Bill Goodwine's Wiki - User contributions [en]

Zahm Homework 31: Quanta Brief

2011-04-29T02:16:35Z

Mzahm: Created page with "== Brief of Amicus Curiae Motorola, Inc. in Support of Petitioners (Quanta Computer) == Since Motorola handles a great deal of various kinds of agreements and purchases componen..."

== Brief of Amicus Curiae Motorola, Inc. in Support of Petitioners (Quanta Computer) ==

Since Motorola handles a great deal of various kinds of agreements and purchases components from various suppliers that are integrated into Motorola products, "Motorola will benefit from the Court's clarification of the patent exhaustion doctrine in this case."

Summary of Argument:

*Motorola supports the Petitioners in that under precedence, the Intel-LGE License Agreement exhausts LGE's patent rights.
**Motorola uses ''United States v. Univis Lens Co. (1942)'' to argue that the products LGE sold to Intel "embody essential features of LGE's asserted patents," and so there is no other non-infringing use for them outside of combining them with other components. This combination may infringe the patents except for the fact that the sale exhausts the patents.
**Motorola also cites ''Mitchell v. Hawley (1872)'' and ''Adams v. Burke (1873)'' to support the argument that precedence "was based on the lack of authority to sell patented machines, not language purporting to limit the use of the machines."
**They argue that under precedence, after the first sale, the "patentee no longer has any patent rights against the article." Because of this, the new owner of the purchased articlemay use the article without any additional license, implied or not, when patent exhaustion is applicable.
**Lastly, they argue that LGE's attempts to avoid and get around the doctrine of exhaustion with a "rights of use limiting license" to Intel and their customers "is an impermissible attempt to use the patent laws to extract a second payment from the vertical distribution chain."

*Motorola strongly urges the Court to not make any ruling on what the patent exhaustion effect, if any, would be with respect to products sold by Intel prior to the Licensing Agreement.
**The primary argument for this is that this issue of pre-release products or any other types of agreements (such as covenants not to sue) were not explicitly part of the question posed to the Court to address.
**With respect to the above point, Motorola cited ''Yee v. Escondido (1992).''
**Some of the LGE products were sold by Intel prior to the Licensing Agreement, but the facts presented to the Courts were limited, making it unclear whether those sales were unauthorized.
**"Motorola respectfully submits that given the narrowness of the question presented and the lack of a developed record below regarding the release, and distinctions with respect to covenants not to sue, the Court should leave the question of what impact other types of agreements may or may not have on patent exhaustion for another day.”

Conclusion:
“For the forgoing reasons, the Court should reverse the judgment of the Court of Appeals for the Federal Circuit, and in doing so, the Court should limit its holding to products sold pursuant to a license agreement. “

Here in list of arguments in Quanta

2011-04-29T02:16:30Z

Mzahm:

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

[[Quanta Brief Summary 901330223]]

[[901349446 Quanta Brief]]

[[Quanta Brief Summary 901471466]]

[[Quanta Brief Summary 901422128]]

[[Quanta Brief Summary Jacob Marmolejo]]

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

[[Mitros: Quanta Brief]]

[[Zahm Homework 31: Quanta Brief]]

Homework 31: Quanta Brief

2011-04-29T02:15:18Z

Mzahm:

Homework 31: Quanta Brief

2011-04-29T02:13:21Z

Mzahm: Created page with " == Brief of Amicus Curiae Motorola, Inc. in Support of Petitioners (Quanta Computer) == Since Motorola handles a great deal of various kinds of agreements and purchases compone..."

== Brief of Amicus Curiae Motorola, Inc. in Support of Petitioners (Quanta Computer) ==

Since Motorola handles a great deal of various kinds of agreements and purchases components from various suppliers that are integrated into Motorola products, "Motorola will benefit from the Court's clarification of the patent exhaustion doctrine in this case."

Summary of Argument:

*Motorola supports the Petitioners in that under precedence, the Intel-LGE License Agreement exhausts LGE's patent rights.

**Motorola uses ''United States v. Univis Lens Co. (1942)'' to argue that the products LGE sold to Intel "embody essential features of LGE's asserted patents," and so there is no other non-infringing use for them outside of combining them with other components. This combination may infringe the patents except for the fact that the sale exhausts the patents.

**Motorola also cites ''Mitchell v. Hawley (1872)'' and ''Adams v. Burke (1873)'' to support the argument that precedence "was based on the lack of authority to sell patented machines, not language purporting to limit the use of the machines."

**They argue that under precedence, after the first sale, the "patentee no longer has any patent rights against the article." Because of this, the new owner of the purchased articlemay use the article without any additional license, implied or not, when patent exhaustion is applicable.

**Lastly, they argue that LGE's attempts to avoid and get around the doctrine of exhaustion with a "rights of use limiting license" to Intel and their customers "is an impermissible attempt to use the patent laws to extract a second payment from the vertical distribution chain."

*Motorola strongly urges the Court to not make any ruling on what the patent exhaustion effect, if any, would be with respect to products sold by Intel prior to the Licensing Agreement.

**The primary argument for this is that this issue of pre-release products or any other types of agreements (such as covenants not to sue) were not explicitly part of the question posed to the Court to address.

**With respect to the above point, Motorola cited ''Yee v. Escondido (1992).''

**Some of the LGE products were sold by Intel prior to the Licensing Agreement, but the facts presented to the Courts were limited, making it unclear whether those sales were unauthorized.

**"Motorola respectfully submits that given the narrowness of the question presented and the lack of a developed record below regarding the release, and distinctions with respect to covenants not to sue, the Court should leave the question of what impact other types of agreements may or may not have on patent exhaustion for another day.”

Conclusion:
“For the forgoing reasons, the Court should reverse the judgment of the Court of Appeals for the Federal Circuit, and in doing so, the Court should limit its holding to products sold pursuant to a license agreement. “

User:Mzahm

2011-04-29T00:27:23Z

Mzahm: /* Homework Assignments */

== '''Case Summaries''' ==

[[Bonito Boats v. Thunder Craft (1989)]]

[[Hotchkiss v. Greenwood (1850)]]

[[A. & P. Tea Co. v. Supermarket Corp. (1950)]]

[[Lyon v. Bausch & Lomb (1955)]]

== '''Homework Assignments'''==

[[Homework 1: 1980-1990 Patent]]

[[Homework 2: Non-obviousness]]

[[Homework 3: Non-obviousness Arguments]]

[[Homework 4: Non-obvious Page Edit]]

[[Homework 23: Printed Publication Case Summary]]

[[Homework 26: Case on Doctrine of Equivalence]]

[[Homework 27: Argument for Hamilton Sundstrand]]

[[Homework 31: Quanta Brief]]

Homework 27: Argument for Hamilton Sundstrand

2011-04-02T21:36:28Z

Mzahm:

In the case of Honeywell v. Hamilton Sundstrand, it was observed that the courts, while providing thorough discussion in many related aspects to the case at hand, neglected to address the issue of comparison of the two devices against the actual doctrine of equivalence itself. Hence, it is the desire of this brief to provide support for Hamilton Sundstrand expressly on this particular issue.

The doctrine of equivalence itself holds that elements are equivalent when they perform substantially the same function in substantially the same way to produce substantially the same result.

According to the court, it was correctly established by Honeywell that the subject(s) to which the doctrine of equivalence applies for these two patents is their respective uses for 1) a static pressure differential under low flow conditions in order to detect surge, in combination with 2) the inlet guide vane positions for the purpose of determining the flow conditions in order to detect surge. The following will be an analysis on an element-by-element basis, as recommended the courts in Warner-Jenkins v. Hilton Davis (1997).

Sundstrand’s device uses the inlet guide vane positions to solve the “double solution” problem, one related to incorrect readings because of high flow levels, by blocking the control signal during high-flow conditions. This is related to their choice of the DELPQP flow-related parameter, which becomes inversely related to the amount of flow under high-flow conditions. To solve this problem, the inlet guide vane position is used to determine the flow conditions and whether it is necessary to block the control signal. The Sundstrand device compares the DELPQP parameter to a set point based on air inlet temperatures in order to prevent surge.

Honeywell’s device uses the inlet guide vane positions to adjust the set point against which the flow-related parameter is measured. In order to avoid surges, the Honeywell invention establishes a minimum flow “set point.” This set point is a function of the position of the inlet guide vanes. The airflow out of the compressor is measured and compared to a “flow-related parameter” (measuring actual flow conditions), and thereby regulating the set point (desired flow conditions).

Thus, in the Sundstrand device, the IGV position is used to determine the flow condition, in order that the right solution for the DELPQP parameter (representing a pressure differential) might be obtained. This DELPQP parameter is then compared to a set point base on inlet temperatures. In the Honeywell device, the IGV positions are used to determine the set point, which is in turn compared to a flow-related parameter based on measurements of the flow (the pressure differential).

It may be conceded that the two devices perform substantially the same function, which is determining a set point for minimum flow, and produce substantially the same result, namely the prevention of surge. However, it is clear from the above description of the methods used, that the two devices do not perform these functions or achieve these results in substantially the same way. According to Valmont Industries v. Reinke Manufacturing (1993), all three conditions must be met.

This can be said especially since the Sundstrand device uses, not the IGV position, but temperature, a parameter not taken into account in the Honeywell device, to determine its flow set point. In addition, this point may be further supported by the fact that the two devices, while no doubt sharing some physical elements in common, nonetheless would require some other vastly different physical components in order to obtain their respective measurements and results.

Following this reasoning, the court is thus urged to rule in favor of Hamilton Sundstrand.

Homework 27: Argument for Hamilton Sundstrand

2011-04-02T21:35:45Z

Mzahm: Created page with "In the case of Honeywell v. Hamilton Sundstrand, it was observed that the courts, while providing thorough discussion in many related aspects to the case at hand, neglected to ad..."

User:Mzahm

2011-04-02T21:35:32Z

Mzahm: /* Homework Assignments */

Doctrine of Equivalents Case List

2011-04-02T18:29:47Z

Mzahm:

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

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

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

Bill Goodwine

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

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

901444263

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

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

901330223

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

901316153

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

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

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

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

Gillian Allsup

901281608

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

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

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

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

*
*
*

Doctrine of Equivalents Case List

2011-04-02T18:29:00Z

Mzahm:

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

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

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

Bill Goodwine

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

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

901444263

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

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

901330223

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

Gillian Allsup

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

901316153

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

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

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

901281608

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

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

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

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

*
*
*

Homework 26: Case on Doctrine of Equivalence

2011-03-31T22:22:11Z

Mzahm: /* Valmont Industries Inc. v. Reinke Manufacturing Company Inc. (1993) */

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

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

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

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

Homework 26: Case on Doctrine of Equivalence

2011-03-31T12:54:39Z

Mzahm: /* Valmont Industries Inc. v. Reinke Manufacturing Company Inc. (1993) */

Homework 26: Case on Doctrine of Equivalence

2011-03-31T05:01:28Z

Mzahm: Created page with "=='''Valmont Industries Inc. v. Reinke Manufacturing Company Inc. (1993)'''== '''(983 F.2d 1039)'''"

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

User:Mzahm

2011-03-31T00:47:52Z

Mzahm: /* Homework Assignments */

Homework 23: Printed Publication Case Summary

2011-03-23T14:02:14Z

Mzahm: Created page with " ==In re Klopfenstein (2004) == United States Court of Appeals, Federal Circuit Aug. 18, 2004 The PTO denied the inventor's patent application for methods of preparing foods ..."

==In re Klopfenstein (2004) ==

United States Court of Appeals, Federal Circuit

Aug. 18, 2004

The PTO denied the inventor's patent application for methods of preparing foods comprising extruded soy cotyledon fiber (SCF) on the grounds that the invention failed to meet the novelty requirement. The inventor appealed, the Board of Patent Appeals upheld the denial, and the inventor again appealed. The Court of Appeals affirms the decision of the Board of Patent Appeals, holding that the patent fails to satisfy the "printed publication" bar.

The "printed publication" issue arises from the fact that in October of 1998, the inventors, along with another colleague, gave a presentation disclosing limitations of the invention, in which the slides were printed, posted on poster boards, and placed on display for two and a half days during a conference. The same presentation was on display in November 1998 for less than a day at another conference. There was no disclaimer at either of these presentations prohibiting or limiting note-taking or copying of the presentation, although no copies were distributed and the presentation was never cataloged in a library.

The appellants argue that the presentation does not qualify as a "printed publication" because it was not disseminated, nor was it indexed in a library or database. The court rejects the reasoning against dissemination, giving the example of a billboard on a highway, which is certainly not distributed or indexed, but most assuredly is sufficiently accessible to the public. It is, therefore, as court precedent has established, the public accessibility which largely defines whether or not something is a prior art reference. "In other words, distribution and indexing are not the only factors to be considered in a 102(b) "printed publication" inquiry." In this case, the additional factors taken into consideration were: the length of time the presentation was displayed, the level of expertise of the audience, the level of reasonable expectation that the material would not be copied, and the ease with which the material may have been copied.

The court concluded that the presentation did indeed count as a "printed publication" since "The reference itself was shown for an extended period of time to members of the public having ordinary skill in the art of the invention... Those members were not precluded from taking notes or even photographs of the reference. And the reference itself was presented in such a way that copying of the information it contained would have been a relatively simple undertaking for those to whom it was exposed-particularly given the amount of time they had to copy the information and the lack of any restrictions on their copying of the information."

User:Mzahm

2011-03-23T12:49:39Z

Mzahm:

ESB Briefs

2011-03-03T20:58:29Z

Mzahm:

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

2011-02-13T01:26:10Z

Mzahm:

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

#Reply Brief for Petitioners (Oct. 26, 2009)
#jpotter2
#Adam T. Letcher
#Craigkrzyskowski
#Brief of Amicus Curiae William Mitchell College of Law Intellectual Property Institute in Support of Respondent (Oct. 2, 2009)
#ebingle
#Rabot
#Brief for Amicus Curiae Mark Landesmann in Support of Affirmance (Oct. 2, 2009)
#Brief of Amici Curiae American Insurance Association, the Hartford Financial Services, Jackson National Life Insurance Company, Pacific Life Insurance Company, Sun Life Assurance Company Of Canada (U.S.), and Transamerica Life Insurance Company in Support of Respondent (Oct. 2, 2009)
#Brief For Amicus Curiae Computer & Communications Industry Association in Support of Respondent (Oct. 2, 2009)
#Brief of Software & Information Industry Association (SIIA) as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#Brief of Amici Curiae Foundation for a Free Information Infrastructure, IP Justice, and Four Global Software Professionals and Business Leaders in Support of Respondent (Oct. 2, 2009)
#Brief for Free Software Foundation as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#Brief for Bank of America Corporation, Barclays Capital Inc., The Clearing House Association L.L.C., The Financial Services Roundtable, Google Inc., MetLife, Inc., and Morgan Stanley as Amici Curiae in Support of Respondent (Oct. 2, 2009)
#Brief Amici Curiae of Professors Peter S. Menell and Michael J. Meurer In Support of Respondent (Oct. 2, 2009)
#Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent (Oct. 2, 2009)
#Amicus Curiae Brief in Support of the Respondent, Submitted on Behalf of Adamas Pharmaceuticals, Inc. and Tethys Bioscience, Inc. (Oct. 2, 2009)
#Brief of American Bar Association as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#Brief of Amicus Curiae Knowledge Ecology International in Support of Respondent (Oct. 2, 2009)
#Brief for Amicus Curiae Mark Landesmann in Support of Affirmance (Oct. 2, 2009)
#Amicus Curiae Brief of Center for Advanced Study and Research in Intellectual Property (CASRIP) of the University of Washington School of Law, and of CASRIP Research Affiliate Scholars, in Support of Affirmance of the Judgment in Favor of Respondent (Oct. 1, 2009)
#Kevin Godshall
#Amici Curiae Brief of Internet Retailers in Support of Respondent (Oct. 1, 2009)
#Brief for the Respondent (Sep. 25, 2009)
#Brief of the Intellectual Property Section of the Nevada State Bar, as Amicus Curiae in Support of Respondent (Sep. 25, 2009)
#Brief of Professor Lee A. Hollaar and IEEE-USA as Amici Curiae in Support of Affirmance (Sep. 1, 2009)
#Brief of Amicus Curiae Austin Intellectual Property Law Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Amici Curiae Entrepreneurial Software Companies in Support of Petitioner (Aug. 6, 2009)
#Brief of Amicus Curiae Yahoo! Inc. in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Amici Curiae Biotechnology Industry Organization, Advanced Medical Technology Association, Wisconsin Alumni Research Foundation & The Regents of the University of California in Support of Neither Party (Aug. 6, 2009)
#Mzahm
#Brief of Pharmaceutical Research and Manufacturers of America as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Medtronic, Inc. in Support of Neither Party (Aug. 6, 2009)
#Brief of F%21ed%21eration Internationale Des Conseils En Propri%21et%21e Industrielle as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Law Professor Kevin Emerson Collins in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Legal OnRamp in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae John Sutton in Support of Petitioners (Aug. 6, 2009)
#Brief of Amicus Curiae Novartis Corporation Supporting Petitioners (Aug. 6, 2009)
#Brief Amicus Curiae of The Federal Circuit Bar Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Regulatory Datacorp, Inc, American Express Company, Palm Inc., Rockwell Automation, Inc., and SAP America, Inc. as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Double Rock Corporation, Island Intellectual Property LLC, LIDs Capital LLC, Intrasweep LLC, Access Control Advantage, Inc., Ecomp Consultants, Pipeline Trading Systems LLC, Rearden Capital Corporation, Craig Mowry and PCT Capital LLC as Ami ci Curiae in Support of Petitioners (Aug. 6, 2009)
#Brief Amici Curiae of 20 Law and Business Professors in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae The Houston Intellectual Property Law Association in Support of Petitioners (Aug. 6, 2009)
#Brief of Franklin Pierce Law Center as Amicus Curiae in Support of Petitioners (Aug. 6, 2009)
#LMiller
#Brief of TELES AG as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae San Diego Intellectual Property Law Association in Support of Neither Party on the Merits (Aug. 6, 2009)
#Brief of Robert R. Sachs and Daniel R. Brownstone as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae the University of South Florida in Support of Petitioners (Aug. 6, 2009)
#Brief of Amicus Curiae AwakenIP, LLC in Support of Petitioners (Aug. 6, 2009)
#Brief of Amici Curiae Dolby Laboratories, Inc., DTS, Inc., and SRS Labs, Inc., in Support of Neither Party (Aug. 6, 2009)
#Brief of Dr. Ananda Chakrabarty as Amicus Curiae in Support of Petitioners (Aug. 6, 2009)
#Brief of Georgia Biomedical Partnership, Inc. as Amicus Curiae in Support of Petitioners (Aug. 5, 2009)
#Brief for Prometheus Laboratories Inc. as Amicus Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Intellectual Property Owners Association in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Aug. 5, 2009)
#Brief for the Business Software Alliance as Amicus Curiae in Support of Affirmance (Aug. 5, 2009)
#Brief of Amicus Curiae Washington State Patent Law Association in Support of Petitioner (Aug. 5, 2009)
#Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Aug. 5, 2009)
#Brief of Amici Curiae Association Internationale Pour la Protection de la Propriete Intellectuelle and International Association For The Protection Of Intellectual Property (U.S.) in Support of Reversal (Aug. 5, 2009)
#Brief of Amicus Curiae Caris Diagnostics, Inc. in Support of Petitioners (Aug. 5, 2009)
#Brief of the Intellectual Property Law Association of Chicago as Amicus Curiae Supporting Neither Party (Aug. 5, 2009)
#Brief of Monogram Biosciences, Inc. and Genomic Health, Inc. as Amici Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Raymond C. Meiers in Support of Neither Party (Aug. 5, 2009)
#Brief of On Time Systems, Inc. as Amicus Curiae in Support of Neither Party (Aug. 4, 2009)
#Brief of Amicus Curiae Conejo Valley Bar Association in Support of Neither Party (Aug. 3, 2009)
#Brief For Petitioners (Jul. 30, 2009)
#Brief of Amicus Curiae Telecommunication Systems, Inc. in Support of Neither Party and for Purely Prospective Application of Any Adoption of the New Legal Test Applied Below (Jul. 24, 2009)
#Brief for the State of Oregon as Amicus Curiae in Support of Neither Party (Jul. 24, 2009)
#Brief of Amicus Curiae Timothy F. McDonough, Ph.D. in Support of Petitioners (Jul. 22, 2009)
#Petitioners' Reply Brief (May 8, 2009)
#Brief for the Respondent in Opposition (May 1, 2009)
#Brief of Koninklijke Philips Electronics N.V. as Amicus Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Mar. 2, 2009)
#Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief Amicus Curiae of Franklin Pierce Law Center in Support of Certiorari (Mar. 2, 2009)
#Brief of Amica Curiae Anne E. Barschall, Pro Se in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of the Petition for a Writ of Certiorari (Mar. 2, 2009)
#Jmarmole
#Brief of John P. Sutton Amicus Curiae Supporting Petitioners (Feb. 25, 2009)

Homework 4: Non-obvious Page Edit

2011-02-08T22:47:00Z

Mzahm:

==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 established the criterion that, in addition, the invention must go above and beyond the "skill of an ordinary mechanic acquainted with the business." This threshold of "inventiveness" ultimately evolved into the idea of "non-obviousness."

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

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

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

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

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

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

This is essentially summed up in the statement of the case summary which reads, "if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void...."

===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.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

The case brief states the following arguments:
:It is agreed that the key to patentability of a mechanical device that brings old factors into cooperation is presence or lack of invention.

:Neither court below has made any finding that old elements which made up this device perform any additional or different function in the combination than they perform out of it. This store counter does what a store counter as has done.

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men. This patentee has added nothing to the total stick of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

:The Court of Appeals and the respondent both lean heavily on evidence that this device filled a long felt want and has enjoyed commercial success. But commercial success without invention will not make patentability."

Within the concurring opinion, the following statements are made:

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

===35 USC 103 (1952)===

This section of the code was adopted in 1952 and prohibits a patent in a case where
:"the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."

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

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

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "non-obviousness." The criteria to determine non-obviousness 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.

Supporting statements from the case brief are as follows:
: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 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 surrounding the origin of the subject matter sought to be patented.

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

In the case [[US v. Adams, 383 U.S. 39 (1966)]], the point that is emphasized is that ALL the evidence must be considered. Even small changes can have large consequences, and those small changes are relevant to a determination of non-obviousness.

As the case brief states,
:As we have seen, the operating characteristics of the Adams battery have been shown to have been unexpected and to have far surpassed then-existing wet batteries. Despite the fact that each of the elements of the Adams battery was well known in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium. These long-accepted factors, when taken together, would, we believe, deter any investigation into such a combination as is used by Adams. This is not to say that one who merely finds new uses for old inventions by shutting his eyes to their prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness.

:Nor are these the only factors bearing on the question of obviousness. We have seen that at the time Adams perfected his invention noted experts expressed disbelief in it. Several of the same experts subsequently recognized the significance of the Adams invention, some even patenting improvements on the same system.

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

In the case of [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] the Supreme Court returns to the idea of "inventiveness" by revisiting the old problem of when a combination of old or know elements can become patentable.

"We conclude that while the combination of old elements performed a useful function, it added nothing to the nature and quality of the radiant-heat burner already patented. We conclude further that to those skilled in the art the use of the old elements in combination was not an invention by the obvious-nonobvious standard. Use of the radiant-heat burner in this important field marked a successful venture. But as noted, more than that is needed for invention."

==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.

==Relationship with Novelty==

Novelty is the idea of the "newness" of a patent's subject matter. The criteria for novelty can be found in Title 35, Section 102 of the US Code. Novelty does not imply non-obviousness, however, as can be observed in the case of [[Hotchkiss v. Greenwood]]. The "novelty" of substituting a metal or wooden door knob for a ceramic knob was not sufficient to establish the non-obviousness of that exchange, since the substitution was ruled to be well within the ordinary skill of the art.

==Secondary Considerations==

In an case for non-obviousness there are certain "secondary considerations" that may be taken into account to argue for or against the non-obviousness of a given patent's subject matter. These secondary considerations may act as supporting evidence for obviousness or non-obviousness, but by themselves may not be enough to settle the issue. The level of "inventiveness" still needs to be primarily determined from comparison with the prior art and ordinary skill in the art.

Secondary considerations include
* commercial success of the invention;
* long-felt but unsolved needs;
* failure of others to find a solution, etc.

This list of secondary considerations, and the concept of secondary considerations itself, originate from [[Graham v. John Deere, 383 U.S. 1 (1966)]].

Additional secondary considerations that came up in [[US v. Adams, 383 U.S. 39 (1966)]] are (1) unpredicted/unexpected results and (2) expressed disbelief from other experts in the field.

==Ordinary Skill in the Art==

Ordinary skill in the art is one of the primary tests for determining a patent's subject matter's non-obviousness. By examining prior art and the differences between the prior art and the claims of a patent, the level of skill necessary to accomplish the "inventive" elements can be determined. If the level of skill appears to be above and beyond that of "someone with ordinary skill in the art," then non-obviousness can be established for that patent's subject matter.

Ordinary skill in the art was first established as a method of determining non-obviousness in [[Hotchkiss v. Greenwood]].

[[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-obvious Page Edit

2011-02-08T02:40:43Z

Mzahm:

==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 established the criterion that, in addition, the invention must go above and beyond the "skill of an ordinary mechanic acquainted with the business." This threshold of "inventiveness" ultimately evolved into the idea of "non-obviousness."

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

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

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

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

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

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

This is essentially summed up in the statement of the case summary which reads, "if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void...."

===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.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

The case brief states the following arguments:
:It is agreed that the key to patentability of a mechanical device that brings old factors into cooperation is presence or lack of invention.

:Neither court below has made any finding that old elements which made up this device perform any additional or different function in the combination than they perform out of it. This store counter does what a store counter as has done.

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men. This patentee has added nothing to the total stick of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

:The Court of Appeals and the respondent both lean heavily on evidence that this device filled a long felt want and has enjoyed commercial success. But commercial success without invention will not make patentability."

Within the concurring opinion, the following statements are made:

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

===35 USC 103 (1952)===

This section of the code was adopted in 1952 and prohibits a patent in a case where
:"the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."

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

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

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "non-obviousness." The criteria to determine non-obviousness 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.

Supporting statements from the case brief are as follows:
: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 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 surrounding the origin of the subject matter sought to be patented.

===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.

===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==

Novelty is the idea of the "newness" of a patent's subject matter. The criteria for novelty can be found in Title 35, Section 102 of the US Code. Novelty does not imply non-obviousness, however, as can be observed in the case of [[Hotchkiss v. Greenwood]]. The "novelty" of substituting a metal or wooden door knob for a ceramic knob was not sufficient to establish the non-obviousness of that exchange, since the substitution was ruled to be well within the ordinary skill of the art.

==Non-obviousness vs. Invention==

==Secondary Considerations==

In an case for non-obviousness there are certain "secondary considerations" that may be taken into account to argue for or against the non-obviousness of a given patent's subject matter. These secondary considerations may act as supporting evidence for obviousness or non-obviousness, but by themselves may not be enough to settle the issue. The level of "inventiveness" still needs to be primarily determined from comparison with the prior art and ordinary skill in the art.

Secondary considerations include
* commercial success of the invention;
* long-felt but unsolved needs;
* failure of others to find a solution, etc.

This list of secondary considerations, and the concept of secondary considerations itself, originate from [[Graham v. John Deere, 383 U.S. 1 (1966)]].

==Ordinary Skill in the Art==

Ordinary skill in the art is one of the primary tests for determining a patent's subject matter's non-obviousness. By examining prior art and the differences between the prior art and the claims of a patent, the level of skill necessary to accomplish the "inventive" elements can be determined. If the level of skill appears to be above and beyond that of "someone with ordinary skill in the art," then non-obviousness can be established for that patent's subject matter.

Ordinary skill in the art was first established as a method of determining non-obviousness in [[Hotchkiss v. Greenwood]].

[[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-obvious Page Edit

2011-02-07T21:41:13Z

Mzahm:

==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 established the criterion that, in addition, the invention must go above and beyond the "skill of an ordinary mechanic acquainted with the business." This threshold of "inventiveness" ultimately evolved into the idea of "non-obviousness."

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

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

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

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

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

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

This is essentially summed up in the statement of the case summary which reads, "if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void...."

===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.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

The case brief states the following arguments:
:It is agreed that the key to patentability of a mechanical device that brings old factors into cooperation is presence or lack of invention.

:Neither court below has made any finding that old elements which made up this device perform any additional or different function in the combination than they perform out of it. This store counter does what a store counter as has done.

:Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men. This patentee has added nothing to the total stick of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

:The Court of Appeals and the respondent both lean heavily on evidence that this device filled a long felt want and has enjoyed commercial success. But commercial success without invention will not make patentability."

Within the concurring opinion, the following statements are made:

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

===35 USC 103 (1952)===

This section of the code was adopted in 1952 and prohibits a patent in a case where
:"the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."

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

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

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "non-obviousness." The criteria to determine non-obviousness 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.

Supporting statements from the case brief are as follows:
: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 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 surrounding the origin of the subject matter sought to be patented.

===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.

===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-obvious Page Edit

2011-02-07T21:11:29Z

Mzahm:

==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 established the criterion that, in addition, the invention must go above and beyond the "skill of an ordinary mechanic acquainted with the business." This threshold of "inventiveness" ultimately evolved into the idea of "non-obviousness."

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

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

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

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

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

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

This is essentially summed up in the statement of the case summary which reads, "if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void...."

===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.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

The case brief states the following arguments:
:"It is agreed that the key to patentability of a mechanical device that brings old factors into cooperation is presence or lack of invention.

:"Neither court below has made any finding that old elements which made up this device perform any additional or different function in the combination than they perform out of it. This store counter does what a store counter as has done.

:"Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men. This patentee has added nothing to the total stick of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

:"The Court of Appeals and the respondent both lean heavily on evidence that this device filled a long felt want and has enjoyed commercial success. But commercial success without invention will not make patentability."

Within the concurring opinion, the following statements are made:

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

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

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

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

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

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

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

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

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

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

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

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

==The Inventive Step==

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

[[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-obvious Page Edit

2011-02-07T19:47:09Z

Mzahm: 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:Mzahm

2011-02-07T19:46:58Z

Mzahm: /* Homework Assignments */

Homework 3: Non-obviousness Arguments

2011-02-04T02:17:37Z

Mzahm:

''Patents read: Graham's '811 patent and Pfiefer Patent. The "Glencoe clamp" patent could not be found.''

Clearly, the main contention here is in relation to the hinge and related parts of the shank mounting structure, rather than the other elements of the device, seeing especially as this is the most profound difference between Graham's '811 and '798 patents. The Pfiefer patent has no bearing on this aspect of the device, and thus its relation within the patented inventions is not called into question. Let us then turn to the difference between the '811 and '798 patents. Graham's '798 patent states, "I have provided a plow structure wherein the shanks of the ground working tools are attached to the plow frame in a manner to permit the desired rocking action of the plow shanks in a simple and efficient manner and without producing destructive strains on the plow frame or excessive wear on the mounting parts." Thus we see that the removal of "destructive strains on the plow frame" and "wear on the mounting parts" are emphasized as the inventive aspects of the '798 patent, achieved mainly by changing the location of the hinge plate to being above the shank, rather than below, and adding a stirrup to further secure the shank to the hinge plate. In moving this hinge plate, wear is most especially reduced between the shank and the heel of the upper plate.

'''Argument in Favor of Patent'''

It must be noted first, that the date of the '798 patent application is Aug. 27th, 1951, while that of the '811 application is Feb. 26, 1947--there exists a period of over four years between the two patent applications. If the changes made between these two patents were "obvious at the time the invention was made to a person having ordinary skill in the art," let alone to the inventor himself, who is even more intimately familiar with the device, there would be very little explanation for this relatively vast length of time. Furthermore, there were (presumably) no other patents incorporating these changes submitted to the patent office during this lapse between Mr. Graham's patent applications. In addition to this, the purpose of securing patents is ultimately "to promote the progress of science and useful arts" as stated by the US Constitution. (Article I, Section 8) The discovery of a method in which to reduce wear in a device certainly serves as a means to this end by the fact that it presents a worthy improvement upon the device in question. In many situations, wear is not immediately apparent. Given time and effort in the study of the device and its particular wear development, the key areas that present significant risk of failure can be detected. Only once these areas are detected can true improvements be made to correct the reliability and durability of the device. Hence, these seemingly simple changes were no doubt the result of significant time and effort on the part of Mr. Graham, at least in the consideration of the improvement if not in actual experimentation with it, the fact of which strongly supports the non-obviousness of the '798 patent modifications.

'''Argument Against Patent'''

For someone with "ordinary skill in the art," the likelihood of wear occurring most prominently at the point between the heel of the upper plate and the shank would have been obvious. That point serves as a stress concentration on the shank, which any individual in the profession would no doubt have been familiar with in practice, if not in name. Thus, the removal of such a concentration between the '811 and '798 patents does not qualify as sufficient evidence for non-obviousness. It is merely a design modification made out of common sense, rather than careful study and/or brilliant insight that would suggest its validity as "inventive."

Homework 3: Non-obviousness Arguments

2011-02-04T02:17:12Z

Mzahm:

''Patents read: Graham's '811 patent and Pfiefer Patent. Glencoe patent could not be found.''

Clearly, the main contention here is in relation to the hinge and related parts of the shank mounting structure, rather than the other elements of the device, seeing especially as this is the most profound difference between Graham's '811 and '798 patents. The Pfiefer patent has no bearing on this aspect of the device, and thus its relation within the patented inventions is not called into question. Let us then turn to the difference between the '811 and '798 patents. Graham's '798 patent states, "I have provided a plow structure wherein the shanks of the ground working tools are attached to the plow frame in a manner to permit the desired rocking action of the plow shanks in a simple and efficient manner and without producing destructive strains on the plow frame or excessive wear on the mounting parts." Thus we see that the removal of "destructive strains on the plow frame" and "wear on the mounting parts" are emphasized as the inventive aspects of the '798 patent, achieved mainly by changing the location of the hinge plate to being above the shank, rather than below, and adding a stirrup to further secure the shank to the hinge plate. In moving this hinge plate, wear is most especially reduced between the shank and the heel of the upper plate.

'''Argument in Favor of Patent'''

It must be noted first, that the date of the '798 patent application is Aug. 27th, 1951, while that of the '811 application is Feb. 26, 1947--there exists a period of over four years between the two patent applications. If the changes made between these two patents were "obvious at the time the invention was made to a person having ordinary skill in the art," let alone to the inventor himself, who is even more intimately familiar with the device, there would be very little explanation for this relatively vast length of time. Furthermore, there were (presumably) no other patents incorporating these changes submitted to the patent office during this lapse between Mr. Graham's patent applications. In addition to this, the purpose of securing patents is ultimately "to promote the progress of science and useful arts" as stated by the US Constitution. (Article I, Section 8) The discovery of a method in which to reduce wear in a device certainly serves as a means to this end by the fact that it presents a worthy improvement upon the device in question. In many situations, wear is not immediately apparent. Given time and effort in the study of the device and its particular wear development, the key areas that present significant risk of failure can be detected. Only once these areas are detected can true improvements be made to correct the reliability and durability of the device. Hence, these seemingly simple changes were no doubt the result of significant time and effort on the part of Mr. Graham, at least in the consideration of the improvement if not in actual experimentation with it, the fact of which strongly supports the non-obviousness of the '798 patent modifications.

'''Argument Against Patent'''

For someone with "ordinary skill in the art," the likelihood of wear occurring most prominently at the point between the heel of the upper plate and the shank would have been obvious. That point serves as a stress concentration on the shank, which any individual in the profession would no doubt have been familiar with in practice, if not in name. Thus, the removal of such a concentration between the '811 and '798 patents does not qualify as sufficient evidence for non-obviousness. It is merely a design modification made out of common sense, rather than careful study and/or brilliant insight that would suggest its validity as "inventive."

Homework 3: Non-obviousness Arguments

2011-02-04T02:16:01Z

Mzahm:

''Patents read: Graham's '811 patent and Pfiefer Patent. Glencoe patent could not be found.''

Clearly, the main contention here is in relation to the hinge and related parts of the shank mounting structure, rather than the other elements of the device, seeing especially as this is the most profound difference between Graham's '811 and '798 patents. The Pfiefer patent has no bearing on this aspect of the device, and thus its relation within the patented inventions is not called into question. Let us then turn to the difference between the '811 and '798 patents. Graham's '798 patent states, "I have provided a plow structure wherein the shanks of the ground working tools are attached to the plow frame in a manner to permit the desired rocking action of the plow shanks in a simple and efficient manner and without producing destructive strains on the plow frame or excessive wear on the mounting parts." Thus we see that the removal of "destructive strains on the plow frame" and "wear on the mounting parts" are emphasized as the inventive aspects of the '798 patent, achieved mainly by changing the location of the hinge plate to being above the shank, rather than below, and adding a stirrup to further secure the shank to the hinge plate. In moving this hinge plate, wear is most especially reduced between the shank and the heel of the upper plate.

'''Argument in Favor of Patent'''

It must be noted first, that the date of the '798 patent application is Aug. 27th, 1951, while that of the '811 application is Feb. 26, 1947--there exists a period of over four years between the two patent applications. If the changes made between these two patents were "obvious at the time the invention was made to a person having ordinary skill in the art," let alone to the inventor himself, who is even more intimately familiar with the device, there would be very little explanation for this relatively vast length of time. Furthermore, there were (presumably) no other patents incorporating these changes submitted to the patent office during this lapse between Mr. Graham's patent applications. In addition to this, the purpose of securing patents is ultimately "to promote the progress of science and useful arts" as stated by the US Constitution. (Article I, Section 8) The discovery of a method in which to reduce wear in a device certainly serves as a means to this end by the fact that it presents a worthy improvement upon the device in question. In many situations, wear is not immediately apparent. Given time and effort in the study of the device and its particular wear development, the key areas that present significant risk of failure can be detected. Only once these areas are detected can true improvements be made to correct the reliability and durability of the device. Hence, these seemingly simple changes were no doubt the result of significant time and effort on the part of Mr. Graham, at least in the consideration of the improvement if not in actual experimentation with it, the fact of which strongly supports the non-obviousness of the '798 patent modifications.

'''Argument Against Patent'''

For someone with "ordinary skill in the art," the likelihood of wear occurring most prominently at the point between the heel of the upper plate and the shank would have been obvious. That point serves as a stress concentration on the shank, which any individual in the profession would no doubt have been familiar with in practice, if not in name. Thus, the removal of such a concentration does not qualify as sufficient evidence for non-obviousness. It is merely a design modification made out of common sense, rather than careful study and/or brilliant insight that would suggest its validity as "inventive."

Homework 3: Non-obviousness Arguments

2011-02-04T02:08:41Z

Mzahm:

Homework 3: Non-obviousness Arguments

2011-02-04T01:36:02Z

Mzahm: Created page with "'''Argument in Favor of Patent''' ''(Patents read: Graham's '811 patent and Pfiefer Patent. Glencoe patent could not be found.)'' Clearly, the main contention here is in relati..."

'''Argument in Favor of Patent'''

''(Patents read: Graham's '811 patent and Pfiefer Patent. Glencoe patent could not be found.)''

Clearly, the main contention here is in relation to the hinge and related parts of the shank mounting structure, rather than the other elements of the device, seeing especially as this is the most profound difference between Graham's '811 and '798 patents. The Pfiefer patent has no bearing on this aspect of the device, and thus its relation within the patented inventions is not called into question. Let us then turn to the difference between the '811 and '798 patents. Graham's '798 patent states, "I have provided a plow structure wherein the shanks of the ground working tools are attached to the plow frame in a manner to permit the desired rocking action of the plow shanks in a simple and efficient manner and without producing destructive strains on the plow frame or excessive wear on the mounting parts." Thus we see that the removal of "destructive strains on the plow frame" and "wear on the mounting parts" are emphasized as the inventive aspects of the '798 patent, achieved mainly by changing the location of the hinge plate to being above the shank, rather than below, and adding a stirrup to further secure the shank to the hinge plate. In moving this hinge plate, wear is most especially reduced between the shank and the heel of the upper plate.

It must be noted first, that the date of the '798 patent application is Aug. 27th, 1951, while that of the '811 application is Feb. 26, 1947--there exists a period of over four years between the two patent applications. If the changes made between these two patents were "obvious at the time the invention was made to a person having ordinary skill in the art," let alone to the inventor himself, who is even more intimately familiar with the device, there would be very little explanation for this relatively vast length of time. Furthermore, there were (presumably) no other patents incorporating these changes submitted to the patent office during this lapse between Mr. Graham's patent applications. Hence, these seemingly simple changes were no doubt the result of significant time and effort on the part of Mr. Graham, the fact of which strongly supports the non-obviousness of the '798 patent modifications.

'''Argument Against Patent'''

User:Mzahm

2011-02-04T00:27:57Z

Mzahm: /* Homework Assignments */

Homework 2: Non-obviousness

2011-01-28T15:12:22Z

Mzahm: Created page with "'''Hotchkiss v. Greenwood''' Under the court ruling in Hotchkiss v. Greenwood, inventions in which the improvements could be attributed to the skill of a mechanic acquainted wit..."

'''Hotchkiss v. Greenwood'''

Under the court ruling in Hotchkiss v. Greenwood, inventions in which the improvements could be attributed to the skill of a mechanic acquainted with the business (such as material substitutions) are not patentable, though they may render a product that is better or cheaper.

'''A. & P. Tea Co. v. Supermarket Corp.'''

Under the court ruling in A. & P. Tea Co. v. Supermarket Corp., inventions which are combinations of "known" items are considered to be patentable, provided that the combination performs a new or different function, or that the changes made in the combination as compared to prior art are significant enough as to constitute an improvement worthy of patenting.

'''35 Section 103 Under Lyon v. Bausch & Lomb'''

35 USC Section 103(a) reads, "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made."

Under Lyon v. Bausch & Lomb, the court holds a more generous standard under Section 103, one that does not require more than what is stated in order to pass the test of "inventiveness." Essentially, if it can be shown that the subject matter fulfilled a need within the art not satisfied by prior art, then the subject matter passes the test, since the changes were clearly not obvious "to a person having ordinary skill in the art." (If they had been, then there wouldn't have been a need in the first place.)

'''1. Patent 3676638: Plasma Spray Device and Method (1972)'''

''Summary of 1972 v. 1988:''
Some of the most prominent conditions which separate [http://www.google.com/patents?id=yHMtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false this earlier device] from its later cousin (found in [[Homework 1: 1980-1990 Patent]]) are as follows:

* There are significantly more pieces used to assemble the 1972 device than in the 1988 device
* The 1972 device takes the shape of a hand-held "gun" when fully assembled, whereas the 1988 device is meant to be used in an automated machine
* The material powder is inserted into the gas flow at an earlier point than in the 1988 device
* Plates with helical holes are used to drive the pattern of the flow of gas through the nozzle instead of creating a vortex
* The electric arc is created directly at the end of the cathode, rather than at the end of the nozzle in the 1988 device (which has "extended arc" in the patent title)
* The plasma spray gun can only spray powdered materials, whereas the 1988 device can spray both powders and wires/thin plates
* Geometries of the nozzles and internal cavities vary dramatically between the two devices
* The velocity of the gas/material in the 1972 device is significantly lower than in the 1988 device

'''2. Patent 4095081: Electric Arc Metal Spraying Devices (1978)'''

''Summary of 1978 v. 1988:''
Some of the most prominent conditions which separate [http://www.google.com/patents?id=sM80AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false this device] from the 1988 device are as follows:

* Two wires, which provide the material for spraying, are used as the anode and cathode that form the electric arc in the 1978 device, which differs vastly from the 1988 device
* The 1978 device can use only metal wires, whereas the 1988 device can use powders, wires, or thin plates
* The wires may be fed into the gas stream after the gas exits the nozzle, or an attached outlet nozzle may be utilized in which the wires are fed into the gas stream before the gas leaves the system
* The outlet nozzle can be configured to produced various spray profiles upon exiting

'''Assessment Under Hotchkiss v. Greenwood'''

1. Under the court ruling of Hotchkiss, the 1988 device's patent would probably be considered invalid. Both devices ultimately perform the same function, despite the improvements made between the 1972 and 1988 devices, resulting in better performance. However, since the method remains essentially the same and the changes have mostly effected the device itself, the improvements made could reasonably be argued to be the result of "a skillful mechanic acquainted with the business."

2. Under the court ruling of Hotchkiss, for the same reasons that the 1972 device may have rendered the 1988 device unpatentable, and even more so because there are fewer obvious differences between the 1978 and the 1988 device, the 1988 device's patent would most likely be ruled invalid.

'''Assessment Under A. & P. Tea Co. v. Supermarket Corp.'''

1. Under the court ruling of A. & P., the 1988 device would most likely be patentable, as the differences between the two devices present significant improvements in performance and cost.

2. Under the court ruling of A. & P., the 1988 device would still probably be patentable. Although the differences between the 1978 device and the 1988 device are not as profound, there is still a significant enough improvement in performance between the two that the 1988 device would most likely be patentable.

'''Assessment Under 35 Section 103 Under Lyon v. Bausch & Lomb'''

1. Under the court ruling of Lyon and their interpretation of 35 Section 103, the 1988 device would certainly be patentable. In the 16 years between patents, the overall level of current manufacturing technology would have changed somewhat significantly, leaving a need for technology that would be more suitable to the state-of-the-art. The 1988 patent clearly steps in to fill the need through the numerous changes in its form and function. One example would be the change from being a hand-held device to one that is operated within an automated machine.

2. Under the court ruling of Lyon and their interpretation of 35 Section 103, the 1988 device would still be patentable, due in large part to the same reasons as the device would be patentable as compared to the 1978 device. There would have been a need for improved technology due to the advancements made in the field of manufacturing technology, and the improvements introduced in the 1988 device were able to address those needs.

'''The Effects of the Evolution of Non-obviousness'''

The requirement of non-obviousness and its evolution and development over the years has clearly had an effect on the patentability of the 1988 plasma spraying device as compared to its predecessors. The Hotchkiss decision, which placed a strict focus on "the skill of a mechanic" as a test for non-obviousness, ignoring other factors such as superiority in function and reduction in cost, placed a strict rule that probably would have prevented the 1988 device from being patented, as the changes are mostly to its form with the purpose of improving the functionality of the device. The A. & P. decision broadened the umbrella of non-obviousness somewhat, placing more emphasis on whether the subject matter presented a significant improvement or a change in function. Under this decision, because the 1988 device was much improved from both the 1972 and the 1978 devices, it would more than likely have been able to be patented. Lastly, in the Lyon decision, non-obviousness in a sense returned to something similar to the Hotchkiss definition, but with a more generous interpretation, requiring only that the changes not be "obvious to a person having ordinary skill in the art" and allowing things such as a demonstrated need for the improvement to suffice to meeting the requirement. Under this decision, the 1988 device would surely be patentable, due to the changes and advances in the general field of manufacturing.

User:Mzahm

2011-01-28T15:12:16Z

Mzahm: /* Homework Assignments */

Homework 2: Validity of "Combinations"

2011-01-28T15:11:39Z

Mzahm:

Homework 2: Validity of "Combinations"

2011-01-28T14:44:20Z

Mzahm:

Lyon v. Bausch & Lomb (1955)

2011-01-28T14:39:17Z

Mzahm:

'''Background:'''

The court is disputing the validity of claims found in the patent of Mr. Lyon, a patent for a method of applying a coating to optical lenses. More specifically, the debate is on whether or not the invention had been disclosed in an earlier patent or been in public use before Lyon filed the patent application in 1942, and whether his specific method is deserving of a patent.

The process of applying the coating used two steps. First, the lens must be heated in a vacuum to remove all the adsorbed water and grease have evaporated from its surface. The second step is to vaporize an inorganic salt within the vacuum while the lens is heated until the desired thickness is achieved.

While similar processes had been issued patents before, none of them mentioned heating the lens while vaporizing the salt. However, one man, Cartwright, had apparently discovered this particular prior to the date of Lyon's patent application. Cartwright shared the information with a couple other men who employed the process, but abandoned it before too long. Cartwright experimented further and even sold some of the lenses in a private venture. However, he abandoned the method shortly after his experiments were concluded.

'''Court Ruling:'''

The claims are valid and the patent was infringed.

'''Argument:'''

All other arguments involved as to whether or not there was prior art or prior invention to invalidate the patent aside, the two test was whether or not Lyon's contribution (applying the coating while the lens is heated) could support a patent.

With regard to non-obviousness, the court stated that Lyon's contribution would have sufficed for a valid patent twenty or thirty years ago (before the Act of 1952), as it conforms to the accepted standards of the time. The court agreed that Lyon's contribution was, although simple, beyond being obvious "to a person having ordinary skill in the art" (Section 103) because even the most competent workers in the field had been seeking such a coating as Lyon's method provides.

'''Observations'''

With regard to the non-obviousness requirement of a patent, this court decision breaks from the stricter standards held by the court within the past twenty or thirty years and returns to the more open standards of the courts before, as the court believes those strict standards are more than what are required by Section 103.

Homework 2: Validity of "Combinations"

2011-01-28T14:23:07Z

Mzahm:

Lyon v. Bausch & Lomb (1955)

2011-01-28T14:15:12Z

Mzahm:

Homework 2: Validity of "Combinations"

2011-01-28T14:04:30Z

Mzahm:

Hotchkiss v. Greenwood (1850)

2011-01-28T13:58:02Z

Mzahm:

'''Background:'''

A patent was issued for clay/porcelain knob featuring a metal shank. "new and useful improvement in making door and other knobs of all kinds of clay used in pottery, and of porcelain" which featured "a cavity in which the screw or shank is inserted by which they are fastened largest at the bottom of its depth, in form of a dovetail, and a screw formed therein by pouring metal in a fused state."

'''Court Ruling:'''

This patent was ruled invalid by the court, though one justice formed a dissenting opinion.

'''Argument:'''

As the case syllabus states, "The knob was 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 was securely fastened therein. Knobs had also been used made of clay. The only thing new was the substitution of a knob made out of clay in that peculiar form for a knob of metal or wood. This might have been a better or cheaper article, but is not the subject of a patent."

The superiority of the knob consisted in the superiority of the substituted material (the clay), which is inherent to the material itself, and cannot be attributed to an inventor.

The dissenting justice, Mr. Justice Woodbury states that he believes that if the knob in question were indeed cheaper and better than those that preceded it, it deserved the protection of a patent. Therein he believes is the true test of patentability, because the reduction in price and the increase in quality/functionality would constitute an improvement worth of a patent.

'''Observations'''

In essence, the court's ruling with respect to non-obviousness lies in the statement that "unless more ingenuity and skill in applying the old method... were required... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of a skillful mechanic, not that of the inventor."

The dissenting opinion, which is closest to modern patent law, argued against this claim, and supported an improvement such as a material substitution that made the device better and cheaper as an advancement of science, and as such was a patentable item.

Lyon v. Bausch & Lomb (1955)

2011-01-28T13:49:17Z

Mzahm:

Homework 2: Validity of "Combinations"

2011-01-28T01:00:40Z

Mzahm:

'''Hotchkiss v. Greenwood'''

Under the court ruling in Hotchkiss v. Greenwood, inventions which are mere collection of "known" items are not considered patentable. In addition, substitutions which produce a better and/or cheaper product do not qualify the device for a patent.

'''A. & P. Tea Co. v. Supermarket Corp.'''

Under the court ruling in A. & P. Tea Co. v. Supermarket Corp., inventions which are combinations of "known" items are considered to be patentable, provided that the combination performs a new or different function, or that the changes made in the combination as compared to prior art are significant enough as to constitute an improvement worthy of patenting.

'''35 Section 103 Under Lyon v. Bausch & Lomb'''

'''1. Patent 3676638: Plasma Spray Device and Method (1972)'''

''Summary of 1972 v. 1988:''
Some of the most prominent conditions which separate [http://www.google.com/patents?id=yHMtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false this earlier device] from its later cousin (found in [[Homework 1: 1980-1990 Patent]]) are as follows:

* There are significantly more pieces used to assemble the 1972 device than in the 1988 device
* The 1972 device takes the shape of a hand-held "gun" when fully assembled, whereas the 1988 device is meant to be used in an automated machine
* The material powder is inserted into the gas flow at an earlier point than in the 1988 device
* Plates with helical holes are used to drive the pattern of the flow of gas through the nozzle instead of creating a vortex
* The electric arc is created directly at the end of the cathode, rather than at the end of the nozzle in the 1988 device (which has "extended arc" in the patent title)
* The plasma spray gun can only spray powdered materials, whereas the 1988 device can spray both powders and wires/thin plates
* Geometries of the nozzles and internal cavities vary dramatically between the two devices
* The velocity of the gas/material in the 1972 device is significantly lower than in the 1988 device

'''2. Patent 4095081: Electric Arc Metal Spraying Devices (1978)'''

''Summary of 1978 v. 1988:''
Some of the most prominent conditions which separate [http://www.google.com/patents?id=sM80AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false this device] from the 1988 device are as follows:

* Two wires, which provide the material for spraying, are used as the anode and cathode that form the electric arc in the 1978 device, which differs vastly from the 1988 device
* The 1978 device can use only metal wires, whereas the 1988 device can use powders, wires, or thin plates
* The wires may be fed into the gas stream after the gas exits the nozzle, or an attached outlet nozzle may be utilized in which the wires are fed into the gas stream before the gas leaves the system
* The outlet nozzle can be configured to produced various spray profiles upon exiting

'''Assessment Under Hotchkiss v. Greenwood'''

1. Under the court ruling of Hotchkiss, the court decided against using cheaper materials or better materials that resulted in better performance as a means to determine patentability. Because of this and the ruling that "combinations of known items" do not qualify as patentable, the 1988 device's patent would probably be considered invalid, since both devices perform essentially the same function and use essentially the same materials, despite the vast improvement in cost and performance the differences make between the 1972 and the 1988 devices.

2. Under the court ruling of Hotchkiss, for the same reasons that the 1972 device may have rendered the 1988 device unpatentable, and even more so because there are fewer obvious differences between the 1978 and the 1988 device, the 1988 device's patent would most likely be ruled invalid.

'''Assessment Under A. & P. Tea Co. v. Supermarket Corp.'''

1. Under the court ruling of A. & P., the 1988 device would clearly be patentable, as the differences between the two devices present significant improvements in performance and cost.

2. Under the court ruling of A. & P., the 1988 deice would still probably be patentable. Although the differences between the 1978 device and the 1988 device are not as profound, there is still a significant enough improvement in performance between the two that the 1988 device would most likely be patentable.

'''Assessment Under 35 Section 103 Under Lyon v. Bausch & Lomb'''

1.

2.

'''The Effects of the Evolution of Non-obviousness'''

Homework 2: Validity of "Combinations"

2011-01-28T00:57:36Z

Mzahm:

Homework 2: Validity of "Combinations"

2011-01-28T00:46:30Z

Mzahm:

'''Hotchkiss v. Greenwood'''

Under the court ruling in Hotchkiss v. Greenwood, inventions which are mere collection of "known" items are not considered patentable. In addition, substitutions which produce a better and/or cheaper product do not qualify the device for a patent.

'''A. & P. Tea Co. v. Supermarket Corp.'''

Under the court ruling in A. & P. Tea Co. v. Supermarket Corp., inventions which are combinations of "known" items are considered to be patentable, provided that the combination performs a new or different function, or that the changes made in the combination as compared to prior art are significant enough as to constitute an improvement worthy of patenting.

'''35 Section 103 Under Lyon v. Bausch & Lomb'''

'''1. Patent 3676638: Plasma Spray Device and Method (1972)'''

''Summary of 1972 v. 1988:''
Some of the most prominent conditions which separate [http://www.google.com/patents?id=yHMtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false this earlier device] from its later cousin (found in [[Homework 1: 1980-1990 Patent]]) are as follows:

* There are significantly more pieces used to assemble the 1972 device than in the 1988 device
* The 1972 device takes the shape of a hand-held "gun" when fully assembled, whereas the 1988 device is meant to be used in an automated machine
* The material powder is inserted into the gas flow at an earlier point than in the 1988 device
* Plates with helical holes are used to drive the pattern of the flow of gas through the nozzle instead of creating a vortex
* The electric arc is created directly at the end of the cathode, rather than at the end of the nozzle in the 1988 device (which has "extended arc" in the patent title)
* The plasma spray gun can only spray powdered materials, whereas the 1988 device can spray both powders and wires/thin plates
* Geometries of the nozzles and internal cavities vary dramatically between the two devices
* The velocity of the gas/material in the 1972 device is significantly lower than in the 1988 device

'''2. Patent 4095081: Electric Arc Metal Spraying Devices (1978)'''

''Summary of 1978 v. 1988:''
Some of the most prominent conditions which separate [http://www.google.com/patents?id=sM80AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false this device] from the 1988 device are as follows:

* Two wires, which provide the material for spraying, are used as the anode and cathode that form the electric arc in the 1978 device, which differs vastly from the 1988 device
* The 1978 device can use only metal wires, whereas the 1988 device can use powders, wires, or thin plates
* The wires may be fed into the gas stream after the gas exits the nozzle, or an attached exit nozzle may be utilized in which the wires are fed into the gas stream before the gas leaves the system
*

'''Assessment Under Hotchkiss v. Greenwood'''

1. Under the court ruling of Hotchkiss, the court decided against using cheaper materials or better materials that resulted in better performance as a means to determine patentability. Because of this and the ruling that "combinations of known items" do not qualify as patentable, the 1988 device's patent would probably be considered invalid, since both devices perform essentially the same function and use essentially the same materials, despite the vast improvement in cost and performance the differences make between the 1972 and the 1988 devices.

2.

'''Assessment Under A. & P. Tea Co. v. Supermarket Corp.'''

1. Under the court ruling of A. & P., the 1988 device would clearly be patentable, as the differences between the two devices present significant improvements in performance and cost.

2.

'''Assessment Under 35 Section 103 Under Lyon v. Bausch & Lomb'''

1.

2.

Homework 2: Validity of "Combinations"

2011-01-28T00:34:23Z

Mzahm:

'''Hotchkiss v. Greenwood'''

Under the court ruling in Hotchkiss v. Greenwood, inventions which are mere collection of "known" items are not considered patentable. In addition, substitutions which produce a better and/or cheaper product do not qualify the device for a patent.

'''A. & P. Tea Co. v. Supermarket Corp.'''

Under the court ruling in A. & P. Tea Co. v. Supermarket Corp., inventions which are combinations of "known" items are considered to be patentable, provided that the combination performs a new or different function, or that the changes made in the combination as compared to prior art are significant enough as to constitute an improvement worthy of patenting.

'''35 Section 103 Under Lyon v. Bausch & Lomb'''

'''1. Patent 3676638: Plasma Spray Device and Method (1972)'''

''Summary of 1972 v. 1988:''
The some of the most prominent conditions which separate [http://www.google.com/patents?id=yHMtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false this earlier device] from its later cousin (found in [[Homework 1: 1980-1990 Patent]]) are as follows:

* There are significantly more pieces used to assemble the 1972 device than in the 1988 device
* The 1972 device takes the shape of a hand-held "gun" when fully assembled, whereas the 1988 device is meant to be used in an automated machine
* The material powder is inserted into the gas flow at an earlier point than in the 1988 device
* Plates with helical holes are used to drive the pattern of the flow of gas through the nozzle instead of creating a vortex
* The electric arc is created directly at the end of the cathode, rather than at the end of the nozzle in the 1988 device (which has "extended arc" in the patent title)
* The plasma spray gun can only spray powdered materials, whereas the 1988 device can spray both powders and wires/thin plates
* Geometries of the nozzles and internal cavities vary dramatically between the two devices
* The velocity of the gas/material in the 1972 device is significantly lower than in the 1988 device

'''2. Patent 4095081: Electric Arc Metal Spraying Devices (1978)'''

''Summary of 1978 v. 1988:''
The some of the most prominent conditions which separate [http://www.google.com/patents?id=sM80AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false this device] from the 1988 device are as follows:

*

'''Assessment Under Hotchkiss v. Greenwood'''

1. Under the court ruling of Hotchkiss, the court decided against using cheaper materials or better materials that resulted in better performance as a means to determine patentability. Because of this and the ruling that "combinations of known items" do not qualify as patentable, the 1988 device's patent would probably be considered invalid, since both devices perform essentially the same function and use essentially the same materials, despite the vast improvement in cost and performance the differences make between the 1972 and the 1988 devices.

2.

'''Assessment Under A. & P. Tea Co. v. Supermarket Corp.'''

1. Under the court ruling of A. & P., the 1988 device would clearly be patentable, as the differences between the two devices present significant improvements in performance.

2.

'''Assessment Under 35 Section 103 Under Lyon v. Bausch & Lomb'''

1.

2.

Homework 2: Validity of "Combinations"

2011-01-28T00:33:23Z

Mzahm:

'''Hotchkiss v. Greenwood'''

Under the court ruling in Hotchkiss v. Greenwood, inventions which are mere collection of "known" items are not considered patentable. In addition, substitutions which produce a better and/or cheaper product do not qualify the device for a patent.

'''A. & P. Tea Co. v. Supermarket Corp.'''

Under the court ruling in A. & P. Tea Co. v. Supermarket Corp., inventions which are combinations of "known" items are considered to be patentable, provided that the combination performs a new or different function, or that the changes made in the combination as compared to prior art are significant enough as to constitute an improvement worthy of patenting.

'''35 Section 103 Under Lyon v. Bausch & Lomb'''

'''1. Patent 3676638: Plasma Spray Device and Method (1972)'''

''Summary: 1972 v. 1988''
The some of the most prominent conditions which separate [http://www.google.com/patents?id=yHMtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false this earlier device] from its later cousin (found in [[Homework 1: 1980-1990 Patent]] and hereby referred to as "the 1988 device") are as follows:

* There are significantly more pieces used to assemble the 1972 device than in the 1988 device
* The 1972 device takes the shape of a hand-held "gun" when fully assembled, whereas the 1988 device is meant to be used in an automated machine
* The material powder is inserted into the gas flow at an earlier point than in the 1988 device
* Plates with helical holes are used to drive the pattern of the flow of gas through the nozzle instead of creating a vortex
* The electric arc is created directly at the end of the cathode, rather than at the end of the nozzle in the 1988 device (which has "extended arc" in the patent title)
* The plasma spray gun can only spray powdered materials, whereas the 1988 device can spray both powders and wires/thin plates
* Geometries of the nozzles and internal cavities vary dramatically between the two devices
* The velocity of the gas/material in the 1972 device is significantly lower than in the 1988 device

'''2. Patent 4095081: Electric Arc Metal Spraying Devices (1978)'''

''Summary: 1978 v. 1988''
The some of the most prominent conditions which separate [http://www.google.com/patents?id=sM80AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false this device] from the 1988 device are as follows:

*

'''Assessment Under Hotchkiss v. Greenwood'''

1. Under the court ruling of Hotchkiss, the court decided against using cheaper materials or better materials that resulted in better performance as a means to determine patentability. Because of this and the ruling that "combinations of known items" do not qualify as patentable, the 1988 device's patent would probably be considered invalid, since both devices perform essentially the same function and use essentially the same materials, despite the vast improvement in cost and performance the differences make between the 1972 and the 1988 devices.

2.

'''Assessment Under A. & P. Tea Co. v. Supermarket Corp.'''

1. Under the court ruling of A. & P., the 1988 device would clearly be patentable, as the differences between the two devices present significant improvements in performance.

2.

'''Assessment Under 35 Section 103 Under Lyon v. Bausch & Lomb'''

1.

2.

Homework 2: Validity of "Combinations"

2011-01-28T00:21:00Z

Mzahm:

'''Hotchkiss v. Greenwood'''

Under the court ruling in Hotchkiss v. Greenwood, inventions which are mere collection of "known" items are not considered patentable. In this specific case, it was in relation to a change in material.

'''A. & P. Tea Co. v. Supermarket Corp.'''

Under the court ruling in A. & P. Tea Co. v. Supermarket Corp., inventions which are collections of "known" items are considered to be patentable, provided that the combination performs a new or different function, or the changes made in the combination as compared to prior art are significant enough as to constitute an improvement worthy of patenting.

'''35 Section 103 Under Lyon v. Bausch & Lomb'''

'''1. Patent 3676638: Plasma Spray Device and Method (1972)'''

''Summary: 1972 v. 1988''
The some of the most prominent conditions which separate this earlier device from its later cousin (found in [[Homework 1: 1980-1990 Patent]] and hereby referred to as "the 1988 device") are as follows:

* There are significantly more pieces used to assemble the 1972 device than in the 1988 device
* The 1972 device takes the shape of a hand-held "gun" when fully assembled, whereas the 1988 device is meant to be used in an automated machine
* The material powder is inserted into the gas flow at an earlier point than in the 1988 device
* Plates with helical holes are used to drive the pattern of the flow of gas through the nozzle instead of creating a vortex
* The electric arc is created directly at the end of the cathode, rather than at the end of the nozzle in the 1988 device (which has "extended arc" in the patent title)
* The plasma spray gun can only spray powdered materials, whereas the 1988 device can spray both powders and wires/thin plates
* Geometries of the nozzles and internal cavities vary dramatically between the two devices
* The velocity of the gas/material in the 1972 device is significantly lower than in the 1988 device

'''2. Patent 4095081: Electric Arc Metal Spraying Devices (1978)'''

''Summary: 1978 v. 1988''
The some of the most prominent conditions which separate this device from the 1988 device are as follows:

*

'''Assessment Under Hotchkiss v. Greenwood'''

1. Under the court ruling of Hotchkiss, the 1988 device would, I believe, stand a chance against the 1972 device as being patentable, given the vast number of differences between the two.

2.

'''Assessment Under A. & P. Tea Co. v. Supermarket Corp.'''

1. Under the court ruling of A. & P., the 1988 device would clearly be patentable, as the differences between the two devices present significant improvements in functionality.

2.

'''Assessment Under 35 Section 103 Under Lyon v. Bausch & Lomb'''

1.

2.

Homework 2: Validity of "Combinations"

2011-01-28T00:12:08Z

Mzahm:

'''1. Patent 3676638: Plasma Spray Device and Method (1972)'''

''Summary: 1972 v. 1988''
The some of the most prominent conditions which separate this earlier device from its later cousin (found in [[Homework 1: 1980-1990 Patent]] and hereby referred to as "the 1988 device") are as follows:

* There are significantly more pieces used to assemble the 1972 device than in the 1988 device
* The 1972 device takes the shape of a hand-held "gun" when fully assembled, whereas the 1988 device is meant to be used in an automated machine
* The material powder is inserted into the gas flow at an earlier point than in the 1988 device
* Plates with helical holes are used to drive the pattern of the flow of gas through the nozzle instead of creating a vortex
* The electric arc is created directly at the end of the cathode, rather than at the end of the nozzle in the 1988 device (which has "extended arc" in the patent title)
* The plasma spray gun can only spray powdered materials, whereas the 1988 device can spray both powders and wires/thin plates
* Geometries of the nozzles and internal cavities vary dramatically between the two devices
* The velocity of the gas/material in the 1972 device is significantly lower than in the 1988 device

'''2. Patent 4095081: Electric Arc Metal Spraying Devices (1978)'''

''Summary: 1978 v. 1988''
The some of the most prominent conditions which separate this device from the 1988 device are as follows:

*

'''Hotchkiss v. Greenwood'''

Under the court ruling in Hotchkiss v. Greenwood, inventions which are mere collection of "known" items are not considered patentable. In this specific case, it was in relation to a change in material.

'''A. & P. Tea Co. v. Supermarket Corp.'''

Under the court ruling in A. & P. Tea Co. v. Supermarket Corp., inventions which are collections of "known" items are considered to be patentable, provided that the combination performs a new or different function than it otherwise had, or the improvements made in the combination are significant enough.

Homework 2: Validity of "Combinations"

2011-01-28T00:10:46Z

Mzahm:

'''1. Patent 3676638: Plasma Spray Device and Method (1972)'''

''Summary: 1972 v. 1988''
The some of the most prominent conditions which separate this earlier device from its later cousin (found in [[Homework 1: 1980-1990 Patent]] and hereby referred to as "the 1988 device") are as follows:

* There are significantly more pieces used to assemble the 1972 device than in the 1988 device
* The 1972 device takes the shape of a hand-held "gun" when fully assembled, whereas the 1988 device is meant to be used in an automated machine
* The material powder is inserted into the gas flow at an earlier point than in the 1988 device
* Plates with helical holes are used to drive the pattern of the flow of gas through the nozzle instead of creating a vortex
* The electric arc is created directly at the end of the cathode, rather than at the end of the nozzle in the 1988 device (which has "extended arc" in the patent title)
* The plasma spray gun can only spray powdered materials, whereas the 1988 device can spray both powders and wires/thin plates
* Geometries of the nozzles and internal cavities vary dramatically between the two devices
* The velocity of the gas/material in the 1972 device is significantly lower than in the 1988 device

'''2. Patent 4095081: Electric Arc Metal Spraying Devices (1978)'''

''Summary: 1978 v. 1988''
The some of the most prominent conditions which separate this device from the 1988 device are as follows:

*

''Hotchkiss v. Greenwood''

Under the court ruling in Hotchkiss v. Greenwood, inventions which are mere collection of "known" items are not considered patentable. In this specific case, it was in relation to a change in material.

''A. & P. Tea Co. v. Supermarket Corp.''

Under the court ruling in A. & P. Tea Co. v. Supermarket Corp., inventions which are collections of "known" items are considered to be patentable, provided that the combination performs a different function than it otherwise had, or the improvements made in the combination are significant enough.

Homework 2: Validity of "Combinations"

2011-01-28T00:08:38Z

Mzahm:

'''1. Patent 3676638: Plasma Spray Device and Method (1972)'''

''Summary: 1972 v. 1988''
The some of the most prominent conditions which separate this earlier device from its later cousin (found in [[Homework 1: 1980-1990 Patent]] and hereby referred to as "the 1988 device") are as follows:

* There are significantly more pieces used to assemble the 1972 device than in the 1988 device
* The 1972 device takes the shape of a hand-held "gun" when fully assembled, whereas the 1988 device is meant to be used in an automated machine
* The material powder is inserted into the gas flow at an earlier point than in the 1988 device
* Plates with helical holes are used to drive the pattern of the flow of gas through the nozzle instead of creating a vortex
* The electric arc is created directly at the end of the cathode, rather than at the end of the nozzle in the 1988 device (which has "extended arc" in the patent title)
* The plasma spray gun can only spray powdered materials, whereas the 1988 device can spray both powders and wires/thin plates
* Geometries of the nozzles and internal cavities vary dramatically between the two devices
* The velocity of the gas/material in the 1972 device is significantly lower than in the 1988 device

'''2. Patent 4095081: Electric Arc Metal Spraying Devices (1978)'''

''Summary: 1978 v. 1988''
The some of the most prominent conditions which separate this device from the 1988 device are as follows:

*

''Assessment under Hotchkiss v. Greenwood''

Under the court ruling in Hotchkiss v. Greenwood, inventions which are mere collection of "known" items are not considered patentable. In this specific case, it was in relation to a change in material. Applying this court decision to the 1988 patent with regard to the 1972 patent, I believe that the differences between the two devices are significant enough to constitute improvement worth of a patent.

''Assessment under A. & P. Tea Co. v. Supermarket Corp.''

Under the court ruling in Hotchkiss v. Greenwood, inventions which are collections of "known" items are considered to be patentable, provided that the combination performs a different function than it otherwise had, or the improvements made in the combination are significant enough. Again, as the improvements are significant enough to warrant even a

Homework 2: Validity of "Combinations"

2011-01-27T23:56:33Z

Mzahm: Created page with "'''1. Patent 3676638: Plasma Spray Device and Method (1972)''' ''Summary:'' The some of the most prominent conditions which separate this earlier device from it's later cousin ..."

'''1. Patent 3676638: Plasma Spray Device and Method (1972)'''

''Summary:''
The some of the most prominent conditions which separate this earlier device from it's later cousin (found in [[Homework 1: 1980-1990 Patent]]) are as follows:

* There are significantly more pieces used to assemble the device than in the later device
* The device takes the shape of a hand-held "gun" when fully assembled, whereas the later device is meant to be used in an automated machine
* The material powder is inserted into the gas flow at an earlier point than in the later device
* Plates with helical holes are used to drive the pattern of the flow of gas through the nozzle instead of creating a vortex
* The electric arc is created directly at the end of the cathode, rather than at the end of the nozzle
* The plasma spray gun can only spray powdered materials, whereas the later device can spray both powders and wires/thin plates
* Geometries of the nozzles and internal cavities vary dramatically

''Assessment under Hotchkiss v. Greenwood''

''Assessment under A. & P. Tea Co. v. Supermarket Corp.''

'''2. Patent 4095081: Electric Arc Metal Spraying Devices (1978)'''

''Summary:''

''Assessment under Hotchkiss v. Greenwood''

''Assessment under A. & P. Tea Co. v. Supermarket Corp.''