

It was found that simply substituting one material for another without any further changes was not an invention and not patentable. Within this case, it was said that if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void". By substituting clay for wood or metal, it was found that the improvement of the work (creating better knobs cheaper) was simply the work of the skillful mechanic and not the inventor.

===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.

In this court case, the patent in question claims invention of a cashier counter with a three-sided frame/rack which when pushed or pulled would move groceries deposited within. The frame is kept on the counter by guides. The District Court recognized that each element in the device was known in prior-art, yet the combination of a counter with an extension to receive the unloading tray was a novel feature and thus qualifies as a "new and useful combination". The Court of Appeals agreed that this counter qualified as an invention, and pointed at the counters commercial success as evidence of it being a new invention.

The Supreme Court however decided otherwise. Initially, it reviewed the extension of the counter, which the lower courts perceived as an invention. The Supreme Court decided the extension was not an invention for two reasons. One, it was not mentioned in the claims of the patent, and two, even if it was mentioned in the claims, the length of the counter has traditionally been whatever length needed by the merchant. The Supreme Court then reviews the fact that the "invention" is a combination of previously known elements. The court states that "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable". As all the parts within the merchant counter performed the same function, the act of giving a patent to this device would "withdraw what already is known into the field of its monopoly and diminish the resources available to skillful men".

The court then addresses the evidence used by the Court of Appeals and respondents in saying this device is patentable due to it fulfilling a long-felt want and its commercial success. The Supreme Court explicitly states that "commercial success without invention will not make patentability".

Lastly, Justice Douglas discusses the original purpose of patents, and makes a distinction between "inventions" and "gadgets". Justice Douglas recalls that patents serve to "promote the progress of science and useful arts", and that the reward for doing so was a limited time monopoly given to the inventor for making a contribution to scientific knowledge. As a result, the courts have commonly taken "inventive genius" as the test for patentability. He states the intention of patents were not to provide monopolies for "every trifling device, every shadow of shade of an idea" which would occur to any skilled mechanic.

===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

This case was brought to court shortly after 35 US 103 was adopted in 1952, which attempted to codify the standard of non-obviousness that had been in use by the courts since Hotchkiss v. Greenwood. This case dealt with two main questions, the first being whether or not the invention had been disclosed in any earlier patent, and secondly, whether or not Lyon's contributions would support a patent. Of these two questions, it is the second one that needs to be focused on as it is the one that deals with non-obviousness while the former deals with novelty.

Lyon's process for coating optical elements([http://www.google.com/patents/about?id=zPdfAAAAEBAJ&dq=2398382/ 2398382]) consisted of two steps. The first consisted of heating an optical surface in a vacuum until water and grease on the surface have evaporated. The second was to vaporize an inorganic salt within the vacuum while keeping the optical surface heated. Of all the similar patents found, none suggested that the optical surface should be kept heated while being coated. It is here that Lyon makes his contribution to the process-keeping the optical surface heated while being coated.

In order to show that Lyon's process was non-obvious, Learned Hand points to the fact that "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". Evidence existed that showed people searched for a solution for many years but could not find one. Perhaps most interesting, even when experts in the field attempted to apply the coating to the heated surface, they were unable to get it to work completely (Hewlett) and eventually abandoned further work in this area. This abandonment gives more credence to the non-obviousness of Lyon's addition to the process, as not only did the abandoned project "fail to advance the art; it put the process among those efforts that are proved useless".

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

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

In this case, two District Courts ruled in opposite ways which led to the intervention of the Supreme Court. This case dealt with improvements to plows made by Graham that reduce damage to plow shanks when they come across obstructions such as rocks in the soil. This case is the first time that the court literally deals with section 103 of the US Code since its adoption in 1952. The court begins by going through the history of the patent laws, and points out that though the language of the patent laws have changed completely since the 1850s by congress, the court believes it represents the same standard.

When the court reviewed the Patent Act of 1952, it states that the distinction emphasized by Congress was "nonobviousness", which was to be used as the operative test rather than the less definite "invention" language that was a result of Hotchkiss v. Greenwood. Section 103 of Article 35 of the US code is the first statutory expression of an additional requirement for patentability. Under 103, the obviousness or nonobviousness of the subject matter is determined by "the scope and content of prior art are to be determined, differences between prior art and claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved". While these are the primary considerations, secondary considerations such as "commercial success, long felt but unsolved needs, and failures of others" ''may possibly'' be relevant although not statutorily required.

The patent in question([http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2627798]) made several slight changes to a previous patent([http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2493811]) which amounted to moving the plow shank so that it is situated underneath the lower hinge plate with an attaching rod at the end of it rather than sandwiched between the upper and lower hinge plates. The motivation for this change was the fact that when the plow shank was sandwiched between the hinge plates and rotated in its upward position, the shank would apply pressure to the upper plate and cause damage to a part of the plow that was hard to repair.

In the end, the court found no operative mechanical distinctions or nonobvious differences between Graham's '798 patent and the prior art (his '811 patent as well as other plows such as those made by Glencoe). The "free flexing" qualities of the shank due to it being placed below the lower hinge plate and argued for as a crucial difference by the petitioners wasn't even referenced in the patent application. Additionally, it was found that such free flexing played a very small part in the plow as a whole, and that if mechanics wanted to prevent the sandwiching of the shank between the hinge plates while maintaining its rotating capabilities, the obvious location would have been to place it below the lower hinge plate.

===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.

The patent in question in this case regards the first practical, water-activated "wet" battery filed by Adams. The object of this battery was to provide a constant voltage and current without the use of acids. Additionally, the battery operates without generation dangerous fumes, is light in weight with respect to capacity, and can be manufactured and distributed in a dry condition and is activated by adding water. The battery could also perform over a very wide range of temperatures.

When Adams brought his battery to the US Navy, they did not believe his claims and decided the battery was not workable. About two years later however, the government concluded the battery was feasible and entered into contracts with various battery companies to produce it without notifying Adams, leading to this lawsuit.

In defense, the US Government challenged the patent under sections 102 (novelty) and 103 (non-obviousness). Again, it is the second of these challenges that are relevant for this section. The government states that the electrodes in Adam's battery were merely substitutions of pre-existing battery designs used by prior art. If this was the case, the patent could have been invalidated in a similar way to the Hotchkiss patent discussed earlier. However, it was found by the court that Adam's battery "wholly unexpectedly" demonstrates several operating advantages over other batteries that a simple substitution of materials wouldn't have predicted. The court concludes that though the individual elements of Adams' battery were well known in prior art, combining them led to unexpected results that went ''against'' the mainstream scientific view. Therefore, the court rules that Adams' battery was non-obvious because it required that a person skilled in the prior art ignore consenting thoughts that batteries which continued to operate on an open circuit and heated during normal use were impractical as well as ignore the thought that water-activated batteries were only successful when combined with electrolytes "detrimental to the use of magnesium".

===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==

Originally expressed in Hotchkiss v. Greenwood, the phrase

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

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

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

[[South Corp. v. US]]

Homework 4 - ewolz

2011-02-09T01:22:16Z

Ewolz: /* U.S. v. Adams (1966) */

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

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to 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.

In Hotchkiss v. Greenwood, Hotchkiss alleged that he had invented a new and useful improvement by making knobs of clay and porcelain with dovetail cavities used to assist in attaching the knobs to the shank and spindle. The court found however that while there was no evidence of clay knobs being made with dovetail cavities, the art of making knobs of clay was "known and practiced". Likewise, dovetail cavities were not novel either, having been the mode of connecting doorknobs of wood or metal in the United States for many years.

It was found that simply substituting one material for another without any further changes was not an invention and not patentable. Within this case, it was said that if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void". By substituting clay for wood or metal, it was found that the improvement of the work (creating better knobs cheaper) was simply the work of the skillful mechanic and not the inventor.

===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.

In this court case, the patent in question claims invention of a cashier counter with a three-sided frame/rack which when pushed or pulled would move groceries deposited within. The frame is kept on the counter by guides. The District Court recognized that each element in the device was known in prior-art, yet the combination of a counter with an extension to receive the unloading tray was a novel feature and thus qualifies as a "new and useful combination". The Court of Appeals agreed that this counter qualified as an invention, and pointed at the counters commercial success as evidence of it being a new invention.

The Supreme Court however decided otherwise. Initially, it reviewed the extension of the counter, which the lower courts perceived as an invention. The Supreme Court decided the extension was not an invention for two reasons. One, it was not mentioned in the claims of the patent, and two, even if it was mentioned in the claims, the length of the counter has traditionally been whatever length needed by the merchant. The Supreme Court then reviews the fact that the "invention" is a combination of previously known elements. The court states that "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable". As all the parts within the merchant counter performed the same function, the act of giving a patent to this device would "withdraw what already is known into the field of its monopoly and diminish the resources available to skillful men".

The court then addresses the evidence used by the Court of Appeals and respondents in saying this device is patentable due to it fulfilling a long-felt want and its commercial success. The Supreme Court explicitly states that "commercial success without invention will not make patentability".

Lastly, Justice Douglas discusses the original purpose of patents, and makes a distinction between "inventions" and "gadgets". Justice Douglas recalls that patents serve to "promote the progress of science and useful arts", and that the reward for doing so was a limited time monopoly given to the inventor for making a contribution to scientific knowledge. As a result, the courts have commonly taken "inventive genius" as the test for patentability. He states the intention of patents were not to provide monopolies for "every trifling device, every shadow of shade of an idea" which would occur to any skilled mechanic.

===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

This case was brought to court shortly after 35 US 103 was adopted in 1952, which attempted to codify the standard of non-obviousness that had been in use by the courts since Hotchkiss v. Greenwood. This case dealt with two main questions, the first being whether or not the invention had been disclosed in any earlier patent, and secondly, whether or not Lyon's contributions would support a patent. Of these two questions, it is the second one that needs to be focused on as it is the one that deals with non-obviousness while the former deals with novelty.

Lyon's process for coating optical elements([http://www.google.com/patents/about?id=zPdfAAAAEBAJ&dq=2398382/ 2398382]) consisted of two steps. The first consisted of heating an optical surface in a vacuum until water and grease on the surface have evaporated. The second was to vaporize an inorganic salt within the vacuum while keeping the optical surface heated. Of all the similar patents found, none suggested that the optical surface should be kept heated while being coated. It is here that Lyon makes his contribution to the process-keeping the optical surface heated while being coated.

In order to show that Lyon's process was non-obvious, Learned Hand points to the fact that "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". Evidence existed that showed people searched for a solution for many years but could not find one. Perhaps most interesting, even when experts in the field attempted to apply the coating to the heated surface, they were unable to get it to work completely (Hewlett) and eventually abandoned further work in this area. This abandonment gives more credence to the non-obviousness of Lyon's addition to the process, as not only did the abandoned project "fail to advance the art; it put the process among those efforts that are proved useless".

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

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

In this case, two District Courts ruled in opposite ways which led to the intervention of the Supreme Court. This case dealt with improvements to plows made by Graham that reduce damage to plow shanks when they come across obstructions such as rocks in the soil. This case is the first time that the court literally deals with section 103 of the US Code since its adoption in 1952. The court begins by going through the history of the patent laws, and points out that though the language of the patent laws have changed completely since the 1850s by congress, the court believes it represents the same standard.

When the court reviewed the Patent Act of 1952, it states that the distinction emphasized by Congress was "nonobviousness", which was to be used as the operative test rather than the less definite "invention" language that was a result of Hotchkiss v. Greenwood. Section 103 of Article 35 of the US code is the first statutory expression of an additional requirement for patentability. Under 103, the obviousness or nonobviousness of the subject matter is determined by "the scope and content of prior art are to be determined, differences between prior art and claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved". While these are the primary considerations, secondary considerations such as "commercial success, long felt but unsolved needs, and failures of others" ''may possibly'' be relevant although not statutorily required.

The patent in question([http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2627798]) made several slight changes to a previous patent([http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2493811]) which amounted to moving the plow shank so that it is situated underneath the lower hinge plate with an attaching rod at the end of it rather than sandwiched between the upper and lower hinge plates. The motivation for this change was the fact that when the plow shank was sandwiched between the hinge plates and rotated in its upward position, the shank would apply pressure to the upper plate and cause damage to a part of the plow that was hard to repair.

In the end, the court found no operative mechanical distinctions or nonobvious differences between Graham's '798 patent and the prior art (his '811 patent as well as other plows such as those made by Glencoe). The "free flexing" qualities of the shank due to it being placed below the lower hinge plate and argued for as a crucial difference by the petitioners wasn't even referenced in the patent application. Additionally, it was found that such free flexing played a very small part in the plow as a whole, and that if mechanics wanted to prevent the sandwiching of the shank between the hinge plates while maintaining its rotating capabilities, the obvious location would have been to place it below the lower hinge plate.

===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.

The patent in question in this case regards the first practical, water-activated "wet" battery filed by Adams. The object of this battery was to provide a constant voltage and current without the use of acids. Additionally, the battery operates without generation dangerous fumes, is light in weight with respect to capacity, and can be manufactured and distributed in a dry condition and is activated by adding water. The battery could also perform over a very wide range of temperatures.

When Adams brought his battery to the US Navy, they did not believe his claims and decided the battery was not workable. About two years later however, the government concluded the battery was feasible and entered into contracts with various battery companies to produce it without notifying Adams, leading to this lawsuit.

In defense, the US Government challenged the patent under sections 102 (novelty) and 103 (non-obviousness). Again, it is the second of these challenges that are relevant for this section. The government states that the electrodes in Adam's battery were merely substitutions of pre-existing battery designs used by prior art. If this was the case, the patent could have been invalidated in a similar way to the Hotchkiss patent discussed earlier. However, it was found by the court that Adam's battery "wholly unexpectedly" demonstrates several operating advantages over other batteries that a simple substitution of materials wouldn't have predicted. The court concludes that though the individual elements of Adams' battery were well known in prior art, combining them led to unexpected results that went ''against'' the mainstream scientific view. Therefore, the court rules that Adams' battery was non-obvious because it required that a person skilled in the prior art ignore consenting thoughts that batteries which continued to operate on an open circuit and heated during normal use were impractical as well as ignore the thought that water-activated batteries were only successful when combined with electrolytes "detrimental to the use of magnesium".

===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]]

Homework 4 - ewolz

2011-02-08T23:54:49Z

Ewolz: /* Graham v. John Deere (1966) */

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

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to 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.

In Hotchkiss v. Greenwood, Hotchkiss alleged that he had invented a new and useful improvement by making knobs of clay and porcelain with dovetail cavities used to assist in attaching the knobs to the shank and spindle. The court found however that while there was no evidence of clay knobs being made with dovetail cavities, the art of making knobs of clay was "known and practiced". Likewise, dovetail cavities were not novel either, having been the mode of connecting doorknobs of wood or metal in the United States for many years.

It was found that simply substituting one material for another without any further changes was not an invention and not patentable. Within this case, it was said that if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void". By substituting clay for wood or metal, it was found that the improvement of the work (creating better knobs cheaper) was simply the work of the skillful mechanic and not the inventor.

===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.

In this court case, the patent in question claims invention of a cashier counter with a three-sided frame/rack which when pushed or pulled would move groceries deposited within. The frame is kept on the counter by guides. The District Court recognized that each element in the device was known in prior-art, yet the combination of a counter with an extension to receive the unloading tray was a novel feature and thus qualifies as a "new and useful combination". The Court of Appeals agreed that this counter qualified as an invention, and pointed at the counters commercial success as evidence of it being a new invention.

The Supreme Court however decided otherwise. Initially, it reviewed the extension of the counter, which the lower courts perceived as an invention. The Supreme Court decided the extension was not an invention for two reasons. One, it was not mentioned in the claims of the patent, and two, even if it was mentioned in the claims, the length of the counter has traditionally been whatever length needed by the merchant. The Supreme Court then reviews the fact that the "invention" is a combination of previously known elements. The court states that "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable". As all the parts within the merchant counter performed the same function, the act of giving a patent to this device would "withdraw what already is known into the field of its monopoly and diminish the resources available to skillful men".

The court then addresses the evidence used by the Court of Appeals and respondents in saying this device is patentable due to it fulfilling a long-felt want and its commercial success. The Supreme Court explicitly states that "commercial success without invention will not make patentability".

Lastly, Justice Douglas discusses the original purpose of patents, and makes a distinction between "inventions" and "gadgets". Justice Douglas recalls that patents serve to "promote the progress of science and useful arts", and that the reward for doing so was a limited time monopoly given to the inventor for making a contribution to scientific knowledge. As a result, the courts have commonly taken "inventive genius" as the test for patentability. He states the intention of patents were not to provide monopolies for "every trifling device, every shadow of shade of an idea" which would occur to any skilled mechanic.

===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

This case was brought to court shortly after 35 US 103 was adopted in 1952, which attempted to codify the standard of non-obviousness that had been in use by the courts since Hotchkiss v. Greenwood. This case dealt with two main questions, the first being whether or not the invention had been disclosed in any earlier patent, and secondly, whether or not Lyon's contributions would support a patent. Of these two questions, it is the second one that needs to be focused on as it is the one that deals with non-obviousness while the former deals with novelty.

Lyon's process for coating optical elements([http://www.google.com/patents/about?id=zPdfAAAAEBAJ&dq=2398382/ 2398382]) consisted of two steps. The first consisted of heating an optical surface in a vacuum until water and grease on the surface have evaporated. The second was to vaporize an inorganic salt within the vacuum while keeping the optical surface heated. Of all the similar patents found, none suggested that the optical surface should be kept heated while being coated. It is here that Lyon makes his contribution to the process-keeping the optical surface heated while being coated.

In order to show that Lyon's process was non-obvious, Learned Hand points to the fact that "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". Evidence existed that showed people searched for a solution for many years but could not find one. Perhaps most interesting, even when experts in the field attempted to apply the coating to the heated surface, they were unable to get it to work completely (Hewlett) and eventually abandoned further work in this area. This abandonment gives more credence to the non-obviousness of Lyon's addition to the process, as not only did the abandoned project "fail to advance the art; it put the process among those efforts that are proved useless".

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

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

In this case, two District Courts ruled in opposite ways which led to the intervention of the Supreme Court. This case dealt with improvements to plows made by Graham that reduce damage to plow shanks when they come across obstructions such as rocks in the soil. This case is the first time that the court literally deals with section 103 of the US Code since its adoption in 1952. The court begins by going through the history of the patent laws, and points out that though the language of the patent laws have changed completely since the 1850s by congress, the court believes it represents the same standard.

When the court reviewed the Patent Act of 1952, it states that the distinction emphasized by Congress was "nonobviousness", which was to be used as the operative test rather than the less definite "invention" language that was a result of Hotchkiss v. Greenwood. Section 103 of Article 35 of the US code is the first statutory expression of an additional requirement for patentability. Under 103, the obviousness or nonobviousness of the subject matter is determined by "the scope and content of prior art are to be determined, differences between prior art and claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved". While these are the primary considerations, secondary considerations such as "commercial success, long felt but unsolved needs, and failures of others" ''may possibly'' be relevant although not statutorily required.

The patent in question([http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2627798]) made several slight changes to a previous patent([http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2493811]) which amounted to moving the plow shank so that it is situated underneath the lower hinge plate with an attaching rod at the end of it rather than sandwiched between the upper and lower hinge plates. The motivation for this change was the fact that when the plow shank was sandwiched between the hinge plates and rotated in its upward position, the shank would apply pressure to the upper plate and cause damage to a part of the plow that was hard to repair.

In the end, the court found no operative mechanical distinctions or nonobvious differences between Graham's '798 patent and the prior art (his '811 patent as well as other plows such as those made by Glencoe). The "free flexing" qualities of the shank due to it being placed below the lower hinge plate and argued for as a crucial difference by the petitioners wasn't even referenced in the patent application. Additionally, it was found that such free flexing played a very small part in the plow as a whole, and that if mechanics wanted to prevent the sandwiching of the shank between the hinge plates while maintaining its rotating capabilities, the obvious location would have been to place it below the lower hinge plate.

===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]]

Homework 4 - ewolz

2011-02-08T23:48:14Z

Ewolz: /* Graham v. John Deere (1966) */

Homework 4 - ewolz

2011-02-08T23:46:45Z

Ewolz: /* Graham v. John Deere (1966) */

Homework 4 - ewolz

2011-02-08T23:38:29Z

Ewolz: /* Hotchkiss v. Greenwood (1850) */

Homework 4 - ewolz

2011-02-08T23:37:38Z

Ewolz: /* Graham v. John Deere (1966) */

Homework 4 - ewolz

2011-02-08T23:32:08Z

Ewolz: /* Graham v. John Deere (1966) */

Homework 4 - ewolz

2011-02-08T23:24:11Z

Ewolz: /* Graham v. John Deere (1966) */

Homework 4 - ewolz

2011-02-08T22:46:08Z

Ewolz: /* Lyon v. Bausch & Lomb (1955) */

Homework 4 - ewolz

2011-02-08T22:32:17Z

Ewolz: /* Lyon v. Bausch & Lomb (1955) */

Homework 4 - ewolz

2011-02-08T22:14:04Z

Ewolz: /* A&P Tea v. Supermarket Equipment (1950) */

Homework 4 - ewolz

2011-02-08T21:47:18Z

Ewolz:

Homework 4 - ewolz

2011-02-08T21:31:00Z

Ewolz: 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:Ewolz

2011-02-08T21:30:50Z

Ewolz:

== Homeworks ==

[[Homework 1 - Due Monday, January 24]]

[[Homework 2 - Due Friday, January 28]]

[[Homework 3 - ewolz]]

[[Homework 4 - ewolz]]

Homework 3 - ewolz

2011-02-04T01:50:30Z

Ewolz:

== Conclusion of Obviousness ==

In reading patent [http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2493811], it is apparent that ample evidence exists to show that the changes made by Graham and proposed in [http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2627798] were obvious to a mechanic acquainted with the business and of ordinary ingenuity and skill. Both patents claim a "plow having a frame and a ground working device provided with a shank". The shanks for each plow are designed to make the ground working tool pump in order to work fine soil to the bottom to act as a seed bed and the course materials to the top for better mulch and moisture collection.

However, there are two main differences between the two patents which are the point of contention. In patent '811, Graham claims "a rod having pivotal connection with the fulcrum member and extending through an elongated opening in said shank and through a registering opening of the bracket to anchor the shank to said bracket" which "provides sufficient longitudinal relative movement between shank and fulcrum member to accommodate oscillation of the shank". In this case, the shank is on top of the shank attaching member. In the '798 patent, besides reversing the position of the shank and shank attaching member, Graham claims a "shank attaching member having depending means embracing the shank at the rear end" (stirrup) and "a bolt connecting the forward end of the plate portion".

Regardless of location, in both cases, the hinge plate attached to the shank provides a means to reduce damage when the plow comes across fields of rocks and other obstructions as it allows the shank to pass freely over the obstruction by rotating up. Graham states in '798 that with these changes, he has provided a "plow structure wherein the shanks of the ground working tools are attached to the plow frame in a manner to permit the desired rocking action of the plow shanks...without producing destructive strains on the plow frame". Preventing these damages from occurring involved moving the position of the shank away from the top of the hinge plate and attaching it to the problem.

To any skillful mechanic, this is an obvious and easy change. The damage caused to '811 models was due to the shank applying pressure upon the upper plate when the hinge plate was rotated down, thereby sandwiching the shank in between the upper and lower plate. To prevent this damage, there was only one logical way to prevent the shank from being sandwiched-it could either go on top of the upper plate or below the lower hinge plate. Because the upper plate is fixed, if the shank were to be attached atop it, it would lose its rotating motion and thus encounter the same problem the patent was originally trying to avoid (damage due to rocky fields). Thus, in order to prevent damage due to rocky fields and other obstructions, the shank would still have to rotate and would have to remain attached to the lower plate. The only other possible location is to attach it underneath the lower hinge plate. This shows that reversing the shank and the lower hinge plate is obvious to any mechanic skilled in the arts.

The last point of contention was the introduction of the stirrup and bolt which attached the shank to the lower hinge plate in '798. Prior art found in the "Glencoe clamp" ([http://www.google.com/patents?id=kuhhAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 2739518]) shows both of these objects already in use to attach a shank to the shank holder. From Figure 1 in the attached patent, article 29 is the "sleeve" (stirrup) the shank lies in while articles 31 and 32 are the bolt and hole used to attach the shank. Thus, the use of a stirrup and bolt in '798 is both non-novel and obvious.

As both of the differences separating '798 from '811 are obvious and unpatentable, '798 is invalidated.

== Conclusion of Non-obviousness ==

Under 35 USC 101, "whoever invents or discovers any new and useful process...or any new and useful improvement thereof, may obtain a patent therefore". In Graham's patent '798, improvements have been made to previously plows allowing for the rocking motion of the plow shanks while at the same time preventing "destructive strains on the plow frame or excessive wear on the mounting parts". Though similar to the previous patent claim '811 where the shank is attached to a rotating hinge plate, the novelty doesn't come from the fact that the shank is simply in a different location. By moving the shank to the underside of the hinge plate, Graham has done more than just change the location of the shank. In doing so, he has also prevented damage to the upper plate common in the '811 design due to the wedging of the shank between upper and lower plate. Additionally, the shank is passed through a stirrup at one end of the lower hinge plate and bolted at the other. The bolt is left loose enough so that there is a slight "longitudinal movement", allowing the entire length of the shank to flex.

This improvement to the plows prevents damage to the entire system by preventing the shank from applying upward pressure on the upper plate, and is as patentable as measures taken to prevent damage to a plow due to rocky fields given sufficient ingenuity as shown above.

Homework 3 - ewolz

2011-02-04T01:09:38Z

Ewolz:

Homework 3 - ewolz

2011-02-04T00:59:25Z

Ewolz:

Homework 3 - ewolz

2011-02-04T00:58:05Z

Ewolz:

Homework 3 - ewolz

2011-02-04T00:57:42Z

Ewolz:

Homework 3 - ewolz

2011-02-03T23:33:54Z

Ewolz:

Homework 3 - ewolz

2011-02-03T23:03:12Z

Ewolz: Created page with "== Conclusion of Obviousness == In reading patent [http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false/ 249381..."