2/9/2011 Homework (kyergler) : Nonobviousness Page
To view the online code about non-obviousness, click 103 USC 35
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.
35 USC 103 (1952)
It is important to note that previous rulings about non-obviousness are not always consistent, especially because it was not implemented to U.S. Code of Law until the Patent Act of 1952 under section 103. Under this new patent law, 35 USC 103 described the characteristic of "nonobviousness" that defines more clearly a patentable item. Before 1952, section 102 (novelty) of Title 35 (Patents) was the only requirement for patentability. Post 1952, the disputed characteristic of "nonobviousness" was/is required.
Section 103 is summarized as follows:
- 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.
Hotchkiss v. Greenwood (1850)
Prior to Hotchkiss v. Greenwood an invention only had to be novel as defined by section 102 of U.S. Code. 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.
It can be seen in this pronouncement of the court opinion by Justice Nelson, that the original requirement of novelty is not satisfactory, as the knob designed by Hotchkiss is a new product. Although the term "nonobviousness" will not be developed for some time, the court's decision hinges on the fact that the mere substitution of better suited materials is too obvious a development to warrant a patent. The fundamental premise of nonobviousness is presented a few paragraphs later, as Justice Nelson states,
- "....unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingeunity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor."
Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field. At the time in 1850, the fact that it took little skill to make something new and useful is irrelevant in the validity of the patent. Nowadays, section 103 would denounce this patent as an obvious following step in the doorknob industry, stressing that novelty of material is not enough to justify a patent.
A&P Tea v. Supermarket Equipment (1950)
While it pre-dates the language of section 103, A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:
- First, that the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
The importance of a "long felt but unsatisfied need" in the determination of nonobviousness is that it is difficult to claim that an invention is obvious if there has been a demand for a certain product and no one has been able to fulfill that need. However, it is important to note that there are two requirements that must be met here. There must be a need for the product and the need must have existed for a long time. If the need is relatively new, then it is difficult to claim that a person with ordinary skill in the field would have not developed such a design had he been aware of demand for such a device. On the other hand, if the market related to a certain field has provided no sign that there is a need for such an improvement, then it can be argued that the design would have been obvious had anyone expressed interest in the proposed device.
- Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
In Graham v. John Deere, the history of the patent process is discussed, particularly Thomas Jefferson's outlook on the purpose of providing a patent. Jefferson made it clear that patents were only to be granted for inventions that furthered human knowledge and were new and useful. The granting of patents for small details, obvious improvements, or frivolous devices was neither worthwhile nor helpful. In A&P v. Supermarket Corp., Jefferson's sentiment is echoed, except the focus of the court is narrowed further to the important frontier of science and engineering. As Justice Douglas states, "the purpose is to promote the Progress of Science and Useful Arts," and the two disciplines most associated with progress at that time (and still currently) are science and engineering. Even later, the court states, "patents serve a higher end-the advancement of science," which make this point very clear.
- Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
The court's outlook on the evaluation of patents in regard to the combination of prior elements is best summarized in the following explanation. "The mere aggregation of a number of old parts or elements which, in the aggregation, peform or produce no new or different function or operation than that theretofore performed or produced by them is not patentable invention....only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."
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
Aside from the words of Learned Hand, this case specifically brought up the role of "prior art" in the discussion of obviousness. Lyon's patent had claimed to create a film or coating for glass that successfully kept light from reflecting off and made it much stronger. This would be extremely important in wartime situations in which a sniper rifle scope, with its main intention being secret and hidden, does not give away the position of the sniper. This is not the only reason why this film would be beneficial, but this is a more appropriate example. The case, however, questions whether the invention had been disclosed in an earlier patent or been in public use before the issuance of the patent. Disclosure in an earlier patent would prove two things: 1) that the discovery is not one of novelty, and 2) that the study and use of the product has already been documented and researched. The reason that this is significant is because revealing prior art similar to the patent in question shows a non-obvious progression of ideas, thus making the patent invalid. As mentioned in the above quote, workers in the field had unsuccessfully spent over 10 years creating a hardy coating to prevent reflection. The fact that Lyon's patent successfully did this expelled the argument that the prior art made it invalid. Had any prior attempts been relatively successful, Lyon's patent may not have been held valid; but 10 years of unsuccessful attempts made Lyon's patent stand out as non-obvious and novel.
Graham v. John Deere (1966)
In Graham v. John Deere, 383 U.S. 1 (1966), two cases were described in great detail: the first being Graham v. John Deere, the second being Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical.
Graham v. John Deere
This case went to the Supreme Court because of a colflict between Circuit Courts, which makes sense given the dates of the patents in the case. Graham obtained a patent in 1950 (patent '811) for a spring clamp on a plow that absorbs shock from plow shanks so as not to damage the device. After realizing a small but significant improvement to the '811 patent where the shank position was inverted, Graham filed for a new patent in 1953 (patent '798) which was rejected by the patent office. Since the Patent Act was created in 1952, this '798 patent discussion resulted in a case of non-obviousness headed by Mr. Justice Clark. He led the argument of the petitioners of Graham in a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness" defined by section 103. 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.
It is important to note that Graham's '798 patent was considered under 103 as an improvement well within the expected skill of the art and devoid of invention. Since the only mechanical difference between '798 and '811 was a location of the shank hinge, a simple improvement like this was well within the knowledge of a person with ordinary skill in the art. Even though there was significant utility advantages, that is secondary to ordinary skill within the art.
Along with non-obvious nature, the hinge structure was identical in mechanical structure as a prior art: the Glencoe clamp. Not only were the differences between '798 and the Glencoe clamp nonobvious, there were no mechanical distinctions. Thus, Graham's patent was held invalid under section 103.
Calmar, Inc. v. Cook Chemical Co.
This case stresses the hierarchy of primary and secondary considerations in deciding the validity of a patent. Cook Chemical claims a patent for a plastic finger-sprayer with a built-in dispenser lid designed for easy shipment of sprayers without worrying about a detachable sprayer lid. Calmar was accused of infringement, and the case followed. Cook's device was viewed by the Court as non-obviousness as a result of prior art. It was decided that the Cook Chemical patent presented no patentable difference between itself and prior art. The aformentioned prior art was designed for liquid pouring spouts and not pump sprayers, but the mechanical device was very similar.
To summarize, Cook Chemical's patent was claimed to solve a long-felt need in the industry for a built-in dispenser lid for a sprayer that does not leak, but the Court saw the same mechanical device in a prior art, even though it was intended for pouring liquid and not spraying. Essentially the argument was,
- a) a product that solved a long-felt and economic need,
- b) a product using the same mechanical device as prior art but for a different result.
Referencing Graham v. John Deere, the long-felt and economic need for the product-in-question is a secondary consideration compared to its similarity to prior art. Thus, the patent was held invalid under section 103.
U.S. v. Adams (1966)
Mr. Justice Clark delivered the opinion of this court ruling of David vs. Goliath. Adams had a patent for a wet battery: water activation, with cuprous chloride and magnesium electrodes. The battery was "the first practical, water-activated, constant potential battery that could be fabricated and stored indefinitely without any fluid in its cells." The reason this is important is because the US claimed multiple prior art that was intended to make Adam's battery patent invalid:
- Marie Davy Cell: invented in 1860, battery comprises a zinc anode & a silver chloride cathode. As long as the system is open, the battery does not "work upon itself".
- Wood patent: uses magnesium as the positive electrode. Wood's solution to the problem of corrosion was to use a "neutral electrolyte containing a strong soluble oxidizing agent adapted to reduce the rate of corrosion of the magnesium electrode on open circuit". NO INDICATION of coupling with cuprous chloride, nor water-activated.
- Codd treatise: simply lists magnesium in an electromotive series table, and references the cuprous ion.
- Wensky patent: issued in Great Britain in 1891, relates to the use of cuprous chloride as a depolarizing agent, but does not mention magnesium or a water-activated battery.
- Skrivanoff patent: designed to give intermittent (not continuous) service. Claims magnesium as an electrode, but no mention of cuprous chloride as a cathode. Plus, tests under the Skrivanoff patent resulted first in fire, next in explosion.
As noted by the descriptions of all the tests, there was no previous work that imitated Adam's work that would rule it as obvious. The Government claimed Adam's patent was not one of novelty nor non-obviousness, but the Supreme Court ruled otherwise because:
- the combination of elements in the wet battery was not well known within the prior art
- ordinary skill in the art would not lead to the combination of elements in Adam's patent
Thus, under section 103, the patent was upheld as nonobvious.
Anderson's Black Rock v. Pavement Salvage (1969)
Things seem relatively clear at this point, but in Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969) more arguments came about stressing secondary considerations. This case also shows a cohesion of sections 102 and 103, by ruling a patent invalid due to lack of novelty and presence of obviousness.
The patent in question is the combination of a radiant heat-burner on the front of a standard paving machine. The petitioners "fervently" argued that this combination filled a long-felt want and shown a large economic success. However, these two claims are secondary considerations with reference to section 103 USC 35. The radiant heat-burner and the standard paving machine are both well known and used in the bituminous paving industry, and the use of them do go hand in hand. Since the process of paving requires both machines, the Court ruled that it is obvious to someone with ordinary skill in the art to combine the two machines onto one chassis. In addition to this, the combination of the two machines added nothing to the nature or quality of either machine. It was simply a physical combination of the two machines that would otherwise be used back-to-back in the paving process. Since this added nothing to the quality of the already patented radiant heat burner, the patent was held invalid under section 102 (novelty) as well.
Understanding the Supreme Court Rulings
The purpose of the Supreme Court is to interpret the Constitution, and in doing so it decides cases in which there needs to be an important clarification in the law. Laws are meant to be specific guidelines, but there are very few cases that go to court that are clear, cut and dry issues relative to laws. The Court system is meant to interpret the law and judge accordingly, but they are not meant to create new laws. Consider the following:
In the case of KSR International Co. v. Teleflex, Inc. (2007), the Court of Appeals issued a "TSM" test (teaching, suggesting, motivation test) to judge obviousness. Its purpose was to define "obviousness" as a set of clear and simple rules. Since nonobviousness is a difficult matter to understand, the Court of Appeals created a set of guidelines to define obviousness by throught this TSM test. The Supreme Court found issue with this in the sense that nonobviousness cannot be defined by clear and simple rules because it varies from case to case.
The Supreme Court interprets the Constitutional Law as fair and as justly as possible, but creating backhand unofficial laws like the use of the TSM test is a dangerous and improper way to handle a court case. In order to fairly judge a case, the only laws that can be referenced and applied are laws of the U.S. Constitution.
As explained in the many cases explained above, non-obviousness is a difficult matter. There have been many ways to relate non-obviousness into terms that are more intuitively understandable to us as engineers.
The Inventive Step
The inventive step is not defined by the "random stroke of genius" as once described by the court; rather, it is the process by which one creates a novel idea. This goes hand in hand with non-obviousness because many inventions come out of the improvement of another's idea. It is human nature to improve things, not just create things out of thin air. Unfortunately, this runs into the problem of obviousness and novelty. With any "improvement" invention, non-obviousness may make the invention unpatentable by prior art. The inventive step requires not just a random stroke of genius, but considerable research as a result of external factors. There is a difference between patents and inventions, but it is important to note that the inventive step is not just random ideas; rather, it is a progression of ideas.
Relationship with Novelty
Novelty and nonobviousness are not mutually exclusive characteristics for a patent. For example, take Anderson's Black Rock Inc. v. Pavement Co. as an example of a patent that was not novel and was obvious for the same reason: it was way too simple of an idea. The fact that these two characteristics have a relationship in law is due to its combination definition of an invention. An invention can be defined by something that is new and non-obvious.