Homework 2 - Due Friday, January 28

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Description of Original Patent and References

The patent I chose by John Postol (4786371) is a basketball return system mounted to the back of a backboard and uses a net-carrying frame positioned under the the backboard/hoop to catch a basketball and return it to the shooter. The frame is foldable such that the entire apparatus can be folded and stored underneath the backboard.

Postol's patent makes reference to JFree Throw Basketball Return(3917263) by William Wiley. It is another basketball return system implemented by use of an inverted truncated conical frame that is placed underneath the basketball rim. The opening initially leads to a chute perpendicular to the ground which eventually levels out to be parallel to the ground. The frame sits upon a set of wheels for easy mobility of the device. Beneath the chute is a leg brace and a rack for storing spare basketballs. The entire frame/chute acts as a guide for the basketball which is returned to the player at the free throw line.

Postol's backboard basketball retriever also makes reference to the Ball Recovery System (4291885) by Robert Cohen. This is a modified basketball game where the user shoots a smaller sized ball. The ball is returned to the shooter through the use of a net attached to the backboard at one end and to the users waist at the other. An alternative to this uses balls with an adhesive such that they stick to the backboard, with a layer of netting between the backboard and the ball. When the user pulls on the net, the ball frees itself from the backboard and rolls down the net to the awaiting user.

Analysis under Hotchkiss v. Greenwood

Under Hotchkiss v. Greenwood, 52 U.S. 11 (1850), an improvement which consists solely of a change in material in order to improve functionality cannot be the subject of a patent. Hotchkiss showed that if no other skill or ingenuity was needed beyond that which an ordinary mechanic acquainted with the business might have, then the patent is void. In this case, the question was whether or not doorknobs made of ceramic and with a dovetail hole used to attach to a spindle or shank were patentable when similar doorknobs as well as spindles and shanks already existed which were made of wood or metal.

When comparing Postol's system (4786371) with Wiley's (3917263), it is evident that my patent remains patentable under the analysis of Hotchkiss. Building a chute of metal requires a different ingenuity then simply placing a net beneath the rim of a basketball. The chute needs to be constructed in such a way that the basketball does not become stuck while rolling through the apparatus, nor lose momentum and fail to leave the chute and return to the player. The net on the other hand needs to be kept taught enough such that the basketball does not simply land in the net and become stuck. Additionally, the use of a net allows for a wider "entry point", meaning the ball can still be returned to the shooter even if it bounces long.

The ball recovery system by Cohen (4291885) is similar to that of Postol in that it makes use of a net to return the basketball to a person lying in bed or within a wheelchair. However, instead of using a system of supporting frames, the bottom of the net is instead tied around the waist of the user. Postol's use of a frame is enough in this instance to differentiate between the two systems under the rule of Hotchkiss. While both systems make use of a net to provide a path of the ball to travel back to the shooter, the telescoping frame of Postol allows for a serious improvement in functionality. The system is standalone (doesn't need to be attached to a person), and can be manipulated to return the ball to a different area.

Analysis under A. & P. Tea Co. v. Supermarket Corp.

A. & P. Tea Co. v. Supermarket Corp. sets as precedent the notion that the combination of known elements must in some way exceed the sum of its part in order to become patentable. A patent that simply "unites old elements with no change in their respective functions diminishes the resources available to skillful men". Additionally, the Justices stated that it isn't enough for an article to be new or useful and that the "Constitution never sanctioned the patenting of gadgets". The court instead takes the "inventive genius' as the test for determining patentability. The patent should be an advancement of science and serve a higher-end.

In this specific case, basketball return systems had been in use for quite some time when John Postol developed his idea for a new backboard basketball retriever. In his creation, Postol used a return net mounted on a frame made up of telescoping supports. The combination of all these factors allows for a system that is easily retractable. The frame contains a pivot point which allows the entire apparatus to be folded up and stored beneath the backboard. The use of telescoping supports in conjunction with a flexible net allows for the apparatus to be laterally extended, or for the lower end legs to be shortened or made taller so that the entire return structure is placed at a different height. However, none of the parts of his device were anything new. Telescoping arms, nets, and pivots were all around for some time, and though their combination led to a useful device, it was not a device that led an advancement in science. Instead, it was merely a "gadget" as the court of A & P Tea Co. would say.

With this in mind, Postol's device would not be patentable under A. & P. Tea Co. v. Supermarket Co. The old elements which were combined together to form a new system didn't change with respect to their old functions. The telescoping frame was used to manipulate the size of the frame as a whole, the net was used as a flexible surface which could be pulled taught to provide a path for the basketball to return to the player. Though a commercial success, this invention would not be patentable.

Non-obviousness

Under Lyon v. Bausch & Lomb, the court references back to the Hotchkiss v. Greenwood case when it explains the rubric for non-obviousness. That is, "unless more ingenuity and skill in applying the old method were necessary 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 the case of Lyon's, the court judged non-obvious based on the fact that though the most competent workers in the field had searched for a "hardy, tenacious coating to prevent refelctions", none of the many attempts were successful. There was clearly a need for many years that was not fulfilled, so as simple as Lyon's method was, it was not obvious to a person having "ordinary skill in the art".

Using this same test for obviousness, it is my opinion that Postol's patent remains valid. Of all the references cited, only one made use of a net to return the basketball to a player, and it did not have any supporting frame. Instead, the net was tied to the waste of the player shooting the ball. Every other system was fixed and rigid, and though some were portable or could be manipulated to return the ball to a different location, none had all the functionality provided by Postol's system.

The evolution of the standards of obviousness that led to this change was precisely how the court rules non-obvious in the case of Lyons. In that case, there had been a need that wasn't fulfilled by the top workers in the field for ten years. Though there were many attempts, none proved to be successful. Similarly, the evolution of basketball return systems continuously evolved, meeting the needs of the consumer that were not met before despite many years of development.