Homework 2/9 - Nonobviousness (KyleR)

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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 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.
Now if the foregoing view of the improvement claimed in this patent be correct, it is quite apparent that there was no error in the submission of the questions presented at the trial to the jury, for unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor. "

Thus, the Court set the precedent that an invention is only patentable if it requires some sort of ingenuity beyond what an ordinary worker in the field possesses. Up until this case, the prevailing opinion of the time was that an invention only needs to be novel and useful to be patentable, as demonstrated by Justice Woodbury's dissenting opinion. For him, any invention that is cheaper or better than its predecessor is patentable regardless of the skill needed to invent it.

"Whenever the kind of test adopted below is used otherwise than to see if there has been an infringement or not, it is to ascertain whether the invention is original or not, that is whether it is a trifling change and merely colorable or not. Webster on Sub. Mat. 25; Curtis on Patents, §§ 6, 7; 2 Gallis.C.C. 51; 1 Mason C.C. 182. But it is impossible for an invention to be merely colorable, if, as claimed here, it was better and cheaper, and hence this last criterion should, as requested by the plaintiffs, have been suggested as a guide to the jury.
Then, if they became convinced that the knob in this case, by its material, or form inside, or combination with the shank, was in truth better and cheaper than what had preceded it for this purpose, it would surely be an improvement. It would be neither frivolous nor useless, and under all the circumstances it is manifest that the skill necessary to construct it, on which both the court below and the Court here rely, is an immaterial inquiry, or it is entirely subordinate to the question whether the invention was not cheaper and better. Thus, some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves both novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, and wealth of the community."

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, this case recognized the challenges "combination inventions" posed to patent law. No precedent had been set regarding how to analyze the inventiveness of combination inventions. The Court decided to declare this particular patent invalid because the combination of elements did not produce a new result compared to when the elements each performed their function independently. This set a precedent for a more cautious approach to verifying patents.
"Neither court below has made any finding that old elements which made up this device perform any additional or different function in the combination than they perform out of it. This counter does what a store counter always has done-it supports merchandise at a convenient height while the customer makes his purchases and the merchant his sales. The three-sided rack will draw or push goods put within it from one place to another-just what any such a rack would do on any smooth surface-and the guide rails keep it from falling or sliding off from the counter, as guide rails have ever done. Two and two have been added together, and still they make only four.
Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. 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. This patentee has added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly."
  • Second, this case made another effort to tighten obviousness standards by recalling the original reason that the Constitution authorizes patent monopolies: to "promote the Progress of Science and useful Arts." The case warns that loose patent standards will stifle ingenuity instead of promote it and the concurring opinion urges that for inventions to qualify for patent rights, they must "be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance." Patent protection, therefore, should be biased toward the frontier of science and engineering, rather than more mundane things like plows, gadgets, etc.
  • Third, the "level of invention" was partly evidenced by a "long felt but unsatisfied need" and commercial success, which are currently regarded as secondary considerations for nonobviousness. This case, however, limits the weight to be associated with these considerations, saying that "commercial success without invention will not make patentability."

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."
  • This section also abolishes the "flash of genius" test for determining patentability.

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. Indeed, some of the justices themselves have taken the same view.[5] The Act describes itself as a codification of existing law, as it certainly is in the sense that the structure of the system remains unchanged. Moreover those decisions that have passed upon it have uniformly referred to it as a codification, although so far as we have found none of them has held that § 103 did not change the standard of invention.[6] And so the question arises whether we should construe § 103 as restoring the law to what it was when the Court announced the definition of invention, now expressly embodied in § 103, or whether we should assume that no change whatever was intended."

The above excerpt details the quandary justices faced after the Patent Act of 1952 was enacted. Congress stipulated that the Act was merely intended to codify what the opinion of the Court had been all along. However, the opinion of the Court regarding nonobviousness had undergone an evolution beginning with the Hotchkiss case (1850) and leading to the A.&P. decision that significantly restricted patentability. Learned Hand interpreted the new Congressional Act as an attempt to ease the restrictions on patentability regarding nonobviousness.

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.

The opinion in this case also argues that Section 103 was not intended by Congress to change the general level of patentability but to merely codify judicial precedent set forth in Hotchkiss to require an inquiry into obviousness before granting patentability.

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.
  • Combination inventions can be patentable if the combination embraces some interdependent functional relationship not previously used
  • Demonstrates an effective method of examining the prior art:
"...known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
  • Secondary considerations that contributed to a decision of nonobviousness:
    • disbelief from experts;
    • recognition of significance by experts;
    • subsequent patents to improve the original patent.

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.

  • Court says the combination of paving truck and heater is obvious:
    • combination is not greater than the sum of its parts;
    • might serve one's convenience, but does not produce a new, patentable function.
  • Fulfillment of a long-felt want and enjoyment of commercial success does not constitute patentability "without invention"

KSR International Co. v. Teleflex, Inc. (2007)

  • A patent is obvious when there exists a "teaching, suggestion, or motivation to combine known elements" (TSM test)
    • this case says that the TSM test can be used to confirm obviousness, but cannot be applied in reverse 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

Novelty and nonobviousness must both be satisfied for patentability.

Nonobviousness vs. Invention

Secondary Considerations

The Courts have developed secondary considerations that can be utilized to give light to the circumstances surrounding the obvious/nonobvious nature of an invention. The most common secondary considerations are:

  • commercial success of the invention,
  • long-felt but unsolved needs that are satisfied by the invention,
  • failure of others in developing the invention,
  • appreciation of the invention by experts in the field,
  • disbelief of the invention by experts in the field,
  • unexpected results from the invention, and
  • further development by others on the invention (subsequent patents).

These considerations, however, do not prove nonobviousness and have been dismissed in cases such as Graham and Anderson.

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

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