- 1 Historical Development
- 2 Suggestion to Combine
- 3 Objective Tests
- 4 The Inventive Step
- 5 Relationship with Novelty
- 6 Nonobviousness vs. Invention
- 7 Secondary Considerations
- 8 Ordinary Skill in the Art
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, the standard for patentability was that an invention only had to be novel. This case establishes the notion that there had to me more to it, some sort of threshold for inventiveness, 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)
The case of 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 "consideration of the need for some such device" and “commercial success” both of which is a standard used today for nonobviousness. While the Supreme Court in this case ultimately rejected these reasons that the Court of Appeals gave, they served as a precursor for the secondary considerations of what nonobviousness is.
- Second, it expressed an emphasis toward patent protection for inventions that would fulfill Article I, s 8 in the Constitution which is “To promote Progress of Science and useful Arts”. It served a chastisement of patents that would grant monopolies for trifling devices that don’t contribute to the real advancement of arts.
- Third, it gave a precise and comprehensive definition of the validity of combination patents. If an invention uses elements that are known to prior art, their use must exceed the sum of its parts for it to fall under patent protection. If the combination of these old elements does not produce a new change in its function, it doesn’t fulfill the function of a patent which is to add to the sum of useful knowledge.
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) Circuit Judge Learned Hand, 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 [on lenses]; 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
In short, Judge Learned Hand established the standard of a “long felt but unsatisfied need”. This standard applies in situations where a significant time has passed before the invention was implemented and thereafter was then widely adopted across the field. It comes as a change from previous court decisions which did not take these factors into consideration.
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;
- This issue deals with the extent and specifics of what are contained in prior inventions. Patentability depends on how far and how exactly previous inventions factored in.
- differences between the prior art and the claims at issue;
- This issue looks at the differences between the current invention and previously patented inventions. An invention can only be patentable only if its claims are substantially new and useful from what other inventions have already patented.
- level of ordinary skill in the pertinent art;
- This issue examines how obvious the patent’s claims would be to a person of ordinary skill in the relevant field. If the claims are obvious to a person of ordinary skill, it does not qualify for patent protection.
- 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. In this particular case, Adams developed a wet battery that produced significant improvements over previous wet batteries such as greatly increasing current capacity, producing constant voltage, performance under extreme circumstances (i.e. temperature), etc.
- The Supreme Court concluded that while his invention contained relatively small changes, Adams’ battery was ultimately patentable. Some of these reasons arose from the fact that experts in his field were in disbelief that his invention could work and subsequently, patentable improvements were mad on his invention. The Patent Office also stated that that they could not find one reference to cite against Adams’ application. All of these facts are clearly apparent that Adams’ invention was nonobvious.
Anderson's Black Rock v. Pavement Salvage (1969)
The Supreme Court in Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969) puts less emphasis and returns the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. The Supreme Court rules that while the four prior elements of the patent might prove to be more convenient, it didn’t produce a new or different function and was neither inventive nor nonobvious. While commercial success should be considered, it in itself will not produce an invention. Patentability thereafter becomes invalid.
Suggestion to Combine
In Re Rouffet deals with the issue of a combination of previously-patented elements in an application. 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.”
This case establishes that a new suggestion requirement be added in regards to the issue of patent denial when combining prior elements in an invention. This suggestion requirement is used to protect against claims that use hindsight to make the patentability of inventions invalid. This means that if a patent is to be dismissed for the reason of combining old elements, it must prove that not only would a person of ordinary skill in the particular field find the combination obvious, it must also show that an implication to actually combine those elements existed. Just because a person who is skilled in their field would find the changes obvious, it doesn’t necessarily mean that they would have the initiative to actually apply the combination.
By implementing this suggestion requirement, it will prevent inventions from becoming unpatentable because of a high ordinary skill. The United States Court of Appeals in this decision establishes that inventions are a process of joining together elements of prior art in a manner that is nonobvious.
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.
- Documenting the process of invention becomes very important. If the procedure of developing an invention is well documented, it is admissible evidence in establishing ownership even if its contents aren’t known for a considerable amount of time after the patent’s filing.
- The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they must be considered by the court.
- This is significant because it marks a change in previous court cases which allowed the judges to choose whether to take economic considerations into account which sometimes led to decisions that contradicted themselves.
- 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 specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”
The Inventive Step
An inventive step is an integral part of any invention. It is determined by considering the obviousness of the “inventive” step in relation to the most relevant prior art and deciding if a skilled person in the art finds the invention obvious. If it’s not obvious, an inventive step wasn’t taken and the patent is considered invalid. Without an inventive step, there is no achievement in the field, and no patent is warranted.
Relationship with Novelty
For an invention to be novel, it must be different from any prior art that came before it. If an invention is to be nonobvious, it is also the case that the invention is novel. Just because an invention is novel, however, doesn’t mean that it’s nonobvious. Nonobviousness requires a higher level of novelty in its standard; a person of ordinary skill would not have been able to make the differences from the prior art.
Nonobviousness vs. Invention
Originally the standard for patentability was inventiveness as well as utility and novelty. By the year 1952, inventiveness became more difficult to obtain and nonobviousness as a requirement was stated in the Patent Act of 1952. Nonobviousness offered a better idea of whether an invention was an actual advancement in the field. This differentiation was clear in the Adams case where small nonobvious advancements were patentable although overall inventiveness would probably be considered and thus, the invention would be unpatentable.
Secondary considerations were taken into account to determine if inventions were patentable. Although an object can be commercially successful, it doesn’t indicate a patentable invention, it is a strong indicator that the invention is useful and nonobvious. Some cases may have obvious cases of advancement or infringement, but in cases where patentability is in question, it can be useful to see how the field reacted to the invention. If an invention satisfied a number of these considerations, it’s clear that the public has determined that advancements were made. By this logic, an object would be entitled to a patent.
Ordinary Skill in the Art
35 USC 103 states that a patentable product must be determined to be nonobvious to a person with ordinary skill in the field. A person of ordinary skill in the art must be an average person who works in the field in question. If this person with ordinary skill in the art either finds the invention trivial or obvious, or has the skills necessary to create the invention, the inventions is not patentable.