BWC --- Non-Obviousness

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Historical Development

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

Hotchkiss v. Greenwood (1850)

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

...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.
The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.
But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.
Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.
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.

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."

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

Proposing a New Type of Patent, Patent-B

Proposing a New Type of Patent in Light of 35 USC 103

Thomas Jefferson, essentially the Father of Patents once said “Certainly an inventor ought to be allowed a right to the benefit of his invention for some certain time… Nobody wishes more than I do that ingenuity should receive a liberal encouragement.” 35 USC 103 states:

“A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a while 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”

Furthermore, the Constitution gives Congress the duty “[t]o promote the useful arts and sciences.”

While the grey area that Congress is trying to define one way or the other is tough to do, I will argue that a new type of patent should arise, one that rewards simple changes to every day products, saving patents for progresses in high-tech science and engineering. In addition, I will argue that a long-felt need in the industry being met should result in a patent and should be included in 35 USC 103. In this new type of patent – herein called patent-B – the secondary considerations less the long-felt need requirement that were developed over time can be given more weight. Since the ultimate goal of the Patent Office is to promote soceity’s advancement, something that improves society in some way should be given some sort of limited monopoly, yet not the type currently given to patent-holders. Patent-B would have a shortened term, let’s say, a third of the current patent term, so just under 7 years. The purpose would be to basically give a 2nd place prize to an inventor who did something obvious, yet purposeful.

The first problem that arises with the analysis of 35 USC 103 is whether or not cases prior to 1952 are valid, that is, the question of whether or not the doctrine governing patents relative to its obviousness has changed over the years. In Lyon V. Bausch & Lomb, Justice Learned Hand addressed this topic at length. His conclusions were well founded and have held throughout the test of time. He is quick to point out that by putting 35 USC 103 into writing, Congress is only defining what has guided, inconsistently, the Courts for almost a century. Hand states

“35 USC 103 only restores the original gloss, substantially in opsissimis verbis; which has never been overruled; but on the contrary for seventy or eighty years had continued to be regarded as authoritative.”

He continues,

“Courts again and again shift their position; and, although they are apt to do so under cover of nice distinctions, they impose the risk of anticipating the changes upon those who may have acted upon the faith of the original. Certainly a legislature, whose will the courts have undertaken to proliferate, must be free to reinstate the courts’ initial interpretation, even though it may have been obscured by a series of later comments whose upshot is at best hazy.”

Basically Hand states that even though it went into writing in 1952, 35 USC 103 has been considered law since the Hotchkiss v. Greenwood case, which was a century prior. Now it is sound to use the cases discussed throughout this course to argue the point at hand, how the patent decisions over time have evolved.

In Hotchkiss v. Greenwood, the issue of whether or not a patent for a clay doorknob should be upheld reached the US Supreme Court, and Justice Nelson took up the matter. Specifically, the question at hand was whether or not the mere substitution of clay for the doorknob warrants a patent. Justice Nelson concludes that because the inventors did nothing but substitute clay for another material, no patent should be granted. However, Justice Nelson concedes that

“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..”

The key words here are “better” and “cheaper”, as they directly show that the new knob benefits society. Perhaps the change is obvious, as the decision ultimately said so, but the change is also beneficial and should be encouraged. Thus, this is one example where I would award a patent-B.

Chronologically the next case considered in class was the A. & P. Tea Co. v. Supermarket Corp. case, which involved a simple change to the typical grocer’s counter. Justices Jackson, Douglas, and Black all agreed that the matter at hand did not deserve a patent and thus declared it invalid. In short, the issue was whether a very simple change, an elongation and an organizing device placed on the counter, warranted a patent. Certainly, this is not an inventive step, as the abovementioned Justices so passionately stated. While in this case, the secondary factors that have since been developed were never really addressed, it can be assumed for the purpose of this argument that it made the job of the grocer significantly easier. If this is to be taken as true, then a patent-B should be granted, even though the “invention” does not really include an inventive step and thus can be deemed obvious, it does nonetheless improve the efficiency of an everyday job, and by extension, improves society.

In Lyon v. Bausch & Lomb, Justice Hand rightfully upheld the patent granted for a process that results in better lenses. The important thing to pull out of his opinion is as follows:

“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”

Justice Hand correctly noted that the industry was waiting for a process like that which was discovered, and though he gave other reasons as well, and as a result upheld the patent. Here is where I will argue my secondary point, that the long-felt need requirement should be included with an ‘or’ clause in 35 USC 103. If a certain industry is in need of something, then we should reward the person who meets that need with a patent.

Anderson’s Black Rock, Inc. v. Pavement Co. illustrates yet another point where a patent was rightfully denied, but a patent-B should have been rewarded. In this case, there was no long-felt and unmet need in the industry, it was simply a matter of convenience. Much like the case with the clay knob or the case with the grocer’s counter, this still shows an improvement. Such an improvement should be rewarded with a patent-B, as it benefits society. Obvious, yes, but still benefits society and thus should be rewarded.

In conclusion, I feel as though the improvements deemed obvious under 35 USC 103 should be given consideration for a different type of reward for their work, such as a patent-B. Patent-B should be seen as a prize for the Runner-Up, or a B+ on a test. Maybe the person did not in fact create an invention, as the improvement was obvious, but society still benefits from the improvement. In addition, as Justice Hand pointed out in the Lyon case, a long-felt need in the industry that becomes met should be rewarded with a patent. Thus I propose that the long-felt need in the industry clause be included in 35 USC 103 with an ‘or’ clause, so that either one being held true warrants a patent being granted.



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

Reiner v. I. Leon Co.

South Corp. v. US (full text)

South Corp. v. US