Due Friday, January 28, 2011

• Read Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)
• Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
  • Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
  • If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

The patent I chose was for a machine designed to project non-spherical objects, such as footballs, from a feeding turret with multiple containers. Two of the references that the patent cites, issued in 1977 and 1984, respectively, describe components that are utilized by the chosen patent, which was issued in 1986. The 1986 patent combines the concepts of the previous patents to make a more useful machine, and also adds a rotating feeding turret so that multiple objects can be placed in the machine at once. Under the analysis of Hotchkiss v. Greenwood, the chosen patent would likely not be valid. The primary components of the patent such as the spinning wheel projection method, the plunger sliding mechanism for loading the ball into the wheels, and the feeding mechanism, were not each original to the given patent. Rather, each component had been patented previously, but their combination in such a way as to make a totally new machine capable of receiving, loading, and projecting objects was what was being patented. In the Hotchkiss case, a very similar situation was debated, in which a patent was desired for combining the effects of making a doorknob out of clay and utilizing a particular manufacturing method. Neither of these methods was new individually, but they had not before been brought together to make a cohesive new product. The court ruled in that case that the patent was invalid, stating that there was “no more ingenuity or skill required” to make the ceramic doorknob “than that possessed by an ordinary mechanic acquainted with the business.” Similarly the football throwing machine patented in 1986 does not seem to require more skill than an ordinary member of the field might possess, given the earlier patents of the individual components of the machine. There was ingenuity involved in bringing the components together and by adding a feeding turret, and the new machine was more useful for certain applications than any of its preceding components individually. However, the “ingenuity” credited to it is not likely enough to warrant a patent, as the term is used in the Hutchkiss case. In the A & P case, the court ruled that the patent for the new supermarket device was invalid, primarily because it did not serve to advance science in its field. In this sense, the football throwing machine again would not likely be worthy of a valid patent. There are only minor improvements made upon previously exisiting technologies that come from the new device, and they are not particularly complex or unique to the football throwing machine. The rotating feeding turret is useful for setting up football practice drills, but the concept of having multiple objects fed to a common location over time was not new to the device. Thus, the new machine did not effectively advance progress in science, and the patent would not have been ruled valid in 1950. This shows how the standards of nonobviosness have changed over the course of 160 years. Under the current nonobviousness requirement, the patent is valid. This is because the claims of the patent include methods and components that have never been combined in such a way. It was determined that the skill required to make the device was greater than a person having ordinary skill in the field would have possessed at the time of the patent. Thus it appears that the standards for ordinary skill in fields of science have become less restrictive as the law has changed.