2/9/2011: Nonobviousness Page - Stulc
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.
Hotchkiss v. Greenwood (1850)
Prior to Hotchkiss v. Greenwood an invention only had to be novel. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of nonobviousness.
- ...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.
- The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.
- But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.
- Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.
- But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.
- The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.
A&P Tea v. Supermarket Equipment (1950)
While it pre-dates the language of section 103, A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) discussed some of the more difficult issues related to the level of invention.
- First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
- Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
- Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
35 USC 103 (1952)
This section of the code was adopted in 1952 and prohibits a patent in a case where
- the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Lyon v. Bausch & Lomb (1955)
In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) Learned Hand, in his brilliance, expounded on the new standard thusly:
- Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4
Graham v. John Deere (1966)
History and Changes in Patent Laws
This beginning of this case traces back the history and reasoning behind the U.S. government’s ability to grant patents to individuals. The American patent policy was shaped in a large way by the philosophy of Thomas Jefferson and his recognition that the patent system provides economic incentives to incite continuous innovation and progress. However, early on it was clear that it was a difficult task to “draw a line between the things which are worth to the public the embarrassment of an exclusive patent and those which are not” (Section II, Graham v. John Deere). The courts took up the task of interpreting the patent law into a system of principles that would help the public understand the law.
In the case of Hotchkiss v. Greenwood (1851), the court set forth a general principle that a patent must have enough ingenuity and skill introduced so that it would not be obvious to person with ordinary skill in the art. This offered a significant aspect to the definition of “invention” and officially introduced the notion of nonobviousness into the evaluation of patents. The 1952 Patent Act officially added this judicial ruling into the letter of law. In Section 103 of the U.S. code it now states, “A patent may not be obtained… if the differences between the subject matter sought to be patented and the prior are 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” (Section IV, Graham v. John Deere). As ruled in this case, Section 103 of the U.S. Code merely served as “a codification of the judicial precedents embracing the Hotchkiss decision” (Section IV, Graham v. John Deere). It did not alter or nullify the precedents or introduce new elements into consideration. The court sees the practical application of revamping Section 103 as to “bring about a closer concurrence between administrative and judicial precedent” (Section V, Graham v. John Deere).
Patents in Question
The first patent in question deals with a plow that has flexible blades so that the plow does not break if it encounters hard objects or soil. The question that the court is trying to answer is: was the new technology presented in the plow nonobvious based on previous patents and an ordinary understanding of the art? This question was answered by evaluating two of the patents cited in claims. The court found that the patent in question added no nonobvious advancements.
The second patent in question relates to a pump sprayer mounted on a container or bottle. It is a combination of a hand operated pump with a plastic top for a container. Cook argued that the device may appear obvious at first, but the secondary considerations such as the long unmet industry need. Once again, the court reviewed two patents pertaining to the patent at hand and concluded that the Cook design, although solving a longstanding problem, did not introduce any nonobvious knowledge.
Takeaways from the Case
- The new Patent Act of 1952 does not eliminate the judicial precedents dating back over a century
- In the eyes of the law, nonobviousness is an essential component of an invention
- Nonobviousness can be confirmed by secondary considerations such as commercial success, long-felt but unsolved need, or failure of others to find a solution, but these considerations by themselves do not constitute non obviousness
- A patent must include an element of ingenuity that is not obvious to a person with ordinary skill in the art
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.
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
In accordance with judicial precedent and the updated Section 103 of the U.S. code, the inventive step needs to include elements of ingenuity beyond something that would be obvious to a person with ordinary knowledge of the art.
Through court decisions, it was decided this inventive step needs to be more than a simple combination, rearrangement, or substitution of previous elements. It must include the elements of ingenuity to make it eligible for a patent.
Cases where patents have been turned down because they lacked the inventive step was obvious include:
- Hotchkiss v. Greenwood: the substitution of a material does not constitute an inventive step
- Anderson's Black Rock, Inc v. Pavement Co: the combination of previous technologies with no new function, besides the previous functions, does not constitute an inventive step
- Graham v. John Deere: the only changes made from previous patents were those that would be obvious to a person with ordinary knowledge of the art. Thus the inventive step was not innovative enough.
Cases where patents have been upheld because the inventive step was sufficient include:
- Lyon v. Bausch & Lomb: The unmet need in society testifies that it was a nonobvious solution and upholds the inventive step
- U.S. v. Adams: Despite the fact that it is a combination of known elements, because those elements behave in a new manner it is nonobvious and a legitimate inventive step.
Relationship Between Invention, Novelty, and Nonobviousness
The United States’ patent system stems directly from the Section 8 of the Constitution. It gives Congress the power “to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” (U.S. Constitution, Section 8). Within this legislative power, there are certain words that bring out ambiguity and do not apply easily to practical scenarios. In this case, inventor is one of those words.
The patent office seeks to give out exclusive monopolies on inventions to the inventors for their personal and commercial use of the technology. It is the major public policy in place to combat the tragedy of the commons and promote investment in technological progress by individuals and private companies. However, this comes at a cost to society. For a limited time period after an invention is introduced to the public, the principles of the free market do not apply to the technologies preserved by the patent. This means it is important that the patented technologies are really helping to accomplish the goal laid out by the Constitution, “to promote the progress of science and useful arts”. However, as Thomas Jefferson recognized, there is a difficulty in “drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not” (Graham v. John Deere, Section III). This is where it becomes necessary to strictly define inventions.
Judicial precedent has provided a context by which patents are approved based on their contribution to technological progress. Until 1850, patents were required to be novel, to introduce some new process, product, or composition into public knowledge. If this did not explicitly add a new element to public life, it needed to improve an old element by making it more efficient, cheaper, or some other tangible improvement. In the Hotchkiss v. Greenwood case of 1850 this notion of novelty became more muddled.
The Hotchkiss case dealt with a “new” door handle that was essentially the combination of a ceramic material with a traditional handle design that would still support and attach to the door in the traditional sense. The court conceded that there was novelty in “the substitution of the clay knob in the place of one made of metal or wood”, but it did not recognize this novelty as enough to constitute a patent. It ruled, “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 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 the patent” (Hotchkiss v. Greenwod). This case introduced a new concept into the patent discussion: nonobviousness.
The precedent set by the Hotchkiss ruling essentially adds an element to the definition of invention. Now, an invention needs to be both novel, and nonobvious. This notion of nonobviousness over the course of the next 150 years developed a more refined definition and encompasses the current state of the art and the knowledge of someone educated in this art, as well as the secondary factors such as long unmet need, commercial success, and previous failures.
In this sense, invention is the overarching term. In the eyes of the patent law, invention needs to incorporate a novel technology that meets the requirements of nonobviousness. Novelty and Nonobviousness are two separate requirements that need to be met for a patent to be valid.