Historical Development of Nonobviousness (RCTA)

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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.

Hotchkiss required “invention” for patentability, and despite a dissenting opinion, the Court held that the patent in question was invalid because it lacked this inventiveness. In other words, while something could be "better" and "cheaper," it had to go beyond "mere substitution" to be considered an invention. A trivial improvement could not be an invention. Though the majority recognized that the doorknob was indeed better, they also determined that it was not sufficiently inventive. However, the dissenting opinion in Hotchkiss took a more expansive view. Essentially, the dissent argued that an invention should be considered in light of its overall “betterness” or improvement. The dissent recognized the value of the doorknob beyond simple substitution: it was “better,” “cheaper,” and “new.” Furthermore, in citing Earle v. Sawyer, they asserted that skill was immaterial to the invention; that is, anyone could have invented it.

With respect to the first argument, the dissent in Hotchkiss is actually closer to the modern standard of non-obviousness than the position adopted by majority. The criteria of “new and better” are echoed in the secondary, though not optional, considerations of meeting a long-felt need in the field and the commercial success of the invention.

A&P Tea v. Supermarket Equipment (1950)

Under A.&P., the patent on a cashier’s counter equipped with a three-sided rack for making grocery store checkout more efficient was held invalid.

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.
The Court felt that patents ought to be reserved for very high purposes—that is, “advancing the Arts and Sciences.” Patentable inventions should be difficult and not trivial. They should contribute to important scientific advancement. However, this criterion would later seem too strict to really further the principal motivation behind patents: offering economic incentives to spur development and, ultimately, economic growth.
  • Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
  • Fourth, the evolution of the sharp patent law distinction between two former synonyms surfaces again. Whether something is an “aggregation” or a “combination” has distinct legal implications. The Court cited Lincoln Engineering Co. of Illinois v. Stewart-Warner Corp.:
The mere aggregation of a number of old parts or elements which, in the aggregation perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention.
Furthermore, the Court noted,
The conjunction or concert of known elements must contribute something; only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable.
This rationale traces back to one of the primary functions of patents: to encourage addition to open knowledge through disclosure. Therefore, a “patent for a combination which only unites old elements with no change in their respective functions […] obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men” and cannot be allowed to stand as valid.

Finally, the Court also rejected “a rule for patent cases to the effect that this Court will not disturb a finding of invention made by two lower courts” as fundamentally erroneous. Inventiveness and obviousness are legal matters, and lower courts cannot ever overrule the highest court on legal matters.

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

In enacting §103 of the U.S. Code, Congress sought to reform the patentability criterion of “inventiveness” that had stood since the Lincoln and A.&.P. Courts. The Lyon Court recognized that many elements of the process that Lyon used were similar to processes that were used, published, and commonly known in the field before he made his invention. However, most of them “so widely diverged from that of Lyon that under §100(b) they would not serve as anticipations.” Furthermore, even the closest invention to approach an ”anticipation” of Lyon’s method did not take the crucial step that Lyon took—the second step that allowed him to create a coating that many people, including the United States Navy, recognized as a pressing need.

Graham v. John Deere (1966)

The Court in Graham v. John Deere believed, as Congress asserted, that the standard codified in 35 USC 103 is the same as the prior judicial precedent dating from 1850 even though Congress significantly changed the language used. However, In Graham v. John Deere, 383 U.S. 1 (1966) the Court 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.

Other Considerations

  • The Court noted that a patent’s file wrapper and prosecution history through the Patent and Trademark Office are matters of import for the Court to consider in an issue of patent dispute.
  • The Court clarified that the default position is not to grant monopolies. Ideas cannot be controlled, and a monopoly should be reserved for unusual circumstances.
  • Finally, the entire scope of the field is open to consideration—whether the patent holder and patent examiner were aware of it at the time: “It is also irrelevant that no one apparently chose to avail himself of knowledge stored in the Patent Office and readily available by the simple expedient of conducting a patent search—a prudent and nowadays common preliminary to well organized research.”

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.

Historical Summary

The standards of inventiveness or nonobviousness changed significantly between Hotchkiss and A.&P. and Lyon. Certain factors that would have served to bar patentability in the past were eased. With regard to Hotchkiss, cases must be examined closely before “mere substitution” might be used as grounds to bar patentability. The sharp distinction between “aggregation” and “invention” resurfaced at the time of A.&P., but its restriction has also relaxed, as shown in the Lyon standard. At the time of A.&P., patents were viewed as reserved for very elevated purposes; they had to contribute substantially to scientific advancement. Despite the confusion around the standard for invention, everything was absorbed into nonobviousness with the enactment of 35 USC 103. In short, the Lyon Court examined the context of the patent closely, and so the Lyon standard is better at recognizing when significant advances to a particular field are accomplished. From this perspective, the dissenting opinion in Hotchkiss is closer to the modern standard than what the Court held at the time.