AME 40590: February 9,2011 HW Assignment: Nonobviousness- Page
Through the years, the Federal Patent System has made enormous changes to the systems, due to the continual advancement in technology. With the amount of innovation present in today’s world, the US government must continuously take steps in deciding what is patentable. The first main idea developed by the government was the need for novelty in an invention for a patent to be granted. The policy behind whether or not an invention fits the novelty factor is explained in 35 USC 102.
As patent cases became more prominent in the judicial system another issue arose that dealt with the idea of nonobviousness. A formal policy was not made until 1952 when 35 USC 103 was added to the constitution. Many patent cases influenced the developed policy and answered many questions regarding how to deal with patent applications. The main ideas that came up in the historical development of the idea of nonobviousness are explained below, along with the cases that led to this component of the nonobviousness policy.
The Inventive Step
Hotchkiss v. Greenwood (1850)
Hotchkiss v. Greenwood set a precedence in patent law that an invention must be more than just a mere material change and a form of inventiveness must be present if a patent is to be issued.
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.
Plaintiff’s Argument: The plaintiff, Hotchkiss, claims that his invention is both original and useful, thus, proving the validity of his patent. If the patent is valid, then the plaintiff wants to prove that the defendant infringed on his patent. The plaintiff argues that his patent is innovative on the terms that “the shank and spindle had never before been attached in this mode to a knob of pottery clay, and it required skill and invention to attach the same to a knob of this description, so that they would be firmly united..and which, when thus made would become an article much better and cheaper than the knobs made of metal.”
The defendant, Greenwood, claims that the plaintiff’s invention claims originality and usefulness to the design of how the shank is fastened to the knob, when this idea has already been known and used before with metallic knobs.
Supreme Court’s Decision: The Supreme Court found the improvement to the handle to be a matter of superiority of the material, which is not a new idea. The invention by Hotchkiss did not have any degree of skill or ingenuity that is required for patentable inventions. Thus, the decision by the lower courts in finding this patent invalid was affirmed. Therefore, Hotchkiss v. Greenwood set a precedence in patent law that an invention must be more than just a mere material change and a form of inventiveness must be present if a patent is to be issued. Having an invention that makes prior arts better, cheaper, and new is not enough to meet the requirements of a patentable invention.
Relationship with Novelty
An issue that came up with the relationship with novelty, was inventions that were created through the combination of old elements. The combination may be novel, but whether or not it is obvious will decide whether a patent will be issued. The cases below, focuses on the issue of combining old elements to create a new invention and many other issues that plague the federal patent system.
A&P Tea Co. v. Supermarket Corp (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.
A&P Tea v. Supermarket Corp furthered the incorporation of the concept of nonobviousness into patent law. The invention developed by A&P Tea was considered novel by the district courts, but the Supreme Court felt that just novelty alone was not enough. The invention was considered novel because of its “conception of a counter with an extension to receive a bottomless self-unloading tray with which to push the contents of the tray in front of the cashier..”
When the Supreme Court reviewed the case, the lower courts have previously found this patent to be valid. However, the Supreme Court questioned the method the lower courts used in deciding whether or not the patent was inventive. Three issues were brought up:
1. Whether an invention developed by combining a number of old elements is patentable or not
a. The Supreme Court decided that patents are invalid if they “overclaim the invention by including old elements, unless together with its old elements,[it] made up a new combination patentable as such.”
b. The Supreme Court concluded regarding combining prior art in the A&P Tea Co. case that the extension to the counter was just changing the dimensions of a prior art that performs the same function as before.
2. Patent protection to allow future advancement of science and engineering
a. If a patent is issued to one who creates an invention that is just a combination of prior arts with no change to its main function, then the patent will create monopolies on knowledge already known to man. Taking away public knowledge will “diminish the resources available to skillful men.”
b. The purpose of patents is to add to the amount of useful knowledge in the country to help the country advance technologically/scientifically.
3. Patents that lead to commercial success and fulfill a long felt need in society
a. Patents that lead to commercial success should be considered in deciding whether or a patent is valid, but there are more important considerations such as whether the invention was innovative or not.
b. In this particular case, the “invention” led to speeding up the process of purchasing goods at a grocery store. This idea was good in helping grocers and a great business move, but business decisions are not considered patentable.
The Supreme Court decided that the lower courts failed to apply the correct criteria of what an invention is. Thus, the higher court reversed the decision of the lower courts and found the patent filed by A&P Tea to be invalid.
A&P Tea started the development of how to handle patent cases where the patent in question is a combination of prior arts. Finding the balance between novelty and obviousness is especially important when creating an invention from prior arts. Combining what was known may seem like a novel idea, but if what was created was obvious and the function is no different from the prior art, then this patent is invalid.
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,
In addition to these three main points, secondary considerations may also be considered that includes
• commercial success of the invention;
• long-felt but unsolved needs;
• failure of others to find a solution, etc.
In this case, the petitioner Graham sued for infringement of a patent that consisted of combining prior arts to create a device that was created to absorb shock from plow shanks. Absorb shocks are needed when plowing rocking soil, because it will help to prevent damage to the plow. Many courts reviewed this case and came up with different results. The courts that analyzed this case and their decisions are shown below
1. 5th Circuit Court (1955) - Decided that the patent was valid because it was a combination of prior arts to create a new result that is cheaper and more advantageous.
2. 8th Circuit Court (1964) - Decided that this combination was no new combination, thus the patent was invalid.
3. District Court and Court of Appeals (1966) - Believed that neither the 5th or 8th Circuit court applied the correct test when determining whether the invention was obvious or not. They found the patent to be invalid under 103, thus they affirmed the judgment of the 8th Circuit Court.
The 5th Circuit Court’s decision was based primarily on secondary considerations such as commercial success. To satisfy the nonobviousness clause, the patent must meet more than just secondary considerations. Thus, the method used in this court did not satisfy the test needed to be performed regarding nonobviousness.
During this court case, two differences were noted between the prior art and the current invention. First, the stirrup and the bolted connection of the shank to the hinge plate is not found in the current invention. Secondly, the position of the shank in is opposite positions in the prior art versus the current invention.
These differences were not enough to obtain a patent so Graham emphasized the greater “flexing” qualities his invention had compared to the prior art. The problem that arose from emphasizing the flexing movement, is that if this part of the invention was the most important part, then why didn’t he emphasize the flexing in his patent application. Instead, the application focused on the interchanging of the shank and hinge plate, and what this change does to the entire invention. Regardless of the late mention of the flexing, Graham claimed that the difference in quality of flexing is vital because it allows the plow shanks to absorb shock when under tremendous forces. This quality is not found in any other prior arts according to Graham.
After his reasons for why his invention is nonobvious were stated, the Court of Appeals decided that the patent was invalid on the grounds of nonobviousness. First, a person with ordinary skill in the prior art would know that inverting the shank and hinge plate would lead to greater flexing qualities. Secondly, flexing advantages due to the change in arranging the prior arts is not significant in this patent. Lastly, since the flexing advantage was not noted in the specifications of the patent, then it must not be a vital part of the functioning of the article. Adding in the flexing advantage was considered an afterthought. Summary of Case No 37 and 43 in relation to nonobviousness:
Cook Chemical charged Calmar’s shipper sprayer with infringement on their patented shipper sprayer. This invention consisted of “a plastic finger sprayer with a ‘hold down’ lid used as a built-in dispenser for containers or bottles packaging liquid products, principally house insecticides.” The importance of the overcap was to prevent spilling of the poisonous insecticide and to allow for easy packaging of the product because the sprayer head is inside of the overcap. Calmar claimed that the overcap was the only change between this sprayer and it’s prior art. This difference is inconsequential and an obvious change. The court of appeals sided with Cook Chemical finding the patent valid under the claim that there was a long-felt need for this type of sprayer in the industry. In addition, this sprayer experienced commercial success which proves that the sprayer was nonobvious.
The U.S. Court of Appeals (the same court that reviewed case no 11) reviewed the appeal to this case and agreed with Calmar that the change was exceedingly small. In addition, since the reasons the Court of Appeals found the sprayer patent was considered secondary considerations, more reasons were needed to find this patent valid.
Both cases No. 11 and No. 37/43 helped the federal court of appeals to develop a framework when deciding whether or not a patent is obvious or not. This framework is noted at the beginning of this section.
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.
Adams accused the US government of infringing on his patent of a battery. The Court of Claims decided that the patent was valid; therefore, following the proceedings the US seeked certiorari by the US Supreme Court. The patent under question was a wet battery that consisted of an electropositive electrode made out of Magnesium and a electronegative electrode made out of Cuprious Chloride. The electrolyte used in this case is either plain or salt water.
The US government challenged the validity of the patent on the grounds of both novelty and obviousness. They claimed that the use of Magnesium and Cuprious Chloride was just a material change from the prior art that used a Zinc Anode and Silver Chloride. Unlike Hotchkiss v. Greenwood, changing the materials did more than just change what was used, but rather changed the results. Combining these elements lead to an unexpected change, thus under 35 USC 103, the patent is nonobvious.
Prior art shows that Magnesium was used in the past as an electropositive electrode, but the combination with Cuprious Chloride has not been used previously. Again, since the combination created an unexpected result, this invention is not just a combination of old inventions to perform the same function because the result was completely different.
Secondary considerations were also taken into account such as the need for this battery. Since the US military utilized this battery soon after the patent specifications were known shows that a need for the battery was present. Thus, under the framework developed in Graham v. John Deere the US Supreme Court affirmed the decision of the Court of Claims.
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.
Prior to this invention, adding asphalt to a surface was difficult due to cold joints. Cold joints causes poor bonding between the strips of asphalt, which will lead to water and dirt entering the crack and deteriorating the pavement. Anderson’s Black Rock solved this problem through their invention that utilized a radiant-heat burner that is used to heat the exposed edge of the cold strip of pavement. Anderson is suing Pavement Co. for infringing on their patent, while Pavement Co is questioning the validity of the patent.
The District Court was the first to review this case and they found the patent to be invalid. The case was appealed to the Court of Appeals where the decision was reversed. Lastly, the case was appealed to the Supreme Court who reversed the decision of the Court of Appeals and found the invention to be invalid.
The decisions made by the courts on this case was based on the nonobviousness clause, and whether or not this combination of prior arts creates an invention that is new and useful. The Supreme Court followed the framework developed in Graham v. John Deere and determined that the invention added nothing to the nature of the radiant-heat burner that is used in this contraption. The radiant-heat burner is one of the old patented elements that is combined with other old elements. In addition, the Supreme Court decided that a man of ordinary skill in the art would see this invention as obvious. Although, they see this combination of prior art not adding enough to the function of prior arts, they still see the invention “in this important field mark[ing] a successful venture.” This conclusion re-questions the idea of what makes an invention “inventive enough.”
Nonobviousness vs. Invention
When people create inventions, most attempt to file a patent to obtain the rights to the invention for 17 years. This allows the person to profit off of his invention and have some sort of monopoly. Allowing people to patent their invention, gives people an incentive to be innovative.
A patent is issued for inventions, but not all inventions are patentable. The relationship between nonobviousness and invention stems from the fact that if linked together a patent is one step closer to being issued as long as it passes the novelty factor as well. Nonobviousness is used to separate the patentable inventions and non-patentable inventions.
As noted in Graham v. John Deere, a framework was developed in this case in deciding the nonobviousness factor. This framework focuses on the prior art of the invention and the invention itself. Meeting this framework is necessary for patentability, but other considerations may be considered as well. These include:
• commercial success of the invention;
• long-felt but unsolved needs;
• failure of others to find a solution, etc.
These factors can aid in determining if the invention is obvious, but it can’t be the only factors used. As time goes on, and different forms of technology emerge, more secondary considerations may come into play in determining the patentability of an item.
Ordinary Skill in the Art
One test to determine whether or not an invention is obvious, is if a person with ordinary skill in the art could have easily came up with the invention, because of its obviousness. The problem with this test, is that when one sees an invention, one may believe that the invention is obvious once shown the process. Therefore, figuring out whether the invention was really obvious or if it was obvious after the process was revealed is an issue with the nonobviousness clause.
Answering the question whether a person of ordinary skill in the art could have easily developed the invention can also be done by looking at other inventors and seeing if many people have been trying to solve this problem as well. If there are many inventors trying to solve this problem, then the invention must not be obvious or someone would have came up with the answer earlier. The case below discusses the issue of ordinary skill in the art.
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 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
This case dealt with an appeal made to the District Court on the validity of patent no. 2,398,382. The patent consisted of a process in creating a coating for an optical surface that was wear resistant. It was determined that only one step in the process was not prior art and this was heating the optical lens during the coating process. The next step in the case was to determine whether or not this added step is nonobvious. The United States Court of Appeals Second Circuit Court affirmed the decision of the district court in deciding that the patent was valid under 35 USC 103.
Determining whether the additional step in the process satisfies the nonobviousness clause: Main point discussed regarding nonobviousness was whether a person of ordinary skill could have deduced this step on their own. The military expressed the need for optical lens coatings that could handle rugged care. With the number of scientist/engineers noted in the case who have been attempting to develop this lens, proves both the need and the inability for others to create this lens. According to the case, “[t]he 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, non satisfactory.” If others have been attempting to create this invention for the longest time, the pre-heating step must not be obvious because it would have been discovered earlier, especially with the emphasized need for this invention.
Since this case occurred after the amendment to the constitution with the addition of 35 USC 103, the patent was found to be valid regarding the added step to the process in creating the coating to create non-reflective lens. With the old standards developed by Hotchkiss and the A&P Tea Supreme Court cases, this case may have been found invalid. The addition of 35 USC 103 states that the invention does not require a flash of genius for it to be patentable. This is one of the main reasons why the pre-heating step was able to be considered patentable. Before 103, heating would not have been considered a flash of genius and the courts would have most likely rejected the patent.
Although it seems that 103 would change decisions made in the past regarding patents, Congress emphasized that the creation of 103 doesn’t nullify previously stated ideas such as those in Hotchkiss and A&P, but rather codifies all previous decisions. By the creation of 35 USC 103, the idea of nonobviousness is broadened to include various ideas, broadening the scope of patents that will fall under this law.
35 USC 103
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.