Bill Goodwine's Wiki - User contributions [en]

Quanta Brief Summary 901431048

2011-04-29T14:12:44Z

Hamburgler:

'''Kary Yergler'''

'''Summary of Brief Homework'''

==Reply Brief in support of Petitioners (Quanta)==

No. 06-937
March 20, 2007

*Argues that an authorized sale exhausts the patent and ends the patentee's right under patent law to restrict the use and resale of the sold goods.
*says that LG claims the license agreement controls the "make and sell" of goods, as opposed to the "use" of goods, and the brief sees this logic as faulty.
*The brief cites many other cases to argue the point that once the pantentee sells his patented product under a license agreement, they no longer receive the same benefits of patent ownership. The brief is claiming that LG forfeited certain rights during the sell of their patent, and they should not be awarded the benefit of those forfeited patent rights.
*The brief also points out that other briefs submitted were faulty in that they did not recognize specific governing principles, especially with regards to "manufacturer's licensees" versus "purchaser's right to sell." According to this brief, that distinguishing factor forfeited more than LG apparently knew.
Organizational list of Arguments, as specified by brief:

1. Mallinckrodt principle: a patent owner may not impose whatever conditions it likes on a licensee granted to a manufacturing licensee.

2. Patent owners do not have the same contractual freedom as other property holders, thus patentees are free to use contract law as anyone.

3. Respondent's waiver arguments are incorrect for the same contractual reasons as point 2.

4. a "purchaser's" contract is different from a "manufacturing" contract, see above.

5. Previous cases involving "Univis Lens" is not similar to the current case due to the contractual intent.

6. Respondent uses inaccurate principles to support its case.

7. LG's patent is not a "pure method" patent

8. The petition for certiorari should be granted, in the brief's view

Quanta Brief Summary 901431048

2011-04-29T14:12:23Z

Hamburgler:

'''Kary Yergler'''

'''Summary of Brief Homework'''

==Reply Brief in support of Petitioners (Quanta)==

No. 06-937
March 20, 2007

*Argues that an authorized sale exhausts the patent and ends the patentee's right under patent law to restrict the use and resale of the sold goods.
*says that LG claims the license agreement controls the "make and sell" of goods, as opposed to the "use" of goods, and the brief sees this logic as faulty.
*The brief cites many other cases to argue the point that once the pantentee sells his patented product under a license agreement, they no longer receive the same benefits of patent ownership. The brief is claiming that LG forfeited certain rights during the sell of their patent, and they should not be awarded the benefit of those forfeited patent rights.
*The brief also points out that other briefs submitted were faulty in that they did not recognize specific governing principles, especially with regards to "manufacturer's licensees" versus "purchaser's right to sell." According to this brief, that distinguishing factor forfeited more than LG apparently knew.
Organizational list of Arguments, as specified by brief:
1. Mallinckrodt principle: a patent owner may not impose whatever conditions it likes on a licensee granted to a manufacturing licensee.
2. Patent owners do not have the same contractual freedom as other property holders, thus patentees are free to use contract law as anyone.
3. Respondent's waiver arguments are incorrect for the same contractual reasons as point 2.
4. a "purchaser's" contract is different from a "manufacturing" contract, see above.
5. Previous cases involving "Univis Lens" is not similar to the current case due to the contractual intent.
6. Respondent uses inaccurate principles to support its case.
7. LG's patent is not a "pure method" patent
8. The petition for certiorari should be granted, in the brief's view

Quanta Brief Summary 901431048

2011-04-29T14:01:42Z

Hamburgler:

'''Kary Yergler'''

'''Summary of Brief Homework'''

==Reply Brief of Petitioners==

No. 06-937
March 20, 2007

*Argues that an authorized sale exhausts the patent and ends the patentee's right under patent law to restrict the use and resale of the sold goods.
*says that LG claims the license agreement controls the "make and sell" of goods, as opposed to the "use" of goods, and the brief sees this logic as faulty.
*The brief cites many other cases to argue the point that once the pantentee sells his patented product under a license agreement, they no longer receive the same benefits of patent ownership. The brief is claiming that LG forfeited certain rights during the sell of their patent, and they should not be awarded the benefit of those forfeited patent rights.
*The brief also points out that other briefs submitted were faulty in that they did not recognize specific governing principles, especially with regards to "manufacturer's licensees" versus "purchaser's right to sell." According to this brief, that distinguishing factor forfeited more than LG apparently knew.

Quanta Brief Summary 901431048

2011-04-29T13:51:35Z

Hamburgler: Created page with "'''Kary Yergler''' '''Summary of Brief Homework''' ==Reply Brief of Petitioners== *Argues that an authorized sale exhausts the patent and ends the patentee's right under paten..."

'''Kary Yergler'''

'''Summary of Brief Homework'''

==Reply Brief of Petitioners==

*Argues that an authorized sale exhausts the patent and ends the patentee's right under patent law to restrict the use and resale of the sold goods.
*says that LG claims the license agreement controls the "make and sell" of goods, as opposed to the "use" of goods, and the brief sees this logic as faulty.
*The brief cites many other cases to argue the point that once the pantentee sells his patented product under a license agreement, they no longer receive the same benefits of patent ownership. The brief is claiming that LG forfeited certain rights during the sell of their patent, and they should not be awarded the benefit of those forfeited patent rights.
*The brief also points out that other briefs submitted were faulty in that they did not recognize specific governing principles, especially with regards to "manufacturer's licensees" versus "purchaser's right to sell." According to this brief, that distinguishing factor forfeited more than LG apparently knew.

Here in list of arguments in Quanta

2011-04-29T13:41:29Z

Hamburgler:

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]]

[[Quanta Brief Summary 901360293]]

[[Quanta Brief Summary 901431048]]

4/4/11 : Homework based on "Honeywell v. Hamilton Sundstrand" (kyergler)

2011-04-06T03:43:45Z

Hamburgler:

== '''To: Supreme Court Justices''' ==

''A Brief in Support of Hamilton Sundstrand''

Even as a supporter of the Doctrine of Equivalents, it has come to my attention that Court of Appeals Circuit Judge has wronged Hamilton Sundstrand by allowing the application of the Doctrine of Equivalents to conclude the Hamilton Sundstrand invention as infringement to Honeywell’s patent.
In order to get the Honeywell patent approved by the PTO, the specific mentioning of the actual invention (Honeywell’s improved auxiliary power unit) was ignored in the application of their first patent application. After a requirement put out by the PTO, Honeywell included their APU invention in the patent. This action in itself cancels out the use of the Doctrine of Equivalents. Even though I very much agree with the use of the Doctrine, it can only be applied when it is valid. Furthermore, if taking the exact wording of the patent, which should be proper considering it is the burden of the applicant to cover everything that defines their patent, does not describe the Hamilton Sundstrand invention without the use of the Doctrine of Equivalence. This leaves only one argument: whether the lack of the exact mentioning of the Honeywell invention in the patents warrants infringement by Hamilton Sundstrand. The overall picture is being clouded by Honeywell’s general analysis of their patents and the claims within them. As was learned in Graver Tank & Mfg. Co. v. Linde Air Products Co., the Doctrine of Equivalents applies to an analysis of the invention on an elemental level, in addition to a comparison as a whole. In order to pass the amendment, Honeywell assumed the P and Delta P analysis was part of prior art, and any parallelism with this analysis would be considered prior art use. However, since it was not mentioned within the patent, there is no grounds for infringement of the Honeywell patent.
It was the burden by Honeywell to prove whether an alleged equivalent would have been unforseeable, and I would have to agree with the District Court of Delaware rightfully described Honeywell’s argument as inadequate. There is no infringement by Hamilton Sundstrand on account of a lack of proper wording in the patent application because the Doctrine of Equivalence is invalid in this specific case on account of estoppel and foreseeability.

''END OF DOCUMENT''

4/4/11 : Homework based on "Honeywell v. Hamilton Sundstrand" (kyergler)

2011-04-04T02:32:19Z

Hamburgler:

== '''To: Supreme Court Justices''' ==

''A Brief in Support of Hamilton Sundstrand''

As a supporter of the Doctrine of Equivalents, it has come to my attention that Court of Appeals Circuit Judge has wronged Hamilton Sundstrand by allowing the application of the Doctrine of Equivalents to conclude the Hamilton Sundstrand invention as infringement to Honeywell’s patent.
In order to get the Honeywell patent approved by the PTO, the specific mentioning of the actual invention (Honeywell’s improved auxiliary power unit) was ignored. If taking the exact wording of the patent, which should be proper considering it is the burden of the applicant to cover everything that defines their patent, does not describe the Hamilton Sundstrand invention. This leaves only one argument: whether the lack of the exact mentioning of the Honeywell invention in the patents warrants infringement by Hamilton Sundstrand. The overall picture is being clouded by Honeywell’s general analysis of their patents and the claims within them. As was learned in Graver Tank & Mfg. Co. v. Linde Air Products Co., the Doctrine of Equivalents applies to an analysis of the invention on an elemental level, in addition to a comparison as a whole. In order to pass the amendment, Honeywell assumed the P and Delta P analysis was part of prior art, and any parallelism with this analysis would be considered prior art use. However, since it was not mentioned within the patent, there is no grounds for infringement of the Honeywell patent.
It was the burden by Honeywell to prove whether an alleged equivalent would have been unforseeable, and I would have to agree with the District Court of Delaware rightfully described Honeywell’s argument as inadequate. There is no infringement by Hamilton Sundstrand on account of a lack of proper wording in the patent application.

''END OF DOCUMENT''

4/4/11 : Homework based on "Honeywell v. Hamilton Sundstrand" (kyergler)

2011-04-04T02:32:03Z

Hamburgler: Created page with "'''To: Supreme Court Justices''' ''A Brief in Support of Hamilton Sundstrand'' As a supporter of the Doctrine of Equivalents, it has come to my attention that Court of Appeals ..."

'''To: Supreme Court Justices'''

''A Brief in Support of Hamilton Sundstrand''

As a supporter of the Doctrine of Equivalents, it has come to my attention that Court of Appeals Circuit Judge has wronged Hamilton Sundstrand by allowing the application of the Doctrine of Equivalents to conclude the Hamilton Sundstrand invention as infringement to Honeywell’s patent.
In order to get the Honeywell patent approved by the PTO, the specific mentioning of the actual invention (Honeywell’s improved auxiliary power unit) was ignored. If taking the exact wording of the patent, which should be proper considering it is the burden of the applicant to cover everything that defines their patent, does not describe the Hamilton Sundstrand invention. This leaves only one argument: whether the lack of the exact mentioning of the Honeywell invention in the patents warrants infringement by Hamilton Sundstrand. The overall picture is being clouded by Honeywell’s general analysis of their patents and the claims within them. As was learned in Graver Tank & Mfg. Co. v. Linde Air Products Co., the Doctrine of Equivalents applies to an analysis of the invention on an elemental level, in addition to a comparison as a whole. In order to pass the amendment, Honeywell assumed the P and Delta P analysis was part of prior art, and any parallelism with this analysis would be considered prior art use. However, since it was not mentioned within the patent, there is no grounds for infringement of the Honeywell patent.
It was the burden by Honeywell to prove whether an alleged equivalent would have been unforseeable, and I would have to agree with the District Court of Delaware rightfully described Honeywell’s argument as inadequate. There is no infringement by Hamilton Sundstrand on account of a lack of proper wording in the patent application.

''END OF DOCUMENT''

User:Hamburgler

2011-04-04T02:31:26Z

Hamburgler:

[[1/21/11 : Bonito Boats notes]]

*Notes on the case

[[My Selected US Patent]]

*Includes Homework 1 and 2 about my selected US patent.

[[1/26/11 : Hotchkiss v. Greenwood]]

*Notes on the case

[[1/26/11 : A. & P. Tea Co. v. Supermarket Corp.]]

*Notes on the case

[[1/26/11 : Lyon v. Bausch & Lomb]]

*Notes on the case

[[1/31/11 : Graham v. John Deere (kyergler)]]

*Notes on the case

[[1/31/11 : US v. Adams (kyergler)]]

*Notes on the case

[[1/31/11 : Anderson's Black Rock, Inc. v. Pavement Co. (kyergler)]]

*Notes on the case

[[2/4/11 : KSR International Co. v. Teleflex, Inc. (kyergler)]]

*Notes on the case

[[2/4/11 Homework (kyergler) : Critique of Graham case]]

[[2/7/11 : Gottschalk v. Benson (kyergler)]]

*Notes on the case

[[2/9/2011 Homework (kyergler) : Nonobviousness Page]]

*This is my non-obviousness page based off of Professor Goodwine's template and initial notes.

[[2/14/11 : Bilski v. Kappos (kyergler)]]

*Notes on the case (2010 case)

[[3/23/11 : Homework based on "In Re Hall" (kyergler)]]

*This is my homework exploring different types of "printed publication" based on the case discussed in class, "In re Hall"

[[3/30/11 : Homework based on the Warner-Jenkinson case (kyergler)]]
*This is my homework describing a court case that showed clear patent infringement

[[4/4/11 : Homework based on "Honeywell v. Hamilton Sundstrand" (kyergler)]]
*This is my brief in support of Hamilton Sundstrand for the Supreme Court's reference

Doctrine of Equivalents Case List

2011-04-04T01:36:31Z

Hamburgler:

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

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

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

Bill Goodwine

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

901431048

*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

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

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

Christine Roetzel - 901425022

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

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

901439143

Doctrine of Equivalents Case List

2011-04-04T01:31:59Z

Hamburgler:

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

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

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

Bill Goodwine

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

901431048

*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

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

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

Christine Roetzel - 901425022

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

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

901439143

Doctrine of Equivalents Case List

2011-04-04T01:31:46Z

Hamburgler:

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

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

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

Bill Goodwine

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

*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

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

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

Christine Roetzel - 901425022

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

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

901439143

3/30/11 : Homework based on the Warner-Jenkinson case (kyergler)

2011-03-30T19:56:52Z

Hamburgler: Created page with "==Adkins v. Lear, Inc. (1968)== *Supreme Court of California I read the gyroscope case that was discussed in class which dealt with Adkins, the inventor of an improved gyroscope,..."

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

User:Hamburgler

2011-03-30T19:56:26Z

Hamburgler:

3/23/11 : Homework based on "In Re Hall" (kyergler)

2011-03-22T22:01:01Z

Hamburgler:

=='''Printed Publication Homework'''==

===In re Carol F. KLOPFENSTEIN (2004)===

*Assignment: Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

In the United States Court of Appeals, Federal Circuit, inventors appealed against a rejection of the Patent and Trademark Office for their invention of an animal-feeding method that helps lower their serum cholesterol levels while raising HDL cholesterol levels. The PTO originally rejected the application because it had "already been described in a printed publication more than one year before the date of the patent application" and this constitutes the bar under 35 U.S.C. 102(b). The CAFC affirmed this.

== The Printed Publication ==

In October of 1998, a 14-slide presentation inclusive of all claims of the above patent application was made at a meeting of the "American Association of Cereal Chemists (AACC)" which were printed and posted on a posterboard and displayed continuously for 2 and a half days at the AACC meeting. The next month (November), the same slide presentation was put on display at an Agriculture Experiment Station at Kansas State University for less than a day. Neither presentation included a no-note-taking disclaimer; however, no copies of the presentation were distributed at the presentations, nor was it ever catalogued or indexed at any library or database.

== Discussion ==

The question at hand is whether the poster display and presentations count as a "printed publication" according to law. Recalling "In re Hall," "Because there are many ways in which a reference may be disseminated to the interested public, 'public accessibility' has been called the touchstone in determining whether a reference constitutes a 'printed publication' bar under 35 U.S.C. 102(b)." The CAFC considered the following factors:
*length of time that the display was exhibited
*expertise of the target audience
*existence of the expectation that the material would or would not be copied
*simplicity or ease with which one would copy the material
Since the presentation was displayed for an extended period of time to members of the public with ordinary skill in the art, and since the public was not precluded from taking notes or photographs, and since attaining notes and photos would have been fairly simple, the presentation is valid as a "printed publication" under 35 U.S.C. 102(b); thus, the PTO's rejection is affirmed.

3/23/11 : Homework based on "In Re Hall" (kyergler)

2011-03-22T21:58:34Z

Hamburgler:

=='''Printed Publication Homework'''==

===In re Carol F. KLOPFENSTEIN (2004)===

*Assignment: Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

In the United States Court of Appeals, Federal Circuit, inventors appealed against a rejection of the Patent and Trademark Office for their invention of an animal-feeding method that helps lower their serum cholesterol levels while raising HDL cholesterol levels. The PTO originally rejected the application because it had "already been described in a printed publication more than one year before the date of the patent application" and this constitutes the bar under 35 U.S.C. 102(b). The CAFC affirmed this.

== The Printed Publication ==

In October of 1998, a 14-slide presentation inclusive of all claims of the above patent application was made at a meeting of the "American Association of Cereal Chemists (AACC)" which were printed and posted on a posterboard and displayed continuously for 2 and a half days at the AACC meeting. The next month (November), the same slide presentation was put on display at an Agriculture Experiment Station at Kansas State University for less than a day. Neither presentation included a no-note-taking disclaimer; however, no copies of the presentation were distributed at the presentations, nor was it ever catalogued or indexed at any library or database.

== Discussion ==

The question at hand is whether the poster display and presentations count as a "printed publication" according to law. Recalling "In re Hall," "Because there are many ways in which a reference may be disseminated to the interested public, 'public accessinility' has been called the touchstone in determining whether a reference constitutes a 'printed publication' bar under 35 U.S.C. 102(b)." The CAFC considered the following factors:
*length of time that the display was exhibited
*expertise of the target audience
*existence of the expectation that the material would or would not be copied
*simplicity or ease with which one would copy the material
Since the presentation was displayed for an extended period of time to members of the public with ordinary skill in the art, and since the public was not precluded from taking notes or photographs, and since attaining notes and photos would have been fairly simple, the presentation is valid as "printed publication"; thus, the PTO's rejection is affirmed.

3/23/11 : Homework based on "In Re Hall" (kyergler)

2011-03-22T21:45:36Z

Hamburgler:

=='''Printed Publication Homework'''==

===In re Carol F. KLOPFENSTEIN===

*Assignment: Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

In the United States Court of Appeals, Federal Circuit, inventors appealed against a rejection of the Patent and Trademark Office for their invention of an animal-feeding method that helps lower their serum cholesterol levels while raising HDL cholesterol levels. The PTO originally rejected the application because it had "already been described in a printed publication more than one year before the date of the patent application." The CAFC affirmed this.

== The Printed Publication ==

In October of 1998, a 14-slide presentation inclusive of all claims of the above patent application was made at a meeting of the "American Association of Cereal Chemists (AACC)" which were printed and posted on a posterboard and displayed continuously for 2 and a half days at the AACC meeting. The next month (November), the same slide presentation was put on display at an Agriculture Experiment Station at Kansas State University for less than a day. Neither presentation included a no-note-taking disclaimer; however, no copies of the presentation were distributed at the presentations, nor was it ever catalogued or indexed at any library or database.

== Discussion ==

3/23/11 : Homework based on "In Re Hall" (kyergler)

2011-03-22T21:45:25Z

Hamburgler:

==Printed Publication Homework==

===In re Carol F. KLOPFENSTEIN===

*Assignment: Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

In the United States Court of Appeals, Federal Circuit, inventors appealed against a rejection of the Patent and Trademark Office for their invention of an animal-feeding method that helps lower their serum cholesterol levels while raising HDL cholesterol levels. The PTO originally rejected the application because it had "already been described in a printed publication more than one year before the date of the patent application." The CAFC affirmed this.

== The Printed Publication ==

In October of 1998, a 14-slide presentation inclusive of all claims of the above patent application was made at a meeting of the "American Association of Cereal Chemists (AACC)" which were printed and posted on a posterboard and displayed continuously for 2 and a half days at the AACC meeting. The next month (November), the same slide presentation was put on display at an Agriculture Experiment Station at Kansas State University for less than a day. Neither presentation included a no-note-taking disclaimer; however, no copies of the presentation were distributed at the presentations, nor was it ever catalogued or indexed at any library or database.

== Discussion ==

3/23/11 : Homework based on "In Re Hall" (kyergler)

2011-03-22T21:27:24Z

Hamburgler: Created page with "==Printed Publication Homework== ===In re Carol F. KLOPFENSTEIN==="

==Printed Publication Homework==
===In re Carol F. KLOPFENSTEIN===

User:Hamburgler

2011-03-22T21:26:13Z

Hamburgler:

User:Hamburgler

2011-03-22T21:25:44Z

Hamburgler:

[[1/21/11 : Bonito Boats notes]]

Notes on the case

[[My Selected US Patent]]

Includes Homework 1 and 2 about my selected US patent.

[[1/26/11 : Hotchkiss v. Greenwood]]

Notes on the case

[[1/26/11 : A. & P. Tea Co. v. Supermarket Corp.]]

Notes on the case

[[1/26/11 : Lyon v. Bausch & Lomb]]

Notes on the case

[[1/31/11 : Graham v. John Deere (kyergler)]]

Notes on the case

[[1/31/11 : US v. Adams (kyergler)]]

Notes on the case

[[1/31/11 : Anderson's Black Rock, Inc. v. Pavement Co. (kyergler)]]

Notes on the case

[[2/4/11 : KSR International Co. v. Teleflex, Inc. (kyergler)]]

Notes on the case

[[2/4/11 Homework (kyergler) : Critique of Graham case]]

[[2/7/11 : Gottschalk v. Benson (kyergler)]]

Notes on the case

[[2/9/2011 Homework (kyergler) : Nonobviousness Page]]

This is my non-obviousness page based off of Professor Goodwine's template and initial notes.

[[2/14/11 : Bilski v. Kappos (kyergler)]]

Notes on the case (2010 case)

[[3/23/11 : Homework based on "In Re Hall" (kyergler)]]

*This is my homework exploring different types of "printed publication" based on the case discussed in class, "In re Hall"

ESB Briefs

2011-03-03T23:20:11Z

Hamburgler:

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
#kyergler
#
#
#
#
#
* Brief for Petitioner. (Jan. 1939)
#Kschlax
#Andy Stulc
#Mzahm
#Rabot
#Peter Mitros
#
#
#
#
#

2/14/11 : Bilski v. Kappos (kyergler)

2011-02-14T17:37:59Z

Hamburgler:

== Class Notes ==

This case went into detail about the validity/invalidity of the "machine-or-transformation test" which argued the invalidity of the Bilski patent. The patent was a hedging process that included a computer program. There were 3 different concurring verdicts, but the reasoning behind them were pretty different. The first opinion agreed with the use of the "M-or-T test" as the sole patent-identifying test, whereas the second opinion didn't like it. Plus, the second opinion argued that any business method has historically been denied patentability, and that should not change today.

The Examiner, Patent Office, and all courts turned down the patent.

*Machine-or-Transformation Test
**Not stated or properly inferred in section 101

2/14/11 : Bilski v. Kappos (kyergler)

2011-02-14T17:11:56Z

Hamburgler: Created page with "== Class Notes == This case went into detail about the validity/invalidity of the "machine-or-transformation test" which argued the invalidity of the Bilski patent. The patent ..."

User:Hamburgler

2011-02-14T16:48:53Z

Hamburgler:

Bilski brief list

2011-02-13T19:38:35Z

Hamburgler:

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
#Eric Paul
#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)
#Hamburgler
#Brief of F%21ed%21eration Internationale Des Conseils En Propri%21et%21e Industrielle as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Law Professor Kevin Emerson Collins in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Legal OnRamp in Support of Neither Party (Aug. 6, 2009)
#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)

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T04:03:25Z

Hamburgler:

To view the online code about non-obviousness, click [http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000103----000-.html 103 USC 35]

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

=====35 USC 103 (1952)=====
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

Section 103 is summarized as follows:
: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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===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

Aside from the words of Learned Hand, this case specifically brought up the role of "prior art" in the discussion of obviousness. Lyon's patent had claimed to create a film or coating for glass that successfully kept light from reflecting off and made it much stronger. This would be extremely important in wartime situations in which a sniper rifle scope, with its main intention being secret and hidden, does not give away the position of the sniper. This is not the only reason why this film would be beneficial, but this is a more appropriate example. The case, however, questions whether the invention had been disclosed in an earlier patent or been in public use before the issuance of the patent. Disclosure in an earlier patent would prove two things: 1) that the discovery is not one of novelty, and 2) that the study and use of the product has already been documented and researched. The reason that this is significant is because revealing prior art similar to the patent in question shows a non-obvious progression of ideas, thus making the patent invalid. As mentioned in the above quote, workers in the field had unsuccessfully spent over 10 years creating a hardy coating to prevent reflection. The fact that Lyon's patent successfully did this expelled the argument that the prior art made it invalid. Had any prior attempts been relatively successful, Lyon's patent may not have been held valid; but 10 years of unsuccessful attempts made Lyon's patent stand out as non-obvious and novel.

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]], two cases were described in great detail: the first being Graham v. John Deere, the second being Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical.

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

This case went to the Supreme Court because of a colflict between Circuit Courts, which makes sense given the dates of the patents in the case. Graham obtained a patent in 1950 (patent '811) for a spring clamp on a plow that absorbs shock from plow shanks so as not to damage the device. After realizing a small but significant improvement to the '811 patent where the shank position was inverted, Graham filed for a new patent in 1953 (patent '798) which was rejected by the patent office. Since the Patent Act was created in 1952, this '798 patent discussion resulted in a case of non-obviousness headed by Mr. Justice Clark. He led the argument of the petitioners of Graham in a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness" defined by section 103. 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.

It is important to note that Graham's '798 patent was considered under 103 as an improvement well within the expected skill of the art and devoid of invention. Since the only mechanical difference between '798 and '811 was a location of the shank hinge, a simple improvement like this was well within the knowledge of a person with ordinary skill in the art. Even though there was significant utility advantages, that is secondary to ordinary skill within the art.

Along with non-obvious nature, the hinge structure was identical in mechanical structure as a prior art: the Glencoe clamp. Not only were the differences between '798 and the Glencoe clamp nonobvious, there were no mechanical distinctions. Thus, Graham's patent was held invalid under section 103.

=====Calmar, Inc. v. Cook Chemical Co.=====

This case stresses the hierarchy of primary and secondary considerations in deciding the validity of a patent. Cook Chemical claims a patent for a plastic finger-sprayer with a built-in dispenser lid designed for easy shipment of sprayers without worrying about a detachable sprayer lid. Calmar was accused of infringement, and the case followed. Cook's device was viewed by the Court as non-obviousness as a result of prior art. It was decided that the Cook Chemical patent presented no patentable difference between itself and prior art. The aformentioned prior art was designed for liquid pouring spouts and not pump sprayers, but the mechanical device was very similar.

To summarize, Cook Chemical's patent was claimed to solve a long-felt need in the industry for a built-in dispenser lid for a sprayer that does not leak, but the Court saw the same mechanical device in a prior art, even though it was intended for pouring liquid and not spraying. Essentially the argument was,

:a) a product that solved a long-felt and economic need,

:vs
:b) a product using the same mechanical device as prior art but for a different result.

Referencing Graham v. John Deere, the long-felt and economic need for the product-in-question is a secondary consideration compared to its similarity to prior art. Thus, the patent was held invalid under section 103.

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

Mr. Justice Clark delivered the opinion of this court ruling of David vs. Goliath. Adams had a patent for a wet battery: water activation, with cuprous chloride and magnesium electrodes. The battery was "the first practical, water-activated, constant potential battery that could be fabricated and stored indefinitely without any fluid in its cells." The reason this is important is because the US claimed multiple prior art that was intended to make Adam's battery patent invalid:

*Marie Davy Cell: invented in 1860, battery comprises a zinc anode & a silver chloride cathode. As long as the system is open, the battery does not "work upon itself".

*Wood patent: uses magnesium as the positive electrode. Wood's solution to the problem of corrosion was to use a "neutral electrolyte containing a strong soluble oxidizing agent adapted to reduce the rate of corrosion of the magnesium electrode on open circuit". NO INDICATION of coupling with cuprous chloride, nor water-activated.

*Codd treatise: simply lists magnesium in an electromotive series table, and references the cuprous ion.

*Wensky patent: issued in Great Britain in 1891, relates to the use of cuprous chloride as a depolarizing agent, but does not mention magnesium or a water-activated battery.

*Skrivanoff patent: designed to give intermittent (not continuous) service. Claims magnesium as an electrode, but no mention of cuprous chloride as a cathode. Plus, tests under the Skrivanoff patent resulted first in fire, next in explosion.

As noted by the descriptions of all the tests, there was no previous work that imitated Adam's work that would rule it as obvious. The Government claimed Adam's patent was not one of novelty nor non-obviousness, but the Supreme Court ruled otherwise because:
*the combination of elements in the wet battery was not well known within the prior art
*ordinary skill in the art would not lead to the combination of elements in Adam's patent

Thus, under section 103, the patent was upheld as nonobvious.

===Anderson's Black Rock v. Pavement Salvage (1969)===

Things seem relatively clear at this point, but in [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] more arguments came about stressing secondary considerations. This case also shows a cohesion of sections 102 and 103, by ruling a patent invalid due to lack of novelty and presence of obviousness.

The patent in question is the combination of a radiant heat-burner on the front of a standard paving machine. The petitioners "fervently" argued that this combination filled a long-felt want and shown a large economic success. However, these two claims are secondary considerations with reference to section 103 USC 35. The radiant heat-burner and the standard paving machine are both well known and used in the bituminous paving industry, and the use of them do go hand in hand. Since the process of paving requires both machines, the Court ruled that it is obvious to someone with ordinary skill in the art to combine the two machines onto one chassis. In addition to this, the combination of the two machines added nothing to the nature or quality of either machine. It was simply a physical combination of the two machines that would otherwise be used back-to-back in the paving process. Since this added nothing to the quality of the already patented radiant heat burner, the patent was held invalid under section 102 (novelty) as well.

== Understanding the Supreme Court Rulings ==

The purpose of the Supreme Court is to interpret the Constitution, and in doing so it decides cases in which there needs to be an important clarification in the law. Laws are meant to be specific guidelines, but there are very few cases that go to court that are clear, cut and dry issues relative to laws. The Court system is meant to interpret the law and judge accordingly, but they are not meant to create new laws. Consider the following:

In the case of KSR International Co. v. Teleflex, Inc. (2007), the Court of Appeals issued a "TSM" test (teaching, suggesting, motivation test) to judge obviousness. Its purpose was to define "obviousness" as a set of clear and simple rules. Since nonobviousness is a difficult matter to understand, the Court of Appeals created a set of guidelines to define obviousness by throught this TSM test. The Supreme Court found issue with this in the sense that nonobviousness cannot be defined by clear and simple rules because it varies from case to case.

The Supreme Court interprets the Constitutional Law as fair and as justly as possible, but creating backhand unofficial laws like the use of the TSM test is a dangerous and improper way to handle a court case. In order to fairly judge a case, the only laws that can be referenced and applied are laws of the U.S. Constitution.

== Understanding Non-Obviousness ==

As explained in the many cases explained above, non-obviousness is a difficult matter. There have been many ways to relate non-obviousness into terms that are more intuitively understandable to us as engineers.

=====The Inventive Step=====

The inventive step is not defined by the "random stroke of genius" as once described by the court; rather, it is the process by which one creates a novel idea. This goes hand in hand with non-obviousness because many inventions come out of the improvement of another's idea. It is human nature to improve things, not just create things out of thin air. Unfortunately, this runs into the problem of obviousness and novelty. With any "improvement" invention, non-obviousness may make the invention unpatentable by prior art. The inventive step requires not just a random stroke of genius, but considerable research as a result of external factors. There is a difference between patents and inventions, but it is important to note that the inventive step is not just random ideas; rather, it is a progression of ideas.

=====Relationship with Novelty=====

Novelty and nonobviousness are not mutually exclusive characteristics for a patent. For example, take Anderson's Black Rock Inc. v. Pavement Co. as an example of a patent that was not novel and was obvious for the same reason: it was way too simple of an idea. The fact that these two characteristics have a relationship in law is due to its combination definition of an invention. An invention can be defined by something that is new and non-obvious.

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T03:57:37Z

Hamburgler:

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T03:34:05Z

Hamburgler: /* 35 USC 103 (1952) */

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

=====35 USC 103 (1952)=====
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

Section 103 is summarized as follows:
: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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===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

Aside from the words of Learned Hand, this case specifically brought up the role of "prior art" in the discussion of obviousness. Lyon's patent had claimed to create a film or coating for glass that successfully kept light from reflecting off and made it much stronger. This would be extremely important in wartime situations in which a sniper rifle scope, with its main intention being secret and hidden, does not give away the position of the sniper. This is not the only reason why this film would be beneficial, but this is a more appropriate example. The case, however, questions whether the invention had been disclosed in an earlier patent or been in public use before the issuance of the patent. Disclosure in an earlier patent would prove two things: 1) that the discovery is not one of novelty, and 2) that the study and use of the product has already been documented and researched. The reason that this is significant is because revealing prior art similar to the patent in question shows a non-obvious progression of ideas, thus making the patent invalid. As mentioned in the above quote, workers in the field had unsuccessfully spent over 10 years creating a hardy coating to prevent reflection. The fact that Lyon's patent successfully did this expelled the argument that the prior art made it invalid. Had any prior attempts been relatively successful, Lyon's patent may not have been held valid; but 10 years of unsuccessful attempts made Lyon's patent stand out as non-obvious and novel.

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]], two cases were described in great detail: the first being Graham v. John Deere, the second being Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical.

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

This case went to the Supreme Court because of a colflict between Circuit Courts, which makes sense given the dates of the patents in the case. Graham obtained a patent in 1950 (patent '811) for a spring clamp on a plow that absorbs shock from plow shanks so as not to damage the device. After realizing a small but significant improvement to the '811 patent where the shank position was inverted, Graham filed for a new patent in 1953 (patent '798) which was rejected by the patent office. Since the Patent Act was created in 1952, this '798 patent discussion resulted in a case of non-obviousness headed by Mr. Justice Clark. He led the argument of the petitioners of Graham in a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness" defined by section 103. 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.

It is important to note that Graham's '798 patent was considered under 103 as an improvement well within the expected skill of the art and devoid of invention. Since the only mechanical difference between '798 and '811 was a location of the shank hinge, a simple improvement like this was well within the knowledge of a person with ordinary skill in the art. Even though there was significant utility advantages, that is secondary to ordinary skill within the art.

Along with non-obvious nature, the hinge structure was identical in mechanical structure as a prior art: the Glencoe clamp. Not only were the differences between '798 and the Glencoe clamp nonobvious, there were no mechanical distinctions. Thus, Graham's patent was held invalid under section 103.

=====Calmar, Inc. v. Cook Chemical Co.=====

This case stresses the hierarchy of primary and secondary considerations in deciding the validity of a patent. Cook Chemical claims a patent for a plastic finger-sprayer with a built-in dispenser lid designed for easy shipment of sprayers without worrying about a detachable sprayer lid. Calmar was accused of infringement, and the case followed. Cook's device was viewed by the Court as non-obviousness as a result of prior art. It was decided that the Cook Chemical patent presented no patentable difference between itself and prior art. The aformentioned prior art was designed for liquid pouring spouts and not pump sprayers, but the mechanical device was very similar.

To summarize, Cook Chemical's patent was claimed to solve a long-felt need in the industry for a built-in dispenser lid for a sprayer that does not leak, but the Court saw the same mechanical device in a prior art, even though it was intended for pouring liquid and not spraying. Essentially the argument was,

:a) a product that solved a long-felt and economic need,

:vs
:b) a product using the same mechanical device as prior art but for a different result.

Referencing Graham v. John Deere, the long-felt and economic need for the product-in-question is a secondary consideration compared to its similarity to prior art. Thus, the patent was held invalid under section 103.

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

Mr. Justice Clark delivered the opinion of this court ruling of David vs. Goliath. Adams had a patent for a wet battery: water activation, with cuprous chloride and magnesium electrodes. The battery was "the first practical, water-activated, constant potential battery that could be fabricated and stored indefinitely without any fluid in its cells." The reason this is important is because the US claimed multiple prior art that was intended to make Adam's battery patent invalid:

*Marie Davy Cell: invented in 1860, battery comprises a zinc anode & a silver chloride cathode. As long as the system is open, the battery does not "work upon itself".

*Wood patent: uses magnesium as the positive electrode. Wood's solution to the problem of corrosion was to use a "neutral electrolyte containing a strong soluble oxidizing agent adapted to reduce the rate of corrosion of the magnesium electrode on open circuit". NO INDICATION of coupling with cuprous chloride, nor water-activated.

*Codd treatise: simply lists magnesium in an electromotive series table, and references the cuprous ion.

*Wensky patent: issued in Great Britain in 1891, relates to the use of cuprous chloride as a depolarizing agent, but does not mention magnesium or a water-activated battery.

*Skrivanoff patent: designed to give intermittent (not continuous) service. Claims magnesium as an electrode, but no mention of cuprous chloride as a cathode. Plus, tests under the Skrivanoff patent resulted first in fire, next in explosion.

As noted by the descriptions of all the tests, there was no previous work that imitated Adam's work that would rule it as obvious. The Government claimed Adam's patent was not one of novelty nor non-obviousness, but the Supreme Court ruled otherwise because:
*the combination of elements in the wet battery was not well known within the prior art
*ordinary skill in the art would not lead to the combination of elements in Adam's patent

Thus, under section 103, the patent was upheld as nonobvious.

===Anderson's Black Rock v. Pavement Salvage (1969)===

Things seem relatively clear at this point, but in [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] more arguments came about stressing secondary considerations. This case also shows a cohesion of sections 102 and 103, by ruling a patent invalid due to lack of novelty and presence of obviousness.

The patent in question is the combination of a radiant heat-burner on the front of a standard paving machine. The petitioners "fervently" argued that this combination filled a long-felt want and shown a large economic success. However, these two claims are secondary considerations with reference to section 103 USC 35. The radiant heat-burner and the standard paving machine are both well known and used in the bituminous paving industry, and the use of them do go hand in hand. Since the process of paving requires both machines, the Court ruled that it is obvious to someone with ordinary skill in the art to combine the two machines onto one chassis. In addition to this, the combination of the two machines added nothing to the nature or quality of either machine. It was simply a physical combination of the two machines that would otherwise be used back-to-back in the paving process. Since this added nothing to the quality of the already patented radiant heat burner, the patent was held invalid under section 102 (novelty) as well.

== Understanding the Supreme Court Rulings ==

The purpose of the Supreme Court is to interpret the Constitution, and in doing so it decides cases in which there needs to be an important clarification in the law. Laws are meant to be specific guidelines, but there are very few cases that go to court that are clear, cut and dry issues relative to laws. The Court system is meant to interpret the law and judge accordingly, but they are not meant to create new laws. Consider the following:

In the case of KSR International Co. v. Teleflex, Inc. (2007), the Court of Appeals issued a "TSM" test (teaching, suggesting, motivation test) to judge obviousness. Its purpose was to define "obviousness" as a set of clear and simple rules. Since nonobviousness is a difficult matter to understand, the Court of Appeals created a set of guidelines to define obviousness by throught this TSM test. The Supreme Court found issue with this in the sense that nonobviousness cannot be defined by clear and simple rules because it varies from case to case.

The Supreme Court interprets the Constitutional Law as fair and as justly as possible, but creating backhand unofficial laws like the use of the TSM test is a dangerous and improper way to handle a court case. In order to fairly judge a case, the only laws that can be referenced and applied are laws of the U.S. Constitution.

== Understanding Non-Obviousness ==

==The Inventive Step==

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

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T03:33:55Z

Hamburgler: /* 35 USC 103 (1952) */

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T03:33:28Z

Hamburgler:

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

====35 USC 103 (1952)====
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

Section 103 is summarized as follows:
: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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===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

Aside from the words of Learned Hand, this case specifically brought up the role of "prior art" in the discussion of obviousness. Lyon's patent had claimed to create a film or coating for glass that successfully kept light from reflecting off and made it much stronger. This would be extremely important in wartime situations in which a sniper rifle scope, with its main intention being secret and hidden, does not give away the position of the sniper. This is not the only reason why this film would be beneficial, but this is a more appropriate example. The case, however, questions whether the invention had been disclosed in an earlier patent or been in public use before the issuance of the patent. Disclosure in an earlier patent would prove two things: 1) that the discovery is not one of novelty, and 2) that the study and use of the product has already been documented and researched. The reason that this is significant is because revealing prior art similar to the patent in question shows a non-obvious progression of ideas, thus making the patent invalid. As mentioned in the above quote, workers in the field had unsuccessfully spent over 10 years creating a hardy coating to prevent reflection. The fact that Lyon's patent successfully did this expelled the argument that the prior art made it invalid. Had any prior attempts been relatively successful, Lyon's patent may not have been held valid; but 10 years of unsuccessful attempts made Lyon's patent stand out as non-obvious and novel.

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]], two cases were described in great detail: the first being Graham v. John Deere, the second being Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical.

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

This case went to the Supreme Court because of a colflict between Circuit Courts, which makes sense given the dates of the patents in the case. Graham obtained a patent in 1950 (patent '811) for a spring clamp on a plow that absorbs shock from plow shanks so as not to damage the device. After realizing a small but significant improvement to the '811 patent where the shank position was inverted, Graham filed for a new patent in 1953 (patent '798) which was rejected by the patent office. Since the Patent Act was created in 1952, this '798 patent discussion resulted in a case of non-obviousness headed by Mr. Justice Clark. He led the argument of the petitioners of Graham in a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness" defined by section 103. 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.

It is important to note that Graham's '798 patent was considered under 103 as an improvement well within the expected skill of the art and devoid of invention. Since the only mechanical difference between '798 and '811 was a location of the shank hinge, a simple improvement like this was well within the knowledge of a person with ordinary skill in the art. Even though there was significant utility advantages, that is secondary to ordinary skill within the art.

Along with non-obvious nature, the hinge structure was identical in mechanical structure as a prior art: the Glencoe clamp. Not only were the differences between '798 and the Glencoe clamp nonobvious, there were no mechanical distinctions. Thus, Graham's patent was held invalid under section 103.

=====Calmar, Inc. v. Cook Chemical Co.=====

This case stresses the hierarchy of primary and secondary considerations in deciding the validity of a patent. Cook Chemical claims a patent for a plastic finger-sprayer with a built-in dispenser lid designed for easy shipment of sprayers without worrying about a detachable sprayer lid. Calmar was accused of infringement, and the case followed. Cook's device was viewed by the Court as non-obviousness as a result of prior art. It was decided that the Cook Chemical patent presented no patentable difference between itself and prior art. The aformentioned prior art was designed for liquid pouring spouts and not pump sprayers, but the mechanical device was very similar.

To summarize, Cook Chemical's patent was claimed to solve a long-felt need in the industry for a built-in dispenser lid for a sprayer that does not leak, but the Court saw the same mechanical device in a prior art, even though it was intended for pouring liquid and not spraying. Essentially the argument was,

:a) a product that solved a long-felt and economic need,

:vs
:b) a product using the same mechanical device as prior art but for a different result.

Referencing Graham v. John Deere, the long-felt and economic need for the product-in-question is a secondary consideration compared to its similarity to prior art. Thus, the patent was held invalid under section 103.

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

Mr. Justice Clark delivered the opinion of this court ruling of David vs. Goliath. Adams had a patent for a wet battery: water activation, with cuprous chloride and magnesium electrodes. The battery was "the first practical, water-activated, constant potential battery that could be fabricated and stored indefinitely without any fluid in its cells." The reason this is important is because the US claimed multiple prior art that was intended to make Adam's battery patent invalid:

*Marie Davy Cell: invented in 1860, battery comprises a zinc anode & a silver chloride cathode. As long as the system is open, the battery does not "work upon itself".

*Wood patent: uses magnesium as the positive electrode. Wood's solution to the problem of corrosion was to use a "neutral electrolyte containing a strong soluble oxidizing agent adapted to reduce the rate of corrosion of the magnesium electrode on open circuit". NO INDICATION of coupling with cuprous chloride, nor water-activated.

*Codd treatise: simply lists magnesium in an electromotive series table, and references the cuprous ion.

*Wensky patent: issued in Great Britain in 1891, relates to the use of cuprous chloride as a depolarizing agent, but does not mention magnesium or a water-activated battery.

*Skrivanoff patent: designed to give intermittent (not continuous) service. Claims magnesium as an electrode, but no mention of cuprous chloride as a cathode. Plus, tests under the Skrivanoff patent resulted first in fire, next in explosion.

As noted by the descriptions of all the tests, there was no previous work that imitated Adam's work that would rule it as obvious. The Government claimed Adam's patent was not one of novelty nor non-obviousness, but the Supreme Court ruled otherwise because:
*the combination of elements in the wet battery was not well known within the prior art
*ordinary skill in the art would not lead to the combination of elements in Adam's patent

Thus, under section 103, the patent was upheld as nonobvious.

===Anderson's Black Rock v. Pavement Salvage (1969)===

Things seem relatively clear at this point, but in [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] more arguments came about stressing secondary considerations. This case also shows a cohesion of sections 102 and 103, by ruling a patent invalid due to lack of novelty and presence of obviousness.

The patent in question is the combination of a radiant heat-burner on the front of a standard paving machine. The petitioners "fervently" argued that this combination filled a long-felt want and shown a large economic success. However, these two claims are secondary considerations with reference to section 103 USC 35. The radiant heat-burner and the standard paving machine are both well known and used in the bituminous paving industry, and the use of them do go hand in hand. Since the process of paving requires both machines, the Court ruled that it is obvious to someone with ordinary skill in the art to combine the two machines onto one chassis. In addition to this, the combination of the two machines added nothing to the nature or quality of either machine. It was simply a physical combination of the two machines that would otherwise be used back-to-back in the paving process. Since this added nothing to the quality of the already patented radiant heat burner, the patent was held invalid under section 102 (novelty) as well.

== Understanding the Supreme Court Rulings ==

The purpose of the Supreme Court is to interpret the Constitution, and in doing so it decides cases in which there needs to be an important clarification in the law. Laws are meant to be specific guidelines, but there are very few cases that go to court that are clear, cut and dry issues relative to laws. The Court system is meant to interpret the law and judge accordingly, but they are not meant to create new laws. Consider the following:

In the case of KSR International Co. v. Teleflex, Inc. (2007), the Court of Appeals issued a "TSM" test (teaching, suggesting, motivation test) to judge obviousness. Its purpose was to define "obviousness" as a set of clear and simple rules. Since nonobviousness is a difficult matter to understand, the Court of Appeals created a set of guidelines to define obviousness by throught this TSM test. The Supreme Court found issue with this in the sense that nonobviousness cannot be defined by clear and simple rules because it varies from case to case.

The Supreme Court interprets the Constitutional Law as fair and as justly as possible, but creating backhand unofficial laws like the use of the TSM test is a dangerous and improper way to handle a court case. In order to fairly judge a case, the only laws that can be referenced and applied are laws of the U.S. Constitution.

== Understanding Non-Obviousness ==

==The Inventive Step==

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

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T03:13:36Z

Hamburgler: /* Anderson's Black Rock v. Pavement Salvage (1969) */

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

====35 USC 103 (1952)====
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

Section 103 is summarized as follows:
: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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===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

Aside from the words of Learned Hand, this case specifically brought up the role of "prior art" in the discussion of obviousness. Lyon's patent had claimed to create a film or coating for glass that successfully kept light from reflecting off and made it much stronger. This would be extremely important in wartime situations in which a sniper rifle scope, with its main intention being secret and hidden, does not give away the position of the sniper. This is not the only reason why this film would be beneficial, but this is a more appropriate example. The case, however, questions whether the invention had been disclosed in an earlier patent or been in public use before the issuance of the patent. Disclosure in an earlier patent would prove two things: 1) that the discovery is not one of novelty, and 2) that the study and use of the product has already been documented and researched. The reason that this is significant is because revealing prior art similar to the patent in question shows a non-obvious progression of ideas, thus making the patent invalid. As mentioned in the above quote, workers in the field had unsuccessfully spent over 10 years creating a hardy coating to prevent reflection. The fact that Lyon's patent successfully did this expelled the argument that the prior art made it invalid. Had any prior attempts been relatively successful, Lyon's patent may not have been held valid; but 10 years of unsuccessful attempts made Lyon's patent stand out as non-obvious and novel.

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]], two cases were described in great detail: the first being Graham v. John Deere, the second being Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical.

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

This case went to the Supreme Court because of a colflict between Circuit Courts, which makes sense given the dates of the patents in the case. Graham obtained a patent in 1950 (patent '811) for a spring clamp on a plow that absorbs shock from plow shanks so as not to damage the device. After realizing a small but significant improvement to the '811 patent where the shank position was inverted, Graham filed for a new patent in 1953 (patent '798) which was rejected by the patent office. Since the Patent Act was created in 1952, this '798 patent discussion resulted in a case of non-obviousness headed by Mr. Justice Clark. He led the argument of the petitioners of Graham in a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness" defined by section 103. 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.

It is important to note that Graham's '798 patent was considered under 103 as an improvement well within the expected skill of the art and devoid of invention. Since the only mechanical difference between '798 and '811 was a location of the shank hinge, a simple improvement like this was well within the knowledge of a person with ordinary skill in the art. Even though there was significant utility advantages, that is secondary to ordinary skill within the art.

Along with non-obvious nature, the hinge structure was identical in mechanical structure as a prior art: the Glencoe clamp. Not only were the differences between '798 and the Glencoe clamp nonobvious, there were no mechanical distinctions. Thus, Graham's patent was held invalid under section 103.

=====Calmar, Inc. v. Cook Chemical Co.=====

This case stresses the hierarchy of primary and secondary considerations in deciding the validity of a patent. Cook Chemical claims a patent for a plastic finger-sprayer with a built-in dispenser lid designed for easy shipment of sprayers without worrying about a detachable sprayer lid. Calmar was accused of infringement, and the case followed. Cook's device was viewed by the Court as non-obviousness as a result of prior art. It was decided that the Cook Chemical patent presented no patentable difference between itself and prior art. The aformentioned prior art was designed for liquid pouring spouts and not pump sprayers, but the mechanical device was very similar.

To summarize, Cook Chemical's patent was claimed to solve a long-felt need in the industry for a built-in dispenser lid for a sprayer that does not leak, but the Court saw the same mechanical device in a prior art, even though it was intended for pouring liquid and not spraying. Essentially the argument was,

:a) a product that solved a long-felt and economic need,

:vs
:b) a product using the same mechanical device as prior art but for a different result.

Referencing Graham v. John Deere, the long-felt and economic need for the product-in-question is a secondary consideration compared to its similarity to prior art. Thus, the patent was held invalid under section 103.

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

Mr. Justice Clark delivered the opinion of this court ruling of David vs. Goliath. Adams had a patent for a wet battery: water activation, with cuprous chloride and magnesium electrodes. The battery was "the first practical, water-activated, constant potential battery that could be fabricated and stored indefinitely without any fluid in its cells." The reason this is important is because the US claimed multiple prior art that was intended to make Adam's battery patent invalid:

*Marie Davy Cell: invented in 1860, battery comprises a zinc anode & a silver chloride cathode. As long as the system is open, the battery does not "work upon itself".

*Wood patent: uses magnesium as the positive electrode. Wood's solution to the problem of corrosion was to use a "neutral electrolyte containing a strong soluble oxidizing agent adapted to reduce the rate of corrosion of the magnesium electrode on open circuit". NO INDICATION of coupling with cuprous chloride, nor water-activated.

*Codd treatise: simply lists magnesium in an electromotive series table, and references the cuprous ion.

*Wensky patent: issued in Great Britain in 1891, relates to the use of cuprous chloride as a depolarizing agent, but does not mention magnesium or a water-activated battery.

*Skrivanoff patent: designed to give intermittent (not continuous) service. Claims magnesium as an electrode, but no mention of cuprous chloride as a cathode. Plus, tests under the Skrivanoff patent resulted first in fire, next in explosion.

As noted by the descriptions of all the tests, there was no previous work that imitated Adam's work that would rule it as obvious. The Government claimed Adam's patent was not one of novelty nor non-obviousness, but the Supreme Court ruled otherwise because:
*the combination of elements in the wet battery was not well known within the prior art
*ordinary skill in the art would not lead to the combination of elements in Adam's patent

Thus, under section 103, the patent was upheld as nonobvious.

===Anderson's Black Rock v. Pavement Salvage (1969)===

Things seem relatively clear at this point, but in [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] more arguments came about stressing secondary considerations. This case also shows a cohesion of sections 102 and 103, by ruling a patent invalid due to lack of novelty and presence of obviousness.

The patent in question is the combination of a radiant heat-burner on the front of a standard paving machine. The petitioners "fervently" argued that this combination filled a long-felt want and shown a large economic success. However, these two claims are secondary considerations with reference to section 103 USC 35. The radiant heat-burner and the standard paving machine are both well known and used in the bituminous paving industry, and the use of them do go hand in hand. Since the process of paving requires both machines, the Court ruled that it is obvious to someone with ordinary skill in the art to combine the two machines onto one chassis. In addition to this, the combination of the two machines added nothing to the nature or quality of either machine. It was simply a physical combination of the two machines that would otherwise be used back-to-back in the paving process. Since this added nothing to the quality of the already patented radiant heat burner, the patent was held invalid under section 102 (novelty) as well.

==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==

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T03:02:29Z

Hamburgler: /* 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.

====35 USC 103 (1952)====
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

Section 103 is summarized as follows:
: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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===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

Aside from the words of Learned Hand, this case specifically brought up the role of "prior art" in the discussion of obviousness. Lyon's patent had claimed to create a film or coating for glass that successfully kept light from reflecting off and made it much stronger. This would be extremely important in wartime situations in which a sniper rifle scope, with its main intention being secret and hidden, does not give away the position of the sniper. This is not the only reason why this film would be beneficial, but this is a more appropriate example. The case, however, questions whether the invention had been disclosed in an earlier patent or been in public use before the issuance of the patent. Disclosure in an earlier patent would prove two things: 1) that the discovery is not one of novelty, and 2) that the study and use of the product has already been documented and researched. The reason that this is significant is because revealing prior art similar to the patent in question shows a non-obvious progression of ideas, thus making the patent invalid. As mentioned in the above quote, workers in the field had unsuccessfully spent over 10 years creating a hardy coating to prevent reflection. The fact that Lyon's patent successfully did this expelled the argument that the prior art made it invalid. Had any prior attempts been relatively successful, Lyon's patent may not have been held valid; but 10 years of unsuccessful attempts made Lyon's patent stand out as non-obvious and novel.

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]], two cases were described in great detail: the first being Graham v. John Deere, the second being Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical.

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

This case went to the Supreme Court because of a colflict between Circuit Courts, which makes sense given the dates of the patents in the case. Graham obtained a patent in 1950 (patent '811) for a spring clamp on a plow that absorbs shock from plow shanks so as not to damage the device. After realizing a small but significant improvement to the '811 patent where the shank position was inverted, Graham filed for a new patent in 1953 (patent '798) which was rejected by the patent office. Since the Patent Act was created in 1952, this '798 patent discussion resulted in a case of non-obviousness headed by Mr. Justice Clark. He led the argument of the petitioners of Graham in a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness" defined by section 103. 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.

It is important to note that Graham's '798 patent was considered under 103 as an improvement well within the expected skill of the art and devoid of invention. Since the only mechanical difference between '798 and '811 was a location of the shank hinge, a simple improvement like this was well within the knowledge of a person with ordinary skill in the art. Even though there was significant utility advantages, that is secondary to ordinary skill within the art.

Along with non-obvious nature, the hinge structure was identical in mechanical structure as a prior art: the Glencoe clamp. Not only were the differences between '798 and the Glencoe clamp nonobvious, there were no mechanical distinctions. Thus, Graham's patent was held invalid under section 103.

=====Calmar, Inc. v. Cook Chemical Co.=====

This case stresses the hierarchy of primary and secondary considerations in deciding the validity of a patent. Cook Chemical claims a patent for a plastic finger-sprayer with a built-in dispenser lid designed for easy shipment of sprayers without worrying about a detachable sprayer lid. Calmar was accused of infringement, and the case followed. Cook's device was viewed by the Court as non-obviousness as a result of prior art. It was decided that the Cook Chemical patent presented no patentable difference between itself and prior art. The aformentioned prior art was designed for liquid pouring spouts and not pump sprayers, but the mechanical device was very similar.

To summarize, Cook Chemical's patent was claimed to solve a long-felt need in the industry for a built-in dispenser lid for a sprayer that does not leak, but the Court saw the same mechanical device in a prior art, even though it was intended for pouring liquid and not spraying. Essentially the argument was,

:a) a product that solved a long-felt and economic need,

:vs
:b) a product using the same mechanical device as prior art but for a different result.

Referencing Graham v. John Deere, the long-felt and economic need for the product-in-question is a secondary consideration compared to its similarity to prior art. Thus, the patent was held invalid under section 103.

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

Mr. Justice Clark delivered the opinion of this court ruling of David vs. Goliath. Adams had a patent for a wet battery: water activation, with cuprous chloride and magnesium electrodes. The battery was "the first practical, water-activated, constant potential battery that could be fabricated and stored indefinitely without any fluid in its cells." The reason this is important is because the US claimed multiple prior art that was intended to make Adam's battery patent invalid:

*Marie Davy Cell: invented in 1860, battery comprises a zinc anode & a silver chloride cathode. As long as the system is open, the battery does not "work upon itself".

*Wood patent: uses magnesium as the positive electrode. Wood's solution to the problem of corrosion was to use a "neutral electrolyte containing a strong soluble oxidizing agent adapted to reduce the rate of corrosion of the magnesium electrode on open circuit". NO INDICATION of coupling with cuprous chloride, nor water-activated.

*Codd treatise: simply lists magnesium in an electromotive series table, and references the cuprous ion.

*Wensky patent: issued in Great Britain in 1891, relates to the use of cuprous chloride as a depolarizing agent, but does not mention magnesium or a water-activated battery.

*Skrivanoff patent: designed to give intermittent (not continuous) service. Claims magnesium as an electrode, but no mention of cuprous chloride as a cathode. Plus, tests under the Skrivanoff patent resulted first in fire, next in explosion.

As noted by the descriptions of all the tests, there was no previous work that imitated Adam's work that would rule it as obvious. The Government claimed Adam's patent was not one of novelty nor non-obviousness, but the Supreme Court ruled otherwise because:
*the combination of elements in the wet battery was not well known within the prior art
*ordinary skill in the art would not lead to the combination of elements in Adam's patent

Thus, under section 103, the patent was upheld as nonobvious.

===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==

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T03:01:01Z

Hamburgler: /* 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.

====35 USC 103 (1952)====
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

Section 103 is summarized as follows:
: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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===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

Aside from the words of Learned Hand, this case specifically brought up the role of "prior art" in the discussion of obviousness. Lyon's patent had claimed to create a film or coating for glass that successfully kept light from reflecting off and made it much stronger. This would be extremely important in wartime situations in which a sniper rifle scope, with its main intention being secret and hidden, does not give away the position of the sniper. This is not the only reason why this film would be beneficial, but this is a more appropriate example. The case, however, questions whether the invention had been disclosed in an earlier patent or been in public use before the issuance of the patent. Disclosure in an earlier patent would prove two things: 1) that the discovery is not one of novelty, and 2) that the study and use of the product has already been documented and researched. The reason that this is significant is because revealing prior art similar to the patent in question shows a non-obvious progression of ideas, thus making the patent invalid. As mentioned in the above quote, workers in the field had unsuccessfully spent over 10 years creating a hardy coating to prevent reflection. The fact that Lyon's patent successfully did this expelled the argument that the prior art made it invalid. Had any prior attempts been relatively successful, Lyon's patent may not have been held valid; but 10 years of unsuccessful attempts made Lyon's patent stand out as non-obvious and novel.

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]], two cases were described in great detail: the first being Graham v. John Deere, the second being Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical.

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

This case went to the Supreme Court because of a colflict between Circuit Courts, which makes sense given the dates of the patents in the case. Graham obtained a patent in 1950 (patent '811) for a spring clamp on a plow that absorbs shock from plow shanks so as not to damage the device. After realizing a small but significant improvement to the '811 patent where the shank position was inverted, Graham filed for a new patent in 1953 (patent '798) which was rejected by the patent office. Since the Patent Act was created in 1952, this '798 patent discussion resulted in a case of non-obviousness headed by Mr. Justice Clark. He led the argument of the petitioners of Graham in a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness" defined by section 103. 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.

It is important to note that Graham's '798 patent was considered under 103 as an improvement well within the expected skill of the art and devoid of invention. Since the only mechanical difference between '798 and '811 was a location of the shank hinge, a simple improvement like this was well within the knowledge of a person with ordinary skill in the art. Even though there was significant utility advantages, that is secondary to ordinary skill within the art.

Along with non-obvious nature, the hinge structure was identical in mechanical structure as a prior art: the Glencoe clamp. Not only were the differences between '798 and the Glencoe clamp nonobvious, there were no mechanical distinctions. Thus, Graham's patent was held invalid under section 103.

=====Calmar, Inc. v. Cook Chemical Co.=====

This case stresses the hierarchy of primary and secondary considerations in deciding the validity of a patent. Cook Chemical claims a patent for a plastic finger-sprayer with a built-in dispenser lid designed for easy shipment of sprayers without worrying about a detachable sprayer lid. Calmar was accused of infringement, and the case followed. Cook's device was viewed by the Court as non-obviousness as a result of prior art. It was decided that the Cook Chemical patent presented no patentable difference between itself and prior art. The aformentioned prior art was designed for liquid pouring spouts and not pump sprayers, but the mechanical device was very similar.

To summarize, Cook Chemical's patent was claimed to solve a long-felt need in the industry for a built-in dispenser lid for a sprayer that does not leak, but the Court saw the same mechanical device in a prior art, even though it was intended for pouring liquid and not spraying. Essentially the argument was,

:a) a product that solved a long-felt and economic need,

:vs
:b) a product using the same mechanical device as prior art but for a different result.

Referencing Graham v. John Deere, the long-felt and economic need for the product-in-question is a secondary consideration compared to its similarity to prior art. Thus, the patent was held invalid under section 103.

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

Mr. Justice Clark delivered the opinion of this court ruling of David vs. Goliath. Adams had a patent for a wet battery: water activation, with cuprous chloride and magnesium electrodes. The battery was "the first practical, water-activated, constant potential battery that could be fabricated and stored indefinitely without any fluid in its cells." The reason this is important is because the US claimed multiple prior art that was intended to make Adam's battery patent invalid:

*Marie Davy Cell: invented in 1860, battery comprises a zinc anode & a silver chloride cathode. As long as the system is open, the battery does not "work upon itself".

*Wood patent: uses magnesium as the positive electrode. Wood's solution to the problem of corrosion was to use a "neutral electrolyte containing a strong soluble oxidizing agent adapted to reduce the rate of corrosion of the magnesium electrode on open circuit". NO INDICATION of coupling with cuprous chloride, nor water-activated.

*Codd treatise: simply lists magnesium in an electromotive series table, and references the cuprous ion.

*Wensky patent: issued in Great Britain in 1891, relates to the use of cuprous chloride as a depolarizing agent, but does not mention magnesium or a water-activated battery.

*Skrivanoff patent: designed to give intermittent (not continuous) service. Claims magnesium as an electrode, but no mention of cuprous chloride as a cathode. Plus, tests under the Skrivanoff patent resulted first in fire, next in explosion.

As noted by the descriptions of all the tests, there was no previous work that imitated Adam's work that would rule it as obvious. The Government claimed Adam's patent was not one of novelty nor non-obviousness, but the Supreme Court ruled otherwise because:
*the combination of elements in the wet battery was not well known within the prior art
*ordinary skill in the art would not lead to the combination of elements in Adam's patent
*

* 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==

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T02:42:36Z

Hamburgler: /* Calmar, Inc. v. Cook Chemical Co. */

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

====35 USC 103 (1952)====
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

Section 103 is summarized as follows:
: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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===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

Aside from the words of Learned Hand, this case specifically brought up the role of "prior art" in the discussion of obviousness. Lyon's patent had claimed to create a film or coating for glass that successfully kept light from reflecting off and made it much stronger. This would be extremely important in wartime situations in which a sniper rifle scope, with its main intention being secret and hidden, does not give away the position of the sniper. This is not the only reason why this film would be beneficial, but this is a more appropriate example. The case, however, questions whether the invention had been disclosed in an earlier patent or been in public use before the issuance of the patent. Disclosure in an earlier patent would prove two things: 1) that the discovery is not one of novelty, and 2) that the study and use of the product has already been documented and researched. The reason that this is significant is because revealing prior art similar to the patent in question shows a non-obvious progression of ideas, thus making the patent invalid. As mentioned in the above quote, workers in the field had unsuccessfully spent over 10 years creating a hardy coating to prevent reflection. The fact that Lyon's patent successfully did this expelled the argument that the prior art made it invalid. Had any prior attempts been relatively successful, Lyon's patent may not have been held valid; but 10 years of unsuccessful attempts made Lyon's patent stand out as non-obvious and novel.

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]], two cases were described in great detail: the first being Graham v. John Deere, the second being Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical.

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

This case went to the Supreme Court because of a colflict between Circuit Courts, which makes sense given the dates of the patents in the case. Graham obtained a patent in 1950 (patent '811) for a spring clamp on a plow that absorbs shock from plow shanks so as not to damage the device. After realizing a small but significant improvement to the '811 patent where the shank position was inverted, Graham filed for a new patent in 1953 (patent '798) which was rejected by the patent office. Since the Patent Act was created in 1952, this '798 patent discussion resulted in a case of non-obviousness headed by Mr. Justice Clark. He led the argument of the petitioners of Graham in a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness" defined by section 103. 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.

It is important to note that Graham's '798 patent was considered under 103 as an improvement well within the expected skill of the art and devoid of invention. Since the only mechanical difference between '798 and '811 was a location of the shank hinge, a simple improvement like this was well within the knowledge of a person with ordinary skill in the art. Even though there was significant utility advantages, that is secondary to ordinary skill within the art.

Along with non-obvious nature, the hinge structure was identical in mechanical structure as a prior art: the Glencoe clamp. Not only were the differences between '798 and the Glencoe clamp nonobvious, there were no mechanical distinctions. Thus, Graham's patent was held invalid under section 103.

=====Calmar, Inc. v. Cook Chemical Co.=====

This case stresses the hierarchy of primary and secondary considerations in deciding the validity of a patent. Cook Chemical claims a patent for a plastic finger-sprayer with a built-in dispenser lid designed for easy shipment of sprayers without worrying about a detachable sprayer lid. Calmar was accused of infringement, and the case followed. Cook's device was viewed by the Court as non-obviousness as a result of prior art. It was decided that the Cook Chemical patent presented no patentable difference between itself and prior art. The aformentioned prior art was designed for liquid pouring spouts and not pump sprayers, but the mechanical device was very similar.

To summarize, Cook Chemical's patent was claimed to solve a long-felt need in the industry for a built-in dispenser lid for a sprayer that does not leak, but the Court saw the same mechanical device in a prior art, even though it was intended for pouring liquid and not spraying. Essentially the argument was,

:a) a product that solved a long-felt and economic need,

:vs
:b) a product using the same mechanical device as prior art but for a different result.

Referencing Graham v. John Deere, the long-felt and economic need for the product-in-question is a secondary consideration compared to its similarity to prior art. Thus, the patent was held invalid under section 103.

===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==

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T02:42:10Z

Hamburgler: /* 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.

====35 USC 103 (1952)====
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

Section 103 is summarized as follows:
: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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===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

Aside from the words of Learned Hand, this case specifically brought up the role of "prior art" in the discussion of obviousness. Lyon's patent had claimed to create a film or coating for glass that successfully kept light from reflecting off and made it much stronger. This would be extremely important in wartime situations in which a sniper rifle scope, with its main intention being secret and hidden, does not give away the position of the sniper. This is not the only reason why this film would be beneficial, but this is a more appropriate example. The case, however, questions whether the invention had been disclosed in an earlier patent or been in public use before the issuance of the patent. Disclosure in an earlier patent would prove two things: 1) that the discovery is not one of novelty, and 2) that the study and use of the product has already been documented and researched. The reason that this is significant is because revealing prior art similar to the patent in question shows a non-obvious progression of ideas, thus making the patent invalid. As mentioned in the above quote, workers in the field had unsuccessfully spent over 10 years creating a hardy coating to prevent reflection. The fact that Lyon's patent successfully did this expelled the argument that the prior art made it invalid. Had any prior attempts been relatively successful, Lyon's patent may not have been held valid; but 10 years of unsuccessful attempts made Lyon's patent stand out as non-obvious and novel.

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]], two cases were described in great detail: the first being Graham v. John Deere, the second being Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical.

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

This case went to the Supreme Court because of a colflict between Circuit Courts, which makes sense given the dates of the patents in the case. Graham obtained a patent in 1950 (patent '811) for a spring clamp on a plow that absorbs shock from plow shanks so as not to damage the device. After realizing a small but significant improvement to the '811 patent where the shank position was inverted, Graham filed for a new patent in 1953 (patent '798) which was rejected by the patent office. Since the Patent Act was created in 1952, this '798 patent discussion resulted in a case of non-obviousness headed by Mr. Justice Clark. He led the argument of the petitioners of Graham in a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness" defined by section 103. 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.

It is important to note that Graham's '798 patent was considered under 103 as an improvement well within the expected skill of the art and devoid of invention. Since the only mechanical difference between '798 and '811 was a location of the shank hinge, a simple improvement like this was well within the knowledge of a person with ordinary skill in the art. Even though there was significant utility advantages, that is secondary to ordinary skill within the art.

Along with non-obvious nature, the hinge structure was identical in mechanical structure as a prior art: the Glencoe clamp. Not only were the differences between '798 and the Glencoe clamp nonobvious, there were no mechanical distinctions. Thus, Graham's patent was held invalid under section 103.

=====Calmar, Inc. v. Cook Chemical Co.=====

This case stresses the hierarchy of primary and secondary considerations in deciding the validity of a patent. Cook Chemical claims a patent for a plastic finger-sprayer with a built-in dispenser lid designed for easy shipment of sprayers without worrying about a detachable sprayer lid. Calmar was accused of infringement, and the case followed. Cook's device was viewed by the Court as non-obviousness as a result of prior art. It was decided that the Cook Chemical patent presented no patentable difference between itself and prior art. The aformentioned prior art was designed for liquid pouring spouts and not pump sprayers, but the mechanical device was very similar.

To summarize, Cook Chemical's patent was claimed to solve a long-felt need in the industry for a built-in dispenser lid for a sprayer that does not leak, but the Court saw the same mechanical device in a prior art, even though it was intended for pouring liquid and not spraying. Essentially the argument was,

:a) a product that solved a long-felt and economic need,
:vs b) a product using the same mechanical device as prior art but for a different result.

Referencing Graham v. John Deere, the long-felt and economic need for the product-in-question is a secondary consideration compared to its similarity to prior art. Thus, the patent was held invalid under section 103.

===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==

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T02:21:04Z

Hamburgler: /* 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.

====35 USC 103 (1952)====
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

Section 103 is summarized as follows:
: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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===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

Aside from the words of Learned Hand, this case specifically brought up the role of "prior art" in the discussion of obviousness. Lyon's patent had claimed to create a film or coating for glass that successfully kept light from reflecting off and made it much stronger. This would be extremely important in wartime situations in which a sniper rifle scope, with its main intention being secret and hidden, does not give away the position of the sniper. This is not the only reason why this film would be beneficial, but this is a more appropriate example. The case, however, questions whether the invention had been disclosed in an earlier patent or been in public use before the issuance of the patent. Disclosure in an earlier patent would prove two things: 1) that the discovery is not one of novelty, and 2) that the study and use of the product has already been documented and researched. The reason that this is significant is because revealing prior art similar to the patent in question shows a non-obvious progression of ideas, thus making the patent invalid. As mentioned in the above quote, workers in the field had unsuccessfully spent over 10 years creating a hardy coating to prevent reflection. The fact that Lyon's patent successfully did this expelled the argument that the prior art made it invalid. Had any prior attempts been relatively successful, Lyon's patent may not have been held valid; but 10 years of unsuccessful attempts made Lyon's patent stand out as non-obvious and novel.

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]], two cases were described in great detail: the first being Graham v. John Deere, the second being Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical.

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

This case went to the Supreme Court because of a colflict between Circuit Courts, which makes sense given the dates of the patents in the case. Graham obtained a patent in 1950 (patent '811) for a spring clamp on a plow that absorbs shock from plow shanks so as not to damage the device. After realizing a small but significant improvement to the '811 patent where the shank position was inverted, Graham filed for a new patent in 1953 (patent '798) which was rejected by the patent office. Since the Patent Act was created in 1952, this '798 patent discussion resulted in a case of non-obviousness headed by Mr. Justice Clark. He led the argument of the petitioners of Graham in a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness" defined by section 103. 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.

It is important to note that Graham's '798 patent was considered under 103 as an improvement well within the expected skill of the art and devoid of invention. Since the only mechanical difference between '798 and '811 was a location of the shank hinge, a simple improvement like this was well within the knowledge of a person with ordinary skill in the art.

Along with non-obvious nature, the hinge structure was identical in mechanical structure as a prior art: the Glencoe clamp. Not only were the differences between '798 and the Glencoe clamp nonobvious, there were no mechanical distinctions. Thus, Graham's patent was held invalid under section 103.

=====Calmar, Inc. v. Cook Chemical Co.=====

===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==

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T01:59:34Z

Hamburgler: /* Graham v. John Deere */

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

====35 USC 103 (1952)====
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

Section 103 is summarized as follows:
: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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===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

Aside from the words of Learned Hand, this case specifically brought up the role of "prior art" in the discussion of obviousness. Lyon's patent had claimed to create a film or coating for glass that successfully kept light from reflecting off and made it much stronger. This would be extremely important in wartime situations in which a sniper rifle scope, with its main intention being secret and hidden, does not give away the position of the sniper. This is not the only reason why this film would be beneficial, but this is a more appropriate example. The case, however, questions whether the invention had been disclosed in an earlier patent or been in public use before the issuance of the patent. Disclosure in an earlier patent would prove two things: 1) that the discovery is not one of novelty, and 2) that the study and use of the product has already been documented and researched. The reason that this is significant is because revealing prior art similar to the patent in question shows a non-obvious progression of ideas, thus making the patent invalid. As mentioned in the above quote, workers in the field had unsuccessfully spent over 10 years creating a hardy coating to prevent reflection. The fact that Lyon's patent successfully did this expelled the argument that the prior art made it invalid. Had any prior attempts been relatively successful, Lyon's patent may not have been held valid; but 10 years of unsuccessful attempts made Lyon's patent stand out as non-obvious and novel.

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]], two cases were described in great detail: the first being Graham v. John Deere, the second being Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical.

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

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

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

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

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

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

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

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

==The Inventive Step==

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

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T01:59:25Z

Hamburgler: /* Graham v. John Deere */

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

====35 USC 103 (1952)====
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

Section 103 is summarized as follows:
: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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===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

Aside from the words of Learned Hand, this case specifically brought up the role of "prior art" in the discussion of obviousness. Lyon's patent had claimed to create a film or coating for glass that successfully kept light from reflecting off and made it much stronger. This would be extremely important in wartime situations in which a sniper rifle scope, with its main intention being secret and hidden, does not give away the position of the sniper. This is not the only reason why this film would be beneficial, but this is a more appropriate example. The case, however, questions whether the invention had been disclosed in an earlier patent or been in public use before the issuance of the patent. Disclosure in an earlier patent would prove two things: 1) that the discovery is not one of novelty, and 2) that the study and use of the product has already been documented and researched. The reason that this is significant is because revealing prior art similar to the patent in question shows a non-obvious progression of ideas, thus making the patent invalid. As mentioned in the above quote, workers in the field had unsuccessfully spent over 10 years creating a hardy coating to prevent reflection. The fact that Lyon's patent successfully did this expelled the argument that the prior art made it invalid. Had any prior attempts been relatively successful, Lyon's patent may not have been held valid; but 10 years of unsuccessful attempts made Lyon's patent stand out as non-obvious and novel.

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]], two cases were described in great detail: the first being Graham v. John Deere, the second being Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical.

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

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

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

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

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

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

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

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

==The Inventive Step==

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

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T01:59:19Z

Hamburgler: /* 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.

====35 USC 103 (1952)====
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

Section 103 is summarized as follows:
: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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===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

Aside from the words of Learned Hand, this case specifically brought up the role of "prior art" in the discussion of obviousness. Lyon's patent had claimed to create a film or coating for glass that successfully kept light from reflecting off and made it much stronger. This would be extremely important in wartime situations in which a sniper rifle scope, with its main intention being secret and hidden, does not give away the position of the sniper. This is not the only reason why this film would be beneficial, but this is a more appropriate example. The case, however, questions whether the invention had been disclosed in an earlier patent or been in public use before the issuance of the patent. Disclosure in an earlier patent would prove two things: 1) that the discovery is not one of novelty, and 2) that the study and use of the product has already been documented and researched. The reason that this is significant is because revealing prior art similar to the patent in question shows a non-obvious progression of ideas, thus making the patent invalid. As mentioned in the above quote, workers in the field had unsuccessfully spent over 10 years creating a hardy coating to prevent reflection. The fact that Lyon's patent successfully did this expelled the argument that the prior art made it invalid. Had any prior attempts been relatively successful, Lyon's patent may not have been held valid; but 10 years of unsuccessful attempts made Lyon's patent stand out as non-obvious and novel.

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]], two cases were described in great detail: the first being Graham v. John Deere, the second being Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical.

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

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

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

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

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

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

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

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

==The Inventive Step==

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

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T01:58:59Z

Hamburgler: /* 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.

====35 USC 103 (1952)====
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

Section 103 is summarized as follows:
: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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===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

Aside from the words of Learned Hand, this case specifically brought up the role of "prior art" in the discussion of obviousness. Lyon's patent had claimed to create a film or coating for glass that successfully kept light from reflecting off and made it much stronger. This would be extremely important in wartime situations in which a sniper rifle scope, with its main intention being secret and hidden, does not give away the position of the sniper. This is not the only reason why this film would be beneficial, but this is a more appropriate example. The case, however, questions whether the invention had been disclosed in an earlier patent or been in public use before the issuance of the patent. Disclosure in an earlier patent would prove two things: 1) that the discovery is not one of novelty, and 2) that the study and use of the product has already been documented and researched. The reason that this is significant is because revealing prior art similar to the patent in question shows a non-obvious progression of ideas, thus making the patent invalid. As mentioned in the above quote, workers in the field had unsuccessfully spent over 10 years creating a hardy coating to prevent reflection. The fact that Lyon's patent successfully did this expelled the argument that the prior art made it invalid. Had any prior attempts been relatively successful, Lyon's patent may not have been held valid; but 10 years of unsuccessful attempts made Lyon's patent stand out as non-obvious and novel.

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]], two cases were described in great detail: the first being Graham v. John Deere, the second being Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical.

:====Graham v. John Deere====

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

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

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

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

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

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

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

==The Inventive Step==

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

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T01:55:20Z

Hamburgler:

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

====35 USC 103 (1952)====
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

Section 103 is summarized as follows:
: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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===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

Aside from the words of Learned Hand, this case specifically brought up the role of "prior art" in the discussion of obviousness. Lyon's patent had claimed to create a film or coating for glass that successfully kept light from reflecting off and made it much stronger. This would be extremely important in wartime situations in which a sniper rifle scope, with its main intention being secret and hidden, does not give away the position of the sniper. This is not the only reason why this film would be beneficial, but this is a more appropriate example. The case, however, questions whether the invention had been disclosed in an earlier patent or been in public use before the issuance of the patent. Disclosure in an earlier patent would prove two things: 1) that the discovery is not one of novelty, and 2) that the study and use of the product has already been documented and researched. The reason that this is significant is because revealing prior art similar to the patent in question shows a non-obvious progression of ideas, thus making the patent invalid. As mentioned in the above quote, workers in the field had unsuccessfully spent over 10 years creating a hardy coating to prevent reflection. The fact that Lyon's patent successfully did this expelled the argument that the prior art made it invalid. Had any prior attempts been relatively successful, Lyon's patent may not have been held valid; but 10 years of unsuccessful attempts made Lyon's patent stand out as non-obvious and novel.

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

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

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

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

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

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

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

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

==The Inventive Step==

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

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T01:35:39Z

Hamburgler:

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T01:34:56Z

Hamburgler:

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

:====35 USC 103 (1952)====
:It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

:Section 103 is defined as follows:
::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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

==The Inventive Step==

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

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T01:34:34Z

Hamburgler:

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T01:34:18Z

Hamburgler: /* 35 USC 103 (1952) */

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

===35 USC 103 (1952)===
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

Section 103 is defined as follows:
: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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

==The Inventive Step==

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

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T01:33:16Z

Hamburgler:

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

==35 USC 103 (1952)==
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

Section 103 is defined as follows:
: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.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

==The Inventive Step==

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

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T01:28:53Z

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

==Historical Development==
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard. It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, section 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel as defined by section 102 of U.S. Code. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

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

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

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

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

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

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

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

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

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and prohibits a patent in a case where
:the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

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

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

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

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

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

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

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

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

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

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

==The Inventive Step==

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

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T01:17:41Z

Hamburgler:

==Historical Development==
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard. It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, section 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.

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

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

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

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

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

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

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

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

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

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

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

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and prohibits a patent in a case where
:the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

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

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

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

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

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

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

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

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

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

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

==The Inventive Step==

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

2/9/2011 Homework (kyergler) : Nonobviousness Page

2011-02-11T01:04:54Z

Hamburgler: 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..."

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

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

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

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

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

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

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

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

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

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

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

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

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

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

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

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

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

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

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

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and prohibits a patent in a case where
:the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

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

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

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

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

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

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

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

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

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

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

==The Inventive Step==

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