Bill Goodwine's Wiki - User contributions [en]

Quanta Brief 901437068

2011-04-29T09:09:25Z

Lmiller:

=Brief of Amicus Curiae Motorola, Inc. in Support of Petitioners=
* Motorola, Inc. is presenting an amicus curiae brief on behalf of Quanta.
**Motorola, Inc. is a public company that designs, manufactures and sells a variety of telecommunications and electronic products and services.
**The company owns a number of patents and has entered into a number of licensing agreements

*Patent license agreements, covenants not to sue, and releases are entered into for different reasons, and the rights granted or conveyed by each type of agreement are, and are intended to be, different.
*Motorola's main argument:
**Under the Court's precedent, licensed sales of microprocessors and chipsets exhausted LGE's patent rights.
**The scope of the question presented is narrowly focused to determine the exhaustion effect of Inters post-license sales under the LGE-Intel license.
**The scope of the question presented does not encompass other types of agreements that may, or may not, grant or convey patent rights, such as covenants not to sue and releases.
**Therefore, the Court should limit its holding in this case only to the exhaustion effect under a license

*Two main arguments:
* I. Motorola Supports Petitioners' Positions With Respect To The Question Presented
**Intel's sale of microprocessors and chipsets pursuant to the LGE-Intel license exhausted LGE's patent rights.
**Intel's sale of products that embody essential features of LGE's asserted patents and have no other substantial noninfringing use but to be combined with other articles, the combination of which infringes LGE's patents, exhausts the patents
**Purpose of the patent law is fulfilled with respect to any particular article when the patentee has received his reward for the use of his invention by the sale of the article
**Once that purpose is realized the patent law affords no basis for restraining the use and enjoyment of the thing sold.

* II. The Court Should Not Decide What Patent Exhaustion Effect, If Any, The Release LGE Granted To Intel As Part Of The License Agreement Has On Products Intel Sold Pre-Release.
**The existence of the Intel release is consistent with LGE's assertion of infringement against Intel prior to the consummation of the LGE-Intel agreement
**Some portion of the microprocessors and chipsets placed in the accused products in this case were purchased from Intel when Intel did not have authorization under LGE's patents - at least at the time the sales were made - to sell the microprocessors and chipsets.
**Motorola respectfully submits that given the narrowness of the question presented and the lack of a developed record below regarding the release, and distinctions with respect to covenants not to sue, the Court should leave the question of what impact other types of agreements may or may not have on patent exhaustion for another day.

Quanta Brief 901437068

2011-04-29T03:46:59Z

Lmiller: Created page with "=Brief of Amicus Curiae Motorola, Inc. in Support of Petitioners= *ds **.."

=Brief of Amicus Curiae Motorola, Inc. in Support of Petitioners=
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Here in list of arguments in Quanta

2011-04-29T03:46:25Z

Lmiller:

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

[[Quanta Brief Summary 901330223]]

[[901349446 Quanta Brief]]

[[Quanta Brief Summary 901471466]]

[[Quanta Brief Summary 901422128]]

[[Quanta Brief Summary Jacob Marmolejo]]

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

[[Mitros: Quanta Brief]]

[[Zahm Homework 31: Quanta Brief]]

[[901419437 Quanta v. LGE Brief Summary]]

[[Quanta Brief 901437068]]

Brief of Amicus Curiae Motorola, Inc. in Support of Petitioners 901437068

2011-04-29T03:45:31Z

Lmiller: Created page with "=Brief of Amicus Curiae Motorola, Inc. in Support of Petitioners= *Rhain **Ex *P"

=Brief of Amicus Curiae Motorola, Inc. in Support of Petitioners=

*Rhain
**Ex
*P

Here in list of arguments in Quanta

2011-04-29T03:44:01Z

Lmiller:

Homework: Honeywell v. Sundstrand brief; On behalf of Sundstrand

2011-04-04T14:41:39Z

Lmiller:

== Brief on Behalf of Hamilton Sundstrand Corporation ==

The appeal by Honeywell International, Inc. (henceforth referred to as “Honeywell”) should be rejected. Honeywell claims that Sundstrand’s APS 3200 APU device, which utilizes the DELPQP parameter and IGV (inlet guide vane) position to control airflow, infringes on Honeywell’s APU device that does the same thing, only without the same use of the IGVs. However, based on the prosecution history estoppel, Honeywell has no grounds to assert the doctrine of equivalents in proving its case of infringement against Sundstrand.

There are only two ways in which Honeywell could use the doctrine against the Respondent and overcome the estoppel preventing cause for infringement. The first is they could prove that the “alleged equivalent,” or the measuring of position of the IGVs to determine proper air flow, was unforeseeable at the time that Honeywell spelled out their claims in the patent. If the equivalent was unforeseeable, it would be understandable that the patent owner did not include that equivalent in the claim. If, however, the equivalent was foreseeable at the time of the patent’s filing, and the owner failed to define it as part of the scope of the patent, doctrine of equivalents would not apply, since the owner could be presumed to surrender that knowledge as not pertinent to the invention.

Honeywell fails to meet this first requirement. The District Court found, after extensive testimony, that at the time of filing, Honeywell could have used IGV positioning to determine airflow. Honeywell surrendered any right to the use of the IGV positioning knowledge when it failed to include it in the claims, though its application was well known at the time of invention. There is no reason, Sundstrand argues, for this finding to be overturned by this Court. To do so would run counter to the purpose of patent claims, which is to define the patent’s scope, and leave knowledge not addressed free for the public’s use.

The second way for Honeywell to overcome the estoppel would be to prove that, when the original patent claims were modified in order to make the patent patentable, the amendment made to narrow the claim’s scope had only a tangential relation to the alleged equivalent. The record on hand, however, shows that the original claims included the IGV “limitation,” showing that the relation to the equivalent is very much direct. The narrowing amendment, in addition to the foreseeability of the IGVs, proves that Honeywell should remain barred via prosecution history estoppel from using the doctrine of equivalents against Sundstrand.

Homework: Honeywell v. Sundstrand brief; On behalf of Sundstrand

2011-04-04T02:43:59Z

Lmiller: Created page with "== Brief on Behalf of Hamilton Sundstrand Corporation == ..."

== Brief on Behalf of Hamilton Sundstrand Corporation ==

...

User:Lmiller

2011-04-04T02:42:50Z

Lmiller:

== My Selected US Patent ==

Patent 4495813: Jogger Speedometer and Odometer

Date issued: January 29, 1985

When searching through the US Patent database, I came across this invention that called itself a jogger odometer. I enjoy jogging and running myself, and have seen and used an odometer while running, so I decided to check out the invention. The jogger odometer is basically a wheel that you push along the ground as you run, and an indicator measures from the motion of the wheel how far you have gone. I decided to use it as my patent because I think it's interesting to see what mechanical devices people used to use before the invention of more digital devices. The link to the invention's patent is here: [http://ip.com/patent/US4495813]

== Homework #1: January 28 ==

The patent chosen for the assignment is Patent Number #4495813, for a Jogger Speedometer and Odometer. Two of the References Cited, both being for other patents, are for devices that look very similar to the chosen patent.

The earlier patent, #3251132, granted in May 1966, is for a “Measuring Apparatus.” The apparatus is a wheel made of hard rubber, which when engaged along the ground/floor “operates a counter to indicate distance traversed by the wheel.” Ten equally spaced marks on the wheel, each one tenth of a foot in length, are along the wheel, which a counter mechanically “snaps” as the wheel rolls, indicating that another tenth of a foot has been traversed. It is driven by a handle, which has written on the side conversions from tenths of a foot (the denominations the wheel takes measurements in) into inches. This handle is made of tubular aluminum and rubber. A counter, of “conventional construction,” is mounted on the wheel.

From a later date, November of 1971, there is a similar invention, Patent #3616541, called a “Measuring Wheel.” Like the Measuring Apparatus, it is a wheel driven by a handle intended for measuring long distances. There is also a counter to keep track of how far the wheel has traveled, just like that of the older patent. One new element of this invention is a brake that is operated by pivoting the handle. Also, the counter used to detect changes in angular position of the wheel is a “tongue” moving along a cam rather than a tab ticking off iterated arc lengths.

The patent itself in question, #4495813, was granted in January of 1985. Labeling itself as a “Jogger Speedometer and Odometer,” it is just like the Measuring Apparatus and Wheel in that it is a wheel that is driven along the ground by a handle held by a person. The shaft connecting the handle to the wheel, unlike the previous two inventions, is flexible, shaped in such a way as to eliminate undue torques on the user, and can adjust the speedometer and odometer simply by changing the angle at which it is used. In addition to a counter—the “odometer”—that measures distance traveled, the device, unlike the past two inventions, also includes a speedometer that indicates the rate of speed at which one is traveling. Both indicators are mechanically connected to the wheel being read. More superficially, there is also an elastic band at the end that the runner can strap around his or her hand for a more comfortable jogging experience.

According to the Hotchkiss and A&P cases, in order for an invention to be patentable, it must show “non-obviousness” or “inventiveness.” The Hotchkiss case describes a patentable item as something that is distinguishable from the old machine or device, and requires some sort of skill to come to; it can’t simply be something that a mechanic could come up with. The A&P case states likewise, saying that simply adding together a number of old, known parts is not enough to invent something; “the whole must exceed the sum of the parts.”

To meet the qualification of non-obviousness under Title 35 of the United States Code, Section 103 used in the Lyon v. Bausch case, an invention is patentable if “the differences between the subject matter sought to be patented and the prior art” are such that any changes made to the new invention would have been “obvious” to any person with ordinary skill in the area of interest of the new invention.

It is believed that the Jogger Speedometer and Odometer is patentable both according to the older cases and the US Code. True, one could argue under that certain elements of the device, such as mechanically connecting the wheel to the odometer or adding an elastic band to the handle, seem like things that any person of “ordinary skill” can achieve under 35 U.S.C 103, especially given the past two inventions it is based on; or that the wheel-and-shaft/handle configuration is barely distinguishable from the older patents under the Hotchkiss case; or that adding an odometer adds nothing remarkable or new to the invention under the A&P case.

However, there are more elements to the invention that someone of “ordinary skill” could not necessarily achieve. For instance, changing the shape of the shaft to that of a flexible one with an S-shape that closer matches the contour of a jogger’s body and avoids placing undue torques or stresses on the user is something that likely took a great deal of time, effort, and skill beyond that of a layperson. The invention thus complies with what the US Code has to say about non-obviousness.

In addition, making it such that changing the orientation of the handle/shaft adjusts the speedometer and odometer is a new element gives the device a new dimension not achieved with simply the individual parts of the invention, complying with the reasoning behind the A&P case. Finally, while the figures of the invention look almost indistinguishable from the previous two patents it is based on, the invention has certain elements—such as an added speedometer and a handle allowing adjustment of the indicators—not present in the past two inventions. Thus, it distinguishes itself under the standards of “inventiveness” laid out by Hotchkiss.

Of course, if one takes into account the concurring opinion of Justice Douglas in the A&P case, this invention may not be patentable on the grounds that it seems more a quirky (and silly-looking) gadget than a device that promotes the “Progress of Science and the useful Art.” However, as that is not the subject of this homework, it will be left alone.

[[Nonobviousness: LMiller's Page]]

[[Homework: Printed Publication]]

[[Homework: Honeywell v. Sundstrand brief; On behalf of Sundstrand]]

Doctrine of Equivalents Case List

2011-04-04T02:36:48Z

Lmiller:

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)

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

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

901437068

Doctrine of Equivalents Case List

2011-04-04T02:19:03Z

Lmiller:

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)

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

Owner of Patent No. 5,611,325 for an archery bow stabilizer, Donald Kudlacek, brought an infringement suit against competitor DBC, Inc. DBC counterclaimed, stating that its patent for a peep sight targeting system was being infringed. The claim in question was ... The District Court decided that neither Kudlacek's stabilizer nor DBC's peep sight target system were infringed. This was because the important part of the claim...was found to not be equivalent to ....because .... However, the invalidity issue was not settled by finding that the patent was not infringed.

901437068

Homework: Printed Publication

2011-03-23T03:03:02Z

Lmiller: /* SRI Intern, Inc. v. Internet Sec. Systems, Inc. */

== SRI Intern, Inc. v. Internet Sec. Systems, Inc. ==

The case, in the 3rd District Federal Court number 511 F.3d 1186, was reviewing a case from Delaware's District Court, which held that four of ISS's patents were invalid because they were anticipated under SRI's prior art publication "Live Traffic Analysis of TCP/IP Gateways." The patents all dealt with cyber security and detecting intrusions, and all were applied for on November 9, 1998. The Live Traffic paper, based on a 1997 EMERALD paper (a paper on tracking malicious activity across networks that has material with one of the patents, '212), was incorporated by all four patents and was displayed on SRI's company website on November 10, 1997. In the end, one of the patents, '212, was affirmed to be invalid, because of another paper, the EMERALD paper, shows the patent was anticipated due to the prior art. However, there were inconclusive facts about whether the "Live Traffic" paper was "publically accessible" (not clear from the facts that a normal person skilled in the art could access the Live Traffic paper on the FTP server), the Federal Court judges ended up vacating and remanding the district court's other determinations.

Homework: Printed Publication

2011-03-23T02:19:01Z

Lmiller: Created page with "== SRI Intern, Inc. v. Internet Sec. Systems, Inc. == The"

== SRI Intern, Inc. v. Internet Sec. Systems, Inc. ==

The

User:Lmiller

2011-03-23T02:16:48Z

Lmiller: /* Homework #1: January 28 */

ESB Briefs

2011-03-03T19:29:17Z

Lmiller:

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

2011-02-11T17:46:56Z

Lmiller:

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)
#Craigkrzyskowski
#Brief of Amicus Curiae William Mitchell College of Law Intellectual Property Institute in Support of Respondent (Oct. 2, 2009)
#ebingle
#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)
#LMiller
#Brief of TELES AG as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae San Diego Intellectual Property Law Association in Support of Neither Party on the Merits (Aug. 6, 2009)
#Brief of Robert R. Sachs and Daniel R. Brownstone as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae the University of South Florida in Support of Petitioners (Aug. 6, 2009)
#Brief of Amicus Curiae AwakenIP, LLC in Support of Petitioners (Aug. 6, 2009)
#Brief of Amici Curiae Dolby Laboratories, Inc., DTS, Inc., and SRS Labs, Inc., in Support of Neither Party (Aug. 6, 2009)
#Brief of Dr. Ananda Chakrabarty as Amicus Curiae in Support of Petitioners (Aug. 6, 2009)
#Brief of Georgia Biomedical Partnership, Inc. as Amicus Curiae in Support of Petitioners (Aug. 5, 2009)
#Brief for Prometheus Laboratories Inc. as Amicus Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Intellectual Property Owners Association in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Aug. 5, 2009)
#Brief for the Business Software Alliance as Amicus Curiae in Support of Affirmance (Aug. 5, 2009)
#Brief of Amicus Curiae Washington State Patent Law Association in Support of Petitioner (Aug. 5, 2009)
#Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Aug. 5, 2009)
#Brief of Amici Curiae Association Internationale Pour la Protection de la Propriete Intellectuelle and International Association For The Protection Of Intellectual Property (U.S.) in Support of Reversal (Aug. 5, 2009)
#Brief of Amicus Curiae Caris Diagnostics, Inc. in Support of Petitioners (Aug. 5, 2009)
#Rabot
#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)

Nonobviousness: LMiller's Page

2011-02-09T16:35:38Z

Lmiller: /* Historical Development */

==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 show “originality and usefulness.” This case basically established the notion that there had to me more to it, some sort of threshold for “inventiveness,” which ultimately became the idea of ''nonobviousness.''

The invention in question was a clay knob with a metal shank. The shape of the entire knob setup was not new, and neither were knobs made out of potter’s clay. The novelty of the invention consisted in the substitution of the clay material of the knob in the place of one made of metal or wood, allowing the shank to still be made of metal. As a side note, the case could become a different issue entirely if clay had NOT been used in knobs before. If this were the case, it could be urged that an “old contrivance” of a knob using a new composition of matter, resulting in a new and useful article, was the proper subject of a patent.

The novelty of the invention consisted 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.

As mentioned previously, the knob is not new, nor the knob setup including the metallic shank and spindle and the dovetail form of the cavity in the knob. The means by which the metallic shank is securely fastened is also not new. 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.

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

Using a different material can never be the subject of a patent. If a machine were made of materials better than the materials of which the old one was constructed, even if the new materials made the machined better and cheaper, that would not entitle the manufacturer to a patent. The difference is “destitute of ingenuity or invention.” While some judgment and skill may be required in the selection and adaptation of the materials for the purposes intended, this improvement is “the work of a skillful mechanic, not that of the inventor.”

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention, such as:
*whether the combination of old elements could constitute an invention,
*if the fact that a device meets a “long felt but unsatisfied need” could meet a standard of nonobviousness, and
*if patent protection should be reserved for devices at the frontier of science and engineering and not “wasted” on mundane articles such as plows.

The invention at issue in this case was a cashier’s counter, to be used in a grocery store, which moves groceries along it from where the customer places the groceries to the cashier. These counters had been widely and successfully used beforehand. While each element of the invention was known beforehand to “prior art,” the concept of a counter with an “extension” was decided to constitute a “new and useful combination.”

The Supreme Court, in its decision, first pointed out that the extension of the counter in and of itself does not constitute an invention for the following reasons:
*The extension is not mentioned in any of the patent’s claims
*Even if the extension were mentioned in the claims, it would not constitute an invention because changing the dimensions of a countertop is a contrivance that any vendor/user of the counter would do to suit the needs of the merchant
*Even if the extension were patentable, the counter still wouldn’t be patentable because it simply was a combination of old elements

This left the question as to what sort of invention would be patentable, if nothing tangible was new and the only inventiveness present was in bringing old elements together. The Court points out that there had never been a PRECISE definition of what sort of test should be used to determine the patentability of combination patents (which have been sustained before). Generally, however, it is agreed that the combination must perform some “new or different function;” namely, the whole must exceed the sum of the parts. It was found that the invention in question is wanting of such an effect, and the extension of the counter does not add any new functions to the invention.

The owner of the patent argued that the patentability of the invention lies in (extensive) evidence that “this device filled a long-felt want and has enjoyed commercial success.” The Court, in reply, stated that commercial success and meeting a need do not make an invention patentable if there is no “inventiveness” in it. While the addition of a counter expansion made the invention better for business, many “ideas in business are not patentable.” Thus, the patent was declared invalid.

The third issue called into question during this case was actually addressed in the concurring opinion at the end. Justice Douglas believed that the invention wasn’t patentable for an entirely different reason. Douglas stated that the point of patent protection is to encourage innovation in science and engineering, and thus serve a higher end than protecting every little idea people come up with. He then basically started to complain about how far the Court has fallen, to have to argue over something so trivial as counter extensions.

===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 worth noting that this addition to the US Code was described as simply putting into writing the precedents that had been consistently used by the Courts beforehand. At the same time, it is widely accepted that Section 103, while complying with the precedents, keeps with the spirit of the Constitution and the purposes which the founders, specifically Thomas Jefferson, intended for the patent system: namely, that there be a balance between rewarding those who promote the progress of Science and engineering and between avoiding a monopoly on ideas.

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] the main issue at hand lied in the application of the Act of 1952, which adopted §103 of the US Code.

The invention in question is a process involving the coating of lenses with an inorganic salt to prevent reflection and scratching of the lens. While this process had been used before, the new part of this invented process was keeping the workpiece heated before, during and after the process, whereas before it was not heated during the coating process. In question was whether this added step was enough to warrant a patent.

On one hand, if this case had come up twenty or thirty years ago, the step would be enough to support a patent. It met a long-felt need that, for years, no one had been able to fill or come up with a satisfactory solution. This meant that the change to the process, however small, could not have possibly been obvious because it would have been discovered beforehand.

On the other hand, under the now-codified Section 103, the invention would be found invalid. Learned Hand, the judge delivering the opinion, stated that:
: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
In the end, they decided that they could not retroactively apply the law to this invention, and it was upheld.

===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

The invention in question was a plow with a clamp used to absorb shock as the plow goes through rocky soil and thus prevent damage. The petitioner of the patent, Graham, had modified the invention in question from an earlier patent he held, similar except in that the new invention included a bolted connection and stirrup, as well as switched the position of the shank. This new setup, allegedly, allows for greater flexion of the shank.

The design and elements of the invention were all found in the prior art, namely Graham’s older patent and the Glencoe patent. Since there was a wide scope of the prior art that could not be differentiated between the claims in contention in this case, it could not be found to be nonobvious. Further, the Courts found that, if the change in flex was the crucial difference between the contested patent and the prior art, it is “evident” that changing the position of the clamp would achieve this. Thus, the patent fails again to meet the nonobviousness requirement.

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

In [[US v. Adams, 383 U.S. 39 (1966)]], a main point made in the case was that all the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

The invention in question was a wet battery using electrodes of magnesium and cuprous chloride. The US government, alleging that Adams’ patent was invalid, entered into evidence a number of patents and treatises showing the prior art of the battery. However, upon closer examination of the prior art, it becomes clear that no one could connect the prior art with what was invented. For instance, only a couple of the patents actually made mention of using water in a battery. Others only mentioned using magnesium in passing, and was not actually used in an electrode. Another patent involved using cuprous chloride, but not with water.

As a result of these findings, while wet batteries had been made before, there was no evidence from the prior art patents that it was even possible to substitute in electrodes of different materials. In fact, the government admitted that:
:the Adams battery 'wholly unexpectedly' has shown 'certain valuable operating advantages over other batteries' while those from which it is claimed to have been copied were long ago discarded.

These unexpected results show that the invention must be nonobvious. Though the elements were each known in the prior art, it is clear that any person “reasonably skilled” would not come to the conclusions that Adams did.

===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.

This case still seems to stick to the language of Section 103. It determined that using a heater in blacktop laying was obvious to anyone skilled in the art, as it had been used in the past for the process.

===A Summary===

The issue of using nonobviousness as a standard for determining patentability of an invention first appeared in [[Hotchkiss v. Greenwood]], where it was decided that it was not enough for an invention to be new and useful. It also had to show that some sort of "inventiveness" was needed, and could not be the result of the work of a "skilled mechanic," such as substituting out the material of a previously known device and calling it an invention. This language, namely "skilled mechanic" and "invention" would become a precedence for future issues on nonobviousness. A hundred years later, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] introduced more precedents for dealing with more difficult issues of nonobviousness. Namely, it is not enough that an invention meet a long-felt need if that invention is something any shrewd businessman could come up with, and that an invention that is a combination of old elements known to the prior art can qualify as being nonobvious only if it does something new.

Shortly thereafter, the precedents that had been used up until then were finally put into law in Section 103 of Title 35 of the Us Code. [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] spelled out how the new law was not so new, as it was simply putting into writing what had been widely practiced by the Courts beforehand. [[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." For an invention to be nonobvious, it had to have some differences between itself and the prior art, and the inventor had to have more than simply "ordinary skill" in the art. [[US v. Adams, 383 U.S. 39 (1966)]] showed that there are secondary considerations to take into account when one is considering the nonobviousness of an invention, such as it filling a long-felt but previously unsolved need. The reasoning was that, if people really needed this device but had not found a solution yet (when they must have been actively searching for a solution), the invention/solution must be nonobvious.

==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.

In this case, there was not enough evidence to show motivation for the combination; therefore, the Courts could not use it as reason to show nonobviousness.

==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. Details regarding secondary considerations are found in the respective section below.
*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.

==Secondary Considerations==
Under 35 US § 103:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

However, there are secondary considerations that can be taken into account, especially as enumerated in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.
* commercial success of the invention;
* long-felt but unsolved needs;
* failure of others to find a solution, etc.

While the US Code will always precede these considerations, they are useful in determining, at a deeper level, whether an invention is obvious or not. For example, in the aforementioned case with Learned Hand, it was demonstrated that, while keeping the workpiece heated throughout the coating process is such a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years, to no avail. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Relationship with Novelty==

“Nonobviousness” and “Novelty” are two separate sections of the US Code, as well as two separate tests of patentability that must both be met by a valid patent. Section 102 regards novelty:
:A person shall be entitled to a patent unless—
:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

While Section 103 regards nonobviousness:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

It can be seen that, even if an invention is found to be novel or new, it must still be nonobvious or distinct enough from the prior art to warrant a patent.

==Nonobviousness vs. Invention==
The transition in language from “invention” to “nonobviousness” for determining this factor occurred with the Act of 1952, which added Section 103 to the US Code. Congress decided that “invention” was too vague a word that led to “a large variety” of similarly ambiguous expressions for determining patentability. The intention of using the new language, it was argued, was to codify precedents that had widely been used in the courts before the passing of the act.

==The Inventive Step==

Part of the reason for the language of Section 103 is to say that it doesn't matter how a person goes about inventing a machine or process. Whether or not something is obvious has nothing to do with the amount of time spent coming up with the idea, whether it resulted from a "flash of brilliance" or from years of research and study.

==Ordinary Skill in the Art==
[[Reiner v. I. Leon Co.]]
[[South Corp. v. US]]

Nonobviousness: LMiller's Page

2011-02-09T05:18:27Z

Lmiller: /* 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 show “originality and usefulness.” This case basically established the notion that there had to me more to it, some sort of threshold for “inventiveness,” which ultimately became the idea of ''nonobviousness.''

The invention in question was a clay knob with a metal shank. The shape of the entire knob setup was not new, and neither were knobs made out of potter’s clay. The novelty of the invention consisted in the substitution of the clay material of the knob in the place of one made of metal or wood, allowing the shank to still be made of metal. As a side note, the case could become a different issue entirely if clay had NOT been used in knobs before. If this were the case, it could be urged that an “old contrivance” of a knob using a new composition of matter, resulting in a new and useful article, was the proper subject of a patent.

The novelty of the invention consisted 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.

As mentioned previously, the knob is not new, nor the knob setup including the metallic shank and spindle and the dovetail form of the cavity in the knob. The means by which the metallic shank is securely fastened is also not new. 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.

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

Using a different material can never be the subject of a patent. If a machine were made of materials better than the materials of which the old one was constructed, even if the new materials made the machined better and cheaper, that would not entitle the manufacturer to a patent. The difference is “destitute of ingenuity or invention.” While some judgment and skill may be required in the selection and adaptation of the materials for the purposes intended, this improvement is “the work of a skillful mechanic, not that of the inventor.”

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention, such as:
*whether the combination of old elements could constitute an invention,
*if the fact that a device meets a “long felt but unsatisfied need” could meet a standard of nonobviousness, and
*if patent protection should be reserved for devices at the frontier of science and engineering and not “wasted” on mundane articles such as plows.

The invention at issue in this case was a cashier’s counter, to be used in a grocery store, which moves groceries along it from where the customer places the groceries to the cashier. These counters had been widely and successfully used beforehand. While each element of the invention was known beforehand to “prior art,” the concept of a counter with an “extension” was decided to constitute a “new and useful combination.”

The Supreme Court, in its decision, first pointed out that the extension of the counter in and of itself does not constitute an invention for the following reasons:
*The extension is not mentioned in any of the patent’s claims
*Even if the extension were mentioned in the claims, it would not constitute an invention because changing the dimensions of a countertop is a contrivance that any vendor/user of the counter would do to suit the needs of the merchant
*Even if the extension were patentable, the counter still wouldn’t be patentable because it simply was a combination of old elements

This left the question as to what sort of invention would be patentable, if nothing tangible was new and the only inventiveness present was in bringing old elements together. The Court points out that there had never been a PRECISE definition of what sort of test should be used to determine the patentability of combination patents (which have been sustained before). Generally, however, it is agreed that the combination must perform some “new or different function;” namely, the whole must exceed the sum of the parts. It was found that the invention in question is wanting of such an effect, and the extension of the counter does not add any new functions to the invention.

The owner of the patent argued that the patentability of the invention lies in (extensive) evidence that “this device filled a long-felt want and has enjoyed commercial success.” The Court, in reply, stated that commercial success and meeting a need do not make an invention patentable if there is no “inventiveness” in it. While the addition of a counter expansion made the invention better for business, many “ideas in business are not patentable.” Thus, the patent was declared invalid.

The third issue called into question during this case was actually addressed in the concurring opinion at the end. Justice Douglas believed that the invention wasn’t patentable for an entirely different reason. Douglas stated that the point of patent protection is to encourage innovation in science and engineering, and thus serve a higher end than protecting every little idea people come up with. He then basically started to complain about how far the Court has fallen, to have to argue over something so trivial as counter extensions.

===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 worth noting that this addition to the US Code was described as simply putting into writing the precedents that had been consistently used by the Courts beforehand. At the same time, it is widely accepted that Section 103, while complying with the precedents, keeps with the spirit of the Constitution and the purposes which the founders, specifically Thomas Jefferson, intended for the patent system: namely, that there be a balance between rewarding those who promote the progress of Science and engineering and between avoiding a monopoly on ideas.

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] the main issue at hand lied in the application of the Act of 1952, which adopted §103 of the US Code.

The invention in question is a process involving the coating of lenses with an inorganic salt to prevent reflection and scratching of the lens. While this process had been used before, the new part of this invented process was keeping the workpiece heated before, during and after the process, whereas before it was not heated during the coating process. In question was whether this added step was enough to warrant a patent.

On one hand, if this case had come up twenty or thirty years ago, the step would be enough to support a patent. It met a long-felt need that, for years, no one had been able to fill or come up with a satisfactory solution. This meant that the change to the process, however small, could not have possibly been obvious because it would have been discovered beforehand.

On the other hand, under the now-codified Section 103, the invention would be found invalid. Learned Hand, the judge delivering the opinion, stated that:
: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
In the end, they decided that they could not retroactively apply the law to this invention, and it was upheld.

===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

The invention in question was a plow with a clamp used to absorb shock as the plow goes through rocky soil and thus prevent damage. The petitioner of the patent, Graham, had modified the invention in question from an earlier patent he held, similar except in that the new invention included a bolted connection and stirrup, as well as switched the position of the shank. This new setup, allegedly, allows for greater flexion of the shank.

The design and elements of the invention were all found in the prior art, namely Graham’s older patent and the Glencoe patent. Since there was a wide scope of the prior art that could not be differentiated between the claims in contention in this case, it could not be found to be nonobvious. Further, the Courts found that, if the change in flex was the crucial difference between the contested patent and the prior art, it is “evident” that changing the position of the clamp would achieve this. Thus, the patent fails again to meet the nonobviousness requirement.

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

In [[US v. Adams, 383 U.S. 39 (1966)]], a main point made in the case was that all the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

The invention in question was a wet battery using electrodes of magnesium and cuprous chloride. The US government, alleging that Adams’ patent was invalid, entered into evidence a number of patents and treatises showing the prior art of the battery. However, upon closer examination of the prior art, it becomes clear that no one could connect the prior art with what was invented. For instance, only a couple of the patents actually made mention of using water in a battery. Others only mentioned using magnesium in passing, and was not actually used in an electrode. Another patent involved using cuprous chloride, but not with water.

As a result of these findings, while wet batteries had been made before, there was no evidence from the prior art patents that it was even possible to substitute in electrodes of different materials. In fact, the government admitted that:
:the Adams battery 'wholly unexpectedly' has shown 'certain valuable operating advantages over other batteries' while those from which it is claimed to have been copied were long ago discarded.

These unexpected results show that the invention must be nonobvious. Though the elements were each known in the prior art, it is clear that any person “reasonably skilled” would not come to the conclusions that Adams did.

===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.

This case still seems to stick to the language of Section 103. It determined that using a heater in blacktop laying was obvious to anyone skilled in the art, as it had been used in the past for the process.

==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.

In this case, there was not enough evidence to show motivation for the combination; therefore, the Courts could not use it as reason to show nonobviousness.

==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. Details regarding secondary considerations are found in the respective section below.
*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.

==Secondary Considerations==
Under 35 US § 103:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

However, there are secondary considerations that can be taken into account, especially as enumerated in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.
* commercial success of the invention;
* long-felt but unsolved needs;
* failure of others to find a solution, etc.

While the US Code will always precede these considerations, they are useful in determining, at a deeper level, whether an invention is obvious or not. For example, in the aforementioned case with Learned Hand, it was demonstrated that, while keeping the workpiece heated throughout the coating process is such a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years, to no avail. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Relationship with Novelty==

“Nonobviousness” and “Novelty” are two separate sections of the US Code, as well as two separate tests of patentability that must both be met by a valid patent. Section 102 regards novelty:
:A person shall be entitled to a patent unless—
:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

While Section 103 regards nonobviousness:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

It can be seen that, even if an invention is found to be novel or new, it must still be nonobvious or distinct enough from the prior art to warrant a patent.

==Nonobviousness vs. Invention==
The transition in language from “invention” to “nonobviousness” for determining this factor occurred with the Act of 1952, which added Section 103 to the US Code. Congress decided that “invention” was too vague a word that led to “a large variety” of similarly ambiguous expressions for determining patentability. The intention of using the new language, it was argued, was to codify precedents that had widely been used in the courts before the passing of the act.

==The Inventive Step==

Part of the reason for the language of Section 103 is to say that it doesn't matter how a person goes about inventing a machine or process. Whether or not something is obvious has nothing to do with the amount of time spent coming up with the idea, whether it resulted from a "flash of brilliance" or from years of research and study.

==Ordinary Skill in the Art==
[[Reiner v. I. Leon Co.]]
[[South Corp. v. US]]

Nonobviousness: LMiller's Page

2011-02-09T05:16:23Z

Lmiller: /* The Inventive Step */

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

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to show “originality and usefulness.” This case basically established the notion that there had to me more to it, some sort of threshold for “inventiveness,” which ultimately became the idea of ''nonobviousness.''

The invention in question was a clay knob with a metal shank. The shape of the entire knob setup was not new, and neither were knobs made out of potter’s clay. The novelty of the invention consisted in the substitution of the clay material of the knob in the place of one made of metal or wood, allowing the shank to still be made of metal. As a side note, the case could become a different issue entirely if clay had NOT been used in knobs before. If this were the case, it could be urged that an “old contrivance” of a knob using a new composition of matter, resulting in a new and useful article, was the proper subject of a patent.

The novelty of the invention consisted 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.

As mentioned previously, the knob is not new, nor the knob setup including the metallic shank and spindle and the dovetail form of the cavity in the knob. The means by which the metallic shank is securely fastened is also not new. 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.

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

Using a different material can never be the subject of a patent. If a machine were made of materials better than the materials of which the old one was constructed, even if the new materials made the machined better and cheaper, that would not entitle the manufacturer to a patent. The difference is “destitute of ingenuity or invention.” While some judgment and skill may be required in the selection and adaptation of the materials for the purposes intended, this improvement is “the work of a skillful mechanic, not that of the inventor.”

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention, such as:
*whether the combination of old elements could constitute an invention,
*if the fact that a device meets a “long felt but unsatisfied need” could meet a standard of nonobviousness, and
*if patent protection should be reserved for devices at the frontier of science and engineering and not “wasted” on mundane articles such as plows.

The invention at issue in this case was a cashier’s counter, to be used in a grocery store, which moves groceries along it from where the customer places the groceries to the cashier. These counters had been widely and successfully used beforehand. While each element of the invention was known beforehand to “prior art,” the concept of a counter with an “extension” was decided to constitute a “new and useful combination.”

The Supreme Court, in its decision, first pointed out that the extension of the counter in and of itself does not constitute an invention for the following reasons:
*The extension is not mentioned in any of the patent’s claims
*Even if the extension were mentioned in the claims, it would not constitute an invention because changing the dimensions of a countertop is a contrivance that any vendor/user of the counter would do to suit the needs of the merchant
*Even if the extension were patentable, the counter still wouldn’t be patentable because it simply was a combination of old elements

This left the question as to what sort of invention would be patentable, if nothing tangible was new and the only inventiveness present was in bringing old elements together. The Court points out that there had never been a PRECISE definition of what sort of test should be used to determine the patentability of combination patents (which have been sustained before). Generally, however, it is agreed that the combination must perform some “new or different function;” namely, the whole must exceed the sum of the parts. It was found that the invention in question is wanting of such an effect, and the extension of the counter does not add any new functions to the invention.

The owner of the patent argued that the patentability of the invention lies in (extensive) evidence that “this device filled a long-felt want and has enjoyed commercial success.” The Court, in reply, stated that commercial success and meeting a need do not make an invention patentable if there is no “inventiveness” in it. While the addition of a counter expansion made the invention better for business, many “ideas in business are not patentable.” Thus, the patent was declared invalid.

The third issue called into question during this case was actually addressed in the concurring opinion at the end. Justice Douglas believed that the invention wasn’t patentable for an entirely different reason. Douglas stated that the point of patent protection is to encourage innovation in science and engineering, and thus serve a higher end than protecting every little idea people come up with. He then basically started to complain about how far the Court has fallen, to have to argue over something so trivial as counter extensions.

===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 worth noting that this addition to the US Code was described as simply putting into writing the precedents that had been consistently used by the Courts beforehand. At the same time, it is widely accepted that Section 103, while complying with the precedents, keeps with the spirit of the Constitution and the purposes which the founders, specifically Thomas Jefferson, intended for the patent system: namely, that there be a balance between rewarding those who promote the progress of Science and engineering and between avoiding a monopoly on ideas.

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] the main issue at hand lied in the application of the Act of 1952, which adopted §103 of the US Code.

The invention in question is a process involving the coating of lenses with an inorganic salt to prevent reflection and scratching of the lens. While this process had been used before, the new part of this invented process was keeping the workpiece heated before, during and after the process, whereas before it was not heated during the coating process. In question was whether this added step was enough to warrant a patent.

On one hand, if this case had come up twenty or thirty years ago, the step would be enough to support a patent. It met a long-felt need that, for years, no one had been able to fill or come up with a satisfactory solution. This meant that the change to the process, however small, could not have possibly been obvious because it would have been discovered beforehand.

On the other hand, under the now-codified Section 103, the invention would be found invalid. Learned Hand, the judge delivering the opinion, stated that:
: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
In the end, they decided that they could not retroactively apply the law to this invention, and it was upheld.

===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

The invention in question was a plow with a clamp used to absorb shock as the plow goes through rocky soil and thus prevent damage. The petitioner of the patent, Graham, had modified the invention in question from an earlier patent he held, similar except in that the new invention included a bolted connection and stirrup, as well as switched the position of the shank. This new setup, allegedly, allows for greater flexion of the shank.

The design and elements of the invention were all found in the prior art, namely Graham’s older patent and the Glencoe patent. Since there was a wide scope of the prior art that could not be differentiated between the claims in contention in this case, it could not be found to be nonobvious. Further, the Courts found that, if the change in flex was the crucial difference between the contested patent and the prior art, it is “evident” that changing the position of the clamp would achieve this. Thus, the patent fails again to meet the nonobviousness requirement.

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

In [[US v. Adams, 383 U.S. 39 (1966)]], a main point made in the case was that all the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

The invention in question was a wet battery using electrodes of magnesium and cuprous chloride. The US government, alleging that Adams’ patent was invalid, entered into evidence a number of patents and treatises showing the prior art of the battery. However, upon closer examination of the prior art, it becomes clear that no one could connect the prior art with what was invented. For instance, only a couple of the patents actually made mention of using water in a battery. Others only mentioned using magnesium in passing, and was not actually used in an electrode. Another patent involved using cuprous chloride, but not with water.

As a result of these findings, while wet batteries had been made before, there was no evidence from the prior art patents that it was even possible to substitute in electrodes of different materials. In fact, the government admitted that:
:the Adams battery 'wholly unexpectedly' has shown 'certain valuable operating advantages over other batteries' while those from which it is claimed to have been copied were long ago discarded.

These unexpected results show that the invention must be nonobvious. Though the elements were each known in the prior art, it is clear that any person “reasonably skilled” would not come to the conclusions that Adams did.

===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.

This case still seems to stick to the language of Section 103. It determined that using a heater in blacktop laying was obvious to anyone skilled in the art, as it had been used in the past for the process.

==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. Details regarding secondary considerations are found in the respective section below.
*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.

==Secondary Considerations==
Under 35 US § 103:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

However, there are secondary considerations that can be taken into account, especially as enumerated in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.
* commercial success of the invention;
* long-felt but unsolved needs;
* failure of others to find a solution, etc.

While the US Code will always precede these considerations, they are useful in determining, at a deeper level, whether an invention is obvious or not. For example, in the aforementioned case with Learned Hand, it was demonstrated that, while keeping the workpiece heated throughout the coating process is such a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years, to no avail. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Relationship with Novelty==

“Nonobviousness” and “Novelty” are two separate sections of the US Code, as well as two separate tests of patentability that must both be met by a valid patent. Section 102 regards novelty:
:A person shall be entitled to a patent unless—
:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

While Section 103 regards nonobviousness:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

It can be seen that, even if an invention is found to be novel or new, it must still be nonobvious or distinct enough from the prior art to warrant a patent.

==Nonobviousness vs. Invention==
The transition in language from “invention” to “nonobviousness” for determining this factor occurred with the Act of 1952, which added Section 103 to the US Code. Congress decided that “invention” was too vague a word that led to “a large variety” of similarly ambiguous expressions for determining patentability. The intention of using the new language, it was argued, was to codify precedents that had widely been used in the courts before the passing of the act.

==The Inventive Step==

Part of the reason for the language of Section 103 is to say that it doesn't matter how a person goes about inventing a machine or process. Whether or not something is obvious has nothing to do with the amount of time spent coming up with the idea, whether it resulted from a "flash of brilliance" or from years of research and study.

==Ordinary Skill in the Art==
[[Reiner v. I. Leon Co.]]
[[South Corp. v. US]]

Nonobviousness: LMiller's Page

2011-02-09T04:52:48Z

Lmiller: /* 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 show “originality and usefulness.” This case basically established the notion that there had to me more to it, some sort of threshold for “inventiveness,” which ultimately became the idea of ''nonobviousness.''

The invention in question was a clay knob with a metal shank. The shape of the entire knob setup was not new, and neither were knobs made out of potter’s clay. The novelty of the invention consisted in the substitution of the clay material of the knob in the place of one made of metal or wood, allowing the shank to still be made of metal. As a side note, the case could become a different issue entirely if clay had NOT been used in knobs before. If this were the case, it could be urged that an “old contrivance” of a knob using a new composition of matter, resulting in a new and useful article, was the proper subject of a patent.

The novelty of the invention consisted 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.

As mentioned previously, the knob is not new, nor the knob setup including the metallic shank and spindle and the dovetail form of the cavity in the knob. The means by which the metallic shank is securely fastened is also not new. 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.

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

Using a different material can never be the subject of a patent. If a machine were made of materials better than the materials of which the old one was constructed, even if the new materials made the machined better and cheaper, that would not entitle the manufacturer to a patent. The difference is “destitute of ingenuity or invention.” While some judgment and skill may be required in the selection and adaptation of the materials for the purposes intended, this improvement is “the work of a skillful mechanic, not that of the inventor.”

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention, such as:
*whether the combination of old elements could constitute an invention,
*if the fact that a device meets a “long felt but unsatisfied need” could meet a standard of nonobviousness, and
*if patent protection should be reserved for devices at the frontier of science and engineering and not “wasted” on mundane articles such as plows.

The invention at issue in this case was a cashier’s counter, to be used in a grocery store, which moves groceries along it from where the customer places the groceries to the cashier. These counters had been widely and successfully used beforehand. While each element of the invention was known beforehand to “prior art,” the concept of a counter with an “extension” was decided to constitute a “new and useful combination.”

The Supreme Court, in its decision, first pointed out that the extension of the counter in and of itself does not constitute an invention for the following reasons:
*The extension is not mentioned in any of the patent’s claims
*Even if the extension were mentioned in the claims, it would not constitute an invention because changing the dimensions of a countertop is a contrivance that any vendor/user of the counter would do to suit the needs of the merchant
*Even if the extension were patentable, the counter still wouldn’t be patentable because it simply was a combination of old elements

This left the question as to what sort of invention would be patentable, if nothing tangible was new and the only inventiveness present was in bringing old elements together. The Court points out that there had never been a PRECISE definition of what sort of test should be used to determine the patentability of combination patents (which have been sustained before). Generally, however, it is agreed that the combination must perform some “new or different function;” namely, the whole must exceed the sum of the parts. It was found that the invention in question is wanting of such an effect, and the extension of the counter does not add any new functions to the invention.

The owner of the patent argued that the patentability of the invention lies in (extensive) evidence that “this device filled a long-felt want and has enjoyed commercial success.” The Court, in reply, stated that commercial success and meeting a need do not make an invention patentable if there is no “inventiveness” in it. While the addition of a counter expansion made the invention better for business, many “ideas in business are not patentable.” Thus, the patent was declared invalid.

The third issue called into question during this case was actually addressed in the concurring opinion at the end. Justice Douglas believed that the invention wasn’t patentable for an entirely different reason. Douglas stated that the point of patent protection is to encourage innovation in science and engineering, and thus serve a higher end than protecting every little idea people come up with. He then basically started to complain about how far the Court has fallen, to have to argue over something so trivial as counter extensions.

===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 worth noting that this addition to the US Code was described as simply putting into writing the precedents that had been consistently used by the Courts beforehand. At the same time, it is widely accepted that Section 103, while complying with the precedents, keeps with the spirit of the Constitution and the purposes which the founders, specifically Thomas Jefferson, intended for the patent system: namely, that there be a balance between rewarding those who promote the progress of Science and engineering and between avoiding a monopoly on ideas.

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] the main issue at hand lied in the application of the Act of 1952, which adopted §103 of the US Code.

The invention in question is a process involving the coating of lenses with an inorganic salt to prevent reflection and scratching of the lens. While this process had been used before, the new part of this invented process was keeping the workpiece heated before, during and after the process, whereas before it was not heated during the coating process. In question was whether this added step was enough to warrant a patent.

On one hand, if this case had come up twenty or thirty years ago, the step would be enough to support a patent. It met a long-felt need that, for years, no one had been able to fill or come up with a satisfactory solution. This meant that the change to the process, however small, could not have possibly been obvious because it would have been discovered beforehand.

On the other hand, under the now-codified Section 103, the invention would be found invalid. Learned Hand, the judge delivering the opinion, stated that:
: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
In the end, they decided that they could not retroactively apply the law to this invention, and it was upheld.

===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

The invention in question was a plow with a clamp used to absorb shock as the plow goes through rocky soil and thus prevent damage. The petitioner of the patent, Graham, had modified the invention in question from an earlier patent he held, similar except in that the new invention included a bolted connection and stirrup, as well as switched the position of the shank. This new setup, allegedly, allows for greater flexion of the shank.

The design and elements of the invention were all found in the prior art, namely Graham’s older patent and the Glencoe patent. Since there was a wide scope of the prior art that could not be differentiated between the claims in contention in this case, it could not be found to be nonobvious. Further, the Courts found that, if the change in flex was the crucial difference between the contested patent and the prior art, it is “evident” that changing the position of the clamp would achieve this. Thus, the patent fails again to meet the nonobviousness requirement.

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

In [[US v. Adams, 383 U.S. 39 (1966)]], a main point made in the case was that all the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

The invention in question was a wet battery using electrodes of magnesium and cuprous chloride. The US government, alleging that Adams’ patent was invalid, entered into evidence a number of patents and treatises showing the prior art of the battery. However, upon closer examination of the prior art, it becomes clear that no one could connect the prior art with what was invented. For instance, only a couple of the patents actually made mention of using water in a battery. Others only mentioned using magnesium in passing, and was not actually used in an electrode. Another patent involved using cuprous chloride, but not with water.

As a result of these findings, while wet batteries had been made before, there was no evidence from the prior art patents that it was even possible to substitute in electrodes of different materials. In fact, the government admitted that:
:the Adams battery 'wholly unexpectedly' has shown 'certain valuable operating advantages over other batteries' while those from which it is claimed to have been copied were long ago discarded.

These unexpected results show that the invention must be nonobvious. Though the elements were each known in the prior art, it is clear that any person “reasonably skilled” would not come to the conclusions that Adams did.

===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.

This case still seems to stick to the language of Section 103. It determined that using a heater in blacktop laying was obvious to anyone skilled in the art, as it had been used in the past for the process.

==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. Details regarding secondary considerations are found in the respective section below.
*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.

==Secondary Considerations==
Under 35 US § 103:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

However, there are secondary considerations that can be taken into account, especially as enumerated in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.
* commercial success of the invention;
* long-felt but unsolved needs;
* failure of others to find a solution, etc.

While the US Code will always precede these considerations, they are useful in determining, at a deeper level, whether an invention is obvious or not. For example, in the aforementioned case with Learned Hand, it was demonstrated that, while keeping the workpiece heated throughout the coating process is such a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years, to no avail. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Relationship with Novelty==

“Nonobviousness” and “Novelty” are two separate sections of the US Code, as well as two separate tests of patentability that must both be met by a valid patent. Section 102 regards novelty:
:A person shall be entitled to a patent unless—
:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

While Section 103 regards nonobviousness:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

It can be seen that, even if an invention is found to be novel or new, it must still be nonobvious or distinct enough from the prior art to warrant a patent.

==Nonobviousness vs. Invention==
The transition in language from “invention” to “nonobviousness” for determining this factor occurred with the Act of 1952, which added Section 103 to the US Code. Congress decided that “invention” was too vague a word that led to “a large variety” of similarly ambiguous expressions for determining patentability. The intention of using the new language, it was argued, was to codify precedents that had widely been used in the courts before the passing of the act.

==The Inventive Step==

Part of the reason for the language of Section 103 is to
==Ordinary Skill in the Art==
[[Reiner v. I. Leon Co.]]
[[South Corp. v. US]]

Nonobviousness: LMiller's Page

2011-02-09T04:52:29Z

Lmiller: /* 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 show “originality and usefulness.” This case basically established the notion that there had to me more to it, some sort of threshold for “inventiveness,” which ultimately became the idea of ''nonobviousness.''

The invention in question was a clay knob with a metal shank. The shape of the entire knob setup was not new, and neither were knobs made out of potter’s clay. The novelty of the invention consisted in the substitution of the clay material of the knob in the place of one made of metal or wood, allowing the shank to still be made of metal. As a side note, the case could become a different issue entirely if clay had NOT been used in knobs before. If this were the case, it could be urged that an “old contrivance” of a knob using a new composition of matter, resulting in a new and useful article, was the proper subject of a patent.

The novelty of the invention consisted 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.

As mentioned previously, the knob is not new, nor the knob setup including the metallic shank and spindle and the dovetail form of the cavity in the knob. The means by which the metallic shank is securely fastened is also not new. 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.

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

Using a different material can never be the subject of a patent. If a machine were made of materials better than the materials of which the old one was constructed, even if the new materials made the machined better and cheaper, that would not entitle the manufacturer to a patent. The difference is “destitute of ingenuity or invention.” While some judgment and skill may be required in the selection and adaptation of the materials for the purposes intended, this improvement is “the work of a skillful mechanic, not that of the inventor.”

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention, such as:
*whether the combination of old elements could constitute an invention,
*if the fact that a device meets a “long felt but unsatisfied need” could meet a standard of nonobviousness, and
*if patent protection should be reserved for devices at the frontier of science and engineering and not “wasted” on mundane articles such as plows.

The invention at issue in this case was a cashier’s counter, to be used in a grocery store, which moves groceries along it from where the customer places the groceries to the cashier. These counters had been widely and successfully used beforehand. While each element of the invention was known beforehand to “prior art,” the concept of a counter with an “extension” was decided to constitute a “new and useful combination.”

The Supreme Court, in its decision, first pointed out that the extension of the counter in and of itself does not constitute an invention for the following reasons:
*The extension is not mentioned in any of the patent’s claims
*Even if the extension were mentioned in the claims, it would not constitute an invention because changing the dimensions of a countertop is a contrivance that any vendor/user of the counter would do to suit the needs of the merchant
*Even if the extension were patentable, the counter still wouldn’t be patentable because it simply was a combination of old elements

This left the question as to what sort of invention would be patentable, if nothing tangible was new and the only inventiveness present was in bringing old elements together. The Court points out that there had never been a PRECISE definition of what sort of test should be used to determine the patentability of combination patents (which have been sustained before). Generally, however, it is agreed that the combination must perform some “new or different function;” namely, the whole must exceed the sum of the parts. It was found that the invention in question is wanting of such an effect, and the extension of the counter does not add any new functions to the invention.

The owner of the patent argued that the patentability of the invention lies in (extensive) evidence that “this device filled a long-felt want and has enjoyed commercial success.” The Court, in reply, stated that commercial success and meeting a need do not make an invention patentable if there is no “inventiveness” in it. While the addition of a counter expansion made the invention better for business, many “ideas in business are not patentable.” Thus, the patent was declared invalid.

The third issue called into question during this case was actually addressed in the concurring opinion at the end. Justice Douglas believed that the invention wasn’t patentable for an entirely different reason. Douglas stated that the point of patent protection is to encourage innovation in science and engineering, and thus serve a higher end than protecting every little idea people come up with. He then basically started to complain about how far the Court has fallen, to have to argue over something so trivial as counter extensions.

===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 worth noting that this addition to the US Code was described as simply putting into writing the precedents that had been consistently used by the Courts beforehand. At the same time, it is widely accepted that Section 103, while complying with the precedents, keeps with the spirit of the Constitution and the purposes which the founders, specifically Thomas Jefferson, intended for the patent system: namely, that there be a balance between rewarding those who promote the progress of Science and engineering and between avoiding a monopoly on ideas.

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] the main issue at hand lied in the application of the Act of 1952, which adopted §103 of the US Code.

The invention in question is a process involving the coating of lenses with an inorganic salt to prevent reflection and scratching of the lens. While this process had been used before, the new part of this invented process was keeping the workpiece heated before, during and after the process, whereas before it was not heated during the coating process. In question was whether this added step was enough to warrant a patent.

On one hand, if this case had come up twenty or thirty years ago, the step would be enough to support a patent. It met a long-felt need that, for years, no one had been able to fill or come up with a satisfactory solution. This meant that the change to the process, however small, could not have possibly been obvious because it would have been discovered beforehand.

On the other hand, under the now-codified Section 103, the invention would be found invalid. Learned Hand, the judge delivering the opinion, stated that:
: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
In the end, they decided that they could not retroactively apply the law to this invention, and it was upheld.

===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

The invention in question was a plow with a clamp used to absorb shock as the plow goes through rocky soil and thus prevent damage. The petitioner of the patent, Graham, had modified the invention in question from an earlier patent he held, similar except in that the new invention included a bolted connection and stirrup, as well as switched the position of the shank. This new setup, allegedly, allows for greater flexion of the shank.

The design and elements of the invention were all found in the prior art, namely Graham’s older patent and the Glencoe patent. Since there was a wide scope of the prior art that could not be differentiated between the claims in contention in this case, it could not be found to be nonobvious. Further, the Courts found that, if the change in flex was the crucial difference between the contested patent and the prior art, it is “evident” that changing the position of the clamp would achieve this. Thus, the patent fails again to meet the nonobviousness requirement.

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

In [[US v. Adams, 383 U.S. 39 (1966)]], a main point made in the case was that all the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

The invention in question was a wet battery using electrodes of magnesium and cuprous chloride. The US government, alleging that Adams’ patent was invalid, entered into evidence a number of patents and treatises showing the prior art of the battery. However, upon closer examination of the prior art, it becomes clear that no one could connect the prior art with what was invented. For instance, only a couple of the patents actually made mention of using water in a battery. Others only mentioned using magnesium in passing, and was not actually used in an electrode. Another patent involved using cuprous chloride, but not with water.

As a result of these findings, while wet batteries had been made before, there was no evidence from the prior art patents that it was even possible to substitute in electrodes of different materials. In fact, the government admitted that:
:the Adams battery 'wholly unexpectedly' has shown 'certain valuable operating advantages over other batteries' while those from which it is claimed to have been copied were long ago discarded.

These unexpected results show that the invention must be nonobvious. Though the elements were each known in the prior art, it is clear that any person “reasonably skilled” would not come to the conclusions that Adams did.

===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.

This case still seems to stick to the language of Section 103. It determined that using a heater in blacktop laying was obvious to anyone skilled in the art, as it had been used in the past for the process.

==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. Details regarding secondary considerations are found in the respective section below.
*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.

==Secondary Considerations==
Under 35 US § 103:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

However, there are secondary considerations that can be taken into account, especially as enumerated in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.
* commercial success of the invention;
* long-felt but unsolved needs;
* failure of others to find a solution, etc.

While the US Code will always precede these considerations, they are useful in determining, at a deeper level, whether an invention is obvious or not. For example, in the aforementioned case with Learned Hand, it was demonstrated that, while keeping the workpiece heated throughout the coating process is such a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years, to no avail. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Relationship with Novelty==

“Nonobviousness” and “Novelty” are two separate sections of the US Code, as well as two separate tests of patentability that must both be met by a valid patent. Section 102 regards novelty:
:A person shall be entitled to a patent unless—
:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

While Section 103 regards nonobviousness:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

It can be seen that, even if an invention is found to be novel or new, it must still be nonobvious or distinct enough from the prior art to warrant a patent.

==Nonobviousness vs. Invention==
The transition in language from “invention” to “nonobviousness” for determining this factor occurred with the Act of 1952, which added Section 103 to the US Code. Congress decided that “invention” was too vague a word that led to “a large variety” of similarly ambiguous expressions for determining patentability. The intention of using the new language, it was argued, was to codify precedents that had widely been used in the courts before the passing of the act.

Nonobviousness: LMiller's Page

2011-02-09T04:52:14Z

Lmiller: /* Secondary Considerations */

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

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

Prior to [[Hotchkiss v. Greenwood]] an invention only had to show “originality and usefulness.” This case basically established the notion that there had to me more to it, some sort of threshold for “inventiveness,” which ultimately became the idea of ''nonobviousness.''

The invention in question was a clay knob with a metal shank. The shape of the entire knob setup was not new, and neither were knobs made out of potter’s clay. The novelty of the invention consisted in the substitution of the clay material of the knob in the place of one made of metal or wood, allowing the shank to still be made of metal. As a side note, the case could become a different issue entirely if clay had NOT been used in knobs before. If this were the case, it could be urged that an “old contrivance” of a knob using a new composition of matter, resulting in a new and useful article, was the proper subject of a patent.

The novelty of the invention consisted 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.

As mentioned previously, the knob is not new, nor the knob setup including the metallic shank and spindle and the dovetail form of the cavity in the knob. The means by which the metallic shank is securely fastened is also not new. 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.

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

Using a different material can never be the subject of a patent. If a machine were made of materials better than the materials of which the old one was constructed, even if the new materials made the machined better and cheaper, that would not entitle the manufacturer to a patent. The difference is “destitute of ingenuity or invention.” While some judgment and skill may be required in the selection and adaptation of the materials for the purposes intended, this improvement is “the work of a skillful mechanic, not that of the inventor.”

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention, such as:
*whether the combination of old elements could constitute an invention,
*if the fact that a device meets a “long felt but unsatisfied need” could meet a standard of nonobviousness, and
*if patent protection should be reserved for devices at the frontier of science and engineering and not “wasted” on mundane articles such as plows.

The invention at issue in this case was a cashier’s counter, to be used in a grocery store, which moves groceries along it from where the customer places the groceries to the cashier. These counters had been widely and successfully used beforehand. While each element of the invention was known beforehand to “prior art,” the concept of a counter with an “extension” was decided to constitute a “new and useful combination.”

The Supreme Court, in its decision, first pointed out that the extension of the counter in and of itself does not constitute an invention for the following reasons:
*The extension is not mentioned in any of the patent’s claims
*Even if the extension were mentioned in the claims, it would not constitute an invention because changing the dimensions of a countertop is a contrivance that any vendor/user of the counter would do to suit the needs of the merchant
*Even if the extension were patentable, the counter still wouldn’t be patentable because it simply was a combination of old elements

This left the question as to what sort of invention would be patentable, if nothing tangible was new and the only inventiveness present was in bringing old elements together. The Court points out that there had never been a PRECISE definition of what sort of test should be used to determine the patentability of combination patents (which have been sustained before). Generally, however, it is agreed that the combination must perform some “new or different function;” namely, the whole must exceed the sum of the parts. It was found that the invention in question is wanting of such an effect, and the extension of the counter does not add any new functions to the invention.

The owner of the patent argued that the patentability of the invention lies in (extensive) evidence that “this device filled a long-felt want and has enjoyed commercial success.” The Court, in reply, stated that commercial success and meeting a need do not make an invention patentable if there is no “inventiveness” in it. While the addition of a counter expansion made the invention better for business, many “ideas in business are not patentable.” Thus, the patent was declared invalid.

The third issue called into question during this case was actually addressed in the concurring opinion at the end. Justice Douglas believed that the invention wasn’t patentable for an entirely different reason. Douglas stated that the point of patent protection is to encourage innovation in science and engineering, and thus serve a higher end than protecting every little idea people come up with. He then basically started to complain about how far the Court has fallen, to have to argue over something so trivial as counter extensions.

===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 worth noting that this addition to the US Code was described as simply putting into writing the precedents that had been consistently used by the Courts beforehand. At the same time, it is widely accepted that Section 103, while complying with the precedents, keeps with the spirit of the Constitution and the purposes which the founders, specifically Thomas Jefferson, intended for the patent system: namely, that there be a balance between rewarding those who promote the progress of Science and engineering and between avoiding a monopoly on ideas.

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] the main issue at hand lied in the application of the Act of 1952, which adopted §103 of the US Code.

The invention in question is a process involving the coating of lenses with an inorganic salt to prevent reflection and scratching of the lens. While this process had been used before, the new part of this invented process was keeping the workpiece heated before, during and after the process, whereas before it was not heated during the coating process. In question was whether this added step was enough to warrant a patent.

On one hand, if this case had come up twenty or thirty years ago, the step would be enough to support a patent. It met a long-felt need that, for years, no one had been able to fill or come up with a satisfactory solution. This meant that the change to the process, however small, could not have possibly been obvious because it would have been discovered beforehand.

On the other hand, under the now-codified Section 103, the invention would be found invalid. Learned Hand, the judge delivering the opinion, stated that:
: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
In the end, they decided that they could not retroactively apply the law to this invention, and it was upheld.

===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

The invention in question was a plow with a clamp used to absorb shock as the plow goes through rocky soil and thus prevent damage. The petitioner of the patent, Graham, had modified the invention in question from an earlier patent he held, similar except in that the new invention included a bolted connection and stirrup, as well as switched the position of the shank. This new setup, allegedly, allows for greater flexion of the shank.

The design and elements of the invention were all found in the prior art, namely Graham’s older patent and the Glencoe patent. Since there was a wide scope of the prior art that could not be differentiated between the claims in contention in this case, it could not be found to be nonobvious. Further, the Courts found that, if the change in flex was the crucial difference between the contested patent and the prior art, it is “evident” that changing the position of the clamp would achieve this. Thus, the patent fails again to meet the nonobviousness requirement.

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

In [[US v. Adams, 383 U.S. 39 (1966)]], a main point made in the case was that all the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

The invention in question was a wet battery using electrodes of magnesium and cuprous chloride. The US government, alleging that Adams’ patent was invalid, entered into evidence a number of patents and treatises showing the prior art of the battery. However, upon closer examination of the prior art, it becomes clear that no one could connect the prior art with what was invented. For instance, only a couple of the patents actually made mention of using water in a battery. Others only mentioned using magnesium in passing, and was not actually used in an electrode. Another patent involved using cuprous chloride, but not with water.

As a result of these findings, while wet batteries had been made before, there was no evidence from the prior art patents that it was even possible to substitute in electrodes of different materials. In fact, the government admitted that:
:the Adams battery 'wholly unexpectedly' has shown 'certain valuable operating advantages over other batteries' while those from which it is claimed to have been copied were long ago discarded.

These unexpected results show that the invention must be nonobvious. Though the elements were each known in the prior art, it is clear that any person “reasonably skilled” would not come to the conclusions that Adams did.

===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.

This case still seems to stick to the language of Section 103. It determined that using a heater in blacktop laying was obvious to anyone skilled in the art, as it had been used in the past for the process.

==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. Details regarding secondary considerations are found in the respective section below.
*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.

==Secondary Considerations==
Under 35 US § 103:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

However, there are secondary considerations that can be taken into account, especially as enumerated in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.
* commercial success of the invention;
* long-felt but unsolved needs;
* failure of others to find a solution, etc.

While the US Code will always precede these considerations, they are useful in determining, at a deeper level, whether an invention is obvious or not. For example, in the aforementioned case with Learned Hand, it was demonstrated that, while keeping the workpiece heated throughout the coating process is such a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years, to no avail. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Relationship with Novelty==

“Nonobviousness” and “Novelty” are two separate sections of the US Code, as well as two separate tests of patentability that must both be met by a valid patent. Section 102 regards novelty:
:A person shall be entitled to a patent unless—
:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

While Section 103 regards nonobviousness:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

It can be seen that, even if an invention is found to be novel or new, it must still be nonobvious or distinct enough from the prior art to warrant a patent.

==Nonobviousness vs. Invention==
The transition in language from “invention” to “nonobviousness” for determining this factor occurred with the Act of 1952, which added Section 103 to the US Code. Congress decided that “invention” was too vague a word that led to “a large variety” of similarly ambiguous expressions for determining patentability. The intention of using the new language, it was argued, was to codify precedents that had widely been used in the courts before the passing of the act.

Nonobviousness: LMiller's Page

2011-02-09T04:38:39Z

Lmiller: /* Historical Development */

==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 show “originality and usefulness.” This case basically established the notion that there had to me more to it, some sort of threshold for “inventiveness,” which ultimately became the idea of ''nonobviousness.''

The invention in question was a clay knob with a metal shank. The shape of the entire knob setup was not new, and neither were knobs made out of potter’s clay. The novelty of the invention consisted in the substitution of the clay material of the knob in the place of one made of metal or wood, allowing the shank to still be made of metal. As a side note, the case could become a different issue entirely if clay had NOT been used in knobs before. If this were the case, it could be urged that an “old contrivance” of a knob using a new composition of matter, resulting in a new and useful article, was the proper subject of a patent.

The novelty of the invention consisted 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.

As mentioned previously, the knob is not new, nor the knob setup including the metallic shank and spindle and the dovetail form of the cavity in the knob. The means by which the metallic shank is securely fastened is also not new. 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.

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

Using a different material can never be the subject of a patent. If a machine were made of materials better than the materials of which the old one was constructed, even if the new materials made the machined better and cheaper, that would not entitle the manufacturer to a patent. The difference is “destitute of ingenuity or invention.” While some judgment and skill may be required in the selection and adaptation of the materials for the purposes intended, this improvement is “the work of a skillful mechanic, not that of the inventor.”

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention, such as:
*whether the combination of old elements could constitute an invention,
*if the fact that a device meets a “long felt but unsatisfied need” could meet a standard of nonobviousness, and
*if patent protection should be reserved for devices at the frontier of science and engineering and not “wasted” on mundane articles such as plows.

The invention at issue in this case was a cashier’s counter, to be used in a grocery store, which moves groceries along it from where the customer places the groceries to the cashier. These counters had been widely and successfully used beforehand. While each element of the invention was known beforehand to “prior art,” the concept of a counter with an “extension” was decided to constitute a “new and useful combination.”

The Supreme Court, in its decision, first pointed out that the extension of the counter in and of itself does not constitute an invention for the following reasons:
*The extension is not mentioned in any of the patent’s claims
*Even if the extension were mentioned in the claims, it would not constitute an invention because changing the dimensions of a countertop is a contrivance that any vendor/user of the counter would do to suit the needs of the merchant
*Even if the extension were patentable, the counter still wouldn’t be patentable because it simply was a combination of old elements

This left the question as to what sort of invention would be patentable, if nothing tangible was new and the only inventiveness present was in bringing old elements together. The Court points out that there had never been a PRECISE definition of what sort of test should be used to determine the patentability of combination patents (which have been sustained before). Generally, however, it is agreed that the combination must perform some “new or different function;” namely, the whole must exceed the sum of the parts. It was found that the invention in question is wanting of such an effect, and the extension of the counter does not add any new functions to the invention.

The owner of the patent argued that the patentability of the invention lies in (extensive) evidence that “this device filled a long-felt want and has enjoyed commercial success.” The Court, in reply, stated that commercial success and meeting a need do not make an invention patentable if there is no “inventiveness” in it. While the addition of a counter expansion made the invention better for business, many “ideas in business are not patentable.” Thus, the patent was declared invalid.

The third issue called into question during this case was actually addressed in the concurring opinion at the end. Justice Douglas believed that the invention wasn’t patentable for an entirely different reason. Douglas stated that the point of patent protection is to encourage innovation in science and engineering, and thus serve a higher end than protecting every little idea people come up with. He then basically started to complain about how far the Court has fallen, to have to argue over something so trivial as counter extensions.

===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 worth noting that this addition to the US Code was described as simply putting into writing the precedents that had been consistently used by the Courts beforehand. At the same time, it is widely accepted that Section 103, while complying with the precedents, keeps with the spirit of the Constitution and the purposes which the founders, specifically Thomas Jefferson, intended for the patent system: namely, that there be a balance between rewarding those who promote the progress of Science and engineering and between avoiding a monopoly on ideas.

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] the main issue at hand lied in the application of the Act of 1952, which adopted §103 of the US Code.

The invention in question is a process involving the coating of lenses with an inorganic salt to prevent reflection and scratching of the lens. While this process had been used before, the new part of this invented process was keeping the workpiece heated before, during and after the process, whereas before it was not heated during the coating process. In question was whether this added step was enough to warrant a patent.

On one hand, if this case had come up twenty or thirty years ago, the step would be enough to support a patent. It met a long-felt need that, for years, no one had been able to fill or come up with a satisfactory solution. This meant that the change to the process, however small, could not have possibly been obvious because it would have been discovered beforehand.

On the other hand, under the now-codified Section 103, the invention would be found invalid. Learned Hand, the judge delivering the opinion, stated that:
: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
In the end, they decided that they could not retroactively apply the law to this invention, and it was upheld.

===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

The invention in question was a plow with a clamp used to absorb shock as the plow goes through rocky soil and thus prevent damage. The petitioner of the patent, Graham, had modified the invention in question from an earlier patent he held, similar except in that the new invention included a bolted connection and stirrup, as well as switched the position of the shank. This new setup, allegedly, allows for greater flexion of the shank.

The design and elements of the invention were all found in the prior art, namely Graham’s older patent and the Glencoe patent. Since there was a wide scope of the prior art that could not be differentiated between the claims in contention in this case, it could not be found to be nonobvious. Further, the Courts found that, if the change in flex was the crucial difference between the contested patent and the prior art, it is “evident” that changing the position of the clamp would achieve this. Thus, the patent fails again to meet the nonobviousness requirement.

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

In [[US v. Adams, 383 U.S. 39 (1966)]], a main point made in the case was that all the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

The invention in question was a wet battery using electrodes of magnesium and cuprous chloride. The US government, alleging that Adams’ patent was invalid, entered into evidence a number of patents and treatises showing the prior art of the battery. However, upon closer examination of the prior art, it becomes clear that no one could connect the prior art with what was invented. For instance, only a couple of the patents actually made mention of using water in a battery. Others only mentioned using magnesium in passing, and was not actually used in an electrode. Another patent involved using cuprous chloride, but not with water.

As a result of these findings, while wet batteries had been made before, there was no evidence from the prior art patents that it was even possible to substitute in electrodes of different materials. In fact, the government admitted that:
:the Adams battery 'wholly unexpectedly' has shown 'certain valuable operating advantages over other batteries' while those from which it is claimed to have been copied were long ago discarded.

These unexpected results show that the invention must be nonobvious. Though the elements were each known in the prior art, it is clear that any person “reasonably skilled” would not come to the conclusions that Adams did.

===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.

This case still seems to stick to the language of Section 103. It determined that using a heater in blacktop laying was obvious to anyone skilled in the art, as it had been used in the past for the process.

==Secondary Considerations==
Under 35 US § 103:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

However, there are secondary considerations that can be taken into account, especially as enumerated in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.
* commercial success of the invention;
* long-felt but unsolved needs;
* failure of others to find a solution, etc.

While the US Code will always precede these considerations, they are useful in determining, at a deeper level, whether an invention is obvious or not. For example, in the aforementioned case with Learned Hand, it was demonstrated that, while keeping the workpiece heated throughout the coating process is such a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years, to no avail. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Relationship with Novelty==

“Nonobviousness” and “Novelty” are two separate sections of the US Code, as well as two separate tests of patentability that must both be met by a valid patent. Section 102 regards novelty:
:A person shall be entitled to a patent unless—
:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

While Section 103 regards nonobviousness:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

It can be seen that, even if an invention is found to be novel or new, it must still be nonobvious or distinct enough from the prior art to warrant a patent.

==Nonobviousness vs. Invention==
The transition in language from “invention” to “nonobviousness” for determining this factor occurred with the Act of 1952, which added Section 103 to the US Code. Congress decided that “invention” was too vague a word that led to “a large variety” of similarly ambiguous expressions for determining patentability. The intention of using the new language, it was argued, was to codify precedents that had widely been used in the courts before the passing of the act.

Nonobviousness: LMiller's Page

2011-02-09T04:33:43Z

Lmiller: /* 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 show “originality and usefulness.” This case basically established the notion that there had to me more to it, some sort of threshold for “inventiveness,” which ultimately became the idea of ''nonobviousness.''

:The invention in question was a clay knob with a metal shank. The shape of the entire knob setup was not new, and neither were knobs made out of potter’s clay. The novelty of the invention consisted in the substitution of the clay material of the knob in the place of one made of metal or wood, allowing the shank to still be made of metal. As a side note, the case could become a different issue entirely if clay had NOT been used in knobs before. If this were the case, it could be urged that an “old contrivance” of a knob using a new composition of matter, resulting in a new and useful article, was the proper subject of a patent.

:The novelty of the invention consisted 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.

:As mentioned previously, the knob is not new, nor the knob setup including the metallic shank and spindle and the dovetail form of the cavity in the knob. The means by which the metallic shank is securely fastened is also not new. 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.

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

:Using a different material can never be the subject of a patent. If a machine were made of materials better than the materials of which the old one was constructed, even if the new materials made the machined better and cheaper, that would not entitle the manufacturer to a patent. The difference is “destitute of ingenuity or invention.” While some judgment and skill may be required in the selection and adaptation of the materials for the purposes intended, this improvement is “the work of a skillful mechanic, not that of the inventor.”

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention, such as:
*whether the combination of old elements could constitute an invention,
*if the fact that a device meets a “long felt but unsatisfied need” could meet a standard of nonobviousness, and
*if patent protection should be reserved for devices at the frontier of science and engineering and not “wasted” on mundane articles such as plows.

The invention at issue in this case was a cashier’s counter, to be used in a grocery store, which moves groceries along it from where the customer places the groceries to the cashier. These counters had been widely and successfully used beforehand. While each element of the invention was known beforehand to “prior art,” the concept of a counter with an “extension” was decided to constitute a “new and useful combination.”

The Supreme Court, in its decision, first pointed out that the extension of the counter in and of itself does not constitute an invention for the following reasons:
*The extension is not mentioned in any of the patent’s claims
*Even if the extension were mentioned in the claims, it would not constitute an invention because changing the dimensions of a countertop is a contrivance that any vendor/user of the counter would do to suit the needs of the merchant
*Even if the extension were patentable, the counter still wouldn’t be patentable because it simply was a combination of old elements

This left the question as to what sort of invention would be patentable, if nothing tangible was new and the only inventiveness present was in bringing old elements together. The Court points out that there had never been a PRECISE definition of what sort of test should be used to determine the patentability of combination patents (which have been sustained before). Generally, however, it is agreed that the combination must perform some “new or different function;” namely, the whole must exceed the sum of the parts. It was found that the invention in question is wanting of such an effect, and the extension of the counter does not add any new functions to the invention.

The owner of the patent argued that the patentability of the invention lies in (extensive) evidence that “this device filled a long-felt want and has enjoyed commercial success.” The Court, in reply, stated that commercial success and meeting a need do not make an invention patentable if there is no “inventiveness” in it. While the addition of a counter expansion made the invention better for business, many “ideas in business are not patentable.” Thus, the patent was declared invalid.

The third issue called into question during this case was actually addressed in the concurring opinion at the end. Justice Douglas believed that the invention wasn’t patentable for an entirely different reason. Douglas stated that the point of patent protection is to encourage innovation in science and engineering, and thus serve a higher end than protecting every little idea people come up with. He then basically started to complain about how far the Court has fallen, to have to argue over something so trivial as counter extensions.

===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 worth noting that this addition to the US Code was described as simply putting into writing the precedents that had been consistently used by the Courts beforehand. At the same time, it is widely accepted that Section 103, while complying with the precedents, keeps with the spirit of the Constitution and the purposes which the founders, specifically Thomas Jefferson, intended for the patent system: namely, that there be a balance between rewarding those who promote the progress of Science and engineering and between avoiding a monopoly on ideas.

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] the main issue at hand lied in the application of the Act of 1952, which adopted §103 of the US Code.

The invention in question is a process involving the coating of lenses with an inorganic salt to prevent reflection and scratching of the lens. While this process had been used before, the new part of this invented process was keeping the workpiece heated before, during and after the process, whereas before it was not heated during the coating process. In question was whether this added step was enough to warrant a patent.

On one hand, if this case had come up twenty or thirty years ago, the step would be enough to support a patent. It met a long-felt need that, for years, no one had been able to fill or come up with a satisfactory solution. This meant that the change to the process, however small, could not have possibly been obvious because it would have been discovered beforehand.

On the other hand, under the now-codified Section 103, the invention would be found invalid. Learned Hand, the judge delivering the opinion, stated that:
: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
In the end, they decided that they could not retroactively apply the law to this invention, and it was upheld.

===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

The invention in question was a plow with a clamp used to absorb shock as the plow goes through rocky soil and thus prevent damage. The petitioner of the patent, Graham, had modified the invention in question from an earlier patent he held, similar except in that the new invention included a bolted connection and stirrup, as well as switched the position of the shank. This new setup, allegedly, allows for greater flexion of the shank.

The design and elements of the invention were all found in the prior art, namely Graham’s older patent and the Glencoe patent. Since there was a wide scope of the prior art that could not be differentiated between the claims in contention in this case, it could not be found to be nonobvious. Further, the Courts found that, if the change in flex was the crucial difference between the contested patent and the prior art, it is “evident” that changing the position of the clamp would achieve this. Thus, the patent fails again to meet the nonobviousness requirement.

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

In [[US v. Adams, 383 U.S. 39 (1966)]], a main point made in the case was that all the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

The invention in question was a wet battery using electrodes of magnesium and cuprous chloride. The US government, alleging that Adams’ patent was invalid, entered into evidence a number of patents and treatises showing the prior art of the battery. However, upon closer examination of the prior art, it becomes clear that no one could connect the prior art with what was invented. For instance, only a couple of the patents actually made mention of using water in a battery. Others only mentioned using magnesium in passing, and was not actually used in an electrode. Another patent involved using cuprous chloride, but not with water.

As a result of these findings, while wet batteries had been made before, there was no evidence from the prior art patents that it was even possible to substitute in electrodes of different materials. In fact, the government admitted that:
:the Adams battery 'wholly unexpectedly' has shown 'certain valuable operating advantages over other batteries' while those from which it is claimed to have been copied were long ago discarded.

These unexpected results show that the invention must be nonobvious. Though the elements were each known in the prior art, it is clear that any person “reasonably skilled” would not come to the conclusions that Adams did.

===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.

This case still seems to stick to the language of Section 103. It determined that using a heater in blacktop laying was obvious to anyone skilled in the art, as it had been used in the past for the process.

==Secondary Considerations==
Under 35 US § 103:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

However, there are secondary considerations that can be taken into account, especially as enumerated in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.
* commercial success of the invention;
* long-felt but unsolved needs;
* failure of others to find a solution, etc.

While the US Code will always precede these considerations, they are useful in determining, at a deeper level, whether an invention is obvious or not. For example, in the aforementioned case with Learned Hand, it was demonstrated that, while keeping the workpiece heated throughout the coating process is such a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years, to no avail. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Relationship with Novelty==

“Nonobviousness” and “Novelty” are two separate sections of the US Code, as well as two separate tests of patentability that must both be met by a valid patent. Section 102 regards novelty:
:A person shall be entitled to a patent unless—
:(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
:(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

While Section 103 regards nonobviousness:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

It can be seen that, even if an invention is found to be novel or new, it must still be nonobvious or distinct enough from the prior art to warrant a patent.

==Nonobviousness vs. Invention==
The transition in language from “invention” to “nonobviousness” for determining this factor occurred with the Act of 1952, which added Section 103 to the US Code. Congress decided that “invention” was too vague a word that led to “a large variety” of similarly ambiguous expressions for determining patentability. The intention of using the new language, it was argued, was to codify precedents that had widely been used in the courts before the passing of the act.

Nonobviousness: LMiller's Page

2011-02-09T04:31:50Z

Lmiller: /* Historical Development */

==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 show “originality and usefulness.” This case basically established the notion that there had to me more to it, some sort of threshold for “inventiveness,” which ultimately became the idea of ''nonobviousness.''

:The invention in question was a clay knob with a metal shank. The shape of the entire knob setup was not new, and neither were knobs made out of potter’s clay. The novelty of the invention consisted in the substitution of the clay material of the knob in the place of one made of metal or wood, allowing the shank to still be made of metal. As a side note, the case could become a different issue entirely if clay had NOT been used in knobs before. If this were the case, it could be urged that an “old contrivance” of a knob using a new composition of matter, resulting in a new and useful article, was the proper subject of a patent.

:The novelty of the invention consisted 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.

:As mentioned previously, the knob is not new, nor the knob setup including the metallic shank and spindle and the dovetail form of the cavity in the knob. The means by which the metallic shank is securely fastened is also not new. 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.

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

:Using a different material can never be the subject of a patent. If a machine were made of materials better than the materials of which the old one was constructed, even if the new materials made the machined better and cheaper, that would not entitle the manufacturer to a patent. The difference is “destitute of ingenuity or invention.” While some judgment and skill may be required in the selection and adaptation of the materials for the purposes intended, this improvement is “the work of a skillful mechanic, not that of the inventor.”

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention, such as:
*whether the combination of old elements could constitute an invention,
*if the fact that a device meets a “long felt but unsatisfied need” could meet a standard of nonobviousness, and
*if patent protection should be reserved for devices at the frontier of science and engineering and not “wasted” on mundane articles such as plows.

The invention at issue in this case was a cashier’s counter, to be used in a grocery store, which moves groceries along it from where the customer places the groceries to the cashier. These counters had been widely and successfully used beforehand. While each element of the invention was known beforehand to “prior art,” the concept of a counter with an “extension” was decided to constitute a “new and useful combination.”

The Supreme Court, in its decision, first pointed out that the extension of the counter in and of itself does not constitute an invention for the following reasons:
*The extension is not mentioned in any of the patent’s claims
*Even if the extension were mentioned in the claims, it would not constitute an invention because changing the dimensions of a countertop is a contrivance that any vendor/user of the counter would do to suit the needs of the merchant
*Even if the extension were patentable, the counter still wouldn’t be patentable because it simply was a combination of old elements

This left the question as to what sort of invention would be patentable, if nothing tangible was new and the only inventiveness present was in bringing old elements together. The Court points out that there had never been a PRECISE definition of what sort of test should be used to determine the patentability of combination patents (which have been sustained before). Generally, however, it is agreed that the combination must perform some “new or different function;” namely, the whole must exceed the sum of the parts. It was found that the invention in question is wanting of such an effect, and the extension of the counter does not add any new functions to the invention.

The owner of the patent argued that the patentability of the invention lies in (extensive) evidence that “this device filled a long-felt want and has enjoyed commercial success.” The Court, in reply, stated that commercial success and meeting a need do not make an invention patentable if there is no “inventiveness” in it. While the addition of a counter expansion made the invention better for business, many “ideas in business are not patentable.” Thus, the patent was declared invalid.

The third issue called into question during this case was actually addressed in the concurring opinion at the end. Justice Douglas believed that the invention wasn’t patentable for an entirely different reason. Douglas stated that the point of patent protection is to encourage innovation in science and engineering, and thus serve a higher end than protecting every little idea people come up with. He then basically started to complain about how far the Court has fallen, to have to argue over something so trivial as counter extensions.

===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 worth noting that this addition to the US Code was described as simply putting into writing the precedents that had been consistently used by the Courts beforehand. At the same time, it is widely accepted that Section 103, while complying with the precedents, keeps with the spirit of the Constitution and the purposes which the founders, specifically Thomas Jefferson, intended for the patent system: namely, that there be a balance between rewarding those who promote the progress of Science and engineering and between avoiding a monopoly on ideas.

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] the main issue at hand lied in the application of the Act of 1952, which adopted §103 of the US Code.

The invention in question is a process involving the coating of lenses with an inorganic salt to prevent reflection and scratching of the lens. While this process had been used before, the new part of this invented process was keeping the workpiece heated before, during and after the process, whereas before it was not heated during the coating process. In question was whether this added step was enough to warrant a patent.

On one hand, if this case had come up twenty or thirty years ago, the step would be enough to support a patent. It met a long-felt need that, for years, no one had been able to fill or come up with a satisfactory solution. This meant that the change to the process, however small, could not have possibly been obvious because it would have been discovered beforehand.

On the other hand, under the now-codified Section 103, the invention would be found invalid. Learned Hand, the judge delivering the opinion, stated that:
: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
In the end, they decided that they could not retroactively apply the law to this invention, and it was upheld.

===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

The invention in question was a plow with a clamp used to absorb shock as the plow goes through rocky soil and thus prevent damage. The petitioner of the patent, Graham, had modified the invention in question from an earlier patent he held, similar except in that the new invention included a bolted connection and stirrup, as well as switched the position of the shank. This new setup, allegedly, allows for greater flexion of the shank.

The design and elements of the invention were all found in the prior art, namely Graham’s older patent and the Glencoe patent. Since there was a wide scope of the prior art that could not be differentiated between the claims in contention in this case, it could not be found to be nonobvious. Further, the Courts found that, if the change in flex was the crucial difference between the contested patent and the prior art, it is “evident” that changing the position of the clamp would achieve this. Thus, the patent fails again to meet the nonobviousness requirement.

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

In [[US v. Adams, 383 U.S. 39 (1966)]], a main point made in the case was that all the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

The invention in question was a wet battery using electrodes of magnesium and cuprous chloride. The US government, alleging that Adams’ patent was invalid, entered into evidence a number of patents and treatises showing the prior art of the battery. However, upon closer examination of the prior art, it becomes clear that no one could connect the prior art with what was invented. For instance, only a couple of the patents actually made mention of using water in a battery. Others only mentioned using magnesium in passing, and was not actually used in an electrode. Another patent involved using cuprous chloride, but not with water.

As a result of these findings, while wet batteries had been made before, there was no evidence from the prior art patents that it was even possible to substitute in electrodes of different materials. In fact, the government admitted that:
:the Adams battery 'wholly unexpectedly' has shown 'certain valuable operating advantages over other batteries' while those from which it is claimed to have been copied were long ago discarded.

These unexpected results show that the invention must be nonobvious. Though the elements were each known in the prior art, it is clear that any person “reasonably skilled” would not come to the conclusions that Adams did.

===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.

This case still seems to stick to the language of Section 103. It determined that using a heater in blacktop laying was obvious to anyone skilled in the art, as it had been used in the past for the process.

==Secondary Considerations==
Under 35 US § 103:
:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

However, there are secondary considerations that can be taken into account, especially as enumerated in [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] by Learned Hand.
* commercial success of the invention;
* long-felt but unsolved needs;
* failure of others to find a solution, etc.

While the US Code will always precede these considerations, they are useful in determining, at a deeper level, whether an invention is obvious or not. For example, in the aforementioned case with Learned Hand, it was demonstrated that, while keeping the workpiece heated throughout the coating process is such a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years, to no avail. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

==Nonobviousness vs. Invention==
The transition in language from “invention” to “nonobviousness” for determining this factor occurred with the Act of 1952, which added Section 103 to the US Code. Congress decided that “invention” was too vague a word that led to “a large variety” of similarly ambiguous expressions for determining patentability. The intention of using the new language, it was argued, was to codify precedents that had widely been used in the courts before the passing of the act.

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Lmiller: Created page with "==Historical Development== The following are some cases through history that trace the evolution of what is currently the nonobviousness standard. ===Hotchkiss v. Greenwood (185..."

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Lmiller: Created page with " == My Selected US Patent == # Patent 4495813: Jogger Speedometer and Odometer * Date issued: January 29, 1985 # When searching through the US Patent database, I came acr..."

== My Selected US Patent ==

# Patent 4495813: Jogger Speedometer and Odometer

* Date issued: January 29, 1985

# When searching through the US Patent database, I came across this invention that called itself a jogger odometer. I enjoy jogging and running myself, and have seen and used an odometer while running, so I decided to check out the invention. The jogger odometer is basically a wheel that you push along the ground as you run, and an indicator measures from the motion of the wheel how far you have gone. I decided to use it as my patent because I think it's interesting to see what mechanical devices people used to use before the invention of more digital devices. The link to the invention's patent is here: [http://ip.com/patent/US4495813]