Bill Goodwine's Wiki - User contributions [en]

User:Mackroyd

2011-04-29T17:14:02Z

Mackroyd:

=Mini Handbook=

{| border="1"
|+Section 101
|-
! Covered by 101
! Not in 101
|-
| structure created with the knowledge of a scientific truth
| scientific truth
|-
| application of the law
| mathematical expression of scientific truth
|-
| process resulting in changes in material
| idea (reduction to practice) (date)
|-
|
| phenomena of nature (even if newly discovered)
|}

=Homeworks=

[[Homework 1: My Selected U.S. Patent (Ackroyd)]]

[[Homework 2: Patentability Under Non-Obviousness (Ackroyd)]]

[[Homework 3: Validity of Graham Patent (Ackroyd)]]

[[Homework 4: Non-Obviousness (Ackroyd)]]

[[Homework 5: My Selected Bilski Brief (Ackroyd)]]

[[Homework X: My Selected Electric Storage Battery Co Brief (Ackroyd)]]

[[Homework 7: Patents: Patentability: Anticipation: Prior Description in Printed Publication (Ackroyd)]]

[[Homework 8: Infringment: What Constitutes Infringement: Patents for Machines or Manufactures: Substitution of Equivalents (Ackroyd)]]

[[Homework 9: Honeywell Brief (Ackroyd)]]

Homework 10: [[Quanta Brief - Ackroyd]]

User:Mackroyd

2011-04-29T17:11:44Z

Mackroyd:

Quanta Brief - Ackroyd

2011-04-29T17:11:14Z

Mackroyd:

Brief of Amici Curiae Interdigital Communications, LLC and Tessera, Inc. in Support of Respondent
*This case does not present any issue of patent exhaustion when viewed in the proper light.
*LG has conclusively demonstrated its claims against Quanta are based on patents that are different than those that cover the components purchased by Quanta from Intel.
*Licensors and licensees should enjoy freedom to contract as best suited to their businesses, as was done by LG and Intel in this case.
** Limitations on that existing freedom can only diminish the competitiveness of our high tech industry in the increasingly competitive world market.
*In an attempt to fully protect their innovations, some computer companies sometimes obtain separate patents for the components and the systems or methods that incorporate those components into finished products, just as in the LGE-Intel-Quanta case.
*In a typical multi-level chain that ultimately delivers products or services, there are a few component manufacturers and assemblers, several OEMs and thousands to millions of end users.
**Companies do not ordinarily assert claims against the customers of their licensees based on licensed components or products purchased by those customers.
*In the real world, component manufacturers often operate under different business conditions, employ different production models and have different customers than OEMs and retailers.
**Because of the multi-tiered nature of markets, component manufacturers may not have dealings with or access to the OEMs and retailers who use the innovative technology of computer companies.
**These component manufacturers often have no need for a license to the patents that encompass more than just the component they sell.
*The benefits of licensing restrictions “apply to patent, copyright, and trade secret licenses, and to know-how agreements.”
*Technology transfer agreements have not been considered by the Court in any of the prior patent exhaustion cases.
**When no patent licenses are granted, there cannot be an issue of patent exhaustion. The rationale for patent exhaustion simply does not apply to technology transfer agreements that do not include patent licenses.
***Because of that fact, and because this case does not involve any such agreement, the Court should not render a decision that inadvertently implicates technology transfer agreements.

Quanta Brief - Ackroyd

2011-04-29T16:36:57Z

Mackroyd: Created page with "Brief of Amici Curiae Interdigital Communications, LLC and Tessera, Inc. in Support of Respondent"

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

Here in list of arguments in Quanta

Homework 5: My Selected Bilski Brief (Ackroyd)

2011-02-14T07:07:21Z

Mackroyd: Created page with "<nowiki> Original Image of this Document (PDF) 2009 WL 3199626 (U.S.) (Appellate Brief) For opinion see 130 S.Ct. 3218, 129 S.Ct. 2735 Briefs and Other Related Documents Oral..."

<nowiki>
Original Image of this Document (PDF)

2009 WL 3199626 (U.S.) (Appellate Brief)
For opinion see 130 S.Ct. 3218, 129 S.Ct. 2735

Briefs and Other Related Documents
Oral Argument Transcripts with Streaming Media

Supreme Court of the United States.
Bernard L. BILSKI and Rand A. WARSAW, Petitioners,
v.
David J. KAPPOS, Under Secretary of Commerce for Intellectual, Property and Director, Patent and Trademark Office, Respondent.
No. 08-964.
October 2, 2009.

On Writ of Certiorari to the United States Court Of Appeals for the Federal Circuit

Brief of Amici Curiae Foundation for a Free Information Infrastructure, IP Justice, and Four Global Software Professionals and Business Leaders in Support of Respondent

Allonn E. Levy
Hopkins & Carley
408.286.9800 (main)
70 South First Street
San Jose, CA 95113
COUNSEL OF RECORD

As Counsel Amici Curiae:
Foundation for a Free
Information Infrastructure,
IP Justice,
Dr. rer. nat. Peter Gerwinski,
Laura Creighton,
Mag. iur. Georg Jakob,
Dipl. Kfm. & M.A. André
Rebentisch

*i TABLE OF CONTENTS

I. QUESTIONS PRESENTED ... 1

II. STATEMENT OF INTEREST OF AMICI CURIAE ... 2

A. About the Foundation for a Free Information Infrastructure ... 2

B. About The Four Global Software Professionals and Business Leaders ... 3

C. About IP Justice ... 4

III. SUMMARY OF ARGUMENT ... 5

IV. ARGUMENT ... 7

A. The Lower Court's test Properly Excludes Abstract Ideas From the field of Patentable Material ... 8

1. Key Distinctions Between Hardware And Software Patents ... 8

a. Software And Business Methods Bear Little Risk of Unauthorized Reverse Engineering ... 10

b. Software and Business Method Innovations Would Not Benefit From The “Disclosure” Aspect of Patents ... 14

*ii 2. Economic Imperatives And Historical Lessons Weigh Against Overly Broad Patent Monopolies ... 16

a. Reliving Past Mistakes ... 17

b. Potential Effects of Extending Patent Protection to Software and Business Methods ... 20

B. A Clear Boundary Between Patentable and Non-Patentable material is Important for Continued Innovation ... 22

1. Existing Tests For Determining the Boundaries of Patent Subject Matter ... 22

a. The European Approach: Art 52 EPC and Technicity ... 27

b. The Lower Court's Machine-or-Transformation Test ... 29

2. Improving the Patentability Tests ... 31

V. CONCLUSION ... 34

*iii TABLE OF AUTHORITIES

Cases

Diamond v. Bradley O.T. 1980, No. 79-855, p. 6, n. 12 ... 24

Diamond v. Chakrabarty 447 U.S. 303 (1980) ... 23, 30

Diamond v. Diehr 450 U. S. 175 (1981) ... 23, 24, 26, 30

Gottschalk v. Benson 409 U.S. 63 (1972) ... 8, 23, 26

Hayek, F. A. v., Individualism and Economic Order, Chicago, University of Chicago Press, 1949, 114 ... 3, 17

Parker v. Flook 437 U.S. 584 (1978) ... 23, 26

Rubber-tip Pencil v. Howar 87 U.S. (20 Wall.) 498 (1874) ... 8

State Street Bank & Trust Co. v. Signature Financial Group Inc. 149 F. 3d 1368 (Fed. Cir. 1998) ... 25, 26, 27, 28

Statutes

35 U. S. C. Section 273 ... 1, 29, 30

35 U. S. C. Section 101 ... 1

Other Authorities

Article 1, Section 8 U. S. Constitution, Section 8, cl. 8 ... 16

C. Sippl & R. Sippl, Computer Dictionary and Handbook 23 (2d ed. 1972) ... 24

Hiroyuki IWAHASHI, Yoshiki Nishioka and Mitsuhiro Hakaridani, 12 U. S. P. Q. 2d 1908; 888 F.2d 1370 (1989) ... 24

Joseph E. Stiglitz, Making Globalization work, New York (2006), p. 103 ff ... 17

*iv Milton Friedman, Capitalism and Freedom, Chicago (1962), p. 127 ... 17

Robert Patrick Merges and John Fitzgerald Duffy, Patent Law and Policy, Cases and Materials, Charlottesville (2002), pp 644-646 ... 20

The English Statute of Monopolies of 1623 ... 17

The European Patent Convention Article 52 (2)(3) ... 28

The European Patent Convention Article 52 ... 27, 28, 29

The European Patent Convention Article 52(2) ... 28, 30

The European Patent Convention, Article 52(2)(c) ... 22, 27

Toshiko Takenaka (Ed.), Patent Law and Theory, A Handbook of Contemporary Research, Cheltenham, UK (2008), p. 360 ... 18

Uniform Trade Secrets Act ... 14

Webster's New Collegiate Dictionary (1976) ... 25

Rules

Supreme Court Rule 37.6 ... 2
*1 I.
QUESTIONS PRESENTED
1. Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (Machine-or-Transformation test), to be eligible for patenting under 35 U. S. C. §101, despite this Court's precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas”.

2. Whether the Federal Circuit's Machine-or-Transformation test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U. S. C. § 273.

*2 II.

STATEMENT OF INTEREST OF AMICI CURIAE[FN1]

FN1. Pursuant to Sup. Ct. R. 37.6, amicus notes that no counsel for a party authored this brief in whole or in part, and no counsel or party made a monetary contribution intended to fund the preparation or submission of this brief. No person other than amicus curiae, its members, or its counsel made a monetary contribution to its preparation or submission. Petitioners and Respondents have consented to the filing of this brief through blanket consent letters filed with the Clerk's Office.

A. About the Foundation for a Free Information Infrastructure
The Foundation for a Free Information Infrastructure (FFII) e. V. is a charitable association registered in Munich, Germany which is dedicated to the spread of data processing literacy. It funds the development of public information works based on copyright, free competition and open standards.

The FFII attained broad international recognition for its phrontistery role in the European debate on a software patent directive (2002-2005) and software-related patent reform. It is a registered observer at the World Intellectual Property Organization.

The association and its members aim to reduce friction costs and risks for software authors and to prevent dilution of property rights under the Berne Convention by territorial patent grants. To this end FFII is guided by *3 Hayek's dictum that “it is necessary [… ] not to apply a ready-made formula but to go back to the rationale of the market system and to decide for each class what the precise rights are to be which the government ought to protect. This is a task at least as much for economists as for lawyers.”[FN2]

FN2. Hayek, F. A. v., Individualism and Economic Order, Chicago, University of Chicago Press, 1949, 114

For digital markets, cheap, fast and narrow rights are sought. The interests of the association are improvements of the substantive patent rules and the examination process. A global challenge is to keep patent office bureaucracies manageable, and make them adapt to an acceleration of markets.

The FFII members who contributed to this Amicus Curiae Brief are entrepreneurs and programmers. They devoted their time to this project because they are directly affected by the economic impacts of patents.

B. About The Four Global Software Professionals and Business Leaders
Dr. rer. nat. Peter Gerwinski is an entrepreneur, software developer and physicist from Essen, Germany. He is founder and Managing Director of G-N-U GmbH and a contributor to the GNU Pascal programming language.

Laura Creighton is a Canadian-born entrepreneur and software developer from Gothenburg, Sweden. She is founder and Managing Director of Open End AB, which has developed the Eutaxia task organizing software, and engages in computer science research in the field of just-in *4 time compiler generation for dynamic programming languages.

Mag. iur. Georg Jakob is a lawyer, business consultant and former University researcher and teacher from Salzburg, Austria, now living and working in Munich, Germany.

Dipl. Kfm. & M.A. André Rebentisch is a business intelligence and technology research specialist, currently residing in Wilhelmshaven, Germany.

These four business leaders are long-time FFII members and founders of the FFII's Global Patent Policy Research Group. Each has personally been affected by the beneficial and harmful effects of patents. Each joins this brief to voice concern about the dangers associated with unfettered grants of software and business method patents.

C. About IP Justice
IP Justice is an international civil liberties organization that promotes balanced intellectual property rights and protects freedom of expression. IP Justice is based in Silicon Valley, California with regional membership throughout the world. IP Justice is concerned about the potential impact the case pending before this Court may have on global policies, international treaties and trade agreements that address intellectual property rights. IP Justice has an interest in ensuring that traditional global limits are maintained on the reach of patent law to ensure that the proper balance is struck between the protection of past innovations without unduly hampering future innovations. It is precisely this delicate balance that is placed risk by proponents urging this Court to expand patent rights beyond the traditional time- *5 honored rules set forth in the U.S. constitution and the long-standing precedent of this court.

IP Justice participates in a number of international law and policy arenas including the World Intellectual Property Organization (WIPO), the Internet Corporation for Assigned Names and Numbers (ICANN), and the United Nations Internet Governance Forum (IGF) among others. IP Justice has twice been called to testify at hearings before the US Copyright Office on the anti-circumvention provisions in the US Digital Millennium Copyright Act (DMCA). IP Justice has an international board of directors and is 501(c)(3) nonprofit public benefit organization that was founded in 2002 by its current Executive Director Robin Gross.

III.
SUMMARY OF ARGUMENT
The Court of Appeals for the Federal Circuit in In Re Bilski wisely followed the Machine-or-Transformation test to avoid running afoul of the constitutional and precedential safeguards in place to protect the free exchange of abstract ideas in the marketplace. These safeguards are particularly important when analyzing non-physical innovations such as software and business method innovations.

The properties of software and business methods are fundamentally different from those of machines and transformations. Economic and anecdotal evidence provides strong justification for the conclusion that certain patent claims on software algorithms, business methods, and other abstract matter - untethered to any machine or *6 transformation - would stifle rather than promote the progress of the sciences and useful arts.

The Machine-or-Transformation test therefore provides a means to an end: A clear limit to patentable subject-matter in accordance with case law, which consistently rejects the patentability of abstract ideas. To avoid circumvention of the rule prohibiting patents on abstract ideas, it is necessary to apply patentability standards to the claimed object rather than to the patent claim as a whole:

1. An object that consists only of laws of nature, physical phenomena, and abstract ideas cannot be claimed in a patent, independent of the form in which it is claimed.

2. An object can only be claimed in a patent if it constitutes a new concrete realization of a machine or transformation.

Amici conclude this from their experience with the European technicity test which is discussed in greater detail below.

Plainly, with the potential reward of an unfettered monopoly, there exists great pecuniary incentive for special interests to attempt to place their thumb on the scale of justice in order to obtain that which has historically been prohibited. This court has long provided the guiding hand protecting society from the ills that would result from expanding the exclusionary power of patents beyond the boundaries set forth by the founding fathers and subsequent legislators. Amici now urge this court to continue that tradition and affirm the Machine-or- *7 transformation test and to include certain additional safeguards that are set forth below.

IV.

ARGUMENT

In a globalized world, business activities crossing the oceans are commonplace, even for small enterprises. This is especially true in the software market where software can be transferred between continents at no noticeable cost via the Internet. Consequently, even a one-person software company serves customers around the globe and is affected by territorial patents. But there is an even more clear connection between U.S. Patent law and the laws of foreign countries. Countries the world over perpetually work to harmonize patent laws world-wide. The European Patent Office (EPO) is currently revising its strategy with respect to patents on software and business methods. The outcome of the Bilski case will be carefully followed and will necessarily affect the EPO's decisions on these important issues.

The Bilski case reaches the question of patentability of business methods and by extension other non-tangible subject matter such as software that is not connected to any machine or transformative use. This affects virtually everyone doing business in the United States or with the United States. If innovators are permitted to monopolize business practices, algorithms, or abstract ideas, untethered to any physical mechanism the damaging effects of these unconstrained monopolies will be far-reaching. There is good reason that this High Court and *8 European Parlament have both, thus far, rejected such a rule.

A. The Lower Court's test Properly Excludes Abstract Ideas From the field of Patentable Material.
Nearly 150 years ago this Court stated the truism: “An idea of itself is not patentable.” Rubber-tip Pencil v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874). For decades this court has held that subject matter that would effectively exclude market participants from employing laws of nature, abstract ideas, or mathematical algorithms cannot be protected by patent[FN3]. Conceptually these rules are clear. However, like any rules, as the marketplace of innovation changes, the same rules must be applied to different technological advances.

FN3. See e.g. Gottschalk v. Benson, 409 U.S. 63 (1972), Microsoft v. AT&T 550 U.S. 437, 449 (2007).

1. Key Distinctions Between Hardware And Software Patents.
Over the last decades, computer software has become a pervasive and ubiquitous tool in the global economic toolbox. Although the development of mechanical parts has been optimized over thousands of years, software is gaining ever increasing importance. The reason for this increase in innovation lies at least in part in the distinctions between hardware and software. Distinctions that are pivotal to an understanding of why software, on its own, has traditionally not be afforded patent protection.

*9 Ease of Creation: One reason why software is being developed and propagated at a dramatic pace is that software is much easier, and therefore less costly, to create than hardware. Plainly, software is nothing more than a set of written instructions. By contrast, when a mechanical device is built, one has to contend with the laws of physics. No mechanical component is 100 % reliable. All lengths, diameters, etc. come with tolerances. Software also consists of components, but those components come in the form of “algorithms.” Unlike physical components, algorithms are simply idealized mathematical expressions. These mathematical expressions have no tolerances or abrasion and are ubiquitous in the marketplace of ideas.

Ease of Scalability: Because of the differences in components, a mechanical device with 100 gears needs a physical redesign when a 101st gear needs to be added. This necessarily involves an added cost. By contrast, a piece of software can be extended to 10,000 “virtual gears” with no noticeable effort. It requires only the direction of a gifted programmer to provide the necessary expressions.

Ease of Portability: Because software is a set of instructions or expressions, those expressions can be easily manipulated and applied to accomplish nearly limitless tasks. These “expressive parts” are therefore very flexible and can be used in very different ways. Many of them can be used in fundamentally different types of software. For example, the same compression algorithm can be used in a drawing program, a cryptography system, a web server, a device driver, and much more.

In software development, it is commonplace to combine large existing parts from diverse sources - which in turn themselves consist of smaller and smaller parts - *10 to form an even larger system. For instance, you can create a minimalistic, but useable content management system by just putting together a file server and a web server. With hardware, it is much more difficult to combine the features of two completely different existing systems. For example, one cannot simply weld together a ship and an aircraft and expect the result to swim and to fly - while with software one can effectively create the analogous feat[FN4].

FN4. See also http://www.gnu.org/philosophy/software-patents.html.

Ease of Duplication: The manufacturing of software is fundamentally different from that of mechanical devices. One important difference is that software can be copied without material degradation at no significant expense to the inventor[FN5]. In contrast, mechanical devices must be built one-by-one, often using materials and equipment which can pose at least some expense to the innovator.

FN5. As discussed below, while ease of copying is often a concern for those seeking to protect their software innovations from unauthorized duplication, there exist robust legal protections against such unauthorized duplication. The additional layer of protection that would be offered by patent protection (if it were made available) would add no additional disincentive to the unscrupulous infringer.

a. Software And Business Methods Bear Little Risk of Unauthorized Reverse Engineering.
Some have argued that innovations in software require patent protection to guard against unauthorized *11 reverse engineering[FN6]. As demonstrated below, that is not the case.

FN6. See for example the Brief of Amicus Curiae International Business Machines Corporation In Support of Neither Party filed in this action at fn. 22, p.23.

Once an innovative automobile has been built, a competitor can save R&D expenses by purchasing one automobile and disassembling it to see how it works. However, the same is not possible with software. As an example, consider a software which calculates the surface A of a sphere with known radius r using the well-known formula A = 4 pi r^2.

To create this software, the author writes the so-called source code in a programming language. In the programming language “C” (ISO/IEC 9899:1999) this software can be written as follows:

/* sphere.c - Calculate the Surface of a Sphere */

#include

#define pi 3.14159265

int main (void)

{

float radius, surface;

scanf (“%f”, &radius); /* read the radius */

surface = 4.0 * pi * radius * radius;

*12 printf(“%f\n”, surface); /* show result */

return 0; /* report success */

}

This source code cannot directly be executed by a computer. To make it executable, it is necessary to transform - to compile - it into binary code, which is a sequence of numbers which is difficult for humans to read.

A software developer who does not want to disclose how the software works or wants to retain the privilege to do any modifications on it, only distributes the binary code and keeps the source code as a trade secret.

There is in fact a process called “disassembling the software” which means to extract information out of the binary code. However, it is not feasible to retrieve a useful source code through disassembly. The following is the “C” equivalent of what can be extracted from the binary code of the “sphere” software above.

int main (void)

{

float x1, x2;

f1 (“%f”, &x1);

x2 = 12.5663706 * x1 * x1;

f2 (“%f\n”, x2);

return 0;

*13 }

In this “reconstructed source code” some important pieces of information are irretrievably lost,

- all comments (/* … */in “C”),

- the names “radius”, “surface” of the variables,

- the names “scanf”, “printf” of the functions, an

- the origin “4 pi” of the number “12.5663706”.

Even in this most simple example, it would require extreme expertise and substantial guesswork or tria-and-error to recover the meaning of “x1”, “x2”, “f1”, “f2” and of the number “12.5663706”.

The size of the full source code of this program is 13 lines, including comments and empty lines. The typical size of a real-world program is between 10,000 and 10,000,000 lines of source code; some very large projects even reach 1,000,000,000 lines and above. Thus in realistic cases, there is no chance to reconstruct a useful source code from the binary code.

As a consequence, the task of software reverse engineering is extremely difficult. It is never done to save work, but only as a last resort in some special situations, for example when there are no other means to achieve interoperability. Moreover, legal protections exist for those who seek to bar reverse engineering. Thus, there is no meaningful risk of reverse engineering complex code and *14 any risk that does exist would not be cured by the addition of another[FN7] legal barrier.

FN7. Presumably those seeking to protect their software from reverse engineering have employed the existing legal protections afforded by the Uniform Trade Secrets Act and common law contract principles. (See e.g. California Civil Code §3426 et seq.). There is no reason that a miscreant bent on breaking either of these existing laws would suddenly be deterred by the added protection afforded under a new one (patent law).

b. Software and Business Method Innovations Would Not Benefit From The “Disclosure” Aspect of Patents.
A key benefit of the patent system is the requirement that the innovator disclose his or her invention in the patent in order to enrich the body of public knowledge and presumably enhance future innovation[FN8]. While this aspect of patent policy applies to hardware patents, it does not apply to software.

FN8. The disclosure required in exchange for obtaining a patent ensures that “the knowledge of the invention enures to the people” and “stimulate [s] ideas and the eventual development of further significant advances in the art.” Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 481 (1974).

A typical software patent does not disclose source code. It does not even cover a complete realization of a software system, but only an elementary component of software - an algorithm. This component of the greater source code provides no significant addition to the body of *15 knowledge. While the source code could provide such knowledge, it commonly remains a trade secret.

Nor is it realistic to expect every created algorithm to be patented (if such protection were afforded) or that those in the software industry would expend the time to review such disclosed algorithms if they were available through the patent office. Arguably unique algorithms are so ubiquitous that the current patent system would likely be strained to the breaking point if every software programmer were to truly invest the time and resources needed to obtain patent protection for every new and innovative algorithm created.

While patents do not disclose meaningful software innovations, software programmers have themselves created a voluntary system that does. The Free and Open Source Software (FOSS)[FN9] community provides a working system that encourages programmers to disclose their source code. FOSS is based on copyright When a software system is released under a FOSS license, the author deliberately discloses his source code under certain conditions. In exchange he gets access to a large code base of other FOSS. That way, even direct competitors can - and in fact do - pool their efforts to create better software. Competition takes place in terms of service quality, not of the code base. To enable this system to work, the “conditions” under which source code is disclosed must be crafted very carefully. One essential condition for FOSS is that it can be copied freely by everyone who has obtained it *16 in a legal way[FN10]. In particular, there must not be any control over the number of copies. As soon as there are conditions which require control over the number of copies, FOSS cannot be used.

FN9. For more information about free software see http://www.gnu.org.

FN10. The brief submitted by amici Lee A. Hollar and IEEE is decidedly wrong in its characterizations of FOSS. FOSS and its incompatibility with software patents has nothing to do with any similarity to “underdeveloped economies” and has no relation to the “cloning” of others' proprietary software. Brief of Professor Lee A. Hollar and IEEE-USA as Amici Curiae at p.21, n.31.

In sum, extending patents to software would neither encourage greater disclosure nor spur greater innovation. Those interested in safe disclosure already have a ready mechanism for doing so in FOSS. Those that choose not to disclose enjoy the protections afforded by copyright, licensing, and trade secret laws.

2. Economic Imperatives And Historical Lessons Weigh Against Overly Broad Patent Monopolies.
Patents--like any other “exclusive right to [… ] writings and discoveries” - are intended to “promote the progress of science and useful arts”.[FN11] The patent-monopoly is the “incentive” intended to entice the progress of science and useful arts. But this economic rationale of the patent system has lead to the false conclusion that since some patents further innovation, more patents necessarily further more innovation. But in reality the total private commercial value of patents equals their social costs in the *17 form of an inefficient burden on a competitive market[FN12]. Thus, there is no “free lunch” in patenting. The “price” of granting each patent monopoly is real and should be weighed carefully.

FN11. Article 1, Section 8 U. S. Constitution, § 8, cl. 8

FN12. Leading economists have often taken a critical view of even the current patent system. See e.g. Hayek, F. A. v., Individualism and Economic Order, Chicago, University of Chicago Press, 1949, 114; Milton Friedman, Capitalism and Freedom, Chicago (1962), p. 127; Joseph E. Stiglitz, Making Globalization work, New York (2006), p. 103 ff.

From an economic standpoint it is essential that subject matter that is awarded patent protection be “scarce” under laissez-faire conditions, and that more of that subject matter be produced as a result of the protection awarded. But when patents are awarded for ubiquitous subject matter, observers properly complain about “trivial” grants. For an economist seeking to engineer an incentive system based on awarding limited monopolies to successful innovators, the application of such monopolies to abundant matter does not make any sense. It limits the freedom of commercial action but actually stifles the progress of science and useful arts.

a. Reliving Past Mistakes.
Until 1623, before the Statute of Monopolies was enacted in the United Kingdom, patents were granted for almost any business activity, from the right to sell textiles to the import of spices or the export of goods[FN13]. Patents had *18 become a way for the government to over-regulate and thereby interfere with the market in ways unrelated to the stated goals of the patent system. About four hundred years ago, the negative effects became so unbearable that patents were limited from business activity to engineering inventions.

FN13. “The English Statute of Monopolies of 1623 was intended to put an end to previous abuses under which patents granted under the Royal Prerogative had sometimes protected genuine technical innovations (or useful foreign technologies newly copied and imported, which for England in the sixteenth and seventeenth centuries was far more important), but had equally been used to create private monopolies for royal favorites on such everyday items as starch, vinegar and playing cards.” Christopher Wadlow, Utility and industrial applicability, in: Toshiko Takenaka (Ed.), Patent Law and Theory, A Handbook of Contemporary Research, Cheltenham, UK (2008), p. 360.

As society has progressed it has come full circle on the issue of patents, with some, again, seeking ever-broadening interpretations of patentable technology. In October 2003, The Federal Trade Commission issued a report entitled: To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy. The Executive summary states: “A failure to strike the appropriate balance between competition and patent law and policy can harm innovation. For example, if patent law were to allow patents on ‘obvious' inventions, that might have developed based on the obvious technology. [. ] Conversely, competition policy can undermine the innovation that the patent system promotes if overzealous antitrust enforcement restricts the procompetitive use of a valid patent.”[FN14]

FN14. FTC Report, executive summary, page 3

*19 In joint FTC and Department of Justice hearings related the FTC report, participants “found much to praise in the current patent system”,[FN15] but their findings indicated that “Some Modifications Are Needed to Maintain a Proper Balance of Competition and Patent Law and Policy”[FN16] Indeed, the summary transcripts contain a depressing, unrelenting tale of woe. In testimony after testimony, concerns were raised that the USPTO has been granting patents of questionable value. Some granted patents are considered too broad, while some are on trivialities. Still others are mistakenly granted on subject matter which is non-patentable in the first place. For many, disqualifying prior art exists, but the USPTO was plainly unaware of the existence of such art when the patent issued.

FN15. FTC Report, executive summary, page 4

FN16. FTC Report, executive summary, page 4, first conclusion

Other actors, sometimes characterized as “patent trolls”, never innovate at all. Instead, they wait until others independently develop whatever technology they have patented or licensed, and then collect fees from the true innovators, who are trying to bring new products onto the market. Still other companies are accused of rushing to the patent office attempting to get a patent on whole industries, by virtue of being the first to claim an industry standard practice. Others are claiming mathematical algorithms which have always been the common heritage of all humanity. Indeed, it is not difficult to find patents that manage to suffer from all of these defects simultaneously. While such accusations have been in existence for as long *20 as the patent system itself,[FN17] there is widespread belief that the impact of non-practicing entities (“patent trolls”) is much greater today than it has ever been before.

FN17. In 1895, George Baldwin Selden obtained a patent with a claim so broad that it literally encompassed most automobiles ever made - putting a gasoline engine on a carriage - despite the fact that he had never gone into production with a working model of an automobile. See Robert Patrick Merges and John Fitzgerald Duffy, Patent Law and Policy, Cases and Materials, Charlottesville (2002), pp 644-646 for more information about the Selden Patent.

The Machine-or-Transformation test is one approach for a criterion to more clearly separate “good,” permissible patents from the “bad” impermissible patents - hopefully during the patent application process long before such “bad” patents have a damaging effect on the marketplace.

b. Potential Effects of Extending Patent Protection to Software and Business Methods.
What happens if one grants exclusive rights on business or software components? Each grant of monopoly over the component part covers all uses of that component in all fields of programming or use. Since a complete software system, or a large business practice, consists of many thousands of components, there is a high risk that the software system or business practice will unknowingly violate any number of exclusive grants over various components. The result is a stifling of further innovation, an increase in transactional costs (such as insurance and litigation) for innovators, and ultimately the abandonment *21 of research and developments by all but a few; precisely the opposite of what the patent statutes are intended to accomplish.

To avoid this danger, software copyrights grant exclusive rights not on software components, but only on individual programs, i.e. realizations or expressions of software systems. Similarly, trade secrets protect the confidentiality agreed upon by the parties in which the “secret” is reposed. Neither mechanism grants a broad range of exclusivity that potentially forecloses innovation in an entire field.

An additional danger exists in granting software patents. Patent licenses typically require a fee per copy. For this reason, it is very difficult to obtain a patent license for FOSS. Accordingly, there is a long list of FOSS projects which have had to be terminated to evade the risk of a patent lawsuit,[FN18] These development risks are increased when the patent covers a standard file format or protocol. In such a case, even if there is a better or more efficient algorithm available than the patented one, there is no way around the patent without giving up interoperability,[FN19] and the patent effectively locks out FOSS from the field of programming where the standard is defined.

FN18. See http://eupat.ffii.org/patents/effects/index.en.html.

FN19. See the cases STAC, JPEG, MPEG, Dolby, VOIP, ASF, LZW, TTF, RSA, WWW, and RDF in footnote 11 above plus the examples in section 3.1.4 below.

Software patents are in fact not patents on specific software realizations, but on abstract fundamental principles of programming - the algorithms. This brings an extremely high risk of unintentional patent infringement to *22 software developers. A patent claim typically takes 10-100 lines to describe the algorithm in human language. Software systems consists of a large number of algorithms. A typical software system comprises 10,000 to 10,000,000 or even more lines of source code, which accounts for a minimum of 100 to 10,000 algorithms, each of which might (or might not) be covered by a patent. So instead of one patent covering one software realization, developers would be faced with a software realization covered by hundreds or thousands of patents on software algorithms. As a consequence, it will eventually become unfeasible to write software without infringing a large number of patents - a veritable minefield of lawsuits for even the most careful innovators.

B. A Clear Boundary Between Patentable and Non-Patentable material is Important for Continued Innovation.
To avoid the numerous dangers associated with extending the exclusive grant offered by patents to subject matter not actually covered by patent law it is imperative that lower courts and the Patent and Trademark Offices world-wide have the benefit of clearly defined boundaries.

1. Existing Tests For Determining the Boundaries of Patent Subject Matter.
Both Europe and the United States have heeded history's lessons and imposed limitations on patentable subject matter. The European Patent Convention, in its Art. 52(2)(c) expressly states that “schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers […] as such […] *23 shall not be regarded as [patentable] inventions”. The United States, through this Court's rulings has similarly long limited the subject matter of patents to avoid abuse.

While many misquote the American rule as permitting patent protection for “anything under the sun that is made by man” the true rule states that anything made by man is patentable except for enumerated exceptions[FN20]. “The laws of nature, physical phenomena, and abstract ideas have been held not patentable.” ( Id.). It is for good reasons that, even in cases arguing for the broadest patentability, this need for limitations is endorsed.

FN20. Diamond v. Chakrabarty, 447 U.S. 303, 309, (1980); see also, Diamond v. Diehr, 450 U. S. 175 (1981).

This Court has already detailed how to translate the rules and limitations to the daily practice of granting patents. In Gottschalk v. Benson,[FN21] this Court held that a procedure for solving a given type of mathematical problem is known as an “algorithm”. Allowing a patent on such a procedure would “wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself”. Nevertheless, the mere presence of an algorithm in a solution shall not per se exclude the possibility of a patent being granted, as long as all other requirements of patentability are met.[FN22] As this court held in Diamond v. Diehr, (occasionally “ Diehr”) any claimed algorithm has to be treated as prior art. The patent can be granted only if the same claim as the algorithm also contains some other innovation that produces a useful, *24 concrete and tangible result. Diehr also defined the term “algorithm:”

FN21. Gottschalk v. Benson, 409 U. S. 63 (1972)

FN22. Parker v. Flook, 437 U.S. 584 (1978); Diamond v. Diehr, 450 U. S. 175 (1981)

“1. A fixed step-by-step procedure for accomplishing a given result; usually a simplified procedure for solving a complex problem, also a full statement of a finite number of steps. 2. A defined process or set of rules that leads [sic] and assures development of a desired output from a given input. A sequence of formulas and/or algebraic/logical steps to calculate or determine a given task; processing rules.”[FN23]

FN23. Brief for Petitioner in Diamond v. Bradley, O.T. 1980, No. 79-855, p. 6, n. 12, quoting C. Sippl & R. Sippl, Computer Dictionary and Handbook 23 (2d ed. 1972).

As Diehr noted, no distinction may be drawn between the first and second definitions. Thus, in a very real sense this Court has already spoken on the issue now before it, finding that abstractions/logic/software cannot be claimed in a patent, absent the addition of other patentable subject matter within the claim.

Indeed, this Court has been clear and consistent in its pronouncements. It is the Federal Circuit Courts of Appeal that have been inconsistent. The United States Court of Appeals for the Federal Circuit in In re Hiroyuki IWAHASHI,[FN24] provides one such diversion from existing precedent:

FN24. In re Hiroyuki IWAHASHI, Yoshiki Nishioka and Mitsuhiro Hakaridani, 12 U. S. P. Q. 2d 1908; 888 F.2d 1370 (1989)

*25 Over-concentration on the word “algorithm” alone, for example, may mislead. The Supreme Court carefully supplied a definition of the particular algorithm before it [in Benson], i.e., “[a] procedure for solving a given type of mathematical problem.” The broader definition of algorithm is “a step-by-step procedure for solving a problem or accomplishing some end.” Webster's New Collegiate Dictionary (1976).

The Court of Appeals thereby implied that there would exist mathematical, abstract algorithms as opposed to (non-mathematical, non-abstract) “applied” algorithms. This error was then reiterated and wholeheartedly adopted by the Circuit Court in State Street.[FN25]

FN25. State Street Bank & Trust Co. v. Signature Financial Group Inc., 149 F. 3d 1368 (Fed. Cir. 1998)

Today, we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces “a useful, concrete and tangible result” - a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.

*26 The State Street[FN26] decision was contrary to a broad range of authorities including the holdings of Gottschalk, Parker[FN27], and Diehr. State Street's pronouncement that an algorithm that produces a particular result is protectable is directly contrary to the teachings of Diehr:

FN26. As discussed below, State Street's damage did not stop at the water's edge. Seeking to harmonize its own laws with those of the United States, the European Patent Office has also relied upon State Street's broad, and ultimately misguided reading of U.S. patent law.

FN27. 437 U.S. 584 (1978)

[. ] the algorithm is treated for 101 purposes as though it were a familiar part of the prior art; the claim is then examined to determine whether it discloses “some other inventive concept.”

In other words, under Diehr, it is plain that the calculation itself cannot be claimed. It must be effectively discarded and the remaining claim terms must be analyzed in order to determine whether “some other inventive concept” exists, which can then be afforded patent protection.

Summarizing, the case law of the Supreme Court defined a clear line, in which algorithms could not be claimed on their own and had to be accompanied - in the same claim - by something else meeting the requirements of patentability. This is not unlike the decisions of the Board of Appeals of the European Patent Office, which *27 interpreted the so-called “technology requirement” in an analogous way.[FN28]

FN28. The Board of Appeals of the European Patent office only briefly diverged from this line of reasoning when it sought to harmonize its practice with the United States after State Street Bank & Trust Co. v. Signature Financial Group Inc., 149 F. 3d 1368 (Fed. Cir. 1998). As discussed below, that issue has since been resolved by the European Parlament.

a. The European Approach: Art 52 EPC and Technicity
European law provides for an explicit exclusion of patents on software and business methods. Art 52 of the European Patent Convention (EPC) reads:

“(2) The following in particular shall not be regarded as [patentable] inventions L…1:

(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; [… ]

(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.”

In light of Art 52(2)(c) of the EPC it may seem counterintuitive that any software patents would issue in *28 Europe. Yet, such patents have issued, calling into question the validity of those issued patents. This occurred because from 1998 onward, the European Patent Office changed its patent granting practice for software without regard to Art 52 (2)(3). Specifically, prior to 1998 - not unlike the United States prior to State Street - algorithms could not be claimed easily in Europe. But after 1998, the European Patent Office switched to an interpretation that left little to no room for the application for the exclusion of software found in Article 52.

As tension increased with respect to the European Patent Office's treatment of software patents, intense lobbying for a European Directive that would have effectively abrogated[FN29] Article 52 was commenced, most importantly by the European Patent Office itself. The European Commission then issued the proposal COM (2002) 92 final 2002/0047 (COD), 2002 which, if approved, would have effectively “cured” most of the dubious patents. However, the proposal was definitively refused on July 6, *29 2005 by the European Parliament. Thus, currently, the prohibition against such patents found in Article 52 remains good law.

FN29. Page 7 of the Directive proposal states that computer programs which have “a technical character [… ] are not considered to fall under the exclusion in Article 52(2) as they are considered not to relate to programs for computers ‘as such’.” On the same page we find that “all programs when run in a computer are by definition technical (because a computer is a machine) [… ].” In other words: all software would be technical, thus the exclusion by Art. 52(2) EPC would be void. This Directive proposal was rejected by the European Parliament on 6th July 2005 and was never implemented.

b. The Lower Court's Machine-or-Transformation Test
According to the Machine-or-Transformation patent eligibility test, a claim to a process qualifies to be considered for patenting only if it (1) is implemented with a particular machine, that is, one specifically devised and adapted to carry out the process in a way that is not concededly conventional and is not trivial; or else (2) transforms an article from one thing or state to another.

This test is a means to an end. It is there not to cross, but to define the border between patentable new and useful processes and non-patentable laws of nature, physical phenomena, and abstract ideas. This answers the first question presented by the petitioners.

Regarding the second question, the American Inventor Protection Act in 1999 introduced a limited “prior use” defense in American patent law, specifically for “methods of doing or conducting business”. This regulation, inserted as § 273 into the American Patent Act, implicitly acknowledges the existence of business methods, by virtue of its limitation to those methods.

Unlike the second question of the petitioners suggests, 35 U. S. C. § 273 does not reflect a “clear Congressional intent that patents protect ‘method[s] of doing or conducting business.’ ” The regulation only recognizes business method patents as a fact and tries to bring their economic impact under control by setting a limit.

*30 This is achieved by the Machine-or-Transformation test: setting a limit. It does not contradict 35 U. S. C. § 273, but complements it.

On the other hand one must take very seriously the concerns raised by Judge Mayer in his dissent to this test.

“Bilski, for example, could simply add a requirement that a commodity consumer install a meter to record commodity consumption. He could then argue that installation of this meter was a ‘physical transformation’.”

The same kind of “clever draftsmanship” has been advocated in Europe by the EPO, which for many years saw its job as one of “helping its clients, the would- be patent holders, apply for and receive patents” and featured on its website a document which described in detail how to circumvent Art. 52(2) EPC.

Neither the EPO, nor the PTO, nor the Federal Circuit Courts should be in the business of “helping” applicants gain patent protection. As discussed in the earlier portion of this brief, there are very real cost to society for each patent that issues. Those costs reach unacceptably high levels when the patent has the effect of excluding others from participation in abstract ideas, laws of nature, physical phenomena and the like[FN30].

FN30. Diamond v. Chakrabarty, 447 U.S. 303, 309, (1980); see also, Diamond v. Diehr, 450 U. S. 175 (1981).

*31 2. Improving the Patentability Tests
The purpose of the Machine-or-Transformation test, reiterated in Bilski, is to limit patentability in a manner consistent with existing Supreme Court precedent and to exclude undesired patent applications. To serve this purpose, Amici propose that the Machine-or-Transformation test be supplemented with the following measures:

1. The Machine-or-Transformation test must be applied to the claimed object rather than to the patent claim as a whole. An object can only be claimed in a patent if it constitutes a new, concrete realization of a machine or transformation.

Without these further requirements, patent claims may incidentally involve machines or transformations which are irrelevant to the claim, while still effectively working to impermissibly patent laws of nature, physical phenomenon or abstract ideas.

2. In applying the “suggestion test”, an ability to combine or modify prior art references should be assumed that is consistent with ordinary creativity and problem-solving skills in the art.

The suggestion test states that if the prior art would have already suggested the claimed invention, then the claimed invention is *32 obvious. However, the participants at the FTC/DOJ Hearings expressed concern with some recent applications of the suggestion test. To show that a claimed invention is obvious, the USPTO had to point to particular items of prior art that concretely suggest how to combine all of the features of a claimed invention. It is those fields where the combining of elements is most straightforward that the chances are least that one can find an existing document that outlines that particular combination, simply because nobody having ordinary skill in the art would ever require instruction at that level. How to combine existing elements would be considered “too obvious” to need mention.

3. An expanded version of the suggestion test is relevant to all inventions that use a computer. Simply writing a computer program and then running it on a computer is not novel, under the meaning of patent law. And doing so is obvious, again under the meaning of patent law.

These days, we experience a similar dawn of mankind as Henry Ford experienced 100 years ago.[FN31] Back then it was completely obvious for an engineer to put an engine on a carriage. In these days, it is completely obvious for *33 someone skilled in the art of computer programming to convert mathematical principles into computer programs. Thus while what Bilski has done may be termed “innovative” in an entrepreneurial sense, it is in no way innovative in the sense of patent law

FN31. See also the FTC report, executive summary, page 12

4. The “commercial success test” should be expressly abandoned. This test states that in some circumstances, courts may consider the commercial success of a claimed invention to indicate that it was not obvious. It must have satisfied an unmet need, which was not obvious to anybody else, or else they would have already been satisfying it.

Commercial success comes from many factors, many of which have nothing to do with the claimed invention, e.g. Marketing, advertising, a pre-existent dominant position, etc. Henry Ford, after all, claimed that his business success was based on the completely obvious idea of putting a gasoline engine on a chassis. His great success arose from other factors.

These minor modifications or clarifications to the existing test will only serve to better refine the existing law to ensure that patent protection continues to serve its intended purposes while excluding undesirable applications *34 for material that ultimately is not entitled to patent protection.

V.

CONCLUSION

For the foregoing reasons Amici respectfully urge this court to re-affirm its long-standing rules prohibiting expansion of patent protection to subject matter that has the effect of precluding innovators from employing abstract *35 ideas, algorithms, laws of nature and the like. The Federal Circuit's Machine-or-Transformation test, in particular when slightly modified as suggested herein, provides the clarity needed with respect to business method and software patents. As such, this Court should Affirm.

U.S.,2009.
Bilski v. Kappos
2009 WL 3199626 (U.S.) (Appellate Brief)

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• 2009 WL 2219306 (Appellate Brief) Brief of Amicus Curiae Timothy F. McDonough, Ph.D. in Support of Petitioners (Jul. 22, 2009) Original Image of this Document (PDF)
• 2009 WL 1317892 (Appellate Petition, Motion and Filing) Petitioners' Reply Brief (May 8, 2009) Original Image of this Document (PDF)
• 2009 WL 1179332 (Appellate Petition, Motion and Filing) Brief for the Respondent in Opposition (May 1, 2009) Original Image of this Document (PDF)
• 2009 WL 559338 (Appellate Petition, Motion and Filing) Brief of Koninklijke Philips Electronics N.V. as Amicus Curiae in Support of Petitioners (Mar. 2, 2009) Original Image of this Document (PDF)
• 2009 WL 559339 (Appellate Petition, Motion and Filing) Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Mar. 2, 2009) Original Image of this Document (PDF)
• 2009 WL 559340 (Appellate Petition, Motion and Filing) Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Mar. 2, 2009) Original Image of this Document (PDF)
• 2009 WL 559341 (Appellate Petition, Motion and Filing) Brief Amicus Curiae of Franklin Pierce Law Center in Support of Certiorari (Mar. 2, 2009) Original Image of this Document (PDF)
• 2009 WL 559342 (Appellate Petition, Motion and Filing) Brief of Amica Curiae Anne E. Barschall, Pro Se in Support of Petitioners (Mar. 2, 2009) Original Image of this Document (PDF)
• 2009 WL 564647 (Appellate Petition, Motion and Filing) Brief of Amicus Curiae American Intellectual Property Law Association in Support of the Petition for a Writ of Certiorari (Mar. 2, 2009) Original Image of this Document (PDF)
• 2009 WL 585758 (Appellate Petition, Motion and Filing) Brief of Amicus Curiae Borland Software Corporation in Support of Petitioner (Mar. 2, 2009) Original Image of this Document (PDF)
• 2009 WL 564646 (Appellate Petition, Motion and Filing) Brief of Amicus Curiae Medistem Inc. in Support of the Petition for a Writ of Certiorari (Feb. 27, 2009) Original Image of this Document (PDF)
• 2009 WL 507782 (Appellate Petition, Motion and Filing) Brief of John P. Sutton Amicus Curiae Supporting Petitioners (Feb. 25, 2009) Original Image of this Document (PDF)
• 08-964 (Docket) (Jan. 30, 2009)
• 2009 WL 226501 (Appellate Petition, Motion and Filing) Petition for a Writ of Certiorari (Jan. 28, 2009) Original Image of this Document (PDF)

Oral Argument Transcripts with Streaming Media (Back to top)

• 2009 WL 3750776 (Oral Argument) Oral Argument (Nov. 9, 2009) Original Image of this Document with Appendix (PDF)
END OF DOCUMENT

(c) 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.</nowiki>

User:Mackroyd

2011-02-14T07:06:52Z

Mackroyd:

User:Mackroyd

2011-02-14T07:06:01Z

Mackroyd:

Bilski brief list

2011-02-14T06:58:44Z

Mackroyd:

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

#Reply Brief for Petitioners (Oct. 26, 2009)
#jpotter2
#Adam T. Letcher
#Craigkrzyskowski
#dcarter2
#ebingle
#Rabot
#Eric Paul
#cnorton
#Brief For Amicus Curiae Computer & Communications Industry Association in Support of Respondent (Oct. 2, 2009)
#Jnosal
#Mackroyd
#Brief for Free Software Foundation as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#eguilbea
#901444263
#Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent (Oct. 2, 2009)
#Amicus Curiae Brief in Support of the Respondent, Submitted on Behalf of Adamas Pharmaceuticals, Inc. and Tethys Bioscience, Inc. (Oct. 2, 2009)
#KyleR
#Andy Stulc
#Brief for Amicus Curiae Mark Landesmann in Support of Affirmance (Oct. 2, 2009)
#Amicus Curiae Brief of Center for Advanced Study and Research in Intellectual Property (CASRIP) of the University of Washington School of Law, and of CASRIP Research Affiliate Scholars, in Support of Affirmance of the Judgment in Favor of Respondent (Oct. 1, 2009)
#Kevin Godshall
#Amici Curiae Brief of Internet Retailers in Support of Respondent (Oct. 1, 2009)
#Brief for the Respondent (Sep. 25, 2009)
#Kriester
#Brobins
#Josh Bradley
#Brief of Amici Curiae Entrepreneurial Software Companies in Support of Petitioner (Aug. 6, 2009)
#E W Hitchler
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Amici Curiae Biotechnology Industry Organization, Advanced Medical Technology Association, Wisconsin Alumni Research Foundation & The Regents of the University of California in Support of Neither Party (Aug. 6, 2009)
#Mzahm
#Brief of Pharmaceutical Research and Manufacturers of America as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Hamburgler
#Brief of F%21ed%21eration Internationale Des Conseils En Propri%21et%21e Industrielle as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Law Professor Kevin Emerson Collins in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Legal OnRamp in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae John Sutton in Support of Petitioners (Aug. 6, 2009)
#Brief of Amicus Curiae Novartis Corporation Supporting Petitioners (Aug. 6, 2009)
#Brief Amicus Curiae of The Federal Circuit Bar Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Regulatory Datacorp, Inc, American Express Company, Palm Inc., Rockwell Automation, Inc., and SAP America, Inc. as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Double Rock Corporation, Island Intellectual Property LLC, LIDs Capital LLC, Intrasweep LLC, Access Control Advantage, Inc., Ecomp Consultants, Pipeline Trading Systems LLC, Rearden Capital Corporation, Craig Mowry and PCT Capital LLC as Ami ci Curiae in Support of Petitioners (Aug. 6, 2009)
#901422128
#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)
#CRoetzel
#Brief of Amicus Curiae AwakenIP, LLC in Support of Petitioners (Aug. 6, 2009)
#Pmitros
#pfleury
#901479977
#Brief for Prometheus Laboratories Inc. as Amicus Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Intellectual Property Owners Association in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Aug. 5, 2009)
#Brief for the Business Software Alliance as Amicus Curiae in Support of Affirmance (Aug. 5, 2009)
#Brief of Amicus Curiae Washington State Patent Law Association in Support of Petitioner (Aug. 5, 2009)
#Bobby Powers
#Brief of Amici Curiae Association Internationale Pour la Protection de la Propriete Intellectuelle and International Association For The Protection Of Intellectual Property (U.S.) in Support of Reversal (Aug. 5, 2009)
#Brief of Amicus Curiae Caris Diagnostics, Inc. in Support of Petitioners (Aug. 5, 2009)
#Brief of the Intellectual Property Law Association of Chicago as Amicus Curiae Supporting Neither Party (Aug. 5, 2009)
#Brief of Monogram Biosciences, Inc. and Genomic Health, Inc. as Amici Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Raymond C. Meiers in Support of Neither Party (Aug. 5, 2009)
#Xiao Dong
#Brief of Amicus Curiae Conejo Valley Bar Association in Support of Neither Party (Aug. 3, 2009)
#Brief For Petitioners (Jul. 30, 2009)
#Brief of Amicus Curiae Telecommunication Systems, Inc. in Support of Neither Party and for Purely Prospective Application of Any Adoption of the New Legal Test Applied Below (Jul. 24, 2009)
#Brief for the State of Oregon as Amicus Curiae in Support of Neither Party (Jul. 24, 2009)
#ewolz
#kristen kemnetz
#Brief for the Respondent in Opposition (May 1, 2009)
#Brief of Koninklijke Philips Electronics N.V. as Amicus Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Mar. 2, 2009)
#Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief Amicus Curiae of Franklin Pierce Law Center in Support of Certiorari (Mar. 2, 2009)
#Brief of Amica Curiae Anne E. Barschall, Pro Se in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of the Petition for a Writ of Certiorari (Mar. 2, 2009)
#Jmarmole
#Brief of John P. Sutton Amicus Curiae Supporting Petitioners (Feb. 25, 2009)

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T17:35:09Z

Mackroyd:

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

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

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

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

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

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

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

::In fact, the clay knob did produce a better product, and was cheaper. However, as previously stated, this improvement was not the subject of this patent, the combination of materials was.

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

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

The question addressed in this case was that of whether combining previously know objects or materials exhibits enough inventiveness to warrant a patent. The decision of this case, invalidating the patent, implies that when various objects are combined to create something new, the objects should be able to accomplish something new, which none of the constituent objects was capable of accomplishing on their own. In this case, the substitution of a material did not accomplish anything new; the mechanism still accomplished the same thing as the prior art.

Furthermore, on the subject of non-obviousness, the improved strength of the knob and shank mechanism could have been achieved by any skilled mechanic in the field by using different materials, and many materials could have been used to achieve this improvement, not just those encompassed within the patent in question.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for non-obviousness.
**That is to say, one manner in which the subject matter of a patent may be deemed non-obvious is when, over a significant span of time, a need for the subject of the patent is developed and remains unquenched in the relevant field. This need may or may not be acknowledged during the time of development between the existence of the prior art and the advent of the new invention. Furthermore, it may or may not be obviated by a significant amount of commercial success, which in turn validates a clear demand and prior need for the subject of the patent.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
**Specifically, this particular case reiterated the crucial concept that patent laws exist to promote the advancement of science.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
**In this issue, the court conveys the idea that there is an inherent difficulty in patentability requirements, since a new invention is a combination of previously known things.

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

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4
As stated above, other skilled inventors in the field had attempted to create, by any method possible, the coating which had been created by Lyon using a new method.
:Specifically, Cartwright had tried to achieve the coating by a process involving a hardening of the glass in a vacuum by heating it. However, he was unsuccessful, and so abandoned this method, later testifying that he did not believe it to be the best possible way for applying the coating. Since it was considered an abandoned invention, Cartwright was not able to be considered the prior inventor.
Bausch and Lomb contended that the description of the process in the patent was too vague, using phrases such as "suitable coatings." However, it was not the vague nature of the patent which concerned the court, but rather the question of whether the process was novel.
:The court tried to determine whether or not the added step was non-obvious, and thus sufficient grounds for patentability.
::They came to the conclusion that, as an argument in favor of the non-obvious nature of the patented process, since a better manner for applying these coatings to glass to prevent reflection had been sought for ten years, the invention could not simply have been created by any skilled mechanic, and so Lyon was the first to find a better way and thus deserved the patent.

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

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

The case of Graham v. John Deere was a critical decision and precedent which spoke to how the law set forth in 35 USC 103 is intended to be interpreted. The court conveyed the following notion with regard to interpretation of section 103:
:“Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.”
The court brought up certain ideas which were first attributed to Thomas Jefferson:
*Obtaining a monopoly on an idea is not an actual right;
*The very nature of ideas is something you cannot control.
:From this it logically follows that ideas are only valuable insofar as one is able to control and exploit them
As a result of this case Congress changed the language of "invention." Essentially, everything which had been previously decided by the court was codified under Section 103.
:Of particular note within this section is the following:
::"Patentability shall not be negatived by the manned in which the invention was made."
:This line of the code serves to imply that it does not matter if the idea comes from a flash of genius or elsewhere...
====Calmar, Inc. v. Cook Chemical Co.====
The case of Calmar, Inc. v. Cook Chemical Co. was also discussed in the decision of Graham v. John Deere.

Within this Calmar case, it was determined that anything conceded in getting a patent during the application process cannot be reclaimed by the patent holder at a later date once the patent has been issued, in the event that the patent holder sues for infringement.

The court decided to invalidate the patent for the pump sprayer with hold down cap based on a lack of non-obviousness.
:While there had been a long felt need for this type of pump and cap combination, these needs were ''secondary'' to the non-obviousness of the invention.

The obvious nature of an invention, that is to say whether or not something is obvious, is a question for engineering and science. The competence of the court to arrive at the correct decision for non-obviousness is a separate issue in itself.

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

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

The patent in question in this case was granted to Adams for a wet battery which employed cathodes and anodes submerged in water (as the electrolyte). Adams claimed this battery was capable of producing constant potential regardless of the amount of current being drawn. Furthermore, he claimed a very large range of temperatures at which the battery was capable of operating.

*The patent was issued by the government via the Patent Office.
*The government infringed upon the patent during WWII by using this specific battery technology in vehicles used in the war.
*Adams subsequently sued the government for infringement of his patent.

When Adams obtained his patent there were no other previous patents or treatises which demonstrated the feasible use of water as the electrolytic solution. The cathodes and anodes used by Adams in the battery were previously used, and so under 35 USC 102 this exact same combination of chemicals would not be patentable. However the patentability of the battery stems from the idea that it was non-obvious because it was not based solely on material substitution. If it had merely been a matter of material substitution, then the new battery would have achieved the same operating characteristics as previous batteries. Adams' battery achieved unexpected characteristics, which implies that the invention was non-obvious and therefore patentable.

===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.

As seen in the case of Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969), an invention should be considered patentable if the combination of its parts produces a greater result than parts individually. In the case of Black Rock, the combination of parts did not achieve a better outcome than the parts were able to individually, and as such the patent was invalid.

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

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

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

==The Inventive Step==
The inventive step is the extra piece of the process of invention which separates a non-obvious patentable subject matter from a product which any ordinarily skilled mechanic in the field could have created. In order to determine whether the inventive step is/was present during the creation process, the court put into practice a TSM Test. This test involves determining whether the patent subject material is Teaching, Suggesting, Motivating. The absence of TSM does not imply that the subject of the patent is not obvious, whereas non-obviousness implies that TSM does not exist. The lack of an inventive step and related lack of non-obviousness fails to bring about the advancement of science in the art.

==Relationship with Novelty==
Novelty, as defined in 35 USC 102, essentially means that an invention must be ''new'', which implies that it cannot have existed previously. Novelty is significantly related to non-obviousness, especially in the case of combining previously known parts to create a new invention. In order for a patent to be valid, it must be both new and non-obvious. Non-obviousness seems to imply novelty, and novelty non-obviousness; for if an invention were obvious then it could not be considered a novel idea, and if an invention were not novel then it would certainly be obvious.

==Secondary Considerations==
While secondary considerations cannot single handedly prove the non-obviousness of a patent, they can serve to assist in proving the non-obviousness when used in conjunction with other significant or primary considerations.
Such secondary considerations include, but are not limited to:
*commercial success of the invention;
*long-felt needs for the invention;
*failure of others to find a solution;
*significant attempts over time to find a solution;
*acceptance of the invention in the field;
*unexpected results of the invention;
*"experts" in the field regarding the invention as impossible;
*etc.

==Ordinary Skill in the Art==

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

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

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

[[South Corp. v. US]]

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T17:32:13Z

Mackroyd: /* Secondary Considerations */

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

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

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

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

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

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

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

::In fact, the clay knob did produce a better product, and was cheaper. However, as previously stated, this improvement was not the subject of this patent, the combination of materials was.

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

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

The question addressed in this case was that of whether combining previously know objects or materials exhibits enough inventiveness to warrant a patent. The decision of this case, invalidating the patent, implies that when various objects are combined to create something new, the objects should be able to accomplish something new, which none of the constituent objects was capable of accomplishing on their own. In this case, the substitution of a material did not accomplish anything new; the mechanism still accomplished the same thing as the prior art.

Furthermore, on the subject of non-obviousness, the improved strength of the knob and shank mechanism could have been achieved by any skilled mechanic in the field by using different materials, and many materials could have been used to achieve this improvement, not just those encompassed within the patent in question.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for non-obviousness.
**That is to say, one manner in which the subject matter of a patent may be deemed non-obvious is when, over a significant span of time, a need for the subject of the patent is developed and remains unquenched in the relevant field. This need may or may not be acknowledged during the time of development between the existence of the prior art and the advent of the new invention. Furthermore, it may or may not be obviated by a significant amount of commercial success, which in turn validates a clear demand and prior need for the subject of the patent.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
**Specifically, this particular case reiterated the crucial concept that patent laws exist to promote the advancement of science.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
**In this issue, the court conveys the idea that there is an inherent difficulty in patentability requirements, since a new invention is a combination of previously known things.

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

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4
As stated above, other skilled inventors in the field had attempted to create, by any method possible, the coating which had been created by Lyon using a new method.
:Specifically, Cartwright had tried to achieve the coating by a process involving a hardening of the glass in a vacuum by heating it. However, he was unsuccessful, and so abandoned this method, later testifying that he did not believe it to be the best possible way for applying the coating. Since it was considered an abandoned invention, Cartwright was not able to be considered the prior inventor.
Bausch and Lomb contended that the description of the process in the patent was too vague, using phrases such as "suitable coatings." However, it was not the vague nature of the patent which concerned the court, but rather the question of whether the process was novel.
:The court tried to determine whether or not the added step was non-obvious, and thus sufficient grounds for patentability.
::They came to the conclusion that, as an argument in favor of the non-obvious nature of the patented process, since a better manner for applying these coatings to glass to prevent reflection had been sought for ten years, the invention could not simply have been created by any skilled mechanic, and so Lyon was the first to find a better way and thus deserved the patent.

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

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

The case of Graham v. John Deere was a critical decision and precedent which spoke to how the law set forth in 35 USC 103 is intended to be interpreted. The court conveyed the following notion with regard to interpretation of section 103:
:“Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.”
The court brought up certain ideas which were first attributed to Thomas Jefferson:
*Obtaining a monopoly on an idea is not an actual right;
*The very nature of ideas is something you cannot control.
:From this it logically follows that ideas are only valuable insofar as one is able to control and exploit them
As a result of this case Congress changed the language of "invention." Essentially, everything which had been previously decided by the court was codified under Section 103.
:Of particular note within this section is the following:
::"Patentability shall not be negatived by the manned in which the invention was made."
:This line of the code serves to imply that it does not matter if the idea comes from a flash of genius or elsewhere...
====Calmar, Inc. v. Cook Chemical Co.====
The case of Calmar, Inc. v. Cook Chemical Co. was also discussed in the decision of Graham v. John Deere.

Within this Calmar case, it was determined that anything conceded in getting a patent during the application process cannot be reclaimed by the patent holder at a later date once the patent has been issued, in the event that the patent holder sues for infringement.

The court decided to invalidate the patent for the pump sprayer with hold down cap based on a lack of non-obviousness.
:While there had been a long felt need for this type of pump and cap combination, these needs were ''secondary'' to the non-obviousness of the invention.

The obvious nature of an invention, that is to say whether or not something is obvious, is a question for engineering and science. The competence of the court to arrive at the correct decision for non-obviousness is a separate issue in itself.

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

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

The patent in question in this case was granted to Adams for a wet battery which employed cathodes and anodes submerged in water (as the electrolyte). Adams claimed this battery was capable of producing constant potential regardless of the amount of current being drawn. Furthermore, he claimed a very large range of temperatures at which the battery was capable of operating.

*The patent was issued by the government via the Patent Office.
*The government infringed upon the patent during WWII by using this specific battery technology in vehicles used in the war.
*Adams subsequently sued the government for infringement of his patent.

When Adams obtained his patent there were no other previous patents or treatises which demonstrated the feasible use of water as the electrolytic solution. The cathodes and anodes used by Adams in the battery were previously used, and so under 35 USC 102 this exact same combination of chemicals would not be patentable. However the patentability of the battery stems from the idea that it was non-obvious because it was not based solely on material substitution. If it had merely been a matter of material substitution, then the new battery would have achieved the same operating characteristics as previous batteries. Adams' battery achieved unexpected characteristics, which implies that the invention was non-obvious and therefore patentable.

===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.

As seen in the case of Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969), an invention should be considered patentable if the combination of its parts produces a greater result than parts individually. In the case of Black Rock, the combination of parts did not achieve a better outcome than the parts were able to individually, and as such the patent was invalid.

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

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

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

==The Inventive Step==
The inventive step is the extra piece of the process of invention which separates a non-obvious patentable subject matter from a product which any ordinarily skilled mechanic in the field could have created. In order to determine whether the inventive step is/was present during the creation process, the court put into practice a TSM Test. This test involves determining whether the patent subject material is Teaching, Suggesting, Motivating. The absence of TSM does not imply that the subject of the patent is not obvious, whereas non-obviousness implies that TSM does not exist. The lack of an inventive step and related lack of non-obviousness fails to bring about the advancement of science in the art.

==Relationship with Novelty==
Novelty, as defined in 35 USC 102, essentially means that an invention must be ''new'', which implies that it cannot have existed previously. Novelty is significantly related to non-obviousness, especially in the case of combining previously known parts to create a new invention. In order for a patent to be valid, it must be both new and non-obvious. Non-obviousness seems to imply novelty, and novelty non-obviousness; for if an invention were obvious then it could not be considered a novel idea, and if an invention were not novel then it would certainly be obvious.

==Nonobviousness vs. Invention==
==Secondary Considerations==
While secondary considerations cannot single handedly prove the non-obviousness of a patent, they can serve to assist in proving the non-obviousness when used in conjunction with other significant or primary considerations.
Such secondary considerations include, but are not limited to:
*commercial success of the invention;
*long-felt needs for the invention;
*failure of others to find a solution;
*significant attempts over time to find a solution;
*acceptance of the invention in the field;
*unexpected results of the invention;
*"experts" in the field regarding the invention as impossible;
*etc.

==Ordinary Skill in the Art==

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

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

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

[[South Corp. v. US]]

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T17:28:11Z

Mackroyd: /* Secondary Considerations */

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

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

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

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

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

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

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

::In fact, the clay knob did produce a better product, and was cheaper. However, as previously stated, this improvement was not the subject of this patent, the combination of materials was.

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

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

The question addressed in this case was that of whether combining previously know objects or materials exhibits enough inventiveness to warrant a patent. The decision of this case, invalidating the patent, implies that when various objects are combined to create something new, the objects should be able to accomplish something new, which none of the constituent objects was capable of accomplishing on their own. In this case, the substitution of a material did not accomplish anything new; the mechanism still accomplished the same thing as the prior art.

Furthermore, on the subject of non-obviousness, the improved strength of the knob and shank mechanism could have been achieved by any skilled mechanic in the field by using different materials, and many materials could have been used to achieve this improvement, not just those encompassed within the patent in question.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for non-obviousness.
**That is to say, one manner in which the subject matter of a patent may be deemed non-obvious is when, over a significant span of time, a need for the subject of the patent is developed and remains unquenched in the relevant field. This need may or may not be acknowledged during the time of development between the existence of the prior art and the advent of the new invention. Furthermore, it may or may not be obviated by a significant amount of commercial success, which in turn validates a clear demand and prior need for the subject of the patent.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
**Specifically, this particular case reiterated the crucial concept that patent laws exist to promote the advancement of science.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
**In this issue, the court conveys the idea that there is an inherent difficulty in patentability requirements, since a new invention is a combination of previously known things.

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

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4
As stated above, other skilled inventors in the field had attempted to create, by any method possible, the coating which had been created by Lyon using a new method.
:Specifically, Cartwright had tried to achieve the coating by a process involving a hardening of the glass in a vacuum by heating it. However, he was unsuccessful, and so abandoned this method, later testifying that he did not believe it to be the best possible way for applying the coating. Since it was considered an abandoned invention, Cartwright was not able to be considered the prior inventor.
Bausch and Lomb contended that the description of the process in the patent was too vague, using phrases such as "suitable coatings." However, it was not the vague nature of the patent which concerned the court, but rather the question of whether the process was novel.
:The court tried to determine whether or not the added step was non-obvious, and thus sufficient grounds for patentability.
::They came to the conclusion that, as an argument in favor of the non-obvious nature of the patented process, since a better manner for applying these coatings to glass to prevent reflection had been sought for ten years, the invention could not simply have been created by any skilled mechanic, and so Lyon was the first to find a better way and thus deserved the patent.

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

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

The case of Graham v. John Deere was a critical decision and precedent which spoke to how the law set forth in 35 USC 103 is intended to be interpreted. The court conveyed the following notion with regard to interpretation of section 103:
:“Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.”
The court brought up certain ideas which were first attributed to Thomas Jefferson:
*Obtaining a monopoly on an idea is not an actual right;
*The very nature of ideas is something you cannot control.
:From this it logically follows that ideas are only valuable insofar as one is able to control and exploit them
As a result of this case Congress changed the language of "invention." Essentially, everything which had been previously decided by the court was codified under Section 103.
:Of particular note within this section is the following:
::"Patentability shall not be negatived by the manned in which the invention was made."
:This line of the code serves to imply that it does not matter if the idea comes from a flash of genius or elsewhere...
====Calmar, Inc. v. Cook Chemical Co.====
The case of Calmar, Inc. v. Cook Chemical Co. was also discussed in the decision of Graham v. John Deere.

Within this Calmar case, it was determined that anything conceded in getting a patent during the application process cannot be reclaimed by the patent holder at a later date once the patent has been issued, in the event that the patent holder sues for infringement.

The court decided to invalidate the patent for the pump sprayer with hold down cap based on a lack of non-obviousness.
:While there had been a long felt need for this type of pump and cap combination, these needs were ''secondary'' to the non-obviousness of the invention.

The obvious nature of an invention, that is to say whether or not something is obvious, is a question for engineering and science. The competence of the court to arrive at the correct decision for non-obviousness is a separate issue in itself.

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

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

The patent in question in this case was granted to Adams for a wet battery which employed cathodes and anodes submerged in water (as the electrolyte). Adams claimed this battery was capable of producing constant potential regardless of the amount of current being drawn. Furthermore, he claimed a very large range of temperatures at which the battery was capable of operating.

*The patent was issued by the government via the Patent Office.
*The government infringed upon the patent during WWII by using this specific battery technology in vehicles used in the war.
*Adams subsequently sued the government for infringement of his patent.

When Adams obtained his patent there were no other previous patents or treatises which demonstrated the feasible use of water as the electrolytic solution. The cathodes and anodes used by Adams in the battery were previously used, and so under 35 USC 102 this exact same combination of chemicals would not be patentable. However the patentability of the battery stems from the idea that it was non-obvious because it was not based solely on material substitution. If it had merely been a matter of material substitution, then the new battery would have achieved the same operating characteristics as previous batteries. Adams' battery achieved unexpected characteristics, which implies that the invention was non-obvious and therefore patentable.

===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.

As seen in the case of Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969), an invention should be considered patentable if the combination of its parts produces a greater result than parts individually. In the case of Black Rock, the combination of parts did not achieve a better outcome than the parts were able to individually, and as such the patent was invalid.

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

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

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

==The Inventive Step==
The inventive step is the extra piece of the process of invention which separates a non-obvious patentable subject matter from a product which any ordinarily skilled mechanic in the field could have created. In order to determine whether the inventive step is/was present during the creation process, the court put into practice a TSM Test. This test involves determining whether the patent subject material is Teaching, Suggesting, Motivating. The absence of TSM does not imply that the subject of the patent is not obvious, whereas non-obviousness implies that TSM does not exist. The lack of an inventive step and related lack of non-obviousness fails to bring about the advancement of science in the art.

==Relationship with Novelty==
Novelty, as defined in 35 USC 102, essentially means that an invention must be ''new'', which implies that it cannot have existed previously. Novelty is significantly related to non-obviousness, especially in the case of combining previously known parts to create a new invention. In order for a patent to be valid, it must be both new and non-obvious. Non-obviousness seems to imply novelty, and novelty non-obviousness; for if an invention were obvious then it could not be considered a novel idea, and if an invention were not novel then it would certainly be obvious.

==Nonobviousness vs. Invention==
==Secondary Considerations==
While secondary considerations cannot single handedly prove the non-obviousness of a patent, they can serve to assist in proving the non-obviousness when used in conjunction with other significant or primary considerations.
Such secondary considerations include, but are not limited to:
*commercial success of the invention;
*long-felt but unsolved needs;
*failure of others to find a solution

==Ordinary Skill in the Art==

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

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

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

[[South Corp. v. US]]

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T17:27:14Z

Mackroyd: /* Secondary Considerations */

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

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

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

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

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

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

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

::In fact, the clay knob did produce a better product, and was cheaper. However, as previously stated, this improvement was not the subject of this patent, the combination of materials was.

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

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

The question addressed in this case was that of whether combining previously know objects or materials exhibits enough inventiveness to warrant a patent. The decision of this case, invalidating the patent, implies that when various objects are combined to create something new, the objects should be able to accomplish something new, which none of the constituent objects was capable of accomplishing on their own. In this case, the substitution of a material did not accomplish anything new; the mechanism still accomplished the same thing as the prior art.

Furthermore, on the subject of non-obviousness, the improved strength of the knob and shank mechanism could have been achieved by any skilled mechanic in the field by using different materials, and many materials could have been used to achieve this improvement, not just those encompassed within the patent in question.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for non-obviousness.
**That is to say, one manner in which the subject matter of a patent may be deemed non-obvious is when, over a significant span of time, a need for the subject of the patent is developed and remains unquenched in the relevant field. This need may or may not be acknowledged during the time of development between the existence of the prior art and the advent of the new invention. Furthermore, it may or may not be obviated by a significant amount of commercial success, which in turn validates a clear demand and prior need for the subject of the patent.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
**Specifically, this particular case reiterated the crucial concept that patent laws exist to promote the advancement of science.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
**In this issue, the court conveys the idea that there is an inherent difficulty in patentability requirements, since a new invention is a combination of previously known things.

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

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4
As stated above, other skilled inventors in the field had attempted to create, by any method possible, the coating which had been created by Lyon using a new method.
:Specifically, Cartwright had tried to achieve the coating by a process involving a hardening of the glass in a vacuum by heating it. However, he was unsuccessful, and so abandoned this method, later testifying that he did not believe it to be the best possible way for applying the coating. Since it was considered an abandoned invention, Cartwright was not able to be considered the prior inventor.
Bausch and Lomb contended that the description of the process in the patent was too vague, using phrases such as "suitable coatings." However, it was not the vague nature of the patent which concerned the court, but rather the question of whether the process was novel.
:The court tried to determine whether or not the added step was non-obvious, and thus sufficient grounds for patentability.
::They came to the conclusion that, as an argument in favor of the non-obvious nature of the patented process, since a better manner for applying these coatings to glass to prevent reflection had been sought for ten years, the invention could not simply have been created by any skilled mechanic, and so Lyon was the first to find a better way and thus deserved the patent.

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

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

The case of Graham v. John Deere was a critical decision and precedent which spoke to how the law set forth in 35 USC 103 is intended to be interpreted. The court conveyed the following notion with regard to interpretation of section 103:
:“Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.”
The court brought up certain ideas which were first attributed to Thomas Jefferson:
*Obtaining a monopoly on an idea is not an actual right;
*The very nature of ideas is something you cannot control.
:From this it logically follows that ideas are only valuable insofar as one is able to control and exploit them
As a result of this case Congress changed the language of "invention." Essentially, everything which had been previously decided by the court was codified under Section 103.
:Of particular note within this section is the following:
::"Patentability shall not be negatived by the manned in which the invention was made."
:This line of the code serves to imply that it does not matter if the idea comes from a flash of genius or elsewhere...
====Calmar, Inc. v. Cook Chemical Co.====
The case of Calmar, Inc. v. Cook Chemical Co. was also discussed in the decision of Graham v. John Deere.

Within this Calmar case, it was determined that anything conceded in getting a patent during the application process cannot be reclaimed by the patent holder at a later date once the patent has been issued, in the event that the patent holder sues for infringement.

The court decided to invalidate the patent for the pump sprayer with hold down cap based on a lack of non-obviousness.
:While there had been a long felt need for this type of pump and cap combination, these needs were ''secondary'' to the non-obviousness of the invention.

The obvious nature of an invention, that is to say whether or not something is obvious, is a question for engineering and science. The competence of the court to arrive at the correct decision for non-obviousness is a separate issue in itself.

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

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

The patent in question in this case was granted to Adams for a wet battery which employed cathodes and anodes submerged in water (as the electrolyte). Adams claimed this battery was capable of producing constant potential regardless of the amount of current being drawn. Furthermore, he claimed a very large range of temperatures at which the battery was capable of operating.

*The patent was issued by the government via the Patent Office.
*The government infringed upon the patent during WWII by using this specific battery technology in vehicles used in the war.
*Adams subsequently sued the government for infringement of his patent.

When Adams obtained his patent there were no other previous patents or treatises which demonstrated the feasible use of water as the electrolytic solution. The cathodes and anodes used by Adams in the battery were previously used, and so under 35 USC 102 this exact same combination of chemicals would not be patentable. However the patentability of the battery stems from the idea that it was non-obvious because it was not based solely on material substitution. If it had merely been a matter of material substitution, then the new battery would have achieved the same operating characteristics as previous batteries. Adams' battery achieved unexpected characteristics, which implies that the invention was non-obvious and therefore patentable.

===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.

As seen in the case of Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969), an invention should be considered patentable if the combination of its parts produces a greater result than parts individually. In the case of Black Rock, the combination of parts did not achieve a better outcome than the parts were able to individually, and as such the patent was invalid.

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

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

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

==The Inventive Step==
The inventive step is the extra piece of the process of invention which separates a non-obvious patentable subject matter from a product which any ordinarily skilled mechanic in the field could have created. In order to determine whether the inventive step is/was present during the creation process, the court put into practice a TSM Test. This test involves determining whether the patent subject material is Teaching, Suggesting, Motivating. The absence of TSM does not imply that the subject of the patent is not obvious, whereas non-obviousness implies that TSM does not exist. The lack of an inventive step and related lack of non-obviousness fails to bring about the advancement of science in the art.

==Relationship with Novelty==
Novelty, as defined in 35 USC 102, essentially means that an invention must be ''new'', which implies that it cannot have existed previously. Novelty is significantly related to non-obviousness, especially in the case of combining previously known parts to create a new invention. In order for a patent to be valid, it must be both new and non-obvious. Non-obviousness seems to imply novelty, and novelty non-obviousness; for if an invention were obvious then it could not be considered a novel idea, and if an invention were not novel then it would certainly be obvious.

==Nonobviousness vs. Invention==
==Secondary Considerations==
While secondary considerations cannot single handedly prove the non-obviousness of a patent, they can serve to assist in proving the non-obviousness when used in conjunction with other significant or primary considerations.

==Ordinary Skill in the Art==

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

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

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

[[South Corp. v. US]]

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T17:20:02Z

Mackroyd: /* The Inventive Step */

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

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

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

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

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

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

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

::In fact, the clay knob did produce a better product, and was cheaper. However, as previously stated, this improvement was not the subject of this patent, the combination of materials was.

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

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

The question addressed in this case was that of whether combining previously know objects or materials exhibits enough inventiveness to warrant a patent. The decision of this case, invalidating the patent, implies that when various objects are combined to create something new, the objects should be able to accomplish something new, which none of the constituent objects was capable of accomplishing on their own. In this case, the substitution of a material did not accomplish anything new; the mechanism still accomplished the same thing as the prior art.

Furthermore, on the subject of non-obviousness, the improved strength of the knob and shank mechanism could have been achieved by any skilled mechanic in the field by using different materials, and many materials could have been used to achieve this improvement, not just those encompassed within the patent in question.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for non-obviousness.
**That is to say, one manner in which the subject matter of a patent may be deemed non-obvious is when, over a significant span of time, a need for the subject of the patent is developed and remains unquenched in the relevant field. This need may or may not be acknowledged during the time of development between the existence of the prior art and the advent of the new invention. Furthermore, it may or may not be obviated by a significant amount of commercial success, which in turn validates a clear demand and prior need for the subject of the patent.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
**Specifically, this particular case reiterated the crucial concept that patent laws exist to promote the advancement of science.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
**In this issue, the court conveys the idea that there is an inherent difficulty in patentability requirements, since a new invention is a combination of previously known things.

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

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4
As stated above, other skilled inventors in the field had attempted to create, by any method possible, the coating which had been created by Lyon using a new method.
:Specifically, Cartwright had tried to achieve the coating by a process involving a hardening of the glass in a vacuum by heating it. However, he was unsuccessful, and so abandoned this method, later testifying that he did not believe it to be the best possible way for applying the coating. Since it was considered an abandoned invention, Cartwright was not able to be considered the prior inventor.
Bausch and Lomb contended that the description of the process in the patent was too vague, using phrases such as "suitable coatings." However, it was not the vague nature of the patent which concerned the court, but rather the question of whether the process was novel.
:The court tried to determine whether or not the added step was non-obvious, and thus sufficient grounds for patentability.
::They came to the conclusion that, as an argument in favor of the non-obvious nature of the patented process, since a better manner for applying these coatings to glass to prevent reflection had been sought for ten years, the invention could not simply have been created by any skilled mechanic, and so Lyon was the first to find a better way and thus deserved the patent.

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

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

The case of Graham v. John Deere was a critical decision and precedent which spoke to how the law set forth in 35 USC 103 is intended to be interpreted. The court conveyed the following notion with regard to interpretation of section 103:
:“Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.”
The court brought up certain ideas which were first attributed to Thomas Jefferson:
*Obtaining a monopoly on an idea is not an actual right;
*The very nature of ideas is something you cannot control.
:From this it logically follows that ideas are only valuable insofar as one is able to control and exploit them
As a result of this case Congress changed the language of "invention." Essentially, everything which had been previously decided by the court was codified under Section 103.
:Of particular note within this section is the following:
::"Patentability shall not be negatived by the manned in which the invention was made."
:This line of the code serves to imply that it does not matter if the idea comes from a flash of genius or elsewhere...
====Calmar, Inc. v. Cook Chemical Co.====
The case of Calmar, Inc. v. Cook Chemical Co. was also discussed in the decision of Graham v. John Deere.

Within this Calmar case, it was determined that anything conceded in getting a patent during the application process cannot be reclaimed by the patent holder at a later date once the patent has been issued, in the event that the patent holder sues for infringement.

The court decided to invalidate the patent for the pump sprayer with hold down cap based on a lack of non-obviousness.
:While there had been a long felt need for this type of pump and cap combination, these needs were ''secondary'' to the non-obviousness of the invention.

The obvious nature of an invention, that is to say whether or not something is obvious, is a question for engineering and science. The competence of the court to arrive at the correct decision for non-obviousness is a separate issue in itself.

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

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

The patent in question in this case was granted to Adams for a wet battery which employed cathodes and anodes submerged in water (as the electrolyte). Adams claimed this battery was capable of producing constant potential regardless of the amount of current being drawn. Furthermore, he claimed a very large range of temperatures at which the battery was capable of operating.

*The patent was issued by the government via the Patent Office.
*The government infringed upon the patent during WWII by using this specific battery technology in vehicles used in the war.
*Adams subsequently sued the government for infringement of his patent.

When Adams obtained his patent there were no other previous patents or treatises which demonstrated the feasible use of water as the electrolytic solution. The cathodes and anodes used by Adams in the battery were previously used, and so under 35 USC 102 this exact same combination of chemicals would not be patentable. However the patentability of the battery stems from the idea that it was non-obvious because it was not based solely on material substitution. If it had merely been a matter of material substitution, then the new battery would have achieved the same operating characteristics as previous batteries. Adams' battery achieved unexpected characteristics, which implies that the invention was non-obvious and therefore patentable.

===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.

As seen in the case of Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969), an invention should be considered patentable if the combination of its parts produces a greater result than parts individually. In the case of Black Rock, the combination of parts did not achieve a better outcome than the parts were able to individually, and as such the patent was invalid.

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

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

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

==The Inventive Step==
The inventive step is the extra piece of the process of invention which separates a non-obvious patentable subject matter from a product which any ordinarily skilled mechanic in the field could have created. In order to determine whether the inventive step is/was present during the creation process, the court put into practice a TSM Test. This test involves determining whether the patent subject material is Teaching, Suggesting, Motivating. The absence of TSM does not imply that the subject of the patent is not obvious, whereas non-obviousness implies that TSM does not exist. The lack of an inventive step and related lack of non-obviousness fails to bring about the advancement of science in the art.

==Relationship with Novelty==
Novelty, as defined in 35 USC 102, essentially means that an invention must be ''new'', which implies that it cannot have existed previously. Novelty is significantly related to non-obviousness, especially in the case of combining previously known parts to create a new invention. In order for a patent to be valid, it must be both new and non-obvious. Non-obviousness seems to imply novelty, and novelty non-obviousness; for if an invention were obvious then it could not be considered a novel idea, and if an invention were not novel then it would certainly be obvious.

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

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

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

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

[[South Corp. v. US]]

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T08:17:13Z

Mackroyd: /* Relationship with Novelty */

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

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

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

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

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

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

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

::In fact, the clay knob did produce a better product, and was cheaper. However, as previously stated, this improvement was not the subject of this patent, the combination of materials was.

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

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

The question addressed in this case was that of whether combining previously know objects or materials exhibits enough inventiveness to warrant a patent. The decision of this case, invalidating the patent, implies that when various objects are combined to create something new, the objects should be able to accomplish something new, which none of the constituent objects was capable of accomplishing on their own. In this case, the substitution of a material did not accomplish anything new; the mechanism still accomplished the same thing as the prior art.

Furthermore, on the subject of non-obviousness, the improved strength of the knob and shank mechanism could have been achieved by any skilled mechanic in the field by using different materials, and many materials could have been used to achieve this improvement, not just those encompassed within the patent in question.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for non-obviousness.
**That is to say, one manner in which the subject matter of a patent may be deemed non-obvious is when, over a significant span of time, a need for the subject of the patent is developed and remains unquenched in the relevant field. This need may or may not be acknowledged during the time of development between the existence of the prior art and the advent of the new invention. Furthermore, it may or may not be obviated by a significant amount of commercial success, which in turn validates a clear demand and prior need for the subject of the patent.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
**Specifically, this particular case reiterated the crucial concept that patent laws exist to promote the advancement of science.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
**In this issue, the court conveys the idea that there is an inherent difficulty in patentability requirements, since a new invention is a combination of previously known things.

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

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4
As stated above, other skilled inventors in the field had attempted to create, by any method possible, the coating which had been created by Lyon using a new method.
:Specifically, Cartwright had tried to achieve the coating by a process involving a hardening of the glass in a vacuum by heating it. However, he was unsuccessful, and so abandoned this method, later testifying that he did not believe it to be the best possible way for applying the coating. Since it was considered an abandoned invention, Cartwright was not able to be considered the prior inventor.
Bausch and Lomb contended that the description of the process in the patent was too vague, using phrases such as "suitable coatings." However, it was not the vague nature of the patent which concerned the court, but rather the question of whether the process was novel.
:The court tried to determine whether or not the added step was non-obvious, and thus sufficient grounds for patentability.
::They came to the conclusion that, as an argument in favor of the non-obvious nature of the patented process, since a better manner for applying these coatings to glass to prevent reflection had been sought for ten years, the invention could not simply have been created by any skilled mechanic, and so Lyon was the first to find a better way and thus deserved the patent.

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

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

The case of Graham v. John Deere was a critical decision and precedent which spoke to how the law set forth in 35 USC 103 is intended to be interpreted. The court conveyed the following notion with regard to interpretation of section 103:
:“Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.”
The court brought up certain ideas which were first attributed to Thomas Jefferson:
*Obtaining a monopoly on an idea is not an actual right;
*The very nature of ideas is something you cannot control.
:From this it logically follows that ideas are only valuable insofar as one is able to control and exploit them
As a result of this case Congress changed the language of "invention." Essentially, everything which had been previously decided by the court was codified under Section 103.
:Of particular note within this section is the following:
::"Patentability shall not be negatived by the manned in which the invention was made."
:This line of the code serves to imply that it does not matter if the idea comes from a flash of genius or elsewhere...
====Calmar, Inc. v. Cook Chemical Co.====
The case of Calmar, Inc. v. Cook Chemical Co. was also discussed in the decision of Graham v. John Deere.

Within this Calmar case, it was determined that anything conceded in getting a patent during the application process cannot be reclaimed by the patent holder at a later date once the patent has been issued, in the event that the patent holder sues for infringement.

The court decided to invalidate the patent for the pump sprayer with hold down cap based on a lack of non-obviousness.
:While there had been a long felt need for this type of pump and cap combination, these needs were ''secondary'' to the non-obviousness of the invention.

The obvious nature of an invention, that is to say whether or not something is obvious, is a question for engineering and science. The competence of the court to arrive at the correct decision for non-obviousness is a separate issue in itself.

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

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

The patent in question in this case was granted to Adams for a wet battery which employed cathodes and anodes submerged in water (as the electrolyte). Adams claimed this battery was capable of producing constant potential regardless of the amount of current being drawn. Furthermore, he claimed a very large range of temperatures at which the battery was capable of operating.

*The patent was issued by the government via the Patent Office.
*The government infringed upon the patent during WWII by using this specific battery technology in vehicles used in the war.
*Adams subsequently sued the government for infringement of his patent.

When Adams obtained his patent there were no other previous patents or treatises which demonstrated the feasible use of water as the electrolytic solution. The cathodes and anodes used by Adams in the battery were previously used, and so under 35 USC 102 this exact same combination of chemicals would not be patentable. However the patentability of the battery stems from the idea that it was non-obvious because it was not based solely on material substitution. If it had merely been a matter of material substitution, then the new battery would have achieved the same operating characteristics as previous batteries. Adams' battery achieved unexpected characteristics, which implies that the invention was non-obvious and therefore patentable.

===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.

As seen in the case of Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969), an invention should be considered patentable if the combination of its parts produces a greater result than parts individually. In the case of Black Rock, the combination of parts did not achieve a better outcome than the parts were able to individually, and as such the patent was invalid.

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

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

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

==The Inventive Step==

==Relationship with Novelty==
Novelty, as defined in 35 USC 102, essentially means that an invention must be ''new'', which implies that it cannot have existed previously. Novelty is significantly related to non-obviousness, especially in the case of combining previously known parts to create a new invention. In order for a patent to be valid, it must be both new and non-obvious. Non-obviousness seems to imply novelty, and novelty non-obviousness; for if an invention were obvious then it could not be considered a novel idea, and if an invention were not novel then it would certainly be obvious.

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

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

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

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

[[South Corp. v. US]]

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T07:46:37Z

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

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

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

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

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

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

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

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

::In fact, the clay knob did produce a better product, and was cheaper. However, as previously stated, this improvement was not the subject of this patent, the combination of materials was.

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

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

The question addressed in this case was that of whether combining previously know objects or materials exhibits enough inventiveness to warrant a patent. The decision of this case, invalidating the patent, implies that when various objects are combined to create something new, the objects should be able to accomplish something new, which none of the constituent objects was capable of accomplishing on their own. In this case, the substitution of a material did not accomplish anything new; the mechanism still accomplished the same thing as the prior art.

Furthermore, on the subject of non-obviousness, the improved strength of the knob and shank mechanism could have been achieved by any skilled mechanic in the field by using different materials, and many materials could have been used to achieve this improvement, not just those encompassed within the patent in question.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for non-obviousness.
**That is to say, one manner in which the subject matter of a patent may be deemed non-obvious is when, over a significant span of time, a need for the subject of the patent is developed and remains unquenched in the relevant field. This need may or may not be acknowledged during the time of development between the existence of the prior art and the advent of the new invention. Furthermore, it may or may not be obviated by a significant amount of commercial success, which in turn validates a clear demand and prior need for the subject of the patent.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
**Specifically, this particular case reiterated the crucial concept that patent laws exist to promote the advancement of science.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
**In this issue, the court conveys the idea that there is an inherent difficulty in patentability requirements, since a new invention is a combination of previously known things.

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

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4
As stated above, other skilled inventors in the field had attempted to create, by any method possible, the coating which had been created by Lyon using a new method.
:Specifically, Cartwright had tried to achieve the coating by a process involving a hardening of the glass in a vacuum by heating it. However, he was unsuccessful, and so abandoned this method, later testifying that he did not believe it to be the best possible way for applying the coating. Since it was considered an abandoned invention, Cartwright was not able to be considered the prior inventor.
Bausch and Lomb contended that the description of the process in the patent was too vague, using phrases such as "suitable coatings." However, it was not the vague nature of the patent which concerned the court, but rather the question of whether the process was novel.
:The court tried to determine whether or not the added step was non-obvious, and thus sufficient grounds for patentability.
::They came to the conclusion that, as an argument in favor of the non-obvious nature of the patented process, since a better manner for applying these coatings to glass to prevent reflection had been sought for ten years, the invention could not simply have been created by any skilled mechanic, and so Lyon was the first to find a better way and thus deserved the patent.

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

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

The case of Graham v. John Deere was a critical decision and precedent which spoke to how the law set forth in 35 USC 103 is intended to be interpreted. The court conveyed the following notion with regard to interpretation of section 103:
:“Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.”
The court brought up certain ideas which were first attributed to Thomas Jefferson:
*Obtaining a monopoly on an idea is not an actual right;
*The very nature of ideas is something you cannot control.
:From this it logically follows that ideas are only valuable insofar as one is able to control and exploit them
As a result of this case Congress changed the language of "invention." Essentially, everything which had been previously decided by the court was codified under Section 103.
:Of particular note within this section is the following:
::"Patentability shall not be negatived by the manned in which the invention was made."
:This line of the code serves to imply that it does not matter if the idea comes from a flash of genius or elsewhere...
====Calmar, Inc. v. Cook Chemical Co.====
The case of Calmar, Inc. v. Cook Chemical Co. was also discussed in the decision of Graham v. John Deere.

Within this Calmar case, it was determined that anything conceded in getting a patent during the application process cannot be reclaimed by the patent holder at a later date once the patent has been issued, in the event that the patent holder sues for infringement.

The court decided to invalidate the patent for the pump sprayer with hold down cap based on a lack of non-obviousness.
:While there had been a long felt need for this type of pump and cap combination, these needs were ''secondary'' to the non-obviousness of the invention.

The obvious nature of an invention, that is to say whether or not something is obvious, is a question for engineering and science. The competence of the court to arrive at the correct decision for non-obviousness is a separate issue in itself.

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

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

The patent in question in this case was granted to Adams for a wet battery which employed cathodes and anodes submerged in water (as the electrolyte). Adams claimed this battery was capable of producing constant potential regardless of the amount of current being drawn. Furthermore, he claimed a very large range of temperatures at which the battery was capable of operating.

*The patent was issued by the government via the Patent Office.
*The government infringed upon the patent during WWII by using this specific battery technology in vehicles used in the war.
*Adams subsequently sued the government for infringement of his patent.

When Adams obtained his patent there were no other previous patents or treatises which demonstrated the feasible use of water as the electrolytic solution. The cathodes and anodes used by Adams in the battery were previously used, and so under 35 USC 102 this exact same combination of chemicals would not be patentable. However the patentability of the battery stems from the idea that it was non-obvious because it was not based solely on material substitution. If it had merely been a matter of material substitution, then the new battery would have achieved the same operating characteristics as previous batteries. Adams' battery achieved unexpected characteristics, which implies that the invention was non-obvious and therefore patentable.

===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.

As seen in the case of Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969), an invention should be considered patentable if the combination of its parts produces a greater result than parts individually. In the case of Black Rock, the combination of parts did not achieve a better outcome than the parts were able to individually, and as such the patent was invalid.

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

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

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

==The Inventive Step==

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

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

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

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

[[South Corp. v. US]]

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T07:40:48Z

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

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

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

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

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

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

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

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

::In fact, the clay knob did produce a better product, and was cheaper. However, as previously stated, this improvement was not the subject of this patent, the combination of materials was.

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

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

The question addressed in this case was that of whether combining previously know objects or materials exhibits enough inventiveness to warrant a patent. The decision of this case, invalidating the patent, implies that when various objects are combined to create something new, the objects should be able to accomplish something new, which none of the constituent objects was capable of accomplishing on their own. In this case, the substitution of a material did not accomplish anything new; the mechanism still accomplished the same thing as the prior art.

Furthermore, on the subject of non-obviousness, the improved strength of the knob and shank mechanism could have been achieved by any skilled mechanic in the field by using different materials, and many materials could have been used to achieve this improvement, not just those encompassed within the patent in question.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for non-obviousness.
**That is to say, one manner in which the subject matter of a patent may be deemed non-obvious is when, over a significant span of time, a need for the subject of the patent is developed and remains unquenched in the relevant field. This need may or may not be acknowledged during the time of development between the existence of the prior art and the advent of the new invention. Furthermore, it may or may not be obviated by a significant amount of commercial success, which in turn validates a clear demand and prior need for the subject of the patent.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
**Specifically, this particular case reiterated the crucial concept that patent laws exist to promote the advancement of science.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
**In this issue, the court conveys the idea that there is an inherent difficulty in patentability requirements, since a new invention is a combination of previously known things.

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

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4
As stated above, other skilled inventors in the field had attempted to create, by any method possible, the coating which had been created by Lyon using a new method.
:Specifically, Cartwright had tried to achieve the coating by a process involving a hardening of the glass in a vacuum by heating it. However, he was unsuccessful, and so abandoned this method, later testifying that he did not believe it to be the best possible way for applying the coating. Since it was considered an abandoned invention, Cartwright was not able to be considered the prior inventor.
Bausch and Lomb contended that the description of the process in the patent was too vague, using phrases such as "suitable coatings." However, it was not the vague nature of the patent which concerned the court, but rather the question of whether the process was novel.
:The court tried to determine whether or not the added step was non-obvious, and thus sufficient grounds for patentability.
::They came to the conclusion that, as an argument in favor of the non-obvious nature of the patented process, since a better manner for applying these coatings to glass to prevent reflection had been sought for ten years, the invention could not simply have been created by any skilled mechanic, and so Lyon was the first to find a better way and thus deserved the patent.

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

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

The case of Graham v. John Deere was a critical decision and precedent which spoke to how the law set forth in 35 USC 103 is intended to be interpreted. The court conveyed the following notion with regard to interpretation of section 103:
:“Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.”
The court brought up certain ideas which were first attributed to Thomas Jefferson:
*Obtaining a monopoly on an idea is not an actual right;
*The very nature of ideas is something you cannot control.
:From this it logically follows that ideas are only valuable insofar as one is able to control and exploit them
As a result of this case Congress changed the language of "invention." Essentially, everything which had been previously decided by the court was codified under Section 103.
:Of particular note within this section is the following:
::"Patentability shall not be negatived by the manned in which the invention was made."
:This line of the code serves to imply that it does not matter if the idea comes from a flash of genius or elsewhere...
====Calmar, Inc. v. Cook Chemical Co.====
The case of Calmar, Inc. v. Cook Chemical Co. was also discussed in the decision of Graham v. John Deere.

Within this Calmar case, it was determined that anything conceded in getting a patent during the application process cannot be reclaimed by the patent holder at a later date once the patent has been issued, in the event that the patent holder sues for infringement.

The court decided to invalidate the patent for the pump sprayer with hold down cap based on a lack of non-obviousness.
:While there had been a long felt need for this type of pump and cap combination, these needs were ''secondary'' to the non-obviousness of the invention.

The obvious nature of an invention, that is to say whether or not something is obvious, is a question for engineering and science. The competence of the court to arrive at the correct decision for non-obviousness is a separate issue in itself.

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

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

The patent in question in this case was granted to Adams for a wet battery which employed cathodes and anodes submerged in water (as the electrolyte). Adams claimed this battery was capable of producing constant potential regardless of the amount of current being drawn. Furthermore, he claimed a very large range of temperatures at which the battery was capable of operating.

*The patent was issued by the government via the Patent Office.
*The government infringed upon the patent during WWII by using this specific battery technology in vehicles used in the war.
*Adams subsequently sued the government for infringement of his patent.

When Adams obtained his patent there were no other previous patents or treatises which demonstrated the feasible use of water as the electrolytic solution. The cathodes and anodes used by Adams in the battery were previously used, and so under 35 USC 102 this exact same combination of chemicals would not be patentable. However the patentability of the battery stems from the idea that it was non-obvious because it was not based solely on material substitution. If it had merely been a matter of material substitution, then the new battery would have achieved the same operating characteristics as previous batteries. Adams' battery achieved unexpected characteristics, which implies that the invention was non-obvious and therefore patentable.

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

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

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

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

==The Inventive Step==

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

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

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

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

[[South Corp. v. US]]

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T07:29:33Z

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

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

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

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

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

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

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

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

::In fact, the clay knob did produce a better product, and was cheaper. However, as previously stated, this improvement was not the subject of this patent, the combination of materials was.

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

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

The question addressed in this case was that of whether combining previously know objects or materials exhibits enough inventiveness to warrant a patent. The decision of this case, invalidating the patent, implies that when various objects are combined to create something new, the objects should be able to accomplish something new, which none of the constituent objects was capable of accomplishing on their own. In this case, the substitution of a material did not accomplish anything new; the mechanism still accomplished the same thing as the prior art.

Furthermore, on the subject of non-obviousness, the improved strength of the knob and shank mechanism could have been achieved by any skilled mechanic in the field by using different materials, and many materials could have been used to achieve this improvement, not just those encompassed within the patent in question.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for non-obviousness.
**That is to say, one manner in which the subject matter of a patent may be deemed non-obvious is when, over a significant span of time, a need for the subject of the patent is developed and remains unquenched in the relevant field. This need may or may not be acknowledged during the time of development between the existence of the prior art and the advent of the new invention. Furthermore, it may or may not be obviated by a significant amount of commercial success, which in turn validates a clear demand and prior need for the subject of the patent.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
**Specifically, this particular case reiterated the crucial concept that patent laws exist to promote the advancement of science.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
**In this issue, the court conveys the idea that there is an inherent difficulty in patentability requirements, since a new invention is a combination of previously known things.

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

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4
As stated above, other skilled inventors in the field had attempted to create, by any method possible, the coating which had been created by Lyon using a new method.
:Specifically, Cartwright had tried to achieve the coating by a process involving a hardening of the glass in a vacuum by heating it. However, he was unsuccessful, and so abandoned this method, later testifying that he did not believe it to be the best possible way for applying the coating. Since it was considered an abandoned invention, Cartwright was not able to be considered the prior inventor.
Bausch and Lomb contended that the description of the process in the patent was too vague, using phrases such as "suitable coatings." However, it was not the vague nature of the patent which concerned the court, but rather the question of whether the process was novel.
:The court tried to determine whether or not the added step was non-obvious, and thus sufficient grounds for patentability.
::They came to the conclusion that, as an argument in favor of the non-obvious nature of the patented process, since a better manner for applying these coatings to glass to prevent reflection had been sought for ten years, the invention could not simply have been created by any skilled mechanic, and so Lyon was the first to find a better way and thus deserved the patent.

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

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

The case of Graham v. John Deere was a critical decision and precedent which spoke to how the law set forth in 35 USC 103 is intended to be interpreted. The court conveyed the following notion with regard to interpretation of section 103:
:“Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.”
The court brought up certain ideas which were first attributed to Thomas Jefferson:
*Obtaining a monopoly on an idea is not an actual right;
*The very nature of ideas is something you cannot control.
:From this it logically follows that ideas are only valuable insofar as one is able to control and exploit them
As a result of this case Congress changed the language of "invention." Essentially, everything which had been previously decided by the court was codified under Section 103.
:Of particular note within this section is the following:
::"Patentability shall not be negatived by the manned in which the invention was made."
:This line of the code serves to imply that it does not matter if the idea comes from a flash of genius or elsewhere...
====Calmar, Inc. v. Cook Chemical Co.====
The case of Calmar, Inc. v. Cook Chemical Co. was also discussed in the decision of Graham v. John Deere.

Within this Calmar case, it was determined that anything conceded in getting a patent during the application process cannot be reclaimed by the patent holder at a later date once the patent has been issued, in the event that the patent holder sues for infringement.

The court decided to invalidate the patent for the pump sprayer with hold down cap based on a lack of non-obviousness.
:While there had been a long felt need for this type of pump and cap combination, these needs were ''secondary'' to the non-obviousness of the invention.

The obvious nature of an invention, that is to say whether or not something is obvious, is a question for engineering and science. The competence of the court to arrive at the correct decision for non-obviousness is a separate issue in itself.

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

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

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

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

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

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

==The Inventive Step==

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

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

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

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

[[South Corp. v. US]]

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T07:29:07Z

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

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

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

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

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

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

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

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

::In fact, the clay knob did produce a better product, and was cheaper. However, as previously stated, this improvement was not the subject of this patent, the combination of materials was.

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

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

The question addressed in this case was that of whether combining previously know objects or materials exhibits enough inventiveness to warrant a patent. The decision of this case, invalidating the patent, implies that when various objects are combined to create something new, the objects should be able to accomplish something new, which none of the constituent objects was capable of accomplishing on their own. In this case, the substitution of a material did not accomplish anything new; the mechanism still accomplished the same thing as the prior art.

Furthermore, on the subject of non-obviousness, the improved strength of the knob and shank mechanism could have been achieved by any skilled mechanic in the field by using different materials, and many materials could have been used to achieve this improvement, not just those encompassed within the patent in question.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for non-obviousness.
**That is to say, one manner in which the subject matter of a patent may be deemed non-obvious is when, over a significant span of time, a need for the subject of the patent is developed and remains unquenched in the relevant field. This need may or may not be acknowledged during the time of development between the existence of the prior art and the advent of the new invention. Furthermore, it may or may not be obviated by a significant amount of commercial success, which in turn validates a clear demand and prior need for the subject of the patent.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
**Specifically, this particular case reiterated the crucial concept that patent laws exist to promote the advancement of science.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
**In this issue, the court conveys the idea that there is an inherent difficulty in patentability requirements, since a new invention is a combination of previously known things.

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

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4
As stated above, other skilled inventors in the field had attempted to create, by any method possible, the coating which had been created by Lyon using a new method.
:Specifically, Cartwright had tried to achieve the coating by a process involving a hardening of the glass in a vacuum by heating it. However, he was unsuccessful, and so abandoned this method, later testifying that he did not believe it to be the best possible way for applying the coating. Since it was considered an abandoned invention, Cartwright was not able to be considered the prior inventor.
Bausch and Lomb contended that the description of the process in the patent was too vague, using phrases such as "suitable coatings." However, it was not the vague nature of the patent which concerned the court, but rather the question of whether the process was novel.
:The court tried to determine whether or not the added step was non-obvious, and thus sufficient grounds for patentability.
::They came to the conclusion that, as an argument in favor of the non-obvious nature of the patented process, since a better manner for applying these coatings to glass to prevent reflection had been sought for ten years, the invention could not simply have been created by any skilled mechanic, and so Lyon was the first to find a better way and thus deserved the patent.

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

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

The case of Graham v. John Deere was a critical decision and precedent which spoke to how the law set forth in 35 USC 103 is intended to be interpreted. The court conveyed the following notion with regard to interpretation of section 103:
:“Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.”
The court brought up certain ideas which were first attributed to Thomas Jefferson:
*Obtaining a monopoly on an idea is not an actual right;
*The very nature of ideas is something you cannot control.
:From this it logically follows that ideas are only valuable insofar as one is able to control and exploit them
As a result of this case Congress changed the language of "invention." Essentially, everything which had been previously decided by the court was codified under Section 103.
:Of particular note within this section is the following:
::"Patentability shall not be negatived by the manned in which the invention was made."
:This line of the code serves to imply that it does not matter if the idea comes from a flash of genius or elsewhere...
====Calmar, Inc. v. Cook Chemical Co.====
The case of Calmar, Inc. v. Cook Chemical Co. was also discussed in the decision of Graham v. John Deere.
Within this Calmar case, it was determined that anything conceded in getting a patent during the application process cannot be reclaimed by the patent holder at a later date once the patent has been issued, in the event that the patent holder sues for infringement.
The court decided to invalidate the patent for the pump sprayer with hold down cap based on a lack of non-obviousness.
:While there had been a long felt need for this type of pump and cap combination, these needs were ''secondary'' to the non-obviousness of the invention.
The obvious nature of an invention, that is to say whether or not something is obvious, is a question for engineering and science. The competence of the court to arrive at the correct decision for non-obviousness is a separate issue in itself.

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

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

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

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

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

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

==The Inventive Step==

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

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

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

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

[[South Corp. v. US]]

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T07:20:22Z

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

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

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

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

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

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

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

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

::In fact, the clay knob did produce a better product, and was cheaper. However, as previously stated, this improvement was not the subject of this patent, the combination of materials was.

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

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

The question addressed in this case was that of whether combining previously know objects or materials exhibits enough inventiveness to warrant a patent. The decision of this case, invalidating the patent, implies that when various objects are combined to create something new, the objects should be able to accomplish something new, which none of the constituent objects was capable of accomplishing on their own. In this case, the substitution of a material did not accomplish anything new; the mechanism still accomplished the same thing as the prior art.

Furthermore, on the subject of non-obviousness, the improved strength of the knob and shank mechanism could have been achieved by any skilled mechanic in the field by using different materials, and many materials could have been used to achieve this improvement, not just those encompassed within the patent in question.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for non-obviousness.
**That is to say, one manner in which the subject matter of a patent may be deemed non-obvious is when, over a significant span of time, a need for the subject of the patent is developed and remains unquenched in the relevant field. This need may or may not be acknowledged during the time of development between the existence of the prior art and the advent of the new invention. Furthermore, it may or may not be obviated by a significant amount of commercial success, which in turn validates a clear demand and prior need for the subject of the patent.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
**Specifically, this particular case reiterated the crucial concept that patent laws exist to promote the advancement of science.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
**In this issue, the court conveys the idea that there is an inherent difficulty in patentability requirements, since a new invention is a combination of previously known things.

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

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4
As stated above, other skilled inventors in the field had attempted to create, by any method possible, the coating which had been created by Lyon using a new method.
:Specifically, Cartwright had tried to achieve the coating by a process involving a hardening of the glass in a vacuum by heating it. However, he was unsuccessful, and so abandoned this method, later testifying that he did not believe it to be the best possible way for applying the coating. Since it was considered an abandoned invention, Cartwright was not able to be considered the prior inventor.
Bausch and Lomb contended that the description of the process in the patent was too vague, using phrases such as "suitable coatings." However, it was not the vague nature of the patent which concerned the court, but rather the question of whether the process was novel.
:The court tried to determine whether or not the added step was non-obvious, and thus sufficient grounds for patentability.
::They came to the conclusion that, as an argument in favor of the non-obvious nature of the patented process, since a better manner for applying these coatings to glass to prevent reflection had been sought for ten years, the invention could not simply have been created by any skilled mechanic, and so Lyon was the first to find a better way and thus deserved the patent.

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

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

The case of Graham v. John Deere was a critical decision and precedent which spoke to how the law set forth in 35 USC 103 is intended to be interpreted. The court conveyed the following notion with regard to interpretation of section 103:
:“Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.”
The court brought up certain ideas which were first attributed to Thomas Jefferson:
*Obtaining a monopoly on an idea is not an actual right;
*The very nature of ideas is something you cannot control.
:From this it logically follows that ideas are only valuable insofar as one is able to control and exploit them
As a result of this case Congress changed the language of "invention." Essentially, everything which had been previously decided by the court was codified under Section 103.
:Of particular note within this section is the following:
::"Patentability shall not be negatived by the manned in which the invention was made."
:This line of the code serves to imply that it does not matter if the idea comes from a flash of genius or elsewhere...
====Calmar, Inc. v. Cook Chemical Co.====

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

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

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

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

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

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

==The Inventive Step==

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

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

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

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

[[South Corp. v. US]]

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T07:19:18Z

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

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

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

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

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

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

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

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

::In fact, the clay knob did produce a better product, and was cheaper. However, as previously stated, this improvement was not the subject of this patent, the combination of materials was.

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

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

The question addressed in this case was that of whether combining previously know objects or materials exhibits enough inventiveness to warrant a patent. The decision of this case, invalidating the patent, implies that when various objects are combined to create something new, the objects should be able to accomplish something new, which none of the constituent objects was capable of accomplishing on their own. In this case, the substitution of a material did not accomplish anything new; the mechanism still accomplished the same thing as the prior art.

Furthermore, on the subject of non-obviousness, the improved strength of the knob and shank mechanism could have been achieved by any skilled mechanic in the field by using different materials, and many materials could have been used to achieve this improvement, not just those encompassed within the patent in question.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for non-obviousness.
**That is to say, one manner in which the subject matter of a patent may be deemed non-obvious is when, over a significant span of time, a need for the subject of the patent is developed and remains unquenched in the relevant field. This need may or may not be acknowledged during the time of development between the existence of the prior art and the advent of the new invention. Furthermore, it may or may not be obviated by a significant amount of commercial success, which in turn validates a clear demand and prior need for the subject of the patent.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
**Specifically, this particular case reiterated the crucial concept that patent laws exist to promote the advancement of science.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
**In this issue, the court conveys the idea that there is an inherent difficulty in patentability requirements, since a new invention is a combination of previously known things.

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

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4
As stated above, other skilled inventors in the field had attempted to create, by any method possible, the coating which had been created by Lyon using a new method.
:Specifically, Cartwright had tried to achieve the coating by a process involving a hardening of the glass in a vacuum by heating it. However, he was unsuccessful, and so abandoned this method, later testifying that he did not believe it to be the best possible way for applying the coating. Since it was considered an abandoned invention, Cartwright was not able to be considered the prior inventor.
Bausch and Lomb contended that the description of the process in the patent was too vague, using phrases such as "suitable coatings." However, it was not the vague nature of the patent which concerned the court, but rather the question of whether the process was novel.
:The court tried to determine whether or not the added step was non-obvious, and thus sufficient grounds for patentability.
::They came to the conclusion that, as an argument in favor of the non-obvious nature of the patented process, since a better manner for applying these coatings to glass to prevent reflection had been sought for ten years, the invention could not simply have been created by any skilled mechanic, and so Lyon was the first to find a better way and thus deserved the patent.

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

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

The case of Graham v. John Deere was a critical decision and precedent which spoke to how the law set forth in 35 USC 103 is intended to be interpreted. The court conveyed the following notion with regard to interpretation of section 103:
:“Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.”
The court brought up certain ideas which were first attributed to Thomas Jefferson:
*Obtaining a monopoly on an idea is not an actual right;
*The very nature of ideas is something you cannot control.
:From this it logically follows that ideas are only valuable insofar as one is able to control and exploit them
As a result of this case Congress changed the language of "invention." Essentially, everything which had been previously decided by the court was codified under Section 103.
:Of particular note within this section is the following:
::"Patentability shall not be negatived by the manned in which the invention was made."
:This line of the code serves to imply that it does not matter if the idea comes from a flash of genius or elsewhere...

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

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

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

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

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

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

==The Inventive Step==

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

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

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

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

[[South Corp. v. US]]

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T07:02:56Z

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

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T06:54:41Z

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

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T06:34:46Z

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

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T06:33:58Z

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

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T06:24:53Z

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

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T06:22:32Z

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

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T06:13:20Z

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

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T05:35:55Z

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

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T05:14:03Z

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

User:Mackroyd

2011-02-09T01:40:51Z

Mackroyd:

Homework 4 (Ackroyd)

2011-02-09T01:40:31Z

Mackroyd: moved Homework 4 (Ackroyd) to Homework 4: Non-Obviousness (Ackroyd)

#REDIRECT [[Homework 4: Non-Obviousness (Ackroyd)]]

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T01:40:31Z

Mackroyd: moved Homework 4 (Ackroyd) to Homework 4: Non-Obviousness (Ackroyd)

Homework 4: Non-Obviousness (Ackroyd)

2011-02-09T01:39:05Z

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

User:Mackroyd

2011-02-09T01:34:04Z

Mackroyd:

Homework 3 (Ackroyd)

2011-02-09T01:33:32Z

Mackroyd: moved Homework 3 (Ackroyd) to Homework 3: Validity of Graham Patent (Ackroyd)

#REDIRECT [[Homework 3: Validity of Graham Patent (Ackroyd)]]