Feb. 9: Non-obviousness SKH

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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 be 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.

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.

  • 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.

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


Nonobviousness is judged not from the perspective of a random individual, but from the perspective of one having ordinary skill in the art in question. This hypothetical person of ordinary skill is the basic measure to judge the degree of innovation present in an invention or process. For an invention or process to receive patent protection, it must display a nonobvious advance over this base skill. This standard, however, remains open to interpretation. Those making the judgment are not skilled in the necessary art, but instead are (hopefully) skilled in patent law. Thus, there is a problem with asking ordinary people to judge the advance from the point of view of another ordinarily skilled in the art. These judgments are skewed by hindsight and by the very fact that people are required to make a judgment from the point of view of a more highly skilled and educated person of ordinary skill.

The major requirement for obtaining patent protection for an invention is that the invention was not obvious at the time it was created. An inventor does not and cannot receive a patent for something that is merely new and useful, but only for something that is a significant advancement over existing technology or prior art. The nonobviousness standard protects society against the unwanted costs of denying a deserving patent and of granting an undeserving monopoly. The court declared in Bonito Boats v. Thunder Craft that the standard provides "a careful balance between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself and the very lifeblood of a competitive economy."

Section 103 of the Patent Act establishes the nonobviousness requirement and states that patent protection may not be given to an invention:

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.

Thus, several parameters need to be considered when judging whether a new invention warrants patent protections. One must first determine what a person of ordinary skill in the art would know. This then present a mark against which nonobviousness is measured. An idea of how much achievement beyond this base knowledge represent a nonobvious invention is also required. Finally, the advance of the invention seeking patent protection must be compared to the aforementioned achievement necessary beyond the baseline to determine whether or not the new invention satisfies the standard in §103.

Nonobviousness Standard

Graham v. John Deere (and Calmar v. Cook Chemical and Colgate-Palmolive v. Cook Chemical argued alongside it) represents the Supreme Courts first interpretation of the nonobviousness requirement since Congress enacted the 1952 Patent Act. The issue in these cases was to determine the amount of inventiveness or creativity needed to satisfy §103's nonobviousness requirement. The Court determined that the case was "what effect the 1952 Act had upon traditional statutory and judicial tests of patentability and what definitive tests are now required." The Court ruled that the §103 standard "was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Yet Congress enacted the 1952 Patent Act in order to strengthen the level of innovation necessary to receive patent protection. The definition of "invention" had been so vague and nebulous up to this point that Congress sought a way of actively specifying what could henceforth be determined an "invention." The Court made note in A.&P. Tea v. Supermarket Corp., and quoted again in Graham, that

[t]he truth is the word [`invention'] cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty or not.

Congress expressly enacted §103 in order to "have a stabilizing effect and minimize great departures which have appeared in some cases" in the definition of what is an invention and what is worthy of a monopoly. The Graham Court identifies the method for determining this nonobvious:

Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined.

The scope and content of the prior art, differences between the prior art and the invention, and the level of ordinary skill in the art are all questions that must be answered when determining obviousness.

The Court does not attempt to explain how to evaluate the ultimate question of obviousness other than to say it depends on the factors listed above. There is no actual method of determining how much inventiveness is needed to determine the nonobviousness threshold. The Court admits as much, saying, "This is not to say, however, that there will not be difficulties in applying the nonobviousness test. What is obvious is not a question upon which there is likely to be uniformity of thought in every given factual context."

KSR Blackrock

Level of Ordinary Skill in the Art

In Graham, the Court entertained a lengthy analysis of the relevant prior art in plow shanks and the differences between the prior art and the claims in the Graham patent. But the Court did not explain how to go about determining what the baseline "ordinary skill in the art" would be. The Court seems to have merely concluded that it was obvious to have changed the plow hinge and came to the conclusion that "Certainly a person having ordinary skill in the prior art, given the fact that the flex in the shank could be utilized more effectively if allowed to run the entire length of the shank, would immediately see that the thing to do was what Graham did." The Court substituted its own judgment for that of a person of ordinary skill and, as a result, has muddied the waters in determining nonobviousness.

The level of ordinary skill in the art is the baseline against which the nonobviousness of a particular advance must be measured. Patent law presumes that the person of ordinary skill in the art knows everything that exists in the prior art, but it does not identify what level of skill exists. Knowledge of information is very different than skill, and without a skill baseline it is next to impossible to measure the level of innovation an invention presents and thus impossible to know whether it is nonobvious. In Graham, the Court does not tell us if the person of ordinary skill is a farmer using the plow shank, or if that person is an engineer working for Graham or John Deere and actively developing new plows and shanks, or if the person is some sort of average of the two.

The definition has also changed following KSR v. Teleflex. The Court in this case has determined "a person of ordinary skill is also a person of ordinary creativity, not an automaton." But this new definition does not tell us if the person of ordinary skill is a lab researcher or an avid user of the product. The creativity of one is likely to be higher than the other.

I feel that only in US v. Adams can it be proven that the invention was nonobvious to someone with "ordinary skill in the art" because it can be proven that others were actively trying to find a solution to the problem at hand and the innovative solution used previously failures and dead ends to create a unique solution. The Adams Court concluded:

each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium. These long-accepted factors, when taken together, would, we believe, deter any investigation into such a combination as is used by Adams.

If it is not possible to prove that others had failed where the inventor succeeded, then the Court must make a judgment call about the level of skill necessary for the invention as compared to the level of ordinary skill in the art.

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

Reiner v. I. Leon Co.

South Corp. v. US (full text)

South Corp. v. US