Godshall: Nonobviousness

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Relation to Purpose of Patents

The purpose of patents, as stated in the US Constitution is: "To promote the Progress of Science and useful Arts” Thus it can be said that the purpose of patents is largely practical and utilitarian. Thomas Jefferson, himself one of the driving forces behind the Constitution, concurred on this point, arguing that ideas are available to everyone and cannot be restricted by law. An inventor does not have an inherent and fundamental right to his patent under property law, but rather it is a necessary and practical matter whose purpose is to encourage inventiveness by rewarding the inventor. The limited monopoly is a reward for creating a new invention that is beneficial for society.

Without the application of the standard of nonobviousness, the advancement of useful products would be impeded, as improvements coming from the modification or combination of previous components would be obstructed. The court’s opinion in the case A&P Tea v. Supermarket Equipment (1950) states:

“The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.”

With such statements, the Supreme Court has taken a decidedly utilitarian stance on the subject of patent law. The strictness or laxness of the application of nonobviousness is a balance between rewarding inventiveness and preventing monopoly, both of which are desired, but which act against each other. Justice Douglas argued, in his concurring opinion in the case A&P Tea v. Supermarket Equipment that:

“Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science-to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge.”

Historical Development

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

Origins (pre-1850)

The use of non-obviousness in determining the validity (or patentability) is a relatively new concept in the history of patents. It is not found in the earliest documents concerning patents. The US Constitution’s section on patents (Article 1, Section8) does not lay out requirements for the eligibility of patents. It reads:

"To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;"

In the first Patent Act (1790) established the process and limitations of the granting of patents, for which the power to do so was granted to the government in the Constitution from the year prior, but was not since explicitly established. Furthermore, Thomas Jefferson, in his writings on the subject of patents and their purpose did not mention nonobviousness or any similar concept.

Because patents must be approved (initially this had to be done through the secretary of state, but later a patent office was established), some similar concept was likely used by the patent office, although it was not a formal and well defined policy, nor did it have a name. The first instance in US History where what would later be called ‘Nonobviousness’ appeared in either written law, court decisions, or any other legally binding form was Hotchkiss v. Greenwood, a Supreme Court case dating from 1850.

Hotchkiss v. Greenwood (1850)

The Supreme Court case Hotchkiss v Greenwood (1850) was the first instance where nonobviousness became a legal doctrine in US patent law. The Patent Act of 60 years prior left certain areas of patentability vague, which ultimately led up the this case.

Patent at the center of the case was filed by John Hotchkiss of Connecticut in 1841 for a type of doorknob. The main features of this doorknob, as described in his patent application are:

Clay knob: This material is superior to the wood or metal previously in use due to its durability and strength

Dovetail shank: This method of fastening the shank to the knob is more durable and stronger than other methods

Cast shank: This method of attaching the shank to the knob is both an inexpensive and effective method of forming the shank inside the knob

Hotchkiss argued that such a combination of features results in a doorknob that is superior to previous models and represents a significant advancement. For these reasons, he argued that his patent was valid.

In 1845, Hotchkiss brought a suit against Greenwood for Greenwood’s alleged violation of his patent. As the Supreme Court analyzed the case, they made note of the fact that each of these features had existed prior to Hotchkiss’s patent, although they had never before been used in combination with one another. The defendants used this reasoning to argue that Hotchkiss’s patent invalid, and therefore their product was not in violation of any law. Ultimately, the Supreme Court rejected the patent as being invalid, due to its lack of what would from then on be known as non-obviousness. The Court wrote:

“The knob was 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 was securely fastened therein. Knobs had also been used made of clay […] The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void, and this was a proper question for the jury.”

This decision established a test for non-obviousness, namely ordinary skill in an art. Simply put, a patent is not valid if its discovery would be obvious to a person having an ordinary level of skill in the subject of the patent. Thus, the basis of the Supreme Court’s decision was that, for a person having an ordinary level of skill in the manufacture of door knobs, the combination of such features would have been obvious.

“The material being in common use, and no other ingenuity or skill being necessary to construct the knob than that of an ordinary mechanic acquainted with the business, the patent is void, and the plaintiffs are not entitled to recover.” The Supreme Court also ruled that simply because a product is superior, in cost, performance and/or reliability, does not make it automatically patentable, although this may have an effect on other issues or patentability, such as utility. However, if some new, previously unknown method or material was the source of these improvements, the patent may be valid.

A&P Tea v. Supermarket Equipment (1950)

A&P Tea v. Supermarket Equipment (1950) further expanded upon the precedent originally set by Hotchkiss v. Greenwood in 1850, 100 years earlier. The invention in question is a three-sided rack that is used on the counter of stores to move the customers merchandise forward to the cashier.

Many of the issues in this case are the same as Hotchkiss v. Greenwood, namely that each component of the patent in question had been in prior use. Similarly, the patent holder argued that his particular combination of components created something both new and useful. The Supreme Court ultimately determined that this patent was simply and extension of a previously existing device and, as such did not contain adequate nonobvious to validate the patent.

The significance of this case is the court’s explanation of what constitutes nonobviousness, which is far more detailed and explicit than the explanation of Hotchkiss v. Greenwood. The Supreme Court itself wrote in this case:

“While this Court has sustained combination patents, it never has ventured to give a precise and comprehensive definition of the test to be applied in such cases. The voluminous literature which the subject has excited discloses no such test.”

The Supreme Court referenced previous court decisions to make the claim that for a patent that is the combination of previously known parts to be valid, the sum of its properties must be greater than the sum of the properties of its components. That is, they must combine in some manner that produces a new or unexpected characteristic.

This patent however, did not exemplify this characteristic and was thus judged to be invalid under this standard. The court notes the practicality and popularity of the device in question, but denies that these as sufficient ground for the validity of the patent. The major points of the court’s decision in this case can be summarized as:

$ 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.

US Patent Act of 1952

The US Patent Act of 1952 made many important changes to the way patents were filed and validated. One of the most important changes was the creation the US Patent and Trademark Office. The Act also made many ideas that had been established as court precedent officially part of the US Code.

Concerning nonobviousness, the standard of ordinary skill, originally established a precedent in the case Hotchkiss v Greenwood (1850) was reaffirmed, being given the official definition as:

“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.” (35 USC 103)

The Act also specified what was patentable, changing the word 'art' from the original Patent Act of 1790 to:

"Any new and useful process, machine, manufacture, or composition of matter"

Lyon v. Bausch & Lomb (1955)

In the case Lyon v. Bausch & Lomb, additional factors contributing to nonobviousness were established. In the case, in which a patent filed by Dean Lyon for a method for coating optical glass, the presence of a long-felt but unsatisfied need for a certain product or method of production was used as evidence of nonobviousness.

Lyon sued Bausch & Lomb, alleging they violated his patent rights by using his patented method. Bausch & Lomb countered, arguing the patent was invalid due to several similar methods being in practice prior to Lyon's patent.

The critical factor in the case was the fact that none of the previous methods, though similar, were as successful as Lyon's procedure. The court ruled that the failure of previous scientists to achieve what Lyon had done demonstrated that Lyon's process was not obvious to one ordinarily skilled in the art. A long-felt but unsatisfied is not in itself a sufficient requirement for a patent to be valid, but rather can provide evidence to the fact that certain processes are nonobvious, else they would have been discovered by ordinarily skilled men prior.

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)

The Supreme Court case Anderson’s Black Rock v. Pavement Salvage (1969) reaffirmed many of the previous components of nonobviousness. The case centered on a device for paving asphalt which combined both the machine that spread the asphalt and a radiant heat burner. Radiant heat burners were used previously to heat sections of asphalt to enhance bonding but had never before been used for general paving

The Supreme Court ruled that because the radiant heat burner functioned in the same way when combined with the other machine as it did one its own; the patent was no more than a combination of previous inventions and therefore invalid. This reaffirmed the precedent set by Hotchkiss v. Greenwood in 1850.

Diamond v. Diehr (1981)

The Supreme Court Case Diamond v. Diehr further built upon the precedent set by Gottschalk v. Benson 9 years prior. The case concerned a method for the manufacture of cured rubber. This case is significant as it determined when processes involving both physical manufacturing as well as software are present.

The process in contention was a method for curing rubber that involved previously known and used equipment controlled by a computer program. The time rubber needs to properly cure is dependent on its temperature; however, it is not possible to measure the temperature at the center of the mass, only the surface. Thus, James Diehr, the applicant in the patent, devised a method of continuously measuring the surface temperature and feeding this data to a computer program, which would successively recalculate curing time.

The patent was originally rejected, because the formula used by the program was seen by the patent office as invalidating the patent as a result of precedent set by Gottschalk v. Benson. However, the Supreme Court decided that this mathematical formula was not the subject of the patent; it was merely a component in the process. Although the mathematical model and physical equipment had all been in use before, their combination in a novel manner resulted in the Supreme Court declaring this patent to be valid. This case set a precedent for the patentability of certain processes involving software and further refined the limits of patentability set by Gottschalk v. Benson.

Time line of Nonobviousness in US Patent Law

1789: The US Constitution is ratified, stating that "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries" 1790: First Patent Act established a Patent Board to revue patents, which were to be valid for 14 years for "any useful art, manufacture, engine, machine, or device, or any improvement thereon not before known or used."

1850: Hotchkiss v. Greenwood established Nonobviousness as a precedent and requirement for patentability and defining ordinary skill as a measure of this, stating “The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void.”

1950: A&P Tea v. Supermarket Equipment further refined nonobviousness, stating that “The mere aggregation of a number of old parts or elements which, in aggregation perform or produce no new or different function or operation that that theretofore performed or produced by them, is not patentable invention.”

1952: US Patent Act of 1952 codifies 100 years of court precedent, placing the line “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.” in Section 103 of the US Code. 1955: Lyon v. Bausch & Lomb established a long-felt but unsatisfied need as evidence of nonobviousness.

1969: Anderson's Black Rock v. Pavement Salvage reaffirms the standards of nonobviousness set originally by A&P Tea v. Supermarket Equipment.

1981: Diamond v. Diehr establishes the nonobviousness (and therefore patentability) of processes that feature software, even if no new physical methods or equipment are used.

Issues in Nonobviousness

Ordinary skill in the art: A test originally set by Hotchkiss v. Greenwood. It stipulates that if an invention would have been obvious to a person with ordinary skill in the field of the patent, it is obvious and therefore unpatentable.

Combinations: As judged in Anderson's Black Rock v. Pavement Salvage and Hotchkiss Greenwood, a combination of previous devices is only valid if they behave in a new or unexpected way and are not simply a sum of the previous functions.

Long-felt unsatisfied need: The case Lyon v. Bausch & Lomb established the presence of a long-felt but unsatisfied need, which is ultimately satisfied by the invention, as a test that can be used to show nonobviousness.

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

Reiner v. I. Leon Co. (full text) Reiner v. I. Leon Co. South Corp. v. US (full text) South Corp. v. US