Copy of Nonobviousness page
Nonobviousness Explained
In order for an invention to be patentable, it must contain what is considered to be non-obvious subject matter, as it is defined in section 103 of the U.S. Code.
35 USC 103 (1952)
- “A patent may not be obtained though 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 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.”
Essentially this is a means of further restricting the realm of what is patentable under the code. Prior to the addition of section 103 to the U.S. Code in 1952, the primary requirements for patentability were that the subject matter be new, or novel, and useful in terms of advancing the current knowledge or technology of the relevant field of study. It became apparent, however, that claimed inventions could meet these requirements, while still not being worthy of a patent due to the triviality of the claimed invention. It is for this reason that the additional constraint of nonobviousness was added to the requirements of patentable subject matter.
Historical Development
Intent of Patent Law
In Graham v. John Deere, Justice Clark discussed the original intent of the patent system, according to Thomas Jefferson, and how this suggested the need for the non-obvious subject matter requirement. According to Justice Clark, the patent system was designed to give people a social and economic incentive to “bring forth new knowledge.” The purpose was not to give someone an exclusive right to their discoveries, but rather to encourage inventiveness and advance human knowledge.
- “Only inventions and discoveries which furthered human knowledge, and were new and useful, justified the special inducement of a limited private monopoly.”
Jefferson’s views on the patent system reflect the potential danger of not having strict enough requirements on patentability. Private monopolies on inventions are “at odds with the inherent free nature of disclosed ideas,” and should only be granted when the subject matter is significant enough to progress the knowledge of the field in question, according to Clark. Patents granted for unworthy creations only restrict the technological advancement of human beings.
Addition to the U.S. Code
It is in reference to such ideals of reputable historical figures that the addition of the nonobviousness section in the U.S. Code is justified, as opposed to pure citation of precedence set by previous court cases. The procedure used in determining nonobviousness as it is laid out in section 103, however, draws heavily upon methods used in prior cases.
In Hotchkiss v. Greenwood (1850), it was determined that the mere substitution of clay as a material used to make door knobs was not deserving of a patent. Though there was not yet an official requirement for such credentials, it was ruled that the product did not demonstrate enough “ingenuity or invention” to be patentable. These words imply a necessary consideration as to the relative ease with which the product was developed, and an ambiguous threshold that may separate what is and is not sufficiently creative or respectable to be given a patent. This is reflected in section 103 when it is said the subject matter of a patent must be “obvious at the time the invention was made.”
The Hotchkiss ruling also stated:
- "[U]nless more ingenuity and skill . . . 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 the skilful mechanic, not that of the inventor." At p. 267.
Jefferson had expressed the need for methods of determining what is worthy of a patent and what is not, though from 1793 to 1952 the only requirements under Jefferson’s draft of the Patent Act were those of novelty and utility. When Congress added the requirement of nonobviousness in 1952, it latched onto the condition utilized in Hotchkiss in 1850, that a comparison must be made between the skill involved in the claims to a patent, and those that could be assumed to be possessed by a “person having ordinary skill in the art.”
The ruling in A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) further provided the framework for the formulation of section 103, in that it relied heavily upon a comparison between the subject matter of the patent under question and the state of the “prior art.” In the case it was determined that the prior art of supermarket checkout procedures was advanced to the point that the addition of the proposed checkout basket would not add “to the total stock of knowledge” in the art. This is in line with the original intent of the patent system to promote the advancement of human knowledge and prevent monopolies on products that do not accomplish as much. It sets the precedent for the requirement in section 103 of an analysis of the “differences between the subject matter sought to be patented and the prior art.”
What is Obvious?
By officially adding the nonobviousness requirement stated in section 103, Congress has effectively laid out a process for determining whether a product is patentable with respect to its obviousness, based largely on the rulings of relevant prior cases. Under the stated requirements, primary consideration must be given to:
- the scope and content of the prior art;
- the differences between the prior art and claims at issue; and,
- the level of ordinary skill in the art.
Secondary considerations include:
- a long-felt but unsatisfied need met by the invention;
- appreciation by those versed in the art that the need existed;
- substantial attempts to meet this need;
- commercial success of the invention;
- replacement in the industry by the claimed invention;
- acquiescence by the industry;
- teaching away by those skilled in the art;
- unexpectedness of the results; and,
- disbelief or incredulity on the part of industry with respect to the new invention.
Relevant Cases
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."
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.
