Bill Goodwine's Wiki - User contributions [en]

Honeywell v. Hamilton Sundstrand Brief for Defendant-Appellee (Potter)

2011-04-06T15:45:21Z

Jpotter2:

BRIEF FOR THE DEFENDANT-APELLEE

The plaintiff Honeywell claims infringement of its ‘893 patent for a compressor bleed air control apparatus and method by the APS 3200, manufactured and sold by the defendant, Hamilton Sundstrand. The ‘893 patent covers a “more efficient” APU surge control system in which it evaluates a minimum flow set point and adjusts said set point as a function of IGV position. The system measures a designated flow parameter “substantially independent of temperature” and compares it to the position of the IGVs to generate an error, which is used in proportional integral control of the bleed valve to optimize bleed airflow.

The APS 3200 utilizes a surge control system that adjusts the bleed valve according to the error between the flow parameter DELPQP and a set point based on air inlet temperature. This method, however, produces an ambiguous signal at high flow conditions, referred to as the “double solution problem,” which the APS solves by using IGV position to determine whether the compressor is experiencing high or low flow.

The plaintiff seek to collect damages by relying on the doctrine of equivalents to claim that the APS 3200 is an infringement of the ‘893 patent, since there is no literal infringement. It is unnecessary to dispute whether or not the systems would be considered equivalents because the plaintiff is unable to argue equivalency due to prosecution history estoppel. The claims of ‘893 were amended during the patent process in order to avoid rejection as obvious in light of the prior art. The rejected independent claims had no mention of the use of IGV position to evaluate the flow set point; this was only added later as limitation to the claims. The PTO asserted, correctly, that Honeywell could not claim all methods of evaluating flow to establish a set point. By narrowing its claims in order to satisfy non-obviousness requirements, Honeywell forfeited its rights to claim other similar methods of surge control. An inquiry into the state of the art at the time of Honeywell’s claimed invention, around 1982-83, shows that Sundstrand’s method of evaluating DELPQP and using IGV position to solve the double solution problem would have been foreseeable. The technology of the time and relevant teachings in the prior art would have presented said method as obvious to anyone skilled in the art. The L1011 APU surge control system was developed in the 1970s and also evaluated flow by measuring DELPQP. And although the L1011 distinguished between high and low flow by means of a shock switch, it was common knowledge that IGV position was related to the level of airflow through a compressor, and any competent engineer could deduce that IGV position could have been used to determine whether a compressor was experiencing high or low flow in order to solve the double solution problem. Honeywell’s own corporate representative, James Clark, even admitted that Honeywell engineers could have solved the double solution problem by measuring IGV position.

If, as Honeywell claims, the APS 3200 is an equivalent to the claims of the ‘893 patent, it is difficult to find clearer evidence that such an equivalent was foreseeable in light of the prior art. Thus, if Honeywell had wished to claim said equivalent, it could have done so explicitly in the drafting of the patent. Failure to do so results in surrender to public use. The original claims may have encompassed such a method, but prosecution history estoppel prevents the plaintiff from attempting to reclaim those elements that it surrendered during the patent amendment process.

There are many different ways in which to evaluate compressor airflow, prevent surge and optimize bleed flow rate. If Honeywell were allowed to claim equivalence between its ‘893 patent and the APS 3200, then they would likewise be able to argue equivalence with almost any method of controlling bleed airflow that utilized IGV position in any way. This would undermine the authority of the PTO, as its initial rejection of the ‘893 application prevented Honeywell from such a broad scope of patent protection. A decision of equivalency would substantially broaden the claims of the ‘893 patent, contrary to the conditions under which it was awarded. This would put undue burden on the industry, as manufacturers would be hard pressed to design around such a broad patent claim. It has long been well known in the industry that IGV position is important in evaluating compressor airflow, and such information is commonly used in a number of ways. The ‘893 patent and the APS 3200 both involve the use of IGV position in relation to surge control, but in substantially different ways. If Honeywell were allowed to claim equivalence between the two methods, many other systems in the industry would be endangered.

In summary, during the patent application process, Honeywell narrowed its claims in the ‘893 patent through an explicit description of its bleed flow optimization method. In doing so, it forfeited its right to other methods of surge control. Prior art teachings show that the techniques used in the APS 3200 would have been foreseeable at the time that the ‘893 patent was drafted. Thus, when it narrowed its claims, if Honeywell had wished to claim such techniques as equivalent, it must have included them in its claims. By failing to do so, it forfeited those processes to the public. Thus, Honeywell is barred from claiming infringement under the doctrine of equivalents by its prosecution history estoppel and the foreseeability of such an equivalent.

Honeywell v. Hamilton Sundstrand Brief for Defendant-Appellee (Potter)

2011-04-04T15:30:27Z

Jpotter2: Created page with "BRIEF FOR DEFENDANT-APPELLEE Honeywell’s claims infringement of its ‘893 patent for a compressor bleed air control apparatus and method by Hamilton Sundstrand’s APS 3200 ..."

BRIEF FOR DEFENDANT-APPELLEE

Honeywell’s claims infringement of its ‘893 patent for a compressor bleed air control apparatus and method by Hamilton Sundstrand’s APS 3200 is invalid under the doctrine of equivalents. By applying the doctrine to each element of the claims in question, it can be seen that the ‘893 patent and the APS 3200 accomplish the same function in different ways. This conclusion is furthered by an examination of the ‘893 patent’s file-wrapper, in which Honeywell specifically narrowed its claims to avoid rejection based on obviousness. By including the use of IGV position to establish a set point, Honeywell forfeited its claims to other methods of establishing a set point, leaving them available for public use.

The doctrine of equivalents teaches that a product may be deemed equivalent and infringing on a patent if the differences between the two devices are insubstantial (Graver Tank). This was refined in the case of Warner-Jenkinson v. Hilton Davis by the court’s holding that the doctrine of equivalents must be applied to each element of an invention rather than the invention as a whole because the elements of the claims are what define and limit the scope of the patent. The differences between the Honeywell patent and the APS 3200 are more than insubstantial. Focus on the method that is used to control the bleed valve setting and prevent surge. The Honeywell patent evaluates a set point based on the error between a designated flow parameter and the position of the IGVs. The set point is continuously evaluated as a function of the IGV position. The APS 3200 utilizes a surge control system that compares DELPQP to a set point that is based on inlet temperature, not IGV position. The position of the IGVs is used only to determine whether the compressor is experiencing high flow or low flow in order to solve the double solution problem presented by the DELPQP analysis. The system does not determine the set point as a function of IGV position, as is clearly expressed in the ‘893 patent. The differences between the two systems are substantial and thus the doctrine of equivalents does not apply. While they may accomplish essentially the same function, the way in which it is accomplished is different.

There are many different ways in which to evaluate compressor flow, prevent surge and optimize bleeding. If Honeywell were allowed to claim equivalence between its patented method and the method employed by the APS 3200, which are substantially different, it would follow that they could also claim equivalence in just about any other evaluation method. This would clearly undermine the purpose of the patent claims, which is to limit the scope of patent protection for an invention.

The Honeywell patent was originally rejected as obvious and only patented after the addition of terms that define the use of IGV position in evaluating the set point. The PTO clearly – and correctly – asserted that Honeywell could not claim all methods of evaluating flow to establish a set point. The addition of IGVs into the patent claims limited the scope to include only the method of evaluating the set point based on IGV position, leaving other methods, such as that employed by Sundstrand, available to the public. Had the broad language of the original patent application been maintained, the courts could assume that the APS 3200 fell within the scope of the claims, according to the precedent set forth in CSC Fitness, for example. But the amendments to the patent claims introduced the limiting language that was absent from the CSC patent, and Honeywell has conceded its benefit of the doubt. Upon rejection of their broader claims, Honeywell could have chosen to patent additional specific methods but did not. In narrowing their claims, Honeywell excluded any method that did not use IGVs to establish a set point. If they had wished to claim a method of establishing a set point based on inlet temperature, they could have.

This is not to say that no equivalents could be drawn from the ‘893 patent. For instance, if the APS 3200 compared DELPQP to Honeywell’s set point based on IGV position, this could be considered an equivalent because the only difference would be the substitution of DELPQP for Honeywell’s chosen flow parameter. Since the set point would have been evaluated in the same way, the differences would be insubstantial. The difference in evaluation method is significant, however. The file-wrapper shows that the narrowing of these particular claims was demanded by the PTO, which is clear evidence that the patent, once granted, was never intended to exclude from public use all methods of surge control and bleed flow optimization based on comparison of a flow parameter to a set point.

User:Jpotter2

2011-04-04T15:28:47Z

Jpotter2:

=='''Homeworks'''==
[[Homework 1 - Patent Selection]]

[[Homework 2 - Nonobviousness Analysis - Selected Patent]]

[[Homework 3 - Nonobviousness Analysis - Graham Patent]]

[[Homework 4 - Edit Nonobviousness Page (Potter)]]

[[Homework 5 - Bilski v. Kappos Brief: Software Freedom Law Center (Potter)]]

[[Homework 6 - UMC Patent 3,643,513 (Potter)]]

[[Homework 7 - Prior Publication Case Summary (Potter)]]

[[Honeywell v. Hamilton Sundstrand Brief for Defendant-Appellee (Potter)]]

Doctrine of Equivalents Case List

2011-04-04T01:42:03Z

Jpotter2:

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

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

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

Bill Goodwine

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

901431048

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

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

901444263

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

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

901471466

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

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

901330223

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

901316153

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

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

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

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

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

Eric Paul

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

Gillian Allsup

901281608

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

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

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

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

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

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

901422128

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

901 41 7852

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

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

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

901419437

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

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

Erich Wolz

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

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

Christine Roetzel - 901425022

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

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

901439143

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

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

Julia Potter (jpotter2)

Doctrine of Equivalents Case List

2011-04-04T01:40:51Z

Jpotter2:

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

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

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

Bill Goodwine

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

901431048

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

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

901444263

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

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

901471466

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

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

901330223

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

901316153

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

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

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

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

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

Eric Paul

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

Gillian Allsup

901281608

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

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

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

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

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

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

901422128

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

901 41 7852

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

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

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

901419437

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

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

Erich Wolz

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

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

Christine Roetzel - 901425022

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

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

901439143

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

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

Julia Potter (jpotter2)

Homework 7 - Prior Publication Case Summary (Potter)

2011-03-22T20:59:52Z

Jpotter2:

='''Benchcraft, Inc. v. Broyhill Furniture Industries, Inc.'''=
March 14, 1988

=='''Background of the Case'''==
* 3 corporate plaintiffs (Benchfraft, Inc., Riverside Furniture Corp., and Hickory Hill/Crestline Furniture Co.) sued to challenge the validity of a design patent held by Broyhill Furniture Industries, Inc. and Broyhill countersued for infringement.
* The patent in question, Des. 274,485, is an ornamental design for a sofa and loveseat. It was filed on May 19, 1983 and issued on July 3, 1984.
* In May 1982, two corporate officials of Broyhill attended the Earls Court Furniture Show in London, England. At the show, one of the officials (Carl Gunter) saw a furniture collection called the "Venezia suite," designed in Italy and purchased by an Englishman. Though he didn't think the design would be popular in America, certain aspects of the design intrigued him and he took photographs of it to bring back to America.
** Upon returning, Broyhill employees began immediately working on designs to emulate certain aspects of the Venezia suite while the photographs were still being developed.
** The design was almost complete by the time the pictures were developed, but the pictures were consulted to finalize the design
** A sample was delivered on July 30, 1982 and the sofa was offered for sale as a part of the Fall 1982 collection - it was not particularly successful.
** A second sample was derived from the first design but given more of a "country" look, and an accompanying loveseat was also produced - these models were extremely successful.
* Catalog photographs of the "country" set were sent to a patent draftsman.
** The draftsman was a patent attorney but this was his first experience with a design patent. He assumed that the Broyhill employees were familiar with the patent process and understood the legal matters of the application.
** The Broyhill employees had no patent experience and signed the various oaths without fully appreciating their meaning.
** The draftsman did not learn about Gunter's photographs or any other pertinent prior art information.
* In the Fall Market of 1983, several other companies, including the plaintiffs, were showing designs very similar to those of Broyhill.
** The patent lawyer contacted the companies to inform them of the pending design patent and warn them of infringement.
** The companies moved to have the patent declared invalid on the grounds of obviousness and the printed publication bar.

=='''Court Holding'''==
* The Italian designer of the Venezia collection testified that he had distributed photographs of his collection prior to 1982 and as early as 1977, and the English owner of the collection confirmed that he had displayed it at the Earls Court show in 1982. The court held that this constituted "printed publication" within the meaning of Section 102.
* In regards to the Gunter photographs, the courts determined that a photograph that gives the full essence of a design constitutes a printed publication under Section 102 for a design patent.
* The court also held that Broyhill and the patent attorney withheld prior art information that should have been included in the patent application, even though they may have done so unknowingly. The attorney and involved Broyhill employees were guilty of gross negligence in omitting so much important information from the application. Thus, the patent was invalid and unenforceable.

Homework 7 - Prior Publication Case Summary (Potter)

2011-03-22T19:40:30Z

Jpotter2: Created page with "=='''Benchcraft, Inc. v. Broyhill Furniture Industries, Inc.'''== March 14, 1988"

=='''Benchcraft, Inc. v. Broyhill Furniture Industries, Inc.'''==
March 14, 1988

User:Jpotter2

2011-03-22T19:39:20Z

Jpotter2:

ESB Briefs

2011-03-03T21:05:42Z

Jpotter2:

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

2011-03-03T21:02:18Z

Jpotter2:

Here is a list of briefs for the Electric Storage Battery Co v. Shimadzu case. Add your name next to the list for the one with the fewest names and read that one.
* Reply Brief for Respondents. (Feb. 27, 1939)
#Michael Madden
#Hwong1
#croetzel
#jpotter2
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* Reply Brief for Petitioner. (Feb. 7, 1939)
#Cmadiga1
#90144463
#901422128
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* Brief for Respondents (Jan. 28, 1939)
#LMiller
#Josh Bradley
#Brobins
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* Brief for Petitioner. (Jan. 1939)
#Kschlax
#Andy Stulc
#Mzahm
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Homework 6 - UMC Patent 3,643,513 (Potter)

2011-02-25T07:23:00Z

Jpotter2:

=='''Purpose/Capabilities of Device'''==
The proposed patent describes an accelerometer designed to measure loads on an aircraft due only to maneuvers while ignoring other "parasitic" sources of acceleration such as wind gusts, weapons deployment, and the like. It is intended to keep records of when the aircraft is subjected to loads of a predetermined magnitude and length of time in order to monitor the fatigue of the aircraft materials.
===Prior Art===
Two prior patents had been issued for "mechanical switch type" accelerometers. The downsides of these accelerometers were that they required a large deflection per unit of acceleration in order to obtain low natural frequencies, which necessitated the use of very large switches, and that the only methods for filtering out high-frequency disturbances were through viscous or magnetic damping, which were difficult to control and didn't provide a sharp rolloff.
===Proposed Device===
The accelerometer proposed in the patent application uses a seismic mass connected to a circuit in order to produce a voltage waveform proportional to acceleration due solely to maneuvering. It records accelerations only when the output signal exceeds some reference value for a predetermined length of time.
===Objects of the Invention===
* New and improved accelerometer with:
** New and improved means for producing electrical signals proportional to acceleration loads
** New and improved means for discriminating between parasitic acceleration and maneuvering loads
** New and improved means for ignoring high-frequency impulses
** New and improved sensing and recording arrangement

=='''Physical Description'''==
The accelerometer consists of a casing with a permanent magnet assembly and a configuration allowing it to be mounted to a stud along its sensitive axis. A recess in the magnetic assembly houses a force coil wound about a non-temperature sensitive form and supported by 3 flexural members placed tangential to the coil assembly to allow for true linear motion along the sensitive axis. The configuration allows virtually no transverse motion and provides low hysteresis and increased sensitivity.

A capacitive displacement sensor is mounted in the casing, consisting of 2 parallel flat plates. The lower plate is carried on the force coil while the upper plate is mounted to the magnetic assembly. This configuration then constitutes a seismic mass, with the force coil and lower plate remaining largely stationary while the upper plate moves with the permanently fixed magnetic assembly. The seismic mass is located in a strong magnetic field, and current flowing through the force coil produces an electromagnetic field that interacts with the magnetic field to produce a force that restores the seismic mass to its normal position and produces an output signal proportional to the displacement.

Above this assembly are defined packaging areas for the associated circuitry and electrical components, and external leads protrude from the top of the casing.

=='''Circuitry/Logic'''==
The circuitry of the accelerometer can be broken down into 3 segments: a capacitance bridge and feedback loop for measuring the displacement of the seismic mass, an operational amplifier and associated filters to condition the signal, and a voltage divider network to measure the aircraft acceleration and record information when appropriate.

===Capacitive Displacement Sensor and Feedback Loop===
The capacitive displacement sensor is part of a capacitance bridge that is also connected to an oscillator. When the seismic mass is displaced, the bridge becomes unbalanced and applies a high frequency signal across a diode bridge which, in turn, produces an output voltage proportional to the degree of unbalance in the capacitance bridge. This voltage is applied to a differential amplifier which then sends a feedback current through the force coil to produce the necessary restoring force. This current then flows to a terminal and external indicating source which is connected to an RLC filter - in series between a resistor and the input to an operational amplifier.

===Op Amp and Filters===
The input filter to the op amp consists of a capacitor, choke, and resistor and its output filter consists of a capacitor and resistor. A reference input is provided by a pair of zener diodes connected between resistors, and the reference level is determined by the ratio of the resistances. The filter has a damping ratio of about 0.7 and a corner frequency of 7 cycles per second. This produces a slightly rising, under damped signal which is compensated for by the output filter, yielding a well-defined corner frequency and high rolloff which filters out high-frequency signal components.

===Voltage Divider Network===
The acceleration is measured by a voltage divider network. This consists of a number of individual voltage dividers with resistance values that are selected to produce voltages with a predetermined ratios to each other - corresponding to certain load factors.
* For instance, the first voltage divider may have a voltage of 1.5 V corresponding to a load factor of 2, with the next divider having a voltage of 2 V corresponding to a load factor of 4 (each voltage divider increasing in voltage by 0.5 V and increasing in load factor by 2)
Each voltage divider is connected to a voltage sensor (differential amplifier) which is then connected to a latch circuit, then to a gage which serves as a gate to a counter. A timer ensures that the network only records information when accelerations last for a predetermined length of time.

When a sufficient voltage is picked off the voltage divider, the amplifier enables the timer and a reset switch. The latch circuits then store the indication that the amplifiers have been turned on and send that information to the gages. The gages are opened by the information release gate if the voltage is still above the threshold at the end of the timer cycle and the signal is transmitted to the counters, which advance by one. The timer then resets and the process begins again. If the acceleration continues, the counters will advance again at the end of the cycle. Otherwise, if it falls below the reference value, the amplifier turns off and no signal is transmitted at the end of the timer cycle.

The latch circuit consists of a relay that is energized when its corresponding amplifier is turned on. This will then close the contact that attaches it to the reset switch and store the fact that a predetermined acceleration level was reached at some initial time. It then closes the contact to complete the circuit enabling the information release gate at a later time and advancing a counter advance coil by one count. The signal is then free to pass through to the counter on the main circuit.

=='''Claims'''==
# An accelerometer that counts the number of times an aircraft undergoes maneuvering loads of a certain magnitude; additionally:
#* A configuration for mounting the accelerometer to the aircraft
#* A method to produce a signal proportional to the acceleration load experienced
#* A plurality of sensing and storing means corresponding to different values of acceleration
#* Timing a cycle and producing a signal at the end of the cycle
#* Means to initiate the timing cycle when acceleration signals reach some reference level
#* A method to transmit the signal from sensors to recording devices at the end of a timer cycle
# A system to filter high-frequency components from the output signal waveform
# A number of counters
#* Arranged to each be advanced by one of the sensing and storing devices
#* A number of gates to pass information from the sensing and storing devices to the counters
# A system to detect when the signal exceeds some reference value and to disable the sensing and storing devices when the signal falls below the threshold

=='''Link to Patent Document'''==
[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf]

Homework 6 - UMC Patent 3,643,513 (Potter)

2011-02-25T07:22:06Z

Jpotter2:

Homework 6 - UMC Patent 3,643,513 (Potter)

2011-02-25T06:59:08Z

Jpotter2:

Homework 6 - UMC Patent 3,643,513 (Potter)

2011-02-25T03:57:03Z

Jpotter2: Created page with "=='''Purpose/Capabilities of Device'''== The proposed patent describes an accelerometer designed to measure loads on an aircraft due only to maneuvers while ignoring other "paras..."

User:Jpotter2

2011-02-24T19:30:54Z

Jpotter2:

Homework 5 - Bilski v. Kappos Brief: Software Freedom Law Center (Potter)

2011-02-14T16:38:11Z

Jpotter2:

== '''Interest of the Amicus Curiae''' ==
The Software Freedom Law Center (SFLC) is a nonprofit legal organization that provides representation and legal services for the protection and advancement of "free software" (i.e. open source software). The SFLC wants to prevent the extension of patent protection to software programs because this would impede the progress of open source software development.

=='''Main Argument Points'''==
* Software code is simply a series of algorithms. It is an abstract idea and is thus unpatentable
* The SFLC agrees with the Supreme Court precedent that software is only patentable when serving as part of a process that involves a "special-purpose" machine or results in some transformation of matter
** They argue that this is "the outcome best calculated to produce maximum innovation in the production of computer software under contemporary technical conditions"
* The "free software movement" revolutionized software production worldwide
** It is based on the thought that "ideas themselves will grow best if left most free to be learned and improved by all"
* The free software community objects to software patents because they believe that the free exchange of information is essential to free societies
** They favor the "incremental improvement of the art by everyone" rather than by a small number of company programmers
** Innovation will happen much more efficiently through free software
* They cite a study which suggests that software patents stifle innovation rather than promoting it
* They support copyright protection for software for 2 main reasons
# The monopoly is limited to the authors expression while the idea is still "instantly available for public exploitation"
# The fair use doctrine still allows use of copyrighted expressions for some purposes
* Patents on software would upset the balance between the First Amendment and the Patent Act by limiting freedom of expression
* Source code sharing is fundamental to scholarship
** Computer science courses and textbooks rely heavily on source code and require students to express ideas in existing programming languages
** Programmer's abilities to comment on and improve ideas and algorithms would be severely limited without the use of source code

Homework 5 - Bilski v. Kappos Brief: Software Freedom Law Center (Potter)

2011-02-14T16:37:47Z

Jpotter2: Created page with " == '''Interest of the Amicus Curiae''' == The Software Freedom Law Center (SFLC) is a nonprofit legal organization that provides representation and legal services for the protec..."

== '''Interest of the Amicus Curiae''' ==
The Software Freedom Law Center (SFLC) is a nonprofit legal organization that provides representation and legal services for the protection and advancement of "free software" (i.e. open source software). The SFLC wants to prevent the extension of patent protection to software programs because this would impede the progress of open source software development.

=='''Main Argument Points'''==
* Software code is simply a series of algorithms. It is an abstract idea and is thus unpatentable
* The SFLC agrees with the Supreme Court precedent that software is only patentable when serving as part of a process that involves a "special-purpose" machine or results in some transformation of matter
** They argue that this is "the outcome best calculated to produce maximum innovation in the production of computer software under contemporary technical conditions"
* The "free software movement" revolutionized software production worldwide
** It is based on the thought that "ideas themselves will grow best if left most free to be learned and improved by all"
* The free software community objects to software patents because they believe that the free exchange of information is essential to free societies
** They favor the "incremental improvement of the art by everyone" rather than by a small number of company programmers
** Innovation will happen much more efficiently through free software
* They cite a study which suggests that software patents stifle innovation rather than promoting it
* They support copyright protection for software for 2 main reasons
## The monopoly is limited to the authors expression while the idea is still "instantly available for public exploitation"
## The fair use doctrine still allows use of copyrighted expressions for some purposes
* Patents on software would upset the balance between the First Amendment and the Patent Act by limiting freedom of expression
* Source code sharing is fundamental to scholarship
** Computer science courses and textbooks rely heavily on source code and require students to express ideas in existing programming languages
** Programmer's abilities to comment on and improve ideas and algorithms would be severely limited without the use of source code

User:Jpotter2

2011-02-14T16:21:20Z

Jpotter2:

Bilski brief list

2011-02-10T16:08:39Z

Jpotter2:

Choose one of the briefs from this list. Delete it and replace it with your login name. Please be careful editing this page. If you mess up all the formatting it will create work for your colleagues.

#Reply Brief for Petitioners (Oct. 26, 2009)
#jpotter2
#Brief of Eleven Law Professors and AARP as Amici Curiae in Support of Respondent (Oct. 2, 2009)
#Brief for Microsoft Corporation, Koninklijke Philips Electronics N.V., and Symantec Corporation as Amici Curiae in Support of Respondent (Oct. 2, 2009)
#Brief of Amicus Curiae William Mitchell College of Law Intellectual Property Institute in Support of Respondent (Oct. 2, 2009)
#Brief of Bloomberg L.P. as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#Brief of Amici Curiae American Medical Association, the American College of Medical Genetics, the American Society of Human Genetics, the Association of Professors of Human and Medical Genetics, and Mayo Clinic in Support of Respondents (Oct. 2, 2009)
#Brief for Amicus Curiae Mark Landesmann in Support of Affirmance (Oct. 2, 2009)
#Brief of Amici Curiae American Insurance Association, the Hartford Financial Services, Jackson National Life Insurance Company, Pacific Life Insurance Company, Sun Life Assurance Company Of Canada (U.S.), and Transamerica Life Insurance Company in Support of Respondent (Oct. 2, 2009)
#Brief For Amicus Curiae Computer & Communications Industry Association in Support of Respondent (Oct. 2, 2009)
#Brief of Software & Information Industry Association (SIIA) as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#Brief of Amici Curiae Foundation for a Free Information Infrastructure, IP Justice, and Four Global Software Professionals and Business Leaders in Support of Respondent (Oct. 2, 2009)
#Brief for Free Software Foundation as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#Brief for Bank of America Corporation, Barclays Capital Inc., The Clearing House Association L.L.C., The Financial Services Roundtable, Google Inc., MetLife, Inc., and Morgan Stanley as Amici Curiae in Support of Respondent (Oct. 2, 2009)
#Brief Amici Curiae of Professors Peter S. Menell and Michael J. Meurer In Support of Respondent (Oct. 2, 2009)
#Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent (Oct. 2, 2009)
#Amicus Curiae Brief in Support of the Respondent, Submitted on Behalf of Adamas Pharmaceuticals, Inc. and Tethys Bioscience, Inc. (Oct. 2, 2009)
#Brief of American Bar Association as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#Brief of Amicus Curiae Knowledge Ecology International in Support of Respondent (Oct. 2, 2009)
#Brief for Amicus Curiae Mark Landesmann in Support of Affirmance (Oct. 2, 2009)
#Amicus Curiae Brief of Center for Advanced Study and Research in Intellectual Property (CASRIP) of the University of Washington School of Law, and of CASRIP Research Affiliate Scholars, in Support of Affirmance of the Judgment in Favor of Respondent (Oct. 1, 2009)
#Brief Amicus Curiae of Red Hat, Inc. in Support of Affirmance (Oct. 1, 2009)
#Amici Curiae Brief of Internet Retailers in Support of Respondent (Oct. 1, 2009)
#Brief for the Respondent (Sep. 25, 2009)
#Brief of the Intellectual Property Section of the Nevada State Bar, as Amicus Curiae in Support of Respondent (Sep. 25, 2009)
#Brief of Professor Lee A. Hollaar and IEEE-USA as Amici Curiae in Support of Affirmance (Sep. 1, 2009)
#Brief of Amicus Curiae Austin Intellectual Property Law Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Amici Curiae Entrepreneurial Software Companies in Support of Petitioner (Aug. 6, 2009)
#Brief of Amicus Curiae Yahoo! Inc. in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Amici Curiae Biotechnology Industry Organization, Advanced Medical Technology Association, Wisconsin Alumni Research Foundation & The Regents of the University of California in Support of Neither Party (Aug. 6, 2009)
#Brief Amicus Curiae of International Business Machines Corporation in Support of Neither Party (Aug. 6, 2009)
#Brief of Pharmaceutical Research and Manufacturers of America as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Medtronic, Inc. in Support of Neither Party (Aug. 6, 2009)
#Brief of F%21ed%21eration Internationale Des Conseils En Propri%21et%21e Industrielle as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Law Professor Kevin Emerson Collins in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Legal OnRamp in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae John Sutton in Support of Petitioners (Aug. 6, 2009)
#Brief of Amicus Curiae Novartis Corporation Supporting Petitioners (Aug. 6, 2009)
#Brief Amicus Curiae of The Federal Circuit Bar Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Regulatory Datacorp, Inc, American Express Company, Palm Inc., Rockwell Automation, Inc., and SAP America, Inc. as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Double Rock Corporation, Island Intellectual Property LLC, LIDs Capital LLC, Intrasweep LLC, Access Control Advantage, Inc., Ecomp Consultants, Pipeline Trading Systems LLC, Rearden Capital Corporation, Craig Mowry and PCT Capital LLC as Ami ci Curiae in Support of Petitioners (Aug. 6, 2009)
#Brief Amici Curiae of 20 Law and Business Professors in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae The Houston Intellectual Property Law Association in Support of Petitioners (Aug. 6, 2009)
#Brief of Franklin Pierce Law Center as Amicus Curiae in Support of Petitioners (Aug. 6, 2009)
#Brief of Amicus Curiae Eagle Forum Education & Legal Defense In Support of Petitioners (Aug. 6, 2009)
#Brief of TELES AG as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae San Diego Intellectual Property Law Association in Support of Neither Party on the Merits (Aug. 6, 2009)
#Brief of Robert R. Sachs and Daniel R. Brownstone as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae the University of South Florida in Support of Petitioners (Aug. 6, 2009)
#Brief of Amicus Curiae AwakenIP, LLC in Support of Petitioners (Aug. 6, 2009)
#Brief of Amici Curiae Dolby Laboratories, Inc., DTS, Inc., and SRS Labs, Inc., in Support of Neither Party (Aug. 6, 2009)
#Brief of Dr. Ananda Chakrabarty as Amicus Curiae in Support of Petitioners (Aug. 6, 2009)
#Brief of Georgia Biomedical Partnership, Inc. as Amicus Curiae in Support of Petitioners (Aug. 5, 2009)
#Brief for Prometheus Laboratories Inc. as Amicus Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Intellectual Property Owners Association in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Aug. 5, 2009)
#Brief for the Business Software Alliance as Amicus Curiae in Support of Affirmance (Aug. 5, 2009)
#Brief of Amicus Curiae Washington State Patent Law Association in Support of Petitioner (Aug. 5, 2009)
#Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Aug. 5, 2009)
#Brief of Amici Curiae Association Internationale Pour la Protection de la Propriete Intellectuelle and International Association For The Protection Of Intellectual Property (U.S.) in Support of Reversal (Aug. 5, 2009)
#Brief of Amicus Curiae Caris Diagnostics, Inc. in Support of Petitioners (Aug. 5, 2009)
#Brief of the Intellectual Property Law Association of Chicago as Amicus Curiae Supporting Neither Party (Aug. 5, 2009)
#Brief of Monogram Biosciences, Inc. and Genomic Health, Inc. as Amici Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Raymond C. Meiers in Support of Neither Party (Aug. 5, 2009)
#Brief of On Time Systems, Inc. as Amicus Curiae in Support of Neither Party (Aug. 4, 2009)
#Brief of Amicus Curiae Conejo Valley Bar Association in Support of Neither Party (Aug. 3, 2009)
#Brief For Petitioners (Jul. 30, 2009)
#Brief of Amicus Curiae Telecommunication Systems, Inc. in Support of Neither Party and for Purely Prospective Application of Any Adoption of the New Legal Test Applied Below (Jul. 24, 2009)
#Brief for the State of Oregon as Amicus Curiae in Support of Neither Party (Jul. 24, 2009)
#Brief of Amicus Curiae Timothy F. McDonough, Ph.D. in Support of Petitioners (Jul. 22, 2009)
#Petitioners' Reply Brief (May 8, 2009)
#Brief for the Respondent in Opposition (May 1, 2009)
#Brief of Koninklijke Philips Electronics N.V. as Amicus Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Mar. 2, 2009)
#Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief Amicus Curiae of Franklin Pierce Law Center in Support of Certiorari (Mar. 2, 2009)
#Brief of Amica Curiae Anne E. Barschall, Pro Se in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of the Petition for a Writ of Certiorari (Mar. 2, 2009)
#Brief of Amicus Curiae Medistem Inc. in Support of the Petition for a Writ of Certiorari (Feb. 27, 2009) )
#Brief of John P. Sutton Amicus Curiae Supporting Petitioners (Feb. 25, 2009)

Homework 4 - Edit Nonobviousness Page (Potter)

2011-02-09T16:26:57Z

Jpotter2:

==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 and useful. Simple inventions or improvements could be patented as long as that exact thing had not been created before. 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."

The key precedent set forth in Hotchkiss v. Greenwood was the idea that "unless more ingenuity and skill in applying the old method ... were required in the application of it ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention."

Until the Patent Act of 1952, this would serve as the fundamental basis for deciding the nonobviousness of a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

A&P Tea v. Supermarket Equipment builds upon the precedent of Hotchkiss v. Greenwood and provides more insight into what constitutes "invention."

The decision of the court discussed the level of invention necessary to determine nonobviousness. It was conceded that the device filled a "long-felt want" and was commercially successful, but that if there was no invention to the device it was still not patentable. Thus, long felt need and popularity were secondary considerations.

:It was conceded that the device filled a long-felt want and enjoyed commercial success, which can be indicators of nonobviousness, but that there was not enough invention to warrant patentability

::"...only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

::"A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

The concurring decision of Justice Douglas took the decision further, claiming that the liberality of patents had departed from the purpose of patent law.

:"It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end - the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But '''it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance'''."

This case stressed the consideration of the fundamental purpose of patent law. Patents are meant to encourage progress and innovation by providing an incentive for disclosure those who have made significant contributions to their field of interest. The nonobviousness requirement is so important because if patent protection was available to every trivial invention or improvement, progress in that field would be stifled until the patent expired, at which point another trivial invention would halt progress again. Nonobviousness is fundamentally a check that a patented device is, in fact, a significant contribution.

The test set forth in this case is that an invention is likely to be obvious if it combines familiar elements and does nothing more than produce predictable results.

===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.

It is basically a codification of the judicial precedents set forth in Hotchkiss and A&P, though the focus is shifted from the word "invention" to "obvious," which grants further clarity to Hotchkiss and A&P, as "nonobvious" is a slightly easier concept to apply than "invention," which seems very broad.

Later cases refer to section 103 in lieu of Hotchkiss or A&P as it is succinct and explicit.

===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"

Lyon's method had been explored in the prior art, specifically by Cartwright and Hewlett, but it was ultimately abandoned because the coating scratched more easily. This would have served as a deterrent rather than a motivation to further pursue Lyon's method, so it is hard to argue that it would have been obvious.

Lyon's method also provided a solution to a longtime problem in the industry. The fact that others had tried to solve this problem and failed indicates that the Lyon's method was likely not obvious.

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

[[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.

Basically, the Graham precedents lay out a method of determining obviousness relying most heavily on a technical analysis of the invention as it relates to the prior art while also drawing insight from commercial and other "social" considerations.

The decision also noted the importance of the file wrapper of a patent application, and that attention must be payed throughout the entire process in order to determine the legitimacy of the claims.

:"Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent."

The court stressed that the distinction between what is obvious and what is not would not be uniform, as each invention/case is unique, so it would still have to be determined on a case-by-case basis, but that strict adherence to the test above would produce "uniformity and definiteness".

This case also dealt with the relationship between the relatively new Patent Act of 1952 and the long standing judicial precedents concerning patents.

:"We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Additionally, the Court looks back to Thomas Jefferson, who was probably the most influential person in the establishment of U.S. patent law.
*Jefferson was very much opposed to the idea of monopolies and thought that even limited monopolies should be avoided as much as possible
*He did, however, recognize the economic and social incentive of granting limited monopolies to inventors to encourage innovation
*He stressed the importance of "drawing a line between the things that are worth to the public the embarrassment of an exclusive patent, and those which are not"

===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.
* This case was similar to Lyon v. Bausch & Lomb in that the decision that the patent was nonobvious relied on the fact that the prior art was a ''discouragement'' rather than an encouragement to pursue the device in question.
** "This is not to say that one who merely finds new uses for old inventions by shutting his eyes to the prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in the old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
* The primary stress is on a technical analysis of the device, with secondary importance given to economic and social repercussions of the device.

===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.
* It was reiterated that patents should not be allowed "whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
* This case was another example of an invention that combined two known things and yielded an entirely expected result, which, according to A&P, makes it obvious

==Suggestion to Combine (The TSM Test)==
[[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.

This has come to be referred to as the TSM test. Under the TSM test, an invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex
* The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
** The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
*** While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
* Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
* The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
:"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"

It is also important to note that the TSM test is broad and complex. Its scope is not limited to one field of inquiry. KSR expands the concept of obviousness beyond the scope of the prior art relating to the specific problem at hand. In other words, common sense is another important consideration when determining obviousness.
: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."

==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.

==Relationship with Novelty==
Very few inventions are truly "novel" because they are almost always a combination of things and ideas that are already known. Combining things in a new way doesn't guarantee patentability (as argued in Hotchkiss), which is where nonobviousness comes in. The test of nonobviousnes, in some sense, is a test of whether or not an invention is new ''enough''.

==Nonobviousness vs. Invention==
What has come to be known today as the idea of "nonobviousness" was originally introduced as "invention." In [[Hotchkiss v. Greenwood]] the court decided that the knob in question was simply a combination of old elements did not warrant patent protection because "there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention." This case laid the fundamental groundwork for nonobviousness in patent law, demanding an inquiry into the prior art when determining whether or not a device was worthy of patent protection. The idea that there must be some level of invention beyond that of a person with ordinary skill in the art served as the broad basis upon which to judge patentability.

[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] addressed some of the difficulties with the precedents laid out in Hotchkiss, as to what constituted an invention.
:"The concept of invention is inherently elusive when applied to a combination of old elements."
The court addressed that this difficulty and the vagueness of the Hotchkiss precedents, had yielded a history of courts very cautious to grant that patents were valid. They further refined the idea of "invention" by saying that a combination of old parts may be patentable if if contributes something new.

Then, in 1952, Congress passed the Patent Act, which added Section 103 to the US Code. While section 103 was essentially a codification of the judicial precedents up to that point, the language used required that a patentable device or process must not be "obvious" to someone skilled in the art. This represented the shift from the idea of invention to the idea of nonobviousness. In [[Graham v. John Deere, 383 U.S. 1 (1966)]], the court discussed the new law and determined that while the language used was slightly different, the overall purpose was the same.
:"Although 103 places emphasis upon inquiries into obviousness, rather than into "invention," the general level of innovation necessary to sustain patentability remains unchanged under the 1952 Act."
They determined that the "nonobviousness" test was more practical than the "invention" test because it more clearly established a level of difference required between the claims under consideration and the prior art in the field. After the 1952 Act, courts would refer to 35 USC 103 and "nonobviousness" instead of Hotchkiss v. Greenwood and "invention."

==Ordinary Skill in the Art==
The idea of ordinary skill in the art is central to nonobviousness. It provides the meter stick by which standards of patentability can be set. In order to determine whether or not an invention is obvious, the courts or patent examiners must decide whether or not it required a level of skill and ingenuity beyond an average person familiar with the art. This test is intentionally very broad and vague, because no strict standard can be applied uniformly across every industry or science. The prior art in the field at hand must be studied and then compared to the invention in question to determine the degree of improvement.

In order to determine exactly what constitutes ordinary skill in the art, often older patents must be reviewed, the industry's commercial/market activity must be studied, and sometimes those considered "experts" in the field are asked to lend their insight.

==Summary of Nonobviousness Precedents==
Almost all inventions are a combination of previous inventions (very little is truly “novel”). It then becomes important to determine whether or not said combination actually constitutes an “invention,” i.e. whether or not it was an “obvious” combination.
* In order to be patentable, an invention must require some level of skill or ingenuity beyond that of a person with ordinary skill in the art at hand (Hotchkiss)
* If the combination of known parts does nothing more than produce an expected result, it is probably obvious. In order to truly be an invention, the whole should in some way be greater than the sum of the parts. (A&P)
* If an invention answers some long-felt need in the market or industry, it may not be obvious. Especially if others have tried and failed to solve the same problem (Lyon) or the prior art suggests against the particular method used (Adams), the invention is likely not obvious.
** According to the Graham outline, these are secondary considerations that may provide important additional insight after considering Section 103/Hotchkiss
* A sort of checklist of criteria to determine nonobviousness is laid out in Graham, consisting of primary and secondary considerations
** Primary Considerations
*** The scope of the prior art
*** The differences between the prior art and present claims
*** The level of ordinary skill in the art
** Secondary Considerations
*** Long felt and unanswered need
*** Attempt and failure of others to answer the need
*** Commercial success
*** Discouragement in prior art to pursue present invention
* If there is some teaching, suggestion, or motivation found in the prior art to combine certain elements in such a way as to produce a certain result, that combination is most likely obvious (TSM test, KSR)

These precedents and tests form the basic framework within which nonobviousness can be determined. It is important, though, that they are not treated as rigid formulas, because different scenarios may call for different interpretations. Thus, somewhat paradoxically, inventions must be examined on a case-by-case basis to achieve a sense of uniformity in decisions.

Homework 4 - Edit Nonobviousness Page (Potter)

2011-02-09T16:26:29Z

Jpotter2: /* Ordinary Skill in the Art */

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

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel and useful. Simple inventions or improvements could be patented as long as that exact thing had not been created before. 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."

The key precedent set forth in Hotchkiss v. Greenwood was the idea that "unless more ingenuity and skill in applying the old method ... were required in the application of it ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention."

Until the Patent Act of 1952, this would serve as the fundamental basis for deciding the nonobviousness of a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

A&P Tea v. Supermarket Equipment builds upon the precedent of Hotchkiss v. Greenwood and provides more insight into what constitutes "invention."

The decision of the court discussed the level of invention necessary to determine nonobviousness. It was conceded that the device filled a "long-felt want" and was commercially successful, but that if there was no invention to the device it was still not patentable. Thus, long felt need and popularity were secondary considerations.

:It was conceded that the device filled a long-felt want and enjoyed commercial success, which can be indicators of nonobviousness, but that there was not enough invention to warrant patentability

::"...only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

::"A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

The concurring decision of Justice Douglas took the decision further, claiming that the liberality of patents had departed from the purpose of patent law.

:"It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end - the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But '''it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance'''."

This case stressed the consideration of the fundamental purpose of patent law. Patents are meant to encourage progress and innovation by providing an incentive for disclosure those who have made significant contributions to their field of interest. The nonobviousness requirement is so important because if patent protection was available to every trivial invention or improvement, progress in that field would be stifled until the patent expired, at which point another trivial invention would halt progress again. Nonobviousness is fundamentally a check that a patented device is, in fact, a significant contribution.

The test set forth in this case is that an invention is likely to be obvious if it combines familiar elements and does nothing more than produce predictable results.

===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.

It is basically a codification of the judicial precedents set forth in Hotchkiss and A&P, though the focus is shifted from the word "invention" to "obvious," which grants further clarity to Hotchkiss and A&P, as "nonobvious" is a slightly easier concept to apply than "invention," which seems very broad.

Later cases refer to section 103 in lieu of Hotchkiss or A&P as it is succinct and explicit.

===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"

Lyon's method had been explored in the prior art, specifically by Cartwright and Hewlett, but it was ultimately abandoned because the coating scratched more easily. This would have served as a deterrent rather than a motivation to further pursue Lyon's method, so it is hard to argue that it would have been obvious.

Lyon's method also provided a solution to a longtime problem in the industry. The fact that others had tried to solve this problem and failed indicates that the Lyon's method was likely not obvious.

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

[[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.

Basically, the Graham precedents lay out a method of determining obviousness relying most heavily on a technical analysis of the invention as it relates to the prior art while also drawing insight from commercial and other "social" considerations.

The decision also noted the importance of the file wrapper of a patent application, and that attention must be payed throughout the entire process in order to determine the legitimacy of the claims.

:"Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent."

The court stressed that the distinction between what is obvious and what is not would not be uniform, as each invention/case is unique, so it would still have to be determined on a case-by-case basis, but that strict adherence to the test above would produce "uniformity and definiteness".

This case also dealt with the relationship between the relatively new Patent Act of 1952 and the long standing judicial precedents concerning patents.

:"We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Additionally, the Court looks back to Thomas Jefferson, who was probably the most influential person in the establishment of U.S. patent law.
*Jefferson was very much opposed to the idea of monopolies and thought that even limited monopolies should be avoided as much as possible
*He did, however, recognize the economic and social incentive of granting limited monopolies to inventors to encourage innovation
*He stressed the importance of "drawing a line between the things that are worth to the public the embarrassment of an exclusive patent, and those which are not"

===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.
* This case was similar to Lyon v. Bausch & Lomb in that the decision that the patent was nonobvious relied on the fact that the prior art was a ''discouragement'' rather than an encouragement to pursue the device in question.
** "This is not to say that one who merely finds new uses for old inventions by shutting his eyes to the prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in the old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
* The primary stress is on a technical analysis of the device, with secondary importance given to economic and social repercussions of the device.

===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.
* It was reiterated that patents should not be allowed "whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
* This case was another example of an invention that combined two known things and yielded an entirely expected result, which, according to A&P, makes it obvious

==Suggestion to Combine (The TSM Test)==
[[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.

This has come to be referred to as the TSM test. Under the TSM test, an invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex
* The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
** The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
*** While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
* Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
* The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
:"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"

It is also important to note that the TSM test is broad and complex. Its scope is not limited to one field of inquiry. KSR expands the concept of obviousness beyond the scope of the prior art relating to the specific problem at hand. In other words, common sense is another important consideration when determining obviousness.
: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."

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

==The Inventive Step==

==Relationship with Novelty==
Very few inventions are truly "novel" because they are almost always a combination of things and ideas that are already known. Combining things in a new way doesn't guarantee patentability (as argued in Hotchkiss), which is where nonobviousness comes in. The test of nonobviousnes, in some sense, is a test of whether or not an invention is new ''enough''.

==Nonobviousness vs. Invention==
What has come to be known today as the idea of "nonobviousness" was originally introduced as "invention." In [[Hotchkiss v. Greenwood]] the court decided that the knob in question was simply a combination of old elements did not warrant patent protection because "there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention." This case laid the fundamental groundwork for nonobviousness in patent law, demanding an inquiry into the prior art when determining whether or not a device was worthy of patent protection. The idea that there must be some level of invention beyond that of a person with ordinary skill in the art served as the broad basis upon which to judge patentability.

[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] addressed some of the difficulties with the precedents laid out in Hotchkiss, as to what constituted an invention.
:"The concept of invention is inherently elusive when applied to a combination of old elements."
The court addressed that this difficulty and the vagueness of the Hotchkiss precedents, had yielded a history of courts very cautious to grant that patents were valid. They further refined the idea of "invention" by saying that a combination of old parts may be patentable if if contributes something new.

Then, in 1952, Congress passed the Patent Act, which added Section 103 to the US Code. While section 103 was essentially a codification of the judicial precedents up to that point, the language used required that a patentable device or process must not be "obvious" to someone skilled in the art. This represented the shift from the idea of invention to the idea of nonobviousness. In [[Graham v. John Deere, 383 U.S. 1 (1966)]], the court discussed the new law and determined that while the language used was slightly different, the overall purpose was the same.
:"Although 103 places emphasis upon inquiries into obviousness, rather than into "invention," the general level of innovation necessary to sustain patentability remains unchanged under the 1952 Act."
They determined that the "nonobviousness" test was more practical than the "invention" test because it more clearly established a level of difference required between the claims under consideration and the prior art in the field. After the 1952 Act, courts would refer to 35 USC 103 and "nonobviousness" instead of Hotchkiss v. Greenwood and "invention."

==Secondary Considerations==
==Ordinary Skill in the Art==
The idea of ordinary skill in the art is central to nonobviousness. It provides the meter stick by which standards of patentability can be set. In order to determine whether or not an invention is obvious, the courts or patent examiners must decide whether or not it required a level of skill and ingenuity beyond an average person familiar with the art. This test is intentionally very broad and vague, because no strict standard can be applied uniformly across every industry or science. The prior art in the field at hand must be studied and then compared to the invention in question to determine the degree of improvement.

In order to determine exactly what constitutes ordinary skill in the art, often older patents must be reviewed, the industry's commercial/market activity must be studied, and sometimes those considered "experts" in the field are asked to lend their insight.

==Summary of Nonobviousness Precedents==

Almost all inventions are a combination of previous inventions (very little is truly “novel”). It then becomes important to determine whether or not said combination actually constitutes an “invention,” i.e. whether or not it was an “obvious” combination.
* In order to be patentable, an invention must require some level of skill or ingenuity beyond that of a person with ordinary skill in the art at hand (Hotchkiss)
* If the combination of known parts does nothing more than produce an expected result, it is probably obvious. In order to truly be an invention, the whole should in some way be greater than the sum of the parts. (A&P)
* If an invention answers some long-felt need in the market or industry, it may not be obvious. Especially if others have tried and failed to solve the same problem (Lyon) or the prior art suggests against the particular method used (Adams), the invention is likely not obvious.
** According to the Graham outline, these are secondary considerations that may provide important additional insight after considering Section 103/Hotchkiss
* A sort of checklist of criteria to determine nonobviousness is laid out in Graham, consisting of primary and secondary considerations
** Primary Considerations
*** The scope of the prior art
*** The differences between the prior art and present claims
*** The level of ordinary skill in the art
** Secondary Considerations
*** Long felt and unanswered need
*** Attempt and failure of others to answer the need
*** Commercial success
*** Discouragement in prior art to pursue present invention
* If there is some teaching, suggestion, or motivation found in the prior art to combine certain elements in such a way as to produce a certain result, that combination is most likely obvious (TSM test, KSR)

These precedents and tests form the basic framework within which nonobviousness can be determined. It is important, though, that they are not treated as rigid formulas, because different scenarios may call for different interpretations. Thus, somewhat paradoxically, inventions must be examined on a case-by-case basis to achieve a sense of uniformity in decisions.

Homework 4 - Edit Nonobviousness Page (Potter)

2011-02-09T16:17:46Z

Jpotter2:

==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 and useful. Simple inventions or improvements could be patented as long as that exact thing had not been created before. 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."

The key precedent set forth in Hotchkiss v. Greenwood was the idea that "unless more ingenuity and skill in applying the old method ... were required in the application of it ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention."

Until the Patent Act of 1952, this would serve as the fundamental basis for deciding the nonobviousness of a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

A&P Tea v. Supermarket Equipment builds upon the precedent of Hotchkiss v. Greenwood and provides more insight into what constitutes "invention."

The decision of the court discussed the level of invention necessary to determine nonobviousness. It was conceded that the device filled a "long-felt want" and was commercially successful, but that if there was no invention to the device it was still not patentable. Thus, long felt need and popularity were secondary considerations.

:It was conceded that the device filled a long-felt want and enjoyed commercial success, which can be indicators of nonobviousness, but that there was not enough invention to warrant patentability

::"...only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

::"A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

The concurring decision of Justice Douglas took the decision further, claiming that the liberality of patents had departed from the purpose of patent law.

:"It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end - the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But '''it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance'''."

This case stressed the consideration of the fundamental purpose of patent law. Patents are meant to encourage progress and innovation by providing an incentive for disclosure those who have made significant contributions to their field of interest. The nonobviousness requirement is so important because if patent protection was available to every trivial invention or improvement, progress in that field would be stifled until the patent expired, at which point another trivial invention would halt progress again. Nonobviousness is fundamentally a check that a patented device is, in fact, a significant contribution.

The test set forth in this case is that an invention is likely to be obvious if it combines familiar elements and does nothing more than produce predictable results.

===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.

It is basically a codification of the judicial precedents set forth in Hotchkiss and A&P, though the focus is shifted from the word "invention" to "obvious," which grants further clarity to Hotchkiss and A&P, as "nonobvious" is a slightly easier concept to apply than "invention," which seems very broad.

Later cases refer to section 103 in lieu of Hotchkiss or A&P as it is succinct and explicit.

===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"

Lyon's method had been explored in the prior art, specifically by Cartwright and Hewlett, but it was ultimately abandoned because the coating scratched more easily. This would have served as a deterrent rather than a motivation to further pursue Lyon's method, so it is hard to argue that it would have been obvious.

Lyon's method also provided a solution to a longtime problem in the industry. The fact that others had tried to solve this problem and failed indicates that the Lyon's method was likely not obvious.

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

[[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.

Basically, the Graham precedents lay out a method of determining obviousness relying most heavily on a technical analysis of the invention as it relates to the prior art while also drawing insight from commercial and other "social" considerations.

The decision also noted the importance of the file wrapper of a patent application, and that attention must be payed throughout the entire process in order to determine the legitimacy of the claims.

:"Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent."

The court stressed that the distinction between what is obvious and what is not would not be uniform, as each invention/case is unique, so it would still have to be determined on a case-by-case basis, but that strict adherence to the test above would produce "uniformity and definiteness".

This case also dealt with the relationship between the relatively new Patent Act of 1952 and the long standing judicial precedents concerning patents.

:"We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Additionally, the Court looks back to Thomas Jefferson, who was probably the most influential person in the establishment of U.S. patent law.
*Jefferson was very much opposed to the idea of monopolies and thought that even limited monopolies should be avoided as much as possible
*He did, however, recognize the economic and social incentive of granting limited monopolies to inventors to encourage innovation
*He stressed the importance of "drawing a line between the things that are worth to the public the embarrassment of an exclusive patent, and those which are not"

===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.
* This case was similar to Lyon v. Bausch & Lomb in that the decision that the patent was nonobvious relied on the fact that the prior art was a ''discouragement'' rather than an encouragement to pursue the device in question.
** "This is not to say that one who merely finds new uses for old inventions by shutting his eyes to the prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in the old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
* The primary stress is on a technical analysis of the device, with secondary importance given to economic and social repercussions of the device.

===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.
* It was reiterated that patents should not be allowed "whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
* This case was another example of an invention that combined two known things and yielded an entirely expected result, which, according to A&P, makes it obvious

==Suggestion to Combine (The TSM Test)==
[[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.

This has come to be referred to as the TSM test. Under the TSM test, an invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex
* The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
** The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
*** While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
* Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
* The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
:"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"

It is also important to note that the TSM test is broad and complex. Its scope is not limited to one field of inquiry. KSR expands the concept of obviousness beyond the scope of the prior art relating to the specific problem at hand. In other words, common sense is another important consideration when determining obviousness.
: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."

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

==The Inventive Step==

==Relationship with Novelty==
Very few inventions are truly "novel" because they are almost always a combination of things and ideas that are already known. Combining things in a new way doesn't guarantee patentability (as argued in Hotchkiss), which is where nonobviousness comes in. The test of nonobviousnes, in some sense, is a test of whether or not an invention is new ''enough''.

==Nonobviousness vs. Invention==
What has come to be known today as the idea of "nonobviousness" was originally introduced as "invention." In [[Hotchkiss v. Greenwood]] the court decided that the knob in question was simply a combination of old elements did not warrant patent protection because "there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention." This case laid the fundamental groundwork for nonobviousness in patent law, demanding an inquiry into the prior art when determining whether or not a device was worthy of patent protection. The idea that there must be some level of invention beyond that of a person with ordinary skill in the art served as the broad basis upon which to judge patentability.

[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] addressed some of the difficulties with the precedents laid out in Hotchkiss, as to what constituted an invention.
:"The concept of invention is inherently elusive when applied to a combination of old elements."
The court addressed that this difficulty and the vagueness of the Hotchkiss precedents, had yielded a history of courts very cautious to grant that patents were valid. They further refined the idea of "invention" by saying that a combination of old parts may be patentable if if contributes something new.

Then, in 1952, Congress passed the Patent Act, which added Section 103 to the US Code. While section 103 was essentially a codification of the judicial precedents up to that point, the language used required that a patentable device or process must not be "obvious" to someone skilled in the art. This represented the shift from the idea of invention to the idea of nonobviousness. In [[Graham v. John Deere, 383 U.S. 1 (1966)]], the court discussed the new law and determined that while the language used was slightly different, the overall purpose was the same.
:"Although 103 places emphasis upon inquiries into obviousness, rather than into "invention," the general level of innovation necessary to sustain patentability remains unchanged under the 1952 Act."
They determined that the "nonobviousness" test was more practical than the "invention" test because it more clearly established a level of difference required between the claims under consideration and the prior art in the field. After the 1952 Act, courts would refer to 35 USC 103 and "nonobviousness" instead of Hotchkiss v. Greenwood and "invention."

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

==Summary of Nonobviousness Precedents==

Almost all inventions are a combination of previous inventions (very little is truly “novel”). It then becomes important to determine whether or not said combination actually constitutes an “invention,” i.e. whether or not it was an “obvious” combination.
* In order to be patentable, an invention must require some level of skill or ingenuity beyond that of a person with ordinary skill in the art at hand (Hotchkiss)
* If the combination of known parts does nothing more than produce an expected result, it is probably obvious. In order to truly be an invention, the whole should in some way be greater than the sum of the parts. (A&P)
* If an invention answers some long-felt need in the market or industry, it may not be obvious. Especially if others have tried and failed to solve the same problem (Lyon) or the prior art suggests against the particular method used (Adams), the invention is likely not obvious.
** According to the Graham outline, these are secondary considerations that may provide important additional insight after considering Section 103/Hotchkiss
* A sort of checklist of criteria to determine nonobviousness is laid out in Graham, consisting of primary and secondary considerations
** Primary Considerations
*** The scope of the prior art
*** The differences between the prior art and present claims
*** The level of ordinary skill in the art
** Secondary Considerations
*** Long felt and unanswered need
*** Attempt and failure of others to answer the need
*** Commercial success
*** Discouragement in prior art to pursue present invention
* If there is some teaching, suggestion, or motivation found in the prior art to combine certain elements in such a way as to produce a certain result, that combination is most likely obvious (TSM test, KSR)

These precedents and tests form the basic framework within which nonobviousness can be determined. It is important, though, that they are not treated as rigid formulas, because different scenarios may call for different interpretations. Thus, somewhat paradoxically, inventions must be examined on a case-by-case basis to achieve a sense of uniformity in decisions.

Homework 4 - Edit Nonobviousness Page (Potter)

2011-02-09T16:16:36Z

Jpotter2: /* 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 and useful. Simple inventions or improvements could be patented as long as that exact thing had not been created before. 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."

The key precedent set forth in Hotchkiss v. Greenwood was the idea that "unless more ingenuity and skill in applying the old method ... were required in the application of it ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention."

Until the Patent Act of 1952, this would serve as the fundamental basis for deciding the nonobviousness of a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

A&P Tea v. Supermarket Equipment builds upon the precedent of Hotchkiss v. Greenwood and provides more insight into what constitutes "invention."

The decision of the court discussed the level of invention necessary to determine nonobviousness. It was conceded that the device filled a "long-felt want" and was commercially successful, but that if there was no invention to the device it was still not patentable. Thus, long felt need and popularity were secondary considerations.

:It was conceded that the device filled a long-felt want and enjoyed commercial success, which can be indicators of nonobviousness, but that there was not enough invention to warrant patentability

::"...only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

::"A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

The concurring decision of Justice Douglas took the decision further, claiming that the liberality of patents had departed from the purpose of patent law.

:"It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end - the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But '''it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance'''."

This case stressed the consideration of the fundamental purpose of patent law. Patents are meant to encourage progress and innovation by providing an incentive for disclosure those who have made significant contributions to their field of interest. The nonobviousness requirement is so important because if patent protection was available to every trivial invention or improvement, progress in that field would be stifled until the patent expired, at which point another trivial invention would halt progress again. Nonobviousness is fundamentally a check that a patented device is, in fact, a significant contribution.

The test set forth in this case is that an invention is likely to be obvious if it combines familiar elements and does nothing more than produce predictable results.

===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.

It is basically a codification of the judicial precedents set forth in Hotchkiss and A&P, though the focus is shifted from the word "invention" to "obvious," which grants further clarity to Hotchkiss and A&P, as "nonobvious" is a slightly easier concept to apply than "invention," which seems very broad.

Later cases refer to section 103 in lieu of Hotchkiss or A&P as it is succinct and explicit.

===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"

Lyon's method had been explored in the prior art, specifically by Cartwright and Hewlett, but it was ultimately abandoned because the coating scratched more easily. This would have served as a deterrent rather than a motivation to further pursue Lyon's method, so it is hard to argue that it would have been obvious.

Lyon's method also provided a solution to a longtime problem in the industry. The fact that others had tried to solve this problem and failed indicates that the Lyon's method was likely not obvious.

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

[[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.

Basically, the Graham precedents lay out a method of determining obviousness relying most heavily on a technical analysis of the invention as it relates to the prior art while also drawing insight from commercial and other "social" considerations.

The decision also noted the importance of the file wrapper of a patent application, and that attention must be payed throughout the entire process in order to determine the legitimacy of the claims.

:"Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent."

The court stressed that the distinction between what is obvious and what is not would not be uniform, as each invention/case is unique, so it would still have to be determined on a case-by-case basis, but that strict adherence to the test above would produce "uniformity and definiteness".

This case also dealt with the relationship between the relatively new Patent Act of 1952 and the long standing judicial precedents concerning patents.

:"We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Additionally, the Court looks back to Thomas Jefferson, who was probably the most influential person in the establishment of U.S. patent law.
*Jefferson was very much opposed to the idea of monopolies and thought that even limited monopolies should be avoided as much as possible
*He did, however, recognize the economic and social incentive of granting limited monopolies to inventors to encourage innovation
*He stressed the importance of "drawing a line between the things that are worth to the public the embarrassment of an exclusive patent, and those which are not"

===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.
* This case was similar to Lyon v. Bausch & Lomb in that the decision that the patent was nonobvious relied on the fact that the prior art was a ''discouragement'' rather than an encouragement to pursue the device in question.
** "This is not to say that one who merely finds new uses for old inventions by shutting his eyes to the prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in the old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
* The primary stress is on a technical analysis of the device, with secondary importance given to economic and social repercussions of the device.

===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.
* It was reiterated that patents should not be allowed "whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
* This case was another example of an invention that combined two known things and yielded an entirely expected result, which, according to A&P, makes it obvious

==Suggestion to Combine (The TSM Test)==
[[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.

This has come to be referred to as the TSM test. Under the TSM test, an invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex
* The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
** The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
*** While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
* Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
* The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
:"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"

It is also important to note that the TSM test is broad and complex. Its scope is not limited to one field of inquiry. KSR expands the concept of obviousness beyond the scope of the prior art relating to the specific problem at hand. In other words, common sense is another important consideration when determining obviousness.
: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."

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

==The Inventive Step==

==Relationship with Novelty==
Very few inventions are truly "novel" because they are almost always a combination of things and ideas that are already known. Combining things in a new way doesn't guarantee patentability (as argued in Hotchkiss), which is where nonobviousness comes in. The test of nonobviousnes, in some sense, is a test of whether or not an invention is new ''enough''.

==Nonobviousness vs. Invention==
What has come to be known today as the idea of "nonobviousness" was originally introduced as "invention." In [[Hotchkiss v. Greenwood]] the court decided that the knob in question was simply a combination of old elements did not warrant patent protection because "there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention." This case laid the fundamental groundwork for nonobviousness in patent law, demanding an inquiry into the prior art when determining whether or not a device was worthy of patent protection. The idea that there must be some level of invention beyond that of a person with ordinary skill in the art served as the broad basis upon which to judge patentability.

A&P Tea addressed some of the difficulties with the precedents laid out in Hotchkiss, as to what constituted an invention.
:"The concept of invention is inherently elusive when applied to a combination of old elements."
The court addressed that this difficulty and the vagueness of the Hotchkiss precedents, had yielded a history of courts very cautious to grant that patents were valid. They further refined the idea of "invention" by saying that a combination of old parts may be patentable if if contributes something new.

Then, in 1952, Congress passed the Patent Act, which added Section 103 to the US Code. While section 103 was essentially a codification of the judicial precedents up to that point, the language used required that a patentable device or process must not be "obvious" to someone skilled in the art. This represented the shift from the idea of invention to the idea of nonobviousness. In Graham v. John Deere, the court discussed the new law and determined that while the language used was slightly different, the overall purpose was the same.
:"Although 103 places emphasis upon inquiries into obviousness, rather than into "invention," the general level of innovation necessary to sustain patentability remains unchanged under the 1952 Act."
They determined that the "nonobviousness" test was more practical than the "invention" test because it more clearly established a level of difference required between the claims under consideration and the prior art in the field. After the 1952 Act, courts would refer to 35 USC 103 and "nonobviousness" instead of Hotchkiss v. Greenwood and "invention."

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

==Summary of Nonobviousness Precedents==

Almost all inventions are a combination of previous inventions (very little is truly “novel”). It then becomes important to determine whether or not said combination actually constitutes an “invention,” i.e. whether or not it was an “obvious” combination.
* In order to be patentable, an invention must require some level of skill or ingenuity beyond that of a person with ordinary skill in the art at hand (Hotchkiss)
* If the combination of known parts does nothing more than produce an expected result, it is probably obvious. In order to truly be an invention, the whole should in some way be greater than the sum of the parts. (A&P)
* If an invention answers some long-felt need in the market or industry, it may not be obvious. Especially if others have tried and failed to solve the same problem (Lyon) or the prior art suggests against the particular method used (Adams), the invention is likely not obvious.
** According to the Graham outline, these are secondary considerations that may provide important additional insight after considering Section 103/Hotchkiss
* A sort of checklist of criteria to determine nonobviousness is laid out in Graham, consisting of primary and secondary considerations
** Primary Considerations
*** The scope of the prior art
*** The differences between the prior art and present claims
*** The level of ordinary skill in the art
** Secondary Considerations
*** Long felt and unanswered need
*** Attempt and failure of others to answer the need
*** Commercial success
*** Discouragement in prior art to pursue present invention
* If there is some teaching, suggestion, or motivation found in the prior art to combine certain elements in such a way as to produce a certain result, that combination is most likely obvious (TSM test, KSR)

These precedents and tests form the basic framework within which nonobviousness can be determined. It is important, though, that they are not treated as rigid formulas, because different scenarios may call for different interpretations. Thus, somewhat paradoxically, inventions must be examined on a case-by-case basis to achieve a sense of uniformity in decisions.

Homework 4 - Edit Nonobviousness Page (Potter)

2011-02-09T15:50:37Z

Jpotter2: /* 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 and useful. Simple inventions or improvements could be patented as long as that exact thing had not been created before. 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."

The key precedent set forth in Hotchkiss v. Greenwood was the idea that "unless more ingenuity and skill in applying the old method ... were required in the application of it ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention."

Until the Patent Act of 1952, this would serve as the fundamental basis for deciding the nonobviousness of a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

A&P Tea v. Supermarket Equipment builds upon the precedent of Hotchkiss v. Greenwood and provides more insight into what constitutes "invention."

The decision of the court discussed the level of invention necessary to determine nonobviousness. It was conceded that the device filled a "long-felt want" and was commercially successful, but that if there was no invention to the device it was still not patentable. Thus, long felt need and popularity were secondary considerations.

:It was conceded that the device filled a long-felt want and enjoyed commercial success, which can be indicators of nonobviousness, but that there was not enough invention to warrant patentability

::"...only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

::"A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

The concurring decision of Justice Douglas took the decision further, claiming that the liberality of patents had departed from the purpose of patent law.

:"It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end - the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But '''it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance'''."

This case stressed the consideration of the fundamental purpose of patent law. Patents are meant to encourage progress and innovation by providing an incentive for disclosure those who have made significant contributions to their field of interest. The nonobviousness requirement is so important because if patent protection was available to every trivial invention or improvement, progress in that field would be stifled until the patent expired, at which point another trivial invention would halt progress again. Nonobviousness is fundamentally a check that a patented device is, in fact, a significant contribution.

The test set forth in this case is that an invention is likely to be obvious if it combines familiar elements and does nothing more than produce predictable results.

===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.

It is basically a codification of the judicial precedents set forth in Hotchkiss and A&P, though the focus is shifted from the word "invention" to "obvious," which grants further clarity to Hotchkiss and A&P, as "nonobvious" is a slightly easier concept to apply than "invention," which seems very broad.

Later cases refer to section 103 in lieu of Hotchkiss or A&P as it is succinct and explicit.

===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"

Lyon's method had been explored in the prior art, specifically by Cartwright and Hewlett, but it was ultimately abandoned because the coating scratched more easily. This would have served as a deterrent rather than a motivation to further pursue Lyon's method, so it is hard to argue that it would have been obvious.

Lyon's method also provided a solution to a longtime problem in the industry. The fact that others had tried to solve this problem and failed indicates that the Lyon's method was likely not obvious.

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

[[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.

Basically, the Graham precedents lay out a method of determining obviousness relying most heavily on a technical analysis of the invention as it relates to the prior art while also drawing insight from commercial and other "social" considerations.

The decision also noted the importance of the file wrapper of a patent application, and that attention must be payed throughout the entire process in order to determine the legitimacy of the claims.

:"Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent."

The court stressed that the distinction between what is obvious and what is not would not be uniform, as each invention/case is unique, so it would still have to be determined on a case-by-case basis, but that strict adherence to the test above would produce "uniformity and definiteness".

This case also dealt with the relationship between the relatively new Patent Act of 1952 and the long standing judicial precedents concerning patents.

:"We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Additionally, the Court looks back to Thomas Jefferson, who was probably the most influential person in the establishment of U.S. patent law.
*Jefferson was very much opposed to the idea of monopolies and thought that even limited monopolies should be avoided as much as possible
*He did, however, recognize the economic and social incentive of granting limited monopolies to inventors to encourage innovation
*He stressed the importance of "drawing a line between the things that are worth to the public the embarrassment of an exclusive patent, and those which are not"

===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.
* This case was similar to Lyon v. Bausch & Lomb in that the decision that the patent was nonobvious relied on the fact that the prior art was a ''discouragement'' rather than an encouragement to pursue the device in question.
** "This is not to say that one who merely finds new uses for old inventions by shutting his eyes to the prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in the old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
* The primary stress is on a technical analysis of the device, with secondary importance given to economic and social repercussions of the device.

===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.
* It was reiterated that patents should not be allowed "whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
* This case was another example of an invention that combined two known things and yielded an entirely expected result, which, according to A&P, makes it obvious

==Suggestion to Combine (The TSM Test)==
[[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.

This has come to be referred to as the TSM test. Under the TSM test, an invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex
* The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
** The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
*** While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
* Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
* The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
:"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"

It is also important to note that the TSM test is broad and complex. Its scope is not limited to one field of inquiry. KSR expands the concept of obviousness beyond the scope of the prior art relating to the specific problem at hand. In other words, common sense is another important consideration when determining obviousness.
: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."

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

==The Inventive Step==

==Relationship with Novelty==
Very few inventions are truly "novel" because they are almost always a combination of things and ideas that are already known. Combining things in a new way doesn't guarantee patentability (as argued in Hotchkiss), which is where nonobviousness comes in. The test of nonobviousnes, in some sense, is a test of whether or not an invention is new ''enough''.

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

==Summary of Nonobviousness Precedents==

Almost all inventions are a combination of previous inventions (very little is truly “novel”). It then becomes important to determine whether or not said combination actually constitutes an “invention,” i.e. whether or not it was an “obvious” combination.
* In order to be patentable, an invention must require some level of skill or ingenuity beyond that of a person with ordinary skill in the art at hand (Hotchkiss)
* If the combination of known parts does nothing more than produce an expected result, it is probably obvious. In order to truly be an invention, the whole should in some way be greater than the sum of the parts. (A&P)
* If an invention answers some long-felt need in the market or industry, it may not be obvious. Especially if others have tried and failed to solve the same problem (Lyon) or the prior art suggests against the particular method used (Adams), the invention is likely not obvious.
** According to the Graham outline, these are secondary considerations that may provide important additional insight after considering Section 103/Hotchkiss
* A sort of checklist of criteria to determine nonobviousness is laid out in Graham, consisting of primary and secondary considerations
** Primary Considerations
*** The scope of the prior art
*** The differences between the prior art and present claims
*** The level of ordinary skill in the art
** Secondary Considerations
*** Long felt and unanswered need
*** Attempt and failure of others to answer the need
*** Commercial success
*** Discouragement in prior art to pursue present invention
* If there is some teaching, suggestion, or motivation found in the prior art to combine certain elements in such a way as to produce a certain result, that combination is most likely obvious (TSM test, KSR)

These precedents and tests form the basic framework within which nonobviousness can be determined. It is important, though, that they are not treated as rigid formulas, because different scenarios may call for different interpretations. Thus, somewhat paradoxically, inventions must be examined on a case-by-case basis to achieve a sense of uniformity in decisions.

Homework 4 - Edit Nonobviousness Page (Potter)

2011-02-09T03:48:40Z

Jpotter2: /* Summary of Nonobviousness Precedents */

==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 and useful. Simple inventions or improvements could be patented as long as that exact thing had not been created before. 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."

The key precedent set forth in Hotchkiss v. Greenwood was the idea that "unless more ingenuity and skill in applying the old method ... were required in the application of it ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention."

Until the Patent Act of 1952, this would serve as the fundamental basis for deciding the nonobviousness of a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

A&P Tea v. Supermarket Equipment builds upon the precedent of Hotchkiss v. Greenwood and provides more insight into what constitutes "invention."

The decision of the court discussed the level of invention necessary to determine nonobviousness. It was conceded that the device filled a "long-felt want" and was commercially successful, but that if there was no invention to the device it was still not patentable. Thus, long felt need and popularity were secondary considerations.

:It was conceded that the device filled a long-felt want and enjoyed commercial success, which can be indicators of nonobviousness, but that there was not enough invention to warrant patentability

::"...only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

::"A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

The concurring decision of Justice Douglas took the decision further, claiming that the liberality of patents had departed from the purpose of patent law.

:"It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end - the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But '''it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance'''."

This case stressed the consideration of the fundamental purpose of patent law. Patents are meant to encourage progress and innovation by providing an incentive for disclosure those who have made significant contributions to their field of interest. The nonobviousness requirement is so important because if patent protection was available to every trivial invention or improvement, progress in that field would be stifled until the patent expired, at which point another trivial invention would halt progress again. Nonobviousness is fundamentally a check that a patented device is, in fact, a significant contribution.

The test set forth in this case is that an invention is likely to be obvious if it combines familiar elements and does nothing more than produce predictable results.

===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.

It is basically a codification of the judicial precedents set forth in Hotchkiss and A&P, though the focus is shifted from the word "invention" to "obvious," which grants further clarity to Hotchkiss and A&P, as "nonobvious" is a slightly easier concept to apply than "invention," which seems very broad.

Later cases refer to section 103 in lieu of Hotchkiss or A&P as it is succinct and explicit.

===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"

Lyon's method had been explored in the prior art, specifically by Cartwright and Hewlett, but it was ultimately abandoned because the coating scratched more easily. This would have served as a deterrent rather than a motivation to further pursue Lyon's method, so it is hard to argue that it would have been obvious.

Lyon's method also provided a solution to a longtime problem in the industry. The fact that others had tried to solve this problem and failed indicates that the Lyon's method was likely not obvious.

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

[[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.

Basically, the Graham precedents lay out a method of determining obviousness relying most heavily on a technical analysis of the invention as it relates to the prior art while also drawing insight from commercial and other "social" considerations.

The decision also noted the importance of the file wrapper of a patent application, and that attention must be payed throughout the entire process in order to determine the legitimacy of the claims.

:"Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent."

The court stressed that the distinction between what is obvious and what is not would not be uniform, as each invention/case is unique, so it would still have to be determined on a case-by-case basis, but that strict adherence to the test above would produce "uniformity and definiteness".

This case also dealt with the relationship between the relatively new Patent Act of 1952 and the long standing judicial precedents concerning patents.

:"We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Additionally, the Court looks back to Thomas Jefferson, who was probably the most influential person in the establishment of U.S. patent law.
*Jefferson was very much opposed to the idea of monopolies and thought that even limited monopolies should be avoided as much as possible
*He did, however, recognize the economic and social incentive of granting limited monopolies to inventors to encourage innovation
*He stressed the importance of "drawing a line between the things that are worth to the public the embarrassment of an exclusive patent, and those which are not"

===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.
* This case was similar to Lyon v. Bausch & Lomb in that the decision that the patent was nonobvious relied on the fact that the prior art was a ''discouragement'' rather than an encouragement to pursue the device in question.
** "This is not to say that one who merely finds new uses for old inventions by shutting his eyes to the prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in the old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
* The primary stress is on a technical analysis of the device, with secondary importance given to economic and social repercussions of the device.

===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.
* It was reiterated that patents should not be allowed "whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
* This case was another example of an invention that combined two known things and yielded an entirely expected result, which, according to A&P, makes it obvious

==Suggestion to Combine (The TSM Test)==
[[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.

This has come to be referred to as the TSM test. Under the TSM test, an invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex
* The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
** The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
*** While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
* Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
* The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
:"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"

It is also important to note that the TSM test is broad and complex. Its scope is not limited to one field of inquiry. KSR expands the concept of obviousness beyond the scope of the prior art relating to the specific problem at hand. In other words, common sense is another important consideration when determining obviousness.
: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."

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

==The Inventive Step==

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

==Summary of Nonobviousness Precedents==

Almost all inventions are a combination of previous inventions (very little is truly “novel”). It then becomes important to determine whether or not said combination actually constitutes an “invention,” i.e. whether or not it was an “obvious” combination.
* In order to be patentable, an invention must require some level of skill or ingenuity beyond that of a person with ordinary skill in the art at hand (Hotchkiss)
* If the combination of known parts does nothing more than produce an expected result, it is probably obvious. In order to truly be an invention, the whole should in some way be greater than the sum of the parts. (A&P)
* If an invention answers some long-felt need in the market or industry, it may not be obvious. Especially if others have tried and failed to solve the same problem (Lyon) or the prior art suggests against the particular method used (Adams), the invention is likely not obvious.
** According to the Graham outline, these are secondary considerations that may provide important additional insight after considering Section 103/Hotchkiss
* A sort of checklist of criteria to determine nonobviousness is laid out in Graham, consisting of primary and secondary considerations
** Primary Considerations
*** The scope of the prior art
*** The differences between the prior art and present claims
*** The level of ordinary skill in the art
** Secondary Considerations
*** Long felt and unanswered need
*** Attempt and failure of others to answer the need
*** Commercial success
*** Discouragement in prior art to pursue present invention
* If there is some teaching, suggestion, or motivation found in the prior art to combine certain elements in such a way as to produce a certain result, that combination is most likely obvious (TSM test, KSR)

These precedents and tests form the basic framework within which nonobviousness can be determined. It is important, though, that they are not treated as rigid formulas, because different scenarios may call for different interpretations. Thus, somewhat paradoxically, inventions must be examined on a case-by-case basis to achieve a sense of uniformity in decisions.

Homework 4 - Edit Nonobviousness Page (Potter)

2011-02-09T03:47:42Z

Jpotter2:

==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 and useful. Simple inventions or improvements could be patented as long as that exact thing had not been created before. 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."

The key precedent set forth in Hotchkiss v. Greenwood was the idea that "unless more ingenuity and skill in applying the old method ... were required in the application of it ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention."

Until the Patent Act of 1952, this would serve as the fundamental basis for deciding the nonobviousness of a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

A&P Tea v. Supermarket Equipment builds upon the precedent of Hotchkiss v. Greenwood and provides more insight into what constitutes "invention."

The decision of the court discussed the level of invention necessary to determine nonobviousness. It was conceded that the device filled a "long-felt want" and was commercially successful, but that if there was no invention to the device it was still not patentable. Thus, long felt need and popularity were secondary considerations.

:It was conceded that the device filled a long-felt want and enjoyed commercial success, which can be indicators of nonobviousness, but that there was not enough invention to warrant patentability

::"...only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

::"A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

The concurring decision of Justice Douglas took the decision further, claiming that the liberality of patents had departed from the purpose of patent law.

:"It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end - the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But '''it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance'''."

This case stressed the consideration of the fundamental purpose of patent law. Patents are meant to encourage progress and innovation by providing an incentive for disclosure those who have made significant contributions to their field of interest. The nonobviousness requirement is so important because if patent protection was available to every trivial invention or improvement, progress in that field would be stifled until the patent expired, at which point another trivial invention would halt progress again. Nonobviousness is fundamentally a check that a patented device is, in fact, a significant contribution.

The test set forth in this case is that an invention is likely to be obvious if it combines familiar elements and does nothing more than produce predictable results.

===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.

It is basically a codification of the judicial precedents set forth in Hotchkiss and A&P, though the focus is shifted from the word "invention" to "obvious," which grants further clarity to Hotchkiss and A&P, as "nonobvious" is a slightly easier concept to apply than "invention," which seems very broad.

Later cases refer to section 103 in lieu of Hotchkiss or A&P as it is succinct and explicit.

===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"

Lyon's method had been explored in the prior art, specifically by Cartwright and Hewlett, but it was ultimately abandoned because the coating scratched more easily. This would have served as a deterrent rather than a motivation to further pursue Lyon's method, so it is hard to argue that it would have been obvious.

Lyon's method also provided a solution to a longtime problem in the industry. The fact that others had tried to solve this problem and failed indicates that the Lyon's method was likely not obvious.

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

[[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.

Basically, the Graham precedents lay out a method of determining obviousness relying most heavily on a technical analysis of the invention as it relates to the prior art while also drawing insight from commercial and other "social" considerations.

The decision also noted the importance of the file wrapper of a patent application, and that attention must be payed throughout the entire process in order to determine the legitimacy of the claims.

:"Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent."

The court stressed that the distinction between what is obvious and what is not would not be uniform, as each invention/case is unique, so it would still have to be determined on a case-by-case basis, but that strict adherence to the test above would produce "uniformity and definiteness".

This case also dealt with the relationship between the relatively new Patent Act of 1952 and the long standing judicial precedents concerning patents.

:"We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Additionally, the Court looks back to Thomas Jefferson, who was probably the most influential person in the establishment of U.S. patent law.
*Jefferson was very much opposed to the idea of monopolies and thought that even limited monopolies should be avoided as much as possible
*He did, however, recognize the economic and social incentive of granting limited monopolies to inventors to encourage innovation
*He stressed the importance of "drawing a line between the things that are worth to the public the embarrassment of an exclusive patent, and those which are not"

===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.
* This case was similar to Lyon v. Bausch & Lomb in that the decision that the patent was nonobvious relied on the fact that the prior art was a ''discouragement'' rather than an encouragement to pursue the device in question.
** "This is not to say that one who merely finds new uses for old inventions by shutting his eyes to the prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in the old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
* The primary stress is on a technical analysis of the device, with secondary importance given to economic and social repercussions of the device.

===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.
* It was reiterated that patents should not be allowed "whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
* This case was another example of an invention that combined two known things and yielded an entirely expected result, which, according to A&P, makes it obvious

==Suggestion to Combine (The TSM Test)==
[[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.

This has come to be referred to as the TSM test. Under the TSM test, an invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex
* The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
** The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
*** While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
* Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
* The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
:"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"

It is also important to note that the TSM test is broad and complex. Its scope is not limited to one field of inquiry. KSR expands the concept of obviousness beyond the scope of the prior art relating to the specific problem at hand. In other words, common sense is another important consideration when determining obviousness.
: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."

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

==The Inventive Step==

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

==Summary of Nonobviousness Precedents==

Almost all inventions are a combination of previous inventions (very little is truly “novel”). It then becomes important to determine whether or not said combination actually constitutes an “invention,” i.e. whether or not it was an “obvious” combination.
* In order to be patentable, an invention must require some level of skill or ingenuity beyond that of a person with ordinary skill in the art at hand (Hotchkiss)
* If the combination of known parts does nothing more than produce an expected result, it is probably obvious. In order to truly be an invention, the whole should in some way be greater than the sum of the parts. (A&P)
* If an invention answers some long-felt need in the market or industry, it may not be obvious. Especially if others have tried and failed to solve the same problem (Lyon) or the prior art suggests against the particular method used (Adams), the invention is likely not obvious.
** According to the Graham outline, these are secondary considerations that may provide important additional insight after considering Section 103/Hotchkiss
* A sort of checklist of criteria to determine nonobviousness is laid out in Graham, consisting of primary and secondary considerations
** Primary Considerations
*** The scope of the prior art
*** The differences between the prior art and present claims
*** The level of ordinary skill in the art
** Secondary Considerations
*** Long felt and unanswered need
*** Attempt and failure of others to answer the need
*** Commercial success
*** Discouragement in prior art to pursue present invention
* The TSM test
** If there is some teaching, suggestion, or motivation found in the prior art to combine certain elements in such a way as to produce a certain result, that combination is (probably) obvious

These precedents and tests form the basic framework within which nonobviousness can be determined. It is important, though, that they are not treated as rigid formulas, because different scenarios may call for different interpretations. Thus, somewhat paradoxically, inventions must be examined on a case-by-case basis to achieve a sense of uniformity in decisions.

Homework 4 - Edit Nonobviousness Page (Potter)

2011-02-09T03:38:18Z

Jpotter2: /* Graham v. John Deere (1966) */

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

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel and useful. Simple inventions or improvements could be patented as long as that exact thing had not been created before. 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."

The key precedent set forth in Hotchkiss v. Greenwood was the idea that "unless more ingenuity and skill in applying the old method ... were required in the application of it ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention."

Until the Patent Act of 1952, this would serve as the fundamental basis for deciding the nonobviousness of a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

A&P Tea v. Supermarket Equipment builds upon the precedent of Hotchkiss v. Greenwood and provides more insight into what constitutes "invention."

The decision of the court discussed the level of invention necessary to determine nonobviousness. It was conceded that the device filled a "long-felt want" and was commercially successful, but that if there was no invention to the device it was still not patentable. Thus, long felt need and popularity were secondary considerations.

:It was conceded that the device filled a long-felt want and enjoyed commercial success, which can be indicators of nonobviousness, but that there was not enough invention to warrant patentability

::"...only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

::"A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

The concurring decision of Justice Douglas took the decision further, claiming that the liberality of patents had departed from the purpose of patent law.

:"It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end - the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But '''it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance'''."

This case stressed the consideration of the fundamental purpose of patent law. Patents are meant to encourage progress and innovation by providing an incentive for disclosure those who have made significant contributions to their field of interest. The nonobviousness requirement is so important because if patent protection was available to every trivial invention or improvement, progress in that field would be stifled until the patent expired, at which point another trivial invention would halt progress again. Nonobviousness is fundamentally a check that a patented device is, in fact, a significant contribution.

The test set forth in this case is that an invention is likely to be obvious if it combines familiar elements and does nothing more than produce predictable results.

===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.

It is basically a codification of the judicial precedents set forth in Hotchkiss and A&P, though the focus is shifted from the word "invention" to "obvious," which grants further clarity to Hotchkiss and A&P, as "nonobvious" is a slightly easier concept to apply than "invention," which seems very broad.

Later cases refer to section 103 in lieu of Hotchkiss or A&P as it is succinct and explicit.

===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"

Lyon's method had been explored in the prior art, specifically by Cartwright and Hewlett, but it was ultimately abandoned because the coating scratched more easily. This would have served as a deterrent rather than a motivation to further pursue Lyon's method, so it is hard to argue that it would have been obvious.

Lyon's method also provided a solution to a longtime problem in the industry. The fact that others had tried to solve this problem and failed indicates that the Lyon's method was likely not obvious.

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

[[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.

Basically, the Graham precedents lay out a method of determining obviousness relying most heavily on a technical analysis of the invention as it relates to the prior art while also drawing insight from commercial and other "social" considerations.

The decision also noted the importance of the file wrapper of a patent application, and that attention must be payed throughout the entire process in order to determine the legitimacy of the claims.

:"Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent."

The court stressed that the distinction between what is obvious and what is not would not be uniform, as each invention/case is unique, so it would still have to be determined on a case-by-case basis, but that strict adherence to the test above would produce "uniformity and definiteness".

This case also dealt with the relationship between the relatively new Patent Act of 1952 and the long standing judicial precedents concerning patents.

:"We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Additionally, the Court looks back to Thomas Jefferson, who was probably the most influential person in the establishment of U.S. patent law.
*Jefferson was very much opposed to the idea of monopolies and thought that even limited monopolies should be avoided as much as possible
*He did, however, recognize the economic and social incentive of granting limited monopolies to inventors to encourage innovation
*He stressed the importance of "drawing a line between the things that are worth to the public the embarrassment of an exclusive patent, and those which are not"

===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.
* This case was similar to Lyon v. Bausch & Lomb in that the decision that the patent was nonobvious relied on the fact that the prior art was a ''discouragement'' rather than an encouragement to pursue the device in question.
** "This is not to say that one who merely finds new uses for old inventions by shutting his eyes to the prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in the old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
* The primary stress is on a technical analysis of the device, with secondary importance given to economic and social repercussions of the device.

===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.
* It was reiterated that patents should not be allowed "whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
* This case was another example of an invention that combined two known things and yielded an entirely expected result, which, according to A&P, makes it obvious

==Suggestion to Combine (The TSM Test)==
[[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.

This has come to be referred to as the TSM test. Under the TSM test, an invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex
* The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
** The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
*** While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
* Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
* The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
:"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"

It is also important to note that the TSM test is broad and complex. Its scope is not limited to one field of inquiry. KSR expands the concept of obviousness beyond the scope of the prior art relating to the specific problem at hand. In other words, common sense is another important consideration when determining obviousness.
: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."

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

==The Inventive Step==

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

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

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

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

[[South Corp. v. US]]

Homework 4 - Edit Nonobviousness Page (Potter)

2011-02-09T03:24:53Z

Jpotter2: /* Lyon v. Bausch & Lomb (1955) */

==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 and useful. Simple inventions or improvements could be patented as long as that exact thing had not been created before. 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."

The key precedent set forth in Hotchkiss v. Greenwood was the idea that "unless more ingenuity and skill in applying the old method ... were required in the application of it ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention."

Until the Patent Act of 1952, this would serve as the fundamental basis for deciding the nonobviousness of a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

A&P Tea v. Supermarket Equipment builds upon the precedent of Hotchkiss v. Greenwood and provides more insight into what constitutes "invention."

The decision of the court discussed the level of invention necessary to determine nonobviousness. It was conceded that the device filled a "long-felt want" and was commercially successful, but that if there was no invention to the device it was still not patentable. Thus, long felt need and popularity were secondary considerations.

:It was conceded that the device filled a long-felt want and enjoyed commercial success, which can be indicators of nonobviousness, but that there was not enough invention to warrant patentability

::"...only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

::"A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

The concurring decision of Justice Douglas took the decision further, claiming that the liberality of patents had departed from the purpose of patent law.

:"It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end - the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But '''it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance'''."

This case stressed the consideration of the fundamental purpose of patent law. Patents are meant to encourage progress and innovation by providing an incentive for disclosure those who have made significant contributions to their field of interest. The nonobviousness requirement is so important because if patent protection was available to every trivial invention or improvement, progress in that field would be stifled until the patent expired, at which point another trivial invention would halt progress again. Nonobviousness is fundamentally a check that a patented device is, in fact, a significant contribution.

The test set forth in this case is that an invention is likely to be obvious if it combines familiar elements and does nothing more than produce predictable results.

===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.

It is basically a codification of the judicial precedents set forth in Hotchkiss and A&P, though the focus is shifted from the word "invention" to "obvious," which grants further clarity to Hotchkiss and A&P, as "nonobvious" is a slightly easier concept to apply than "invention," which seems very broad.

Later cases refer to section 103 in lieu of Hotchkiss or A&P as it is succinct and explicit.

===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"

Lyon's method had been explored in the prior art, specifically by Cartwright and Hewlett, but it was ultimately abandoned because the coating scratched more easily. This would have served as a deterrent rather than a motivation to further pursue Lyon's method, so it is hard to argue that it would have been obvious.

Lyon's method also provided a solution to a longtime problem in the industry. The fact that others had tried to solve this problem and failed indicates that the Lyon's method was likely not obvious.

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

[[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.

The decision also noted the importance of the file wrapper of a patent application, and that attention must be payed throughout the entire process in order to determine the legitimacy of the claims.

:"Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent."

The court stressed that the distinction between what is obvious and what is not would not be uniform, as each invention/case is unique, so it would still have to be determined on a case-by-case basis, but that strict adherence to the test above would produce "uniformity and definiteness".

This case also dealt with the relationship between the relatively new Patent Act of 1952 and the long standing judicial precedents concerning patents.

:"We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Additionally, the Court looks back to Thomas Jefferson, who was probably the most influential person in the establishment of U.S. patent law.
*Jefferson was very much opposed to the idea of monopolies and thought that even limited monopolies should be avoided as much as possible
*He did, however, recognize the economic and social incentive of granting limited monopolies to inventors to encourage innovation
*He stressed the importance of "drawing a line between the things that are worth to the public the embarrassment of an exclusive patent, and those which are not"

===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.
* This case was similar to Lyon v. Bausch & Lomb in that the decision that the patent was nonobvious relied on the fact that the prior art was a ''discouragement'' rather than an encouragement to pursue the device in question.
** "This is not to say that one who merely finds new uses for old inventions by shutting his eyes to the prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in the old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
* The primary stress is on a technical analysis of the device, with secondary importance given to economic and social repercussions of the device.

===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.
* It was reiterated that patents should not be allowed "whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
* This case was another example of an invention that combined two known things and yielded an entirely expected result, which, according to A&P, makes it obvious

==Suggestion to Combine (The TSM Test)==
[[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.

This has come to be referred to as the TSM test. Under the TSM test, an invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex
* The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
** The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
*** While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
* Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
* The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
:"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"

It is also important to note that the TSM test is broad and complex. Its scope is not limited to one field of inquiry. KSR expands the concept of obviousness beyond the scope of the prior art relating to the specific problem at hand. In other words, common sense is another important consideration when determining obviousness.
: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."

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

==The Inventive Step==

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

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

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

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

[[South Corp. v. US]]

Homework 4 - Edit Nonobviousness Page (Potter)

2011-02-09T03:04:54Z

Jpotter2:

==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 and useful. Simple inventions or improvements could be patented as long as that exact thing had not been created before. 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."

The key precedent set forth in Hotchkiss v. Greenwood was the idea that "unless more ingenuity and skill in applying the old method ... were required in the application of it ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention."

Until the Patent Act of 1952, this would serve as the fundamental basis for deciding the nonobviousness of a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

A&P Tea v. Supermarket Equipment builds upon the precedent of Hotchkiss v. Greenwood and provides more insight into what constitutes "invention."

The decision of the court discussed the level of invention necessary to determine nonobviousness. It was conceded that the device filled a "long-felt want" and was commercially successful, but that if there was no invention to the device it was still not patentable. Thus, long felt need and popularity were secondary considerations.

:It was conceded that the device filled a long-felt want and enjoyed commercial success, which can be indicators of nonobviousness, but that there was not enough invention to warrant patentability

::"...only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

::"A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

The concurring decision of Justice Douglas took the decision further, claiming that the liberality of patents had departed from the purpose of patent law.

:"It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end - the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But '''it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance'''."

This case stressed the consideration of the fundamental purpose of patent law. Patents are meant to encourage progress and innovation by providing an incentive for disclosure those who have made significant contributions to their field of interest. The nonobviousness requirement is so important because if patent protection was available to every trivial invention or improvement, progress in that field would be stifled until the patent expired, at which point another trivial invention would halt progress again. Nonobviousness is fundamentally a check that a patented device is, in fact, a significant contribution.

The test set forth in this case is that an invention is likely to be obvious if it combines familiar elements and does nothing more than produce predictable results.

===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.

It is basically a codification of the judicial precedents set forth in Hotchkiss and A&P, though the focus is shifted from the word "invention" to "obvious," which grants further clarity to Hotchkiss and A&P, as "nonobvious" is a slightly easier concept to apply than "invention," which seems very broad.

Later cases refer to section 103 in lieu of Hotchkiss or A&P as it is succinct and explicit.

===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"

Lyon's method had been explored in the prior art, specifically by Cartwright and Hewlett, but it was ultimately abandoned because the coating scratched more easily. This would have served as a deterrent rather than a motivation to further pursue Lyon's method, so it is hard to argue that it would have been obvious.

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

[[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.

The decision also noted the importance of the file wrapper of a patent application, and that attention must be payed throughout the entire process in order to determine the legitimacy of the claims.

:"Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent."

The court stressed that the distinction between what is obvious and what is not would not be uniform, as each invention/case is unique, so it would still have to be determined on a case-by-case basis, but that strict adherence to the test above would produce "uniformity and definiteness".

This case also dealt with the relationship between the relatively new Patent Act of 1952 and the long standing judicial precedents concerning patents.

:"We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Additionally, the Court looks back to Thomas Jefferson, who was probably the most influential person in the establishment of U.S. patent law.
*Jefferson was very much opposed to the idea of monopolies and thought that even limited monopolies should be avoided as much as possible
*He did, however, recognize the economic and social incentive of granting limited monopolies to inventors to encourage innovation
*He stressed the importance of "drawing a line between the things that are worth to the public the embarrassment of an exclusive patent, and those which are not"

===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.
* This case was similar to Lyon v. Bausch & Lomb in that the decision that the patent was nonobvious relied on the fact that the prior art was a ''discouragement'' rather than an encouragement to pursue the device in question.
** "This is not to say that one who merely finds new uses for old inventions by shutting his eyes to the prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in the old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
* The primary stress is on a technical analysis of the device, with secondary importance given to economic and social repercussions of the device.

===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.
* It was reiterated that patents should not be allowed "whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
* This case was another example of an invention that combined two known things and yielded an entirely expected result, which, according to A&P, makes it obvious

==Suggestion to Combine (The TSM Test)==
[[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.

This has come to be referred to as the TSM test. Under the TSM test, an invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex
* The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
** The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
*** While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
* Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
* The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
:"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"

It is also important to note that the TSM test is broad and complex. Its scope is not limited to one field of inquiry. KSR expands the concept of obviousness beyond the scope of the prior art relating to the specific problem at hand. In other words, common sense is another important consideration when determining obviousness.
: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."

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

==The Inventive Step==

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

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

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

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

[[South Corp. v. US]]

Homework 4 - Edit Nonobviousness Page (Potter)

2011-02-09T03:04:18Z

Jpotter2: /* Suggestion to Combine (The TSM Test) */

==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 and useful. Simple inventions or improvements could be patented as long as that exact thing had not been created before. 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."

The key precedent set forth in Hotchkiss v. Greenwood was the idea that "unless more ingenuity and skill in applying the old method ... were required in the application of it ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention."

Until the Patent Act of 1952, this would serve as the fundamental basis for deciding the nonobviousness of a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

A&P Tea v. Supermarket Equipment builds upon the precedent of Hotchkiss v. Greenwood and provides more insight into what constitutes "invention."

The decision of the court discussed the level of invention necessary to determine nonobviousness. It was conceded that the device filled a "long-felt want" and was commercially successful, but that if there was no invention to the device it was still not patentable. Thus, long felt need and popularity were secondary considerations.

:It was conceded that the device filled a long-felt want and enjoyed commercial success, which can be indicators of nonobviousness, but that there was not enough invention to warrant patentability

::"...only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

::"A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

The concurring decision of Justice Douglas took the decision further, claiming that the liberality of patents had departed from the purpose of patent law.

:"It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end - the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But '''it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance'''."

This case stressed the consideration of the fundamental purpose of patent law. Patents are meant to encourage progress and innovation by providing an incentive for disclosure those who have made significant contributions to their field of interest. The nonobviousness requirement is so important because if patent protection was available to every trivial invention or improvement, progress in that field would be stifled until the patent expired, at which point another trivial invention would halt progress again. Nonobviousness is fundamentally a check that a patented device is, in fact, a significant contribution.

The test set forth in this case is that an invention is likely to be obvious if it combines familiar elements and does nothing more than produce predictable results.

===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.

It is basically a codification of the judicial precedents set forth in Hotchkiss and A&P, though the focus is shifted from the word "invention" to "obvious," which grants further clarity to Hotchkiss and A&P, as "nonobvious" is a slightly easier concept to apply than "invention," which seems very broad.

Later cases refer to section 103 in lieu of Hotchkiss or A&P as it is succinct and explicit.

===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"

Lyon's method had been explored in the prior art, specifically by Cartwright and Hewlett, but it was ultimately abandoned because the coating scratched more easily. This would have served as a deterrent rather than a motivation to further pursue Lyon's method, so it is hard to argue that it would have been obvious.

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

[[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.

The decision also noted the importance of the file wrapper of a patent application, and that attention must be payed throughout the entire process in order to determine the legitimacy of the claims.

:"Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent."

The court stressed that the distinction between what is obvious and what is not would not be uniform, as each invention/case is unique, so it would still have to be determined on a case-by-case basis, but that strict adherence to the test above would produce "uniformity and definiteness".

This case also dealt with the relationship between the relatively new Patent Act of 1952 and the long standing judicial precedents concerning patents.

:"We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Additionally, the Court looks back to Thomas Jefferson, who was probably the most influential person in the establishment of U.S. patent law.
*Jefferson was very much opposed to the idea of monopolies and thought that even limited monopolies should be avoided as much as possible
*He did, however, recognize the economic and social incentive of granting limited monopolies to inventors to encourage innovation
*He stressed the importance of "drawing a line between the things that are worth to the public the embarrassment of an exclusive patent, and those which are not"

===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.
* This case was similar to Lyon v. Bausch & Lomb in that the decision that the patent was nonobvious relied on the fact that the prior art was a ''discouragement'' rather than an encouragement to pursue the device in question.
** "This is not to say that one who merely finds new uses for old inventions by shutting his eyes to the prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in the old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
* The primary stress is on a technical analysis of the device, with secondary importance given to economic and social repercussions of the device.

===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.
* It was reiterated that patents should not be allowed "whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
* This case was another example of an invention that combined two known things and yielded an entirely expected result, which, according to A&P, makes it obvious

==Suggestion to Combine (The TSM Test)==
[[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.

This has come to be referred to as the TSM test. Under the TSM test, an invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex
* The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
** The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
*** While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
* Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
* The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
:"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"

It is also important to note that the TSM test is broad and complex. Its scope is not limited to one field of inquiry. KSR expands the concept of obviousness beyond the scope of the prior art relating to the specific problem at hand. In other words, common sense is another important consideration when determining obviousness.
: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."

==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 TSM Test ("Teaching, Suggestion, Motivation")==
The TSM test is a test of the patentability of an invention where the invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex
* The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
** The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
*** While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
* Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
* The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
:"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"

It is also important to note that the TSM test is broad and complex. Its scope is not limited to one field of inquiry. KSR expands the concept of obviousness beyond the scope of the prior art relating to the specific problem at hand. In other words, common sense is another important consideration when determining obviousness.
: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."

==The Inventive Step==

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

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

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

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

[[South Corp. v. US]]

Homework 4 - Edit Nonobviousness Page (Potter)

2011-02-09T03:03:02Z

Jpotter2: /* Suggestion to Combine */

==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 and useful. Simple inventions or improvements could be patented as long as that exact thing had not been created before. 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."

The key precedent set forth in Hotchkiss v. Greenwood was the idea that "unless more ingenuity and skill in applying the old method ... were required in the application of it ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention."

Until the Patent Act of 1952, this would serve as the fundamental basis for deciding the nonobviousness of a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

A&P Tea v. Supermarket Equipment builds upon the precedent of Hotchkiss v. Greenwood and provides more insight into what constitutes "invention."

The decision of the court discussed the level of invention necessary to determine nonobviousness. It was conceded that the device filled a "long-felt want" and was commercially successful, but that if there was no invention to the device it was still not patentable. Thus, long felt need and popularity were secondary considerations.

:It was conceded that the device filled a long-felt want and enjoyed commercial success, which can be indicators of nonobviousness, but that there was not enough invention to warrant patentability

::"...only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

::"A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

The concurring decision of Justice Douglas took the decision further, claiming that the liberality of patents had departed from the purpose of patent law.

:"It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end - the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But '''it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance'''."

This case stressed the consideration of the fundamental purpose of patent law. Patents are meant to encourage progress and innovation by providing an incentive for disclosure those who have made significant contributions to their field of interest. The nonobviousness requirement is so important because if patent protection was available to every trivial invention or improvement, progress in that field would be stifled until the patent expired, at which point another trivial invention would halt progress again. Nonobviousness is fundamentally a check that a patented device is, in fact, a significant contribution.

The test set forth in this case is that an invention is likely to be obvious if it combines familiar elements and does nothing more than produce predictable results.

===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.

It is basically a codification of the judicial precedents set forth in Hotchkiss and A&P, though the focus is shifted from the word "invention" to "obvious," which grants further clarity to Hotchkiss and A&P, as "nonobvious" is a slightly easier concept to apply than "invention," which seems very broad.

Later cases refer to section 103 in lieu of Hotchkiss or A&P as it is succinct and explicit.

===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"

Lyon's method had been explored in the prior art, specifically by Cartwright and Hewlett, but it was ultimately abandoned because the coating scratched more easily. This would have served as a deterrent rather than a motivation to further pursue Lyon's method, so it is hard to argue that it would have been obvious.

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

[[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.

The decision also noted the importance of the file wrapper of a patent application, and that attention must be payed throughout the entire process in order to determine the legitimacy of the claims.

:"Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent."

The court stressed that the distinction between what is obvious and what is not would not be uniform, as each invention/case is unique, so it would still have to be determined on a case-by-case basis, but that strict adherence to the test above would produce "uniformity and definiteness".

This case also dealt with the relationship between the relatively new Patent Act of 1952 and the long standing judicial precedents concerning patents.

:"We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Additionally, the Court looks back to Thomas Jefferson, who was probably the most influential person in the establishment of U.S. patent law.
*Jefferson was very much opposed to the idea of monopolies and thought that even limited monopolies should be avoided as much as possible
*He did, however, recognize the economic and social incentive of granting limited monopolies to inventors to encourage innovation
*He stressed the importance of "drawing a line between the things that are worth to the public the embarrassment of an exclusive patent, and those which are not"

===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.
* This case was similar to Lyon v. Bausch & Lomb in that the decision that the patent was nonobvious relied on the fact that the prior art was a ''discouragement'' rather than an encouragement to pursue the device in question.
** "This is not to say that one who merely finds new uses for old inventions by shutting his eyes to the prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in the old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
* The primary stress is on a technical analysis of the device, with secondary importance given to economic and social repercussions of the device.

===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.
* It was reiterated that patents should not be allowed "whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
* This case was another example of an invention that combined two known things and yielded an entirely expected result, which, according to A&P, makes it obvious

==Suggestion to Combine (The TSM Test)==
[[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 TSM Test ("Teaching, Suggestion, Motivation")==
The TSM test is a test of the patentability of an invention where the invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex
* The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
** The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
*** While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
* Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
* The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
:"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"

It is also important to note that the TSM test is broad and complex. Its scope is not limited to one field of inquiry. KSR expands the concept of obviousness beyond the scope of the prior art relating to the specific problem at hand. In other words, common sense is another important consideration when determining obviousness.
: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."

==The Inventive Step==

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

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

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

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

[[South Corp. v. US]]

Homework 4 - Edit Nonobviousness Page (Potter)

2011-02-09T03:01:37Z

Jpotter2: /* The TSM Test ("Teaching, Suggestion, Motivation") */

==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 and useful. Simple inventions or improvements could be patented as long as that exact thing had not been created before. 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."

The key precedent set forth in Hotchkiss v. Greenwood was the idea that "unless more ingenuity and skill in applying the old method ... were required in the application of it ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention."

Until the Patent Act of 1952, this would serve as the fundamental basis for deciding the nonobviousness of a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

A&P Tea v. Supermarket Equipment builds upon the precedent of Hotchkiss v. Greenwood and provides more insight into what constitutes "invention."

The decision of the court discussed the level of invention necessary to determine nonobviousness. It was conceded that the device filled a "long-felt want" and was commercially successful, but that if there was no invention to the device it was still not patentable. Thus, long felt need and popularity were secondary considerations.

:It was conceded that the device filled a long-felt want and enjoyed commercial success, which can be indicators of nonobviousness, but that there was not enough invention to warrant patentability

::"...only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

::"A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

The concurring decision of Justice Douglas took the decision further, claiming that the liberality of patents had departed from the purpose of patent law.

:"It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end - the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But '''it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance'''."

This case stressed the consideration of the fundamental purpose of patent law. Patents are meant to encourage progress and innovation by providing an incentive for disclosure those who have made significant contributions to their field of interest. The nonobviousness requirement is so important because if patent protection was available to every trivial invention or improvement, progress in that field would be stifled until the patent expired, at which point another trivial invention would halt progress again. Nonobviousness is fundamentally a check that a patented device is, in fact, a significant contribution.

The test set forth in this case is that an invention is likely to be obvious if it combines familiar elements and does nothing more than produce predictable results.

===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.

It is basically a codification of the judicial precedents set forth in Hotchkiss and A&P, though the focus is shifted from the word "invention" to "obvious," which grants further clarity to Hotchkiss and A&P, as "nonobvious" is a slightly easier concept to apply than "invention," which seems very broad.

Later cases refer to section 103 in lieu of Hotchkiss or A&P as it is succinct and explicit.

===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"

Lyon's method had been explored in the prior art, specifically by Cartwright and Hewlett, but it was ultimately abandoned because the coating scratched more easily. This would have served as a deterrent rather than a motivation to further pursue Lyon's method, so it is hard to argue that it would have been obvious.

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

[[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.

The decision also noted the importance of the file wrapper of a patent application, and that attention must be payed throughout the entire process in order to determine the legitimacy of the claims.

:"Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent."

The court stressed that the distinction between what is obvious and what is not would not be uniform, as each invention/case is unique, so it would still have to be determined on a case-by-case basis, but that strict adherence to the test above would produce "uniformity and definiteness".

This case also dealt with the relationship between the relatively new Patent Act of 1952 and the long standing judicial precedents concerning patents.

:"We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Additionally, the Court looks back to Thomas Jefferson, who was probably the most influential person in the establishment of U.S. patent law.
*Jefferson was very much opposed to the idea of monopolies and thought that even limited monopolies should be avoided as much as possible
*He did, however, recognize the economic and social incentive of granting limited monopolies to inventors to encourage innovation
*He stressed the importance of "drawing a line between the things that are worth to the public the embarrassment of an exclusive patent, and those which are not"

===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.
* This case was similar to Lyon v. Bausch & Lomb in that the decision that the patent was nonobvious relied on the fact that the prior art was a ''discouragement'' rather than an encouragement to pursue the device in question.
** "This is not to say that one who merely finds new uses for old inventions by shutting his eyes to the prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in the old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
* The primary stress is on a technical analysis of the device, with secondary importance given to economic and social repercussions of the device.

===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.
* It was reiterated that patents should not be allowed "whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
* This case was another example of an invention that combined two known things and yielded an entirely expected result, which, according to A&P, makes it obvious

==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 TSM Test ("Teaching, Suggestion, Motivation")==
The TSM test is a test of the patentability of an invention where the invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex
* The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
** The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
*** While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
* Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
* The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
:"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"

It is also important to note that the TSM test is broad and complex. Its scope is not limited to one field of inquiry. KSR expands the concept of obviousness beyond the scope of the prior art relating to the specific problem at hand. In other words, common sense is another important consideration when determining obviousness.
: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."

==The Inventive Step==

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

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

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

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

[[South Corp. v. US]]

Homework 4 - Edit Nonobviousness Page (Potter)

2011-02-09T02:52:55Z

Jpotter2: /* The TSM Test ("Teaching, Suggestion, Motivation)" */

==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 and useful. Simple inventions or improvements could be patented as long as that exact thing had not been created before. 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."

The key precedent set forth in Hotchkiss v. Greenwood was the idea that "unless more ingenuity and skill in applying the old method ... were required in the application of it ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention."

Until the Patent Act of 1952, this would serve as the fundamental basis for deciding the nonobviousness of a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

A&P Tea v. Supermarket Equipment builds upon the precedent of Hotchkiss v. Greenwood and provides more insight into what constitutes "invention."

The decision of the court discussed the level of invention necessary to determine nonobviousness. It was conceded that the device filled a "long-felt want" and was commercially successful, but that if there was no invention to the device it was still not patentable. Thus, long felt need and popularity were secondary considerations.

:It was conceded that the device filled a long-felt want and enjoyed commercial success, which can be indicators of nonobviousness, but that there was not enough invention to warrant patentability

::"...only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

::"A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

The concurring decision of Justice Douglas took the decision further, claiming that the liberality of patents had departed from the purpose of patent law.

:"It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end - the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But '''it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance'''."

This case stressed the consideration of the fundamental purpose of patent law. Patents are meant to encourage progress and innovation by providing an incentive for disclosure those who have made significant contributions to their field of interest. The nonobviousness requirement is so important because if patent protection was available to every trivial invention or improvement, progress in that field would be stifled until the patent expired, at which point another trivial invention would halt progress again. Nonobviousness is fundamentally a check that a patented device is, in fact, a significant contribution.

The test set forth in this case is that an invention is likely to be obvious if it combines familiar elements and does nothing more than produce predictable results.

===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.

It is basically a codification of the judicial precedents set forth in Hotchkiss and A&P, though the focus is shifted from the word "invention" to "obvious," which grants further clarity to Hotchkiss and A&P, as "nonobvious" is a slightly easier concept to apply than "invention," which seems very broad.

Later cases refer to section 103 in lieu of Hotchkiss or A&P as it is succinct and explicit.

===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"

Lyon's method had been explored in the prior art, specifically by Cartwright and Hewlett, but it was ultimately abandoned because the coating scratched more easily. This would have served as a deterrent rather than a motivation to further pursue Lyon's method, so it is hard to argue that it would have been obvious.

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

[[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.

The decision also noted the importance of the file wrapper of a patent application, and that attention must be payed throughout the entire process in order to determine the legitimacy of the claims.

:"Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent."

The court stressed that the distinction between what is obvious and what is not would not be uniform, as each invention/case is unique, so it would still have to be determined on a case-by-case basis, but that strict adherence to the test above would produce "uniformity and definiteness".

This case also dealt with the relationship between the relatively new Patent Act of 1952 and the long standing judicial precedents concerning patents.

:"We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Additionally, the Court looks back to Thomas Jefferson, who was probably the most influential person in the establishment of U.S. patent law.
*Jefferson was very much opposed to the idea of monopolies and thought that even limited monopolies should be avoided as much as possible
*He did, however, recognize the economic and social incentive of granting limited monopolies to inventors to encourage innovation
*He stressed the importance of "drawing a line between the things that are worth to the public the embarrassment of an exclusive patent, and those which are not"

===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.
* This case was similar to Lyon v. Bausch & Lomb in that the decision that the patent was nonobvious relied on the fact that the prior art was a ''discouragement'' rather than an encouragement to pursue the device in question.
** "This is not to say that one who merely finds new uses for old inventions by shutting his eyes to the prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in the old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
* The primary stress is on a technical analysis of the device, with secondary importance given to economic and social repercussions of the device.

===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.
* It was reiterated that patents should not be allowed "whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
* This case was another example of an invention that combined two known things and yielded an entirely expected result, which, according to A&P, makes it obvious

==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 TSM Test ("Teaching, Suggestion, Motivation")==
The TSM test is a test of the patentability of an invention where the invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex
* The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
** The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
*** While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
* Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
* Applying the TSM test can get messy, and often demands an inquiry into multiple prior patents, sometimes even in different fields
* The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
:"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"

==The Inventive Step==

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

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

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

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

[[South Corp. v. US]]

Homework 4 - Edit Nonobviousness Page (Potter)

2011-02-09T02:52:40Z

Jpotter2: /* The TSM Test ("Teaching, Suggestion, Motivation)" */

==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 and useful. Simple inventions or improvements could be patented as long as that exact thing had not been created before. 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."

The key precedent set forth in Hotchkiss v. Greenwood was the idea that "unless more ingenuity and skill in applying the old method ... were required in the application of it ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention."

Until the Patent Act of 1952, this would serve as the fundamental basis for deciding the nonobviousness of a patent.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.

A&P Tea v. Supermarket Equipment builds upon the precedent of Hotchkiss v. Greenwood and provides more insight into what constitutes "invention."

The decision of the court discussed the level of invention necessary to determine nonobviousness. It was conceded that the device filled a "long-felt want" and was commercially successful, but that if there was no invention to the device it was still not patentable. Thus, long felt need and popularity were secondary considerations.

:It was conceded that the device filled a long-felt want and enjoyed commercial success, which can be indicators of nonobviousness, but that there was not enough invention to warrant patentability

::"...only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

::"A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

The concurring decision of Justice Douglas took the decision further, claiming that the liberality of patents had departed from the purpose of patent law.

:"It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end - the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But '''it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance'''."

This case stressed the consideration of the fundamental purpose of patent law. Patents are meant to encourage progress and innovation by providing an incentive for disclosure those who have made significant contributions to their field of interest. The nonobviousness requirement is so important because if patent protection was available to every trivial invention or improvement, progress in that field would be stifled until the patent expired, at which point another trivial invention would halt progress again. Nonobviousness is fundamentally a check that a patented device is, in fact, a significant contribution.

The test set forth in this case is that an invention is likely to be obvious if it combines familiar elements and does nothing more than produce predictable results.

===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.

It is basically a codification of the judicial precedents set forth in Hotchkiss and A&P, though the focus is shifted from the word "invention" to "obvious," which grants further clarity to Hotchkiss and A&P, as "nonobvious" is a slightly easier concept to apply than "invention," which seems very broad.

Later cases refer to section 103 in lieu of Hotchkiss or A&P as it is succinct and explicit.

===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"

Lyon's method had been explored in the prior art, specifically by Cartwright and Hewlett, but it was ultimately abandoned because the coating scratched more easily. This would have served as a deterrent rather than a motivation to further pursue Lyon's method, so it is hard to argue that it would have been obvious.

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

[[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.

The decision also noted the importance of the file wrapper of a patent application, and that attention must be payed throughout the entire process in order to determine the legitimacy of the claims.

:"Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent."

The court stressed that the distinction between what is obvious and what is not would not be uniform, as each invention/case is unique, so it would still have to be determined on a case-by-case basis, but that strict adherence to the test above would produce "uniformity and definiteness".

This case also dealt with the relationship between the relatively new Patent Act of 1952 and the long standing judicial precedents concerning patents.

:"We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Additionally, the Court looks back to Thomas Jefferson, who was probably the most influential person in the establishment of U.S. patent law.
*Jefferson was very much opposed to the idea of monopolies and thought that even limited monopolies should be avoided as much as possible
*He did, however, recognize the economic and social incentive of granting limited monopolies to inventors to encourage innovation
*He stressed the importance of "drawing a line between the things that are worth to the public the embarrassment of an exclusive patent, and those which are not"

===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.
* This case was similar to Lyon v. Bausch & Lomb in that the decision that the patent was nonobvious relied on the fact that the prior art was a ''discouragement'' rather than an encouragement to pursue the device in question.
** "This is not to say that one who merely finds new uses for old inventions by shutting his eyes to the prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in the old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
* The primary stress is on a technical analysis of the device, with secondary importance given to economic and social repercussions of the device.

===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.
* It was reiterated that patents should not be allowed "whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
* This case was another example of an invention that combined two known things and yielded an entirely expected result, which, according to A&P, makes it obvious

==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 TSM Test ("Teaching, Suggestion, Motivation)"==
The TSM test is a test of the patentability of an invention where the invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex
* The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
** The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
*** While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
* Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
* Applying the TSM test can get messy, and often demands an inquiry into multiple prior patents, sometimes even in different fields
* The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
:"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"

==The Inventive Step==

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

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

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

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

[[South Corp. v. US]]

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