Bill Goodwine's Wiki - User contributions [en]

Exam 2 (due Thurs 5)~jnosal

2011-05-03T15:01:12Z

Jnosal:

==Final (Quizes)==

Quiz 1:

1) What advantage did the respondents design have over prior art?
# It cooled the pavement being laid to help bond with the already cool laid pavement on the road, avoiding a hot joint.
# It combined prior art to utilize multiple simple design features on one chassis.
# It used a convective heating to help warm cement to be removed from an old road surface.
2) What plausible situation will allow for a combination of prior art to be patentable?
# The combination of elements results in a greater value than the sum of individual components.
# The combination of elements only digresses one generation back from the newest level of invention.
# There is a licensed agreement with the manufacturer of the prior art that allows for its inclusion in the new patent design.
3) What patent subject does this case deal with?
# Patentability of material compounds.
# Patentability of government construction technology.
# Patentability of design combinations.

Quiz 2:

2) Can you think of another patent combination that has been passed by the PTO?

Rolling chairs are a combination of both wheels and a sitting device. In the case of rolling chairs they have more advantages than reduced friction and a sitting surface. They also allow for the convenience of locating a sitting device anywhere that it is needed.

3) What was the deeper reasoning behind the Supreme Court’s decision to declare the patent invalid, beyond the fact it was a simple combination of prior art without any added benefit?


The court wanted to prevent undue monopolies from being created without prior innovation. Monopolies are necessary to support innovation but only when they are appropriately created. Providing monopolies to simple combinations also allows for average people to step around the restrictions of prior art patents and effectively create their own umbrella patent of all the products.

4) Can you think of another combination of devices that most likely did not receive a patent or that would not receive a patent for reasons discussed in this case?


A watch with a compass inside of it would be a perfect example of a device using a combination of designs that does not innovate in anyway. This device merely includes the benefits of a mini compass inside of your watch saving you the need to hold two separate objects. If the compass was somehow integrated into the workings of the clock it may become a patentable product.

5) Write a brief description of the judges reasoning for the Supreme Court’s decision.


The design of the pavement heater along with the pavement layer was obvious to someone skilled in the art because it was a simple combination of prior arts. The fundamental reason why it was so obvious, and thus not patentable, was that there were no additional benefits apart from prior art benefits.

6) How does the decision of the court affect patent law in the future?


The court has cracked down on the limitations of patent combinations. It is clear that the Court of Appeals had a different view of what was a patentable combination than what the Supreme Court desired. With this new decision it is clear to all sub courts that combinations of prior art of this simplicity are not patentable.

Exam 2 (due Thurs 5)~jnosal

2011-05-03T15:00:31Z

Jnosal: Created page with "Final (Quizes) Quiz 1: 1) What advantage did the respondents design have over prior art? # It cooled the pavement being laid to help bond with the already cool laid pave..."

Final (Quizes)

Quiz 1:

1) What advantage did the respondents design have over prior art?
# It cooled the pavement being laid to help bond with the already cool laid pavement on the road, avoiding a hot joint.
# It combined prior art to utilize multiple simple design features on one chassis.
# It used a convective heating to help warm cement to be removed from an old road surface.
2) What plausible situation will allow for a combination of prior art to be patentable?
# The combination of elements results in a greater value than the sum of individual components.
# The combination of elements only digresses one generation back from the newest level of invention.
# There is a licensed agreement with the manufacturer of the prior art that allows for its inclusion in the new patent design.
3) What patent subject does this case deal with?
# Patentability of material compounds.
# Patentability of government construction technology.
# Patentability of design combinations.

Quiz 2:

2) Can you think of another patent combination that has been passed by the PTO?

Rolling chairs are a combination of both wheels and a sitting device. In the case of rolling chairs they have more advantages than reduced friction and a sitting surface. They also allow for the convenience of locating a sitting device anywhere that it is needed.

3) What was the deeper reasoning behind the Supreme Court’s decision to declare the patent invalid, beyond the fact it was a simple combination of prior art without any added benefit?


The court wanted to prevent undue monopolies from being created without prior innovation. Monopolies are necessary to support innovation but only when they are appropriately created. Providing monopolies to simple combinations also allows for average people to step around the restrictions of prior art patents and effectively create their own umbrella patent of all the products.

4) Can you think of another combination of devices that most likely did not receive a patent or that would not receive a patent for reasons discussed in this case?


A watch with a compass inside of it would be a perfect example of a device using a combination of designs that does not innovate in anyway. This device merely includes the benefits of a mini compass inside of your watch saving you the need to hold two separate objects. If the compass was somehow integrated into the workings of the clock it may become a patentable product.

5) Write a brief description of the judges reasoning for the Supreme Court’s decision.


The design of the pavement heater along with the pavement layer was obvious to someone skilled in the art because it was a simple combination of prior arts. The fundamental reason why it was so obvious, and thus not patentable, was that there were no additional benefits apart from prior art benefits.

6) How does the decision of the court affect patent law in the future?


The court has cracked down on the limitations of patent combinations. It is clear that the Court of Appeals had a different view of what was a patentable combination than what the Supreme Court desired. With this new decision it is clear to all sub courts that combinations of prior art of this simplicity are not patentable.

User:Jnosal

2011-05-03T14:49:59Z

Jnosal: /* Exams */

Homework 8 (due Friday 28)~jnosal

2011-04-28T23:48:59Z

Jnosal:

=Brief of Amici Curiae Interdigital Communications, LLC and Tessera, Inc. in Support of Respondent=
Quanta arguments in brief:
*If properly viewed this case does not present any issues that would allow for patent exhaustion to be a proper result.
*Licensors and Licensees should be able to contract out their products to the best of their business goals. There should be no limitations on the profit they can make from their licensed devices if they have purchased the product and agreement.
*Prior cases that have been discussed in court do not have the same fact patterns as this case and can thus not be used to examine this case. If they are the case will be analyzed in an incorrect manor.
*Companies do not assert claims on the customers of licensees. This limits the control the patentee has over the use of his patent but does not limit the production of the patent.
*Companies need license flexibility to enter into agreements with manufacturers and other customer groups. If they do not there is a great resistance to the marketability of any product using the patented device.
**Manufacturers have no need for broad licenses and will usually resist entering into contracts for them if there are unnecessary benefits that go along with them.
**Separate contracts and agreements help spur on innovation at all levels of the manufacturing process. If a company is limited in its distribution and profit gain they will be less likely to focus funds on improving the use of the patented product.
*Flexibility of licenses also encourages the licensee to push marketing and enhancing their distribution of the new device that uses the patented product
*Courts should not upset the flexibility of licenses by enforcing old legal practice on modern business methods. The economy is changing and if to many restrictions are in place on new development the innovation will not occure.

Here in list of arguments in Quanta

2011-04-28T23:48:45Z

Jnosal:

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]]

Homework 8 (due Friday 28)~jnosal

2011-04-28T23:46:23Z

Jnosal: /* Brief of Amici Curiae Interdigital Communications, LLC and Tessera, Inc. in Support of Respondent */

=Brief of Amici Curiae Interdigital Communications, LLC and Tessera, Inc. in Support of Respondent=

ID: 901438174

Quanta arguments in brief:
*If properly viewed this case does not present any issues that would allow for patent exhaustion to be a proper result.
*Licensors and Licensees should be able to contract out their products to the best of their business goals. There should be no limitations on the profit they can make from their licensed devices if they have purchased the product and agreement.
*Prior cases that have been discussed in court do not have the same fact patterns as this case and can thus not be used to examine this case. If they are the case will be analyzed in an incorrect manor.
*Companies do not assert claims on the customers of licensees. This limits the control the patentee has over the use of his patent but does not limit the production of the patent.
*Companies need license flexibility to enter into agreements with manufacturers and other customer groups. If they do not there is a great resistance to the marketability of any product using the patented device.
**Manufacturers have no need for broad licenses and will usually resist entering into contracts for them if there are unnecessary benefits that go along with them.
**Separate contracts and agreements help spur on innovation at all levels of the manufacturing process. If a company is limited in its distribution and profit gain they will be less likely to focus funds on improving the use of the patented product.
*Flexibility of licenses also encourages the licensee to push marketing and enhancing their distribution of the new device that uses the patented product
*Courts should not upset the flexibility of licenses by enforcing old legal practice on modern business methods. The economy is changing and if to many restrictions are in place on new development the innovation will not occure.

Homework 8 (due Friday 28)~jnosal

2011-04-28T23:45:39Z

Jnosal:

Here in list of arguments in Quanta

2011-04-28T23:44:28Z

Jnosal:

Homework 8 (due Friday 28)~jnosal

2011-04-28T23:41:04Z

Jnosal:

Quanta arguments in brief:
*If properly viewed this case does not present any issues that would allow for patent exhaustion to be a proper result.
*Licensors and Licensees should be able to contract out their products to the best of their business goals. There should be no limitations on the profit they can make from their licensed devices if they have purchased the product and agreement.
*Prior cases that have been discussed in court do not have the same fact patterns as this case and can thus not be used to examine this case. If they are the case will be analyzed in an incorrect manor.
*Companies do not assert claims on the customers of licensees. This limits the control the patentee has over the use of his patent but does not limit the production of the patent.
*Companies need license flexibility to enter into agreements with manufacturers and other customer groups. If they do not there is a great resistance to the marketability of any product using the patented device.
**Manufacturers have no need for broad licenses and will usually resist entering into contracts for them if there are unnecessary benefits that go along with them.
**Separate contracts and agreements help spur on innovation at all levels of the manufacturing process. If a company is limited in its distribution and profit gain they will be less likely to focus funds on improving the use of the patented product.
*Flexibility of licenses also encourages the licensee to push marketing and enhancing their distribution of the new device that uses the patented product
*Courts should not upset the flexibility of licenses by enforcing old legal practice on modern business methods. The economy is changing and if to many restrictions are in place on new development the innovation will not occure.

Homework 8 (due Friday 28)~jnosal

2011-04-28T23:39:50Z

2011-03-23T01:56:24Z

Jnosal:

BRUCKELMYER v. GROUND HEATERS, INC. : [http://www.ll.georgetown.edu/federal/judicial/fed/opinions/05opinions/05-1412.pdf]

In the case that reached the US Court of Appeals, Bruckelmyer v. Ground Heaters Inc., Bruckelmyer had developed a means for heating the ground just before cement was laid over it. Thirteen years prior to this invention, a Canadian patent was issued that outlined the same concept using the same techniques. When Bruckelmyer claimed that Ground Heaters was infringing on his patent, they brought up the Canadian case and claimed that his patent was invalid. This claim rested on the fact that there was a printed publication of the Canadian invention that was open to the public thirteen years before Bruckelmyers patent. Bruckelmyer claimed that the printed documents were not conclusive enough to have a complete understanding of the invention but it was decided that since the drawings, required for concept explanation, were easily found from the process patent document itself, the patent was invalid. The main concept in the case was, that an ordinary skilled person must be able to find the patent, and from it, gain a complete knowledge and understanding of the design. This means that the skilled worker could replicate the design strictly using the guidelines of the printed source. Since this was the case with regards to the prior art the patent was affirmed invalid.

Homework 6 (due Wednesday 23)~jnosal

2011-03-23T01:53:24Z

Jnosal: Created page with " In the case that reached the US Court of Appeals, Bruckelmyer v. Ground Heaters Inc., Bruckelmyer had developed a means for heating the ground just before cement was laid over ..."

In the case that reached the US Court of Appeals, Bruckelmyer v. Ground Heaters Inc., Bruckelmyer had developed a means for heating the ground just before cement was laid over it. Thirteen years prior to this invention, a Canadian patent was issued that outlined the same concept using the same techniques. When Bruckelmyer claimed that Ground Heaters was infringing on his patent, they brought up the Canadian case and claimed that his patent was invalid. This claim rested on the fact that there was a printed publication of the Canadian invention that was open to the public thirteen years before Bruckelmyers patent. Bruckelmyer claimed that the printed documents were not conclusive enough to have a complete understanding of the invention but it was decided that since the drawings, required for concept explanation, were easily found from the process patent document itself, the patent was invalid. The main concept in the case was, that an ordinary skilled person must be able to find the patent, and from it, gain a complete knowledge and understanding of the design. This means that the skilled worker could replicate the design strictly using the guidelines of the printed source. Since this was the case with regards to the prior art the patent was affirmed invalid.

Nonobviousness ~jnosal

2011-02-08T05:49:59Z

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

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

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

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

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

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

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

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

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

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

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and prohibits a patent in a case where
:the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

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

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

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

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==

There were two significant characteristics of the inventive process that are discussed in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]].

*The product that was invented (chemically treated lenses), had been desired in its field for many years prior. If there is a large need for a specific invention it can be assumed that experienced scientists and researchers have been focusing time and money towards the development of the new concept. In the case of Bert Adams, he already knew the result he wished to achieve. It was a matter of developing a method or process that allowed him to reach that result. With so many competitors racing to discover, the nonobviousness of the invention was clear. Had it been an obvious improvement there would have been a prior inventor and the product would be out on the market in wide production already.

*Previous inventors had tried similar methods but failed in a variety of manors. According to LYON vs. LOMB a prior inventor, Cartwright, had developed a method of treating lenses similar to that of Dean A. LYON but had abandoned the progress after the invention stage because he deemed it to be not rugged enough to be successful. Because of this, Cartwright’s method was not considered a formal invention but a failure. Failures cannot negative the nonobviousness of an invention.

==Relationship with Novelty==
[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] displays an interesting connection between novelty, prior art, and non-obviousness. According to the court an invention may consist of prior art but the total value of the invention must be greater than the individual sums of prior art that it is comprised of. In the case of A&P the cashier’s stand contained multiple features of prior art that were simple combined to achieve an expected and obvious result. This prevented the invention from being patentable because, as the court argued, it did not encourage innovators to develop new ideas. Instead it merely fostered new combinations of prior art that would not advance society any further than a skilled laborer could comprehend.

Another case that resulted in a similar conclusion of non-patentability was [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]], which sought to combine features of a road paving device that had previously been invented. In this case it was ruled that the prior art did not achieve any new results than it had originally and the patent was obvious to a skilled laborer.

According to these two cases the novelty of the invention with respect to prior art was not an issue as long as the result was greater than the combined sub results. This concept of 1+1=2 reflects the obviousness of an invention that only combines the results of prior art without contributing anything new of its own. There in lies the fundamental connection between non-obviousness and the novelty requirement for an invention. The invention does not have to be novel with respect to prior art as long as it contributes a new and unachieved result.

==Nonobviousness vs. Invention==
[[Hotchkiss v. Greenwood]] facilitated a long debate about the non-obviousness of the claimed invention (door handle or nob). The case emphasized that certain features that may be deemed an invention, because they are different from prior art, can still be considered obvious and thus not patentable. It is important to determine which features are non-obvious according to prior art and which are not. This allows for an accurate validation of a patent to be made without overlapping obvious factors of the original invention.

In Hotchkiss a patent was questioned on its validity over the use of select materials in the design of a door handle. According to this design the handle was to be created using techniques and designs that had already been discovered and used. The court decided the patent was not valid on many accounts, one of which being its non-obviousness. According to the court the substitution of a material into the design created a new product that had different strength and wear features, but it did not exhibit the quality of non-obviousness. A skilled worker was said to be able to combine the new material in the same manor as the old to create this new product. This obviousness put the weight of the patent on the concept of substituting a new material in for an old, which isolates it the use of that new material. This is not patentable because of its negative effect on future innovation.

==Secondary Considerations==
There are three main secondary considerations that are necessary to determine the patentability of an art even if it is on the brink of being obvious.

* Advancement of innovation. The fundamental concept of granting patents is to promote learning and sharing of ideas in every sector of development. A patent is given in order to reward the owner with a limited monopoly in which he/she can benefit from over the course of its life span. If this monopoly is granted to an art that is not advancing innovation or will significantly deter the advancement of innovation the patent is considered a hindrance and is thus not given. This concept works as a check to determine if a patent is acting in the best interest of the public.

* Rewards concept discovery. In order for a product to be patentable it must show that its concept is one that is new and novel. Patents should be granted if the concept or invention is a clear demonstration of a new piece of innovation. If the concept is not in fact, a discovery, and only a combination or manipulation of a previous idea, rewarding it with a patent only hinders future innovation.

* Public demand.Patents have been grated to advance society in any and every way technology and development is capable of. If it is obvious that the public has a use for a new product through large sales profits or a rapid turnover rate, it is important to reward the creator. This concept uses public demand to determine the worth of an invention as well as its level of contribution to society.

==Ordinary Skill in the Art==

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

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

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

[[South Corp. v. US]]

Homework 4 (due Wednesday 9)~jnosal

2011-02-08T05:49:39Z

Jnosal: Replaced content with "Nonobviousness ~jnosal"

[[Nonobviousness ~jnosal]]

Homework 4 (due Wednesday 9)~jnosal

2011-02-08T05:47:07Z

Jnosal: /* Secondary Considerations */

Homework 4 (due Wednesday 9)~jnosal

2011-02-08T05:20:10Z

Jnosal: /* Nonobviousness vs. Invention */

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

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

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

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

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

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

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

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

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

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and prohibits a patent in a case where
:the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

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

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

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

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==

There were two significant characteristics of the inventive process that are discussed in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]].

*The product that was invented (chemically treated lenses), had been desired in its field for many years prior. If there is a large need for a specific invention it can be assumed that experienced scientists and researchers have been focusing time and money towards the development of the new concept. In the case of Bert Adams, he already knew the result he wished to achieve. It was a matter of developing a method or process that allowed him to reach that result. With so many competitors racing to discover, the nonobviousness of the invention was clear. Had it been an obvious improvement there would have been a prior inventor and the product would be out on the market in wide production already.

*Previous inventors had tried similar methods but failed in a variety of manors. According to LYON vs. LOMB a prior inventor, Cartwright, had developed a method of treating lenses similar to that of Dean A. LYON but had abandoned the progress after the invention stage because he deemed it to be not rugged enough to be successful. Because of this, Cartwright’s method was not considered a formal invention but a failure. Failures cannot negative the nonobviousness of an invention.

==Relationship with Novelty==
[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] displays an interesting connection between novelty, prior art, and non-obviousness. According to the court an invention may consist of prior art but the total value of the invention must be greater than the individual sums of prior art that it is comprised of. In the case of A&P the cashier’s stand contained multiple features of prior art that were simple combined to achieve an expected and obvious result. This prevented the invention from being patentable because, as the court argued, it did not encourage innovators to develop new ideas. Instead it merely fostered new combinations of prior art that would not advance society any further than a skilled laborer could comprehend.

Another case that resulted in a similar conclusion of non-patentability was [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]], which sought to combine features of a road paving device that had previously been invented. In this case it was ruled that the prior art did not achieve any new results than it had originally and the patent was obvious to a skilled laborer.

According to these two cases the novelty of the invention with respect to prior art was not an issue as long as the result was greater than the combined sub results. This concept of 1+1=2 reflects the obviousness of an invention that only combines the results of prior art without contributing anything new of its own. There in lies the fundamental connection between non-obviousness and the novelty requirement for an invention. The invention does not have to be novel with respect to prior art as long as it contributes a new and unachieved result.

==Nonobviousness vs. Invention==
[[Hotchkiss v. Greenwood]] facilitated a long debate about the non-obviousness of the claimed invention (door handle or nob). The case emphasized that certain features that may be deemed an invention, because they are different from prior art, can still be considered obvious and thus not patentable. It is important to determine which features are non-obvious according to prior art and which are not. This allows for an accurate validation of a patent to be made without overlapping obvious factors of the original invention.

In Hotchkiss a patent was questioned on its validity over the use of select materials in the design of a door handle. According to this design the handle was to be created using techniques and designs that had already been discovered and used. The court decided the patent was not valid on many accounts, one of which being its non-obviousness. According to the court the substitution of a material into the design created a new product that had different strength and wear features, but it did not exhibit the quality of non-obviousness. A skilled worker was said to be able to combine the new material in the same manor as the old to create this new product. This obviousness put the weight of the patent on the concept of substituting a new material in for an old, which isolates it the use of that new material. This is not patentable because of its negative effect on future innovation.

==Secondary Considerations==
==Ordinary Skill in the Art==

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

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

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

[[South Corp. v. US]]

Homework 4 (due Wednesday 9)~jnosal

2011-02-08T05:19:43Z

Jnosal: /* Nonobviousness vs. Invention */

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

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

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

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

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

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

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

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

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

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and prohibits a patent in a case where
:the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

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

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

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

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==

There were two significant characteristics of the inventive process that are discussed in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]].

*The product that was invented (chemically treated lenses), had been desired in its field for many years prior. If there is a large need for a specific invention it can be assumed that experienced scientists and researchers have been focusing time and money towards the development of the new concept. In the case of Bert Adams, he already knew the result he wished to achieve. It was a matter of developing a method or process that allowed him to reach that result. With so many competitors racing to discover, the nonobviousness of the invention was clear. Had it been an obvious improvement there would have been a prior inventor and the product would be out on the market in wide production already.

*Previous inventors had tried similar methods but failed in a variety of manors. According to LYON vs. LOMB a prior inventor, Cartwright, had developed a method of treating lenses similar to that of Dean A. LYON but had abandoned the progress after the invention stage because he deemed it to be not rugged enough to be successful. Because of this, Cartwright’s method was not considered a formal invention but a failure. Failures cannot negative the nonobviousness of an invention.

==Relationship with Novelty==
[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] displays an interesting connection between novelty, prior art, and non-obviousness. According to the court an invention may consist of prior art but the total value of the invention must be greater than the individual sums of prior art that it is comprised of. In the case of A&P the cashier’s stand contained multiple features of prior art that were simple combined to achieve an expected and obvious result. This prevented the invention from being patentable because, as the court argued, it did not encourage innovators to develop new ideas. Instead it merely fostered new combinations of prior art that would not advance society any further than a skilled laborer could comprehend.

Another case that resulted in a similar conclusion of non-patentability was [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]], which sought to combine features of a road paving device that had previously been invented. In this case it was ruled that the prior art did not achieve any new results than it had originally and the patent was obvious to a skilled laborer.

According to these two cases the novelty of the invention with respect to prior art was not an issue as long as the result was greater than the combined sub results. This concept of 1+1=2 reflects the obviousness of an invention that only combines the results of prior art without contributing anything new of its own. There in lies the fundamental connection between non-obviousness and the novelty requirement for an invention. The invention does not have to be novel with respect to prior art as long as it contributes a new and unachieved result.

==Nonobviousness vs. Invention==
facilitated a long debate about the non-obviousness of the claimed invention (door handle or nob). The case emphasized that certain features that may be deemed an invention, because they are different from prior art, can still be considered obvious and thus not patentable. It is important to determine which features are non-obvious according to prior art and which are not. This allows for an accurate validation of a patent to be made without overlapping obvious factors of the original invention.

In Hotchkiss a patent was questioned on its validity over the use of select materials in the design of a door handle. According to this design the handle was to be created using techniques and designs that had already been discovered and used. The court decided the patent was not valid on many accounts, one of which being its non-obviousness. According to the court the substitution of a material into the design created a new product that had different strength and wear features, but it did not exhibit the quality of non-obviousness. A skilled worker was said to be able to combine the new material in the same manor as the old to create this new product. This obviousness put the weight of the patent on the concept of substituting a new material in for an old, which isolates it the use of that new material. This is not patentable because of its negative effect on future innovation.

==Secondary Considerations==
==Ordinary Skill in the Art==

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

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

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

[[South Corp. v. US]]

Homework 4 (due Wednesday 9)~jnosal

2011-02-08T05:16:43Z

Jnosal: /* Nonobviousness vs. Invention */

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

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

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

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

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

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

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

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

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

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and prohibits a patent in a case where
:the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

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

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

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

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==

There were two significant characteristics of the inventive process that are discussed in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]].

*The product that was invented (chemically treated lenses), had been desired in its field for many years prior. If there is a large need for a specific invention it can be assumed that experienced scientists and researchers have been focusing time and money towards the development of the new concept. In the case of Bert Adams, he already knew the result he wished to achieve. It was a matter of developing a method or process that allowed him to reach that result. With so many competitors racing to discover, the nonobviousness of the invention was clear. Had it been an obvious improvement there would have been a prior inventor and the product would be out on the market in wide production already.

*Previous inventors had tried similar methods but failed in a variety of manors. According to LYON vs. LOMB a prior inventor, Cartwright, had developed a method of treating lenses similar to that of Dean A. LYON but had abandoned the progress after the invention stage because he deemed it to be not rugged enough to be successful. Because of this, Cartwright’s method was not considered a formal invention but a failure. Failures cannot negative the nonobviousness of an invention.

==Relationship with Novelty==
[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] displays an interesting connection between novelty, prior art, and non-obviousness. According to the court an invention may consist of prior art but the total value of the invention must be greater than the individual sums of prior art that it is comprised of. In the case of A&P the cashier’s stand contained multiple features of prior art that were simple combined to achieve an expected and obvious result. This prevented the invention from being patentable because, as the court argued, it did not encourage innovators to develop new ideas. Instead it merely fostered new combinations of prior art that would not advance society any further than a skilled laborer could comprehend.

Another case that resulted in a similar conclusion of non-patentability was [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]], which sought to combine features of a road paving device that had previously been invented. In this case it was ruled that the prior art did not achieve any new results than it had originally and the patent was obvious to a skilled laborer.

According to these two cases the novelty of the invention with respect to prior art was not an issue as long as the result was greater than the combined sub results. This concept of 1+1=2 reflects the obviousness of an invention that only combines the results of prior art without contributing anything new of its own. There in lies the fundamental connection between non-obviousness and the novelty requirement for an invention. The invention does not have to be novel with respect to prior art as long as it contributes a new and unachieved result.

==Nonobviousness vs. Invention==
facilitated a long debate about the non-obviousness of the claimed invention. The case emphasized that certain features that may be deemed an invention because they are different from prior art can still be considered obvious and thus not patentable.

In Hotchkiss a patent was questioned on its validity over the use of select materials in the design of a door handle. According to this design the handle was to be created using techniques and designs that had already been discovered and used. The court decided the patent was not valid on many accounts, one of which being its non-obviousness. According to the court the substitution of a material into the design created a new product that had different strength and wear features, but it did not exhibit the quality of non-obviousness. A skilled worker was said to be able to combine the new material in the same manor as the old to create this new product. This obviousness put the weight of the patent on the concept of substituting a new material in for an old, which isolates it the use of that new material. This is not patentable because of its negative effect on future innovation.

==Secondary Considerations==
==Ordinary Skill in the Art==

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

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

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

[[South Corp. v. US]]

Homework 4 (due Wednesday 9)~jnosal

2011-02-08T04:45:47Z

Jnosal: /* Relationship with Novelty */

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

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

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

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

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

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

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

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

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

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and prohibits a patent in a case where
:the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

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

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

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

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==

There were two significant characteristics of the inventive process that are discussed in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]].

*The product that was invented (chemically treated lenses), had been desired in its field for many years prior. If there is a large need for a specific invention it can be assumed that experienced scientists and researchers have been focusing time and money towards the development of the new concept. In the case of Bert Adams, he already knew the result he wished to achieve. It was a matter of developing a method or process that allowed him to reach that result. With so many competitors racing to discover, the nonobviousness of the invention was clear. Had it been an obvious improvement there would have been a prior inventor and the product would be out on the market in wide production already.

*Previous inventors had tried similar methods but failed in a variety of manors. According to LYON vs. LOMB a prior inventor, Cartwright, had developed a method of treating lenses similar to that of Dean A. LYON but had abandoned the progress after the invention stage because he deemed it to be not rugged enough to be successful. Because of this, Cartwright’s method was not considered a formal invention but a failure. Failures cannot negative the nonobviousness of an invention.

==Relationship with Novelty==
[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] displays an interesting connection between novelty, prior art, and non-obviousness. According to the court an invention may consist of prior art but the total value of the invention must be greater than the individual sums of prior art that it is comprised of. In the case of A&P the cashier’s stand contained multiple features of prior art that were simple combined to achieve an expected and obvious result. This prevented the invention from being patentable because, as the court argued, it did not encourage innovators to develop new ideas. Instead it merely fostered new combinations of prior art that would not advance society any further than a skilled laborer could comprehend.

Another case that resulted in a similar conclusion of non-patentability was [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]], which sought to combine features of a road paving device that had previously been invented. In this case it was ruled that the prior art did not achieve any new results than it had originally and the patent was obvious to a skilled laborer.

According to these two cases the novelty of the invention with respect to prior art was not an issue as long as the result was greater than the combined sub results. This concept of 1+1=2 reflects the obviousness of an invention that only combines the results of prior art without contributing anything new of its own. There in lies the fundamental connection between non-obviousness and the novelty requirement for an invention. The invention does not have to be novel with respect to prior art as long as it contributes a new and unachieved result.

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

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

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

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

[[South Corp. v. US]]

Homework 4 (due Wednesday 9)~jnosal

2011-02-08T04:45:04Z

Jnosal: /* Relationship with Novelty */

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

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

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

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

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

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

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

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

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

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and prohibits a patent in a case where
:the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

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

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

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

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==

There were two significant characteristics of the inventive process that are discussed in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]].

*The product that was invented (chemically treated lenses), had been desired in its field for many years prior. If there is a large need for a specific invention it can be assumed that experienced scientists and researchers have been focusing time and money towards the development of the new concept. In the case of Bert Adams, he already knew the result he wished to achieve. It was a matter of developing a method or process that allowed him to reach that result. With so many competitors racing to discover, the nonobviousness of the invention was clear. Had it been an obvious improvement there would have been a prior inventor and the product would be out on the market in wide production already.

*Previous inventors had tried similar methods but failed in a variety of manors. According to LYON vs. LOMB a prior inventor, Cartwright, had developed a method of treating lenses similar to that of Dean A. LYON but had abandoned the progress after the invention stage because he deemed it to be not rugged enough to be successful. Because of this, Cartwright’s method was not considered a formal invention but a failure. Failures cannot negative the nonobviousness of an invention.

==Relationship with Novelty==
displays an interesting connection between novelty, prior art, and non-obviousness . According to the court an invention may consist of prior art but the total value of the invention must be greater than the individual sums of prior art that it is comprised of. In the case of A&P the cashier’s stand contained multiple features of prior art that were simple combined to achieve an expected and obvious result. This prevented the invention from being patentable because, as the court argued, it did not encourage innovators to develop new ideas. Instead it merely fostered new combinations of prior art that would not advance society any further than a skilled laborer could comprehend.

Another case that resulted in a similar conclusion of non-patentability was [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]], which sought to combine features of a road paving device that had previously been invented. In this case it was ruled that the prior art did not achieve any new results than it had originally and the patent was obvious to a skilled laborer.

According to these two cases the novelty of the invention with respect to prior art was not an issue as long as the result was greater than the combined sub results. This concept of 1+1=2 reflects the obviousness of an invention that only combines the results of prior art without contributing anything new of its own. There in lies the fundamental connection between non-obviousness and the novelty requirement for an invention. The invention does not have to be novel with respect to prior art as long as it contributes a new and unachieved result.

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

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

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

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

[[South Corp. v. US]]

Homework 4 (due Wednesday 9)~jnosal

2011-02-08T04:44:17Z

Jnosal: /* Relationship with Novelty */

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

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

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

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

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

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

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

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

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

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and prohibits a patent in a case where
:the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

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

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

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

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==

There were two significant characteristics of the inventive process that are discussed in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]].

*The product that was invented (chemically treated lenses), had been desired in its field for many years prior. If there is a large need for a specific invention it can be assumed that experienced scientists and researchers have been focusing time and money towards the development of the new concept. In the case of Bert Adams, he already knew the result he wished to achieve. It was a matter of developing a method or process that allowed him to reach that result. With so many competitors racing to discover, the nonobviousness of the invention was clear. Had it been an obvious improvement there would have been a prior inventor and the product would be out on the market in wide production already.

*Previous inventors had tried similar methods but failed in a variety of manors. According to LYON vs. LOMB a prior inventor, Cartwright, had developed a method of treating lenses similar to that of Dean A. LYON but had abandoned the progress after the invention stage because he deemed it to be not rugged enough to be successful. Because of this, Cartwright’s method was not considered a formal invention but a failure. Failures cannot negative the nonobviousness of an invention.

==Relationship with Novelty==
displays an interesting connection between novelty, prior art, and non-obviousness . According to the court an invention may consist of prior art but the total value of the invention must be greater than the individual sums of prior art that it is comprised of. In the case of A&P the cashier’s stand contained multiple features of prior art that were simple combined to achieve an expected and obvious result. This prevented the invention from being patentable because, as the court argued, it did not encourage innovators to develop new ideas. Instead it merely fostered new combinations of prior art that would not advance society any further than a skilled laborer could comprehend.

Another case that resulted in a similar conclusion of non-patentability was *******, which sought to combine features of a road paving device that had previously been invented. In this case it was ruled that the prior art did not achieve any new results than it had originally and the patent was obvious to a skilled laborer.

According to these two cases the novelty of the invention with respect to prior art was not an issue as long as the result was greater than the combined sub results. This concept of 1+1=2 reflects the obviousness of an invention that only combines the results of prior art without contributing anything new of its own. There in lies the fundamental connection between non-obviousness and the novelty requirement for an invention. The invention does not have to be novel with respect to prior art as long as it contributes a new and unachieved result.

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

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

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

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

[[South Corp. v. US]]

Homework 4 (due Wednesday 9)~jnosal

2011-02-08T04:12:45Z

Jnosal: /* The Inventive Step */

2011-01-28T02:42:18Z

Jnosal: /* Homework */

=My Selected US Patent=
*Patent 4765269: Rightable Catamaran
**Date issued: August 23, 1988
*The concept of the Rightable Catamaran allows for a capsized catamaran to right itself providing a safe and disaster resilient experience for its passengers. The invention idea included two pontoons and a support structure between the two pontoons in a standard catamaran style build of a boat. In order to right itself the pontoons will flood their separated internal compartments and discharge the water in a sequence that will right the boat to its original sailing position.
*Links to the Patent:
**Google Patents: [http://www.google.com/patents/about?id=1fQ3AAAAEBAJ&dq=rightable+catamaran]
**Patent Storm: [http://www.patentstorm.us/patents/4765269/fulltext.html]

=Homework=
*Homework 2: 
Introduction:
The concept of the rightable catamaran can be conflicting in multiple ways. Inventors have been working to discover a way to easily right almost every capsized boat with an equally diverse range of techniques. The two more common techniques are manpower and pressurized air. Three of these patents have been cited in the rightable catamaran patent. One discusses an apparatus that uses compressed air to inflate flotation devices, which has been placed in a sunken vessel, to increase its buoyancy and raise it to the surface. A second deals with a trimaran vessel that retracts its outer pontoons to adjust its center of mass and allow it to right itself from a semi-submerged position. Finally the third cited patent involves a multi-hull vessel that uses an extended buoy for stabilization in order to shift the rotating axis of the capsized boat. This final concept is the most similar to the rightable catamaran technology and will be the most conflicting when dealing with the patentable qualities of the device.
Hotchkiss Analysis:
The premise of the Hotchkiss case was focused on the patentability of a new material in place of an old material use in an old process as well as the patentability of a combination of features. Since there are no new materials used in the rightable catamaran, the combination of features will be the more relevant comparison when looking at the patent. It can be understood that the object or design being patented is the design or feature that allows for the catamaran to be righted without help from the pilot or outside force. In once sense this is a single idea that can easily be patentable but in another this design uses a lot of previously developed products to work together in combination to achieve the final result.
With regards to the single idea of righting the craft this multi-hulled approach that the rightable catamaran takes has already been used before. The specific tools and features are not the same but the design has been used previously so it can be argued that not a lot of creativity was needed to come up with a design to achieve an already obtained result. Although this may be an important argument to make it is also necessary to determine if the combination of old products to create the multi-hull system would be require a significant amount of innovative skill.
The rightable catamaran uses pressurized air and a series of compartments to shift intake water and then expel it after the catamaran has been righted. This design process does not require a stabilization buoy, which is a key component of the multi-hull self-rescuing system. Because the individual components are some one simple the question of creative skill required to come up with the invention is the deciding factor. As an engineer I have some experience dealing with technical concepts and understanding how certain devices work together to complete different tasks. Upon looking at this invention it was not initially obvious to me how the catamaran could be righted or how the listed devices could be used to shift water in such a manor to right the capsized vessel.
Based on the fact that the design is non-obvious in its nature and benefits society by providing a much safer and convenient type of catamaran that can be operated by any type of individual, it is fare to say that the Hotchkiss case justifies the rightable catamaran as still being a patentable product.
A&P Analysis:
The A&P case focused mainly on the quality of innovation that was needed to develop a patentable product as well as the benefit to society that the product brings. Unlike the Hotchkiss case it is quite clear that based off the previous arguments the rightable catamaran will still be a patentable product.
Unlike the sliding tray in A&P the rightable catamaran adapts previous tools to work in a manor that they may not be familiarized with, such as in taking and expelling sea water. This is a perfect example of how the combination of muli-hull components is worth more together than if their values or added up separately. Basically it is not a standard case of 2+2=4.
Since it is quite clear that the design was non-obvious and a significant advancement from the previous non-righting pontoons of a standard catamaran the social benefit is important to evaluate. Even as an inexperienced sailor it can be understood that your risk of fatality while riding a rightable catamaran are far less out on the open ocean than in a standard catamaran, especially if you are a smaller individual who would be unable to use your own body weight to right the boat. It is also vastly more convenient to have an automated system that that is hands free while righting the boat. In many cases users will be required to drag their boat long distances to have it in a position to be rightable. This new feature brings this convenience to them, which is a priceless value.
Based off these two analyses it is clear that the rightable catamaran is a patentable product. It is important to understand that it is on the verge of crossing some lines that may limit future patentability but where it presently stands the level of innovation and social benefit grant for an acceptable patent to be given.