Homework 4: Due Wednesday February 9

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Nonobviousness Edit (Krzyskowski)

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.

Combinations Due to Hotchkiss v. Greenwood

This case is one of the first to bring up a very interesting question in regards to non-obviousness and the combination of previously patented things: What are the grounds for a patentable combination? Some answers include:

  • 1. The new whole must be greater than the sum of its old parts. This means that a collection of already patented parts cannot be combined and patented just because they are put together. They must combine to complete a certain job, function, or process that is of particular value to the advancement of the sciences and/or arts. This new combination must also be determined to not be something a person with ordinary skill in the art would easily invent. In other words, this collection of parts should not just be considered to be the next obvious step in the progression of a particular art, science, skill, or project.
  • 2. This combination could be a success with something that other people have already tried. This is a key part of the subject of non-obviousness. A realistic scenario involves different people attempting to invent something that would improve upon a specific process or invention that already exists. It is known that people are trying to make this improvement because they have documented their research and findings in some manner (i.e. word of mouth, published writings, news, etc.). For whatever reason though, no one has succeeded in making a product that makes the intended improvement. If someone who is already aware of what people have been trying to invent but was not the first to start working on the solution, is able to invent a new product that finally completes what people have been trying to do, their product is still patentable despite the obviousness of the idea needed to solve the problem. This new invention would be patentable under the non-obviousness clause because it would be clear that a person with average competence in the art was not able to manipulate a particular combination of parts to work in the attempted manner.
  • 3. Something totally new can be done. This is arguably the most obvious answer to what makes a non-obvious patentable combination. If a new combination of already patented items is able to complete a new task, function, or process it is patentable under section 103. A brand new task, function, or process that no one has ever thought of before is certainly non-obvious. It is important to remember that it must be new as well as something that a person with ordinary skill in the particular art would not automatically think to invent.

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

The Inventive Step is the European equivalent to the United States’ non-obviousness term. Germany, the United Kingdom and the European Patent Office are the places where “inventive step” is mostly used. The most interesting part of the “inventive step” is that it is applied in different ways, albeit slightly different, depending upon the governing body studying the patent. The EPO and United Kingdom will be examined on this page.

The European Patent Office

By definition under the European Patent Convention Article 56, an invention considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. The EPO is known for applying the Problem-Solution Approach when they are trying to determine whether an invention contains an inventive step. The steps of the approach are as follows:

  • a. Identify the particular previous art that has the closest relationship with this invention.
  • b. Given the most relevant previous art, identify the exact technical problem that the invention claims to have successfully solved.
  • c. Given the current state of affairs in this most relevant previous art, determine whether or not the solution to this technical problem is obvious or not for a person of skill in this art.

The EPO’s main goal for this process is to take all necessary steps to make sure there is nothing in the most relevant previous art (including all information in the art, including how the art is taught) that could have provoked or encouraged a person of skill to create the invention. The issue is not whether a person of skill could have thought of this invention. This is because if an invention to solve a particular technical problem in an art is up for debate, it was most likely invented by someone with skill in the art.

The United Kingdom

The United Kingdom uses a process different from that of the European Patent Office. The Court of Appeal initially used the process in a 1985 case. Since then, it was reworked in 2007 case. The United Kingdom’s test for an inventive step is as follows:

  • a. Determine guidelines for knowledge that a skilled person in the particular art must meet to hold the title “skilled” as well as guidelines for other basic common knowledge.
  • b. Identify the supposed “inventive step” of the invention.
  • c. Identify differences between the previous state of the problem that the invention claimed to have solved and the claimed “inventive step” of the invention.
  • d. Decide if there is enough of a difference between what previously existed and the new invention to be able to declare the invention non-obvious.

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