Homework 4: Non-Obviousness (Ackroyd)

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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.
In fact, the clay knob did produce a better product, and was cheaper. However, as previously stated, this improvement was not the subject of this patent, the combination of materials was.
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.

The question addressed in this case was that of whether combining previously know objects or materials exhibits enough inventiveness to warrant a patent. The decision of this case, invalidating the patent, implies that when various objects are combined to create something new, the objects should be able to accomplish something new, which none of the constituent objects was capable of accomplishing on their own. In this case, the substitution of a material did not accomplish anything new; the mechanism still accomplished the same thing as the prior art.

Furthermore, on the subject of non-obviousness, the improved strength of the knob and shank mechanism could have been achieved by any skilled mechanic in the field by using different materials, and many materials could have been used to achieve this improvement, not just those encompassed within the patent in question.

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 non-obviousness.
    • That is to say, one manner in which the subject matter of a patent may be deemed non-obvious is when, over a significant span of time, a need for the subject of the patent is developed and remains unquenched in the relevant field. This need may or may not be acknowledged during the time of development between the existence of the prior art and the advent of the new invention. Furthermore, it may or may not be obviated by a significant amount of commercial success, which in turn validates a clear demand and prior need for the subject of the patent.
  • Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
    • Specifically, this particular case reiterated the crucial concept that patent laws exist to promote the advancement of science.
  • Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
    • In this issue, the court conveys the idea that there is an inherent difficulty in patentability requirements, since a new invention is a combination of previously known things.

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

As stated above, other skilled inventors in the field had attempted to create, by any method possible, the coating which had been created by Lyon using a new method.

Specifically, Cartwright had tried to achieve the coating by a process involving a hardening of the glass in a vacuum by heating it. However, he was unsuccessful, and so abandoned this method, later testifying that he did not believe it to be the best possible way for applying the coating. Since it was considered an abandoned invention, Cartwright was not able to be considered the prior inventor.

Bausch and Lomb contended that the description of the process in the patent was too vague, using phrases such as "suitable coatings." However, it was not the vague nature of the patent which concerned the court, but rather the question of whether the process was novel.

The court tried to determine whether or not the added step was non-obvious, and thus sufficient grounds for patentability.
They came to the conclusion that, as an argument in favor of the non-obvious nature of the patented process, since a better manner for applying these coatings to glass to prevent reflection had been sought for ten years, the invention could not simply have been created by any skilled mechanic, and so Lyon was the first to find a better way and thus deserved the patent.

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 case of Graham v. John Deere was a critical decision and precedent which spoke to how the law set forth in 35 USC 103 is intended to be interpreted. The court conveyed the following notion with regard to interpretation of section 103:

“Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.”

The court brought up certain ideas which were first attributed to Thomas Jefferson:

  • Obtaining a monopoly on an idea is not an actual right;
  • The very nature of ideas is something you cannot control.
From this it logically follows that ideas are only valuable insofar as one is able to control and exploit them

As a result of this case Congress changed the language of "invention." Essentially, everything which had been previously decided by the court was codified under Section 103.

Of particular note within this section is the following:
"Patentability shall not be negatived by the manned in which the invention was made."
This line of the code serves to imply that it does not matter if the idea comes from a flash of genius or elsewhere...

Calmar, Inc. v. Cook Chemical Co.

The case of Calmar, Inc. v. Cook Chemical Co. was also discussed in the decision of Graham v. John Deere.

Within this Calmar case, it was determined that anything conceded in getting a patent during the application process cannot be reclaimed by the patent holder at a later date once the patent has been issued, in the event that the patent holder sues for infringement.

The court decided to invalidate the patent for the pump sprayer with hold down cap based on a lack of non-obviousness.

While there had been a long felt need for this type of pump and cap combination, these needs were secondary to the non-obviousness of the invention.

The obvious nature of an invention, that is to say whether or not something is obvious, is a question for engineering and science. The competence of the court to arrive at the correct decision for non-obviousness is a separate issue in itself.

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 non-obviousness.

The patent in question in this case was granted to Adams for a wet battery which employed cathodes and anodes submerged in water (as the electrolyte). Adams claimed this battery was capable of producing constant potential regardless of the amount of current being drawn. Furthermore, he claimed a very large range of temperatures at which the battery was capable of operating.

  • The patent was issued by the government via the Patent Office.
  • The government infringed upon the patent during WWII by using this specific battery technology in vehicles used in the war.
  • Adams subsequently sued the government for infringement of his patent.

When Adams obtained his patent there were no other previous patents or treatises which demonstrated the feasible use of water as the electrolytic solution. The cathodes and anodes used by Adams in the battery were previously used, and so under 35 USC 102 this exact same combination of chemicals would not be patentable. However the patentability of the battery stems from the idea that it was non-obvious because it was not based solely on material substitution. If it had merely been a matter of material substitution, then the new battery would have achieved the same operating characteristics as previous batteries. Adams' battery achieved unexpected characteristics, which implies that the invention was non-obvious and therefore patentable.

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.

As seen in the case of Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969), an invention should be considered patentable if the combination of its parts produces a greater result than parts individually. In the case of Black Rock, the combination of parts did not achieve a better outcome than the parts were able to individually, and as such the patent was invalid.

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 extra piece of the process of invention which separates a non-obvious patentable subject matter from a product which any ordinarily skilled mechanic in the field could have created. In order to determine whether the inventive step is/was present during the creation process, the court put into practice a TSM Test. This test involves determining whether the patent subject material is Teaching, Suggesting, Motivating. The absence of TSM does not imply that the subject of the patent is not obvious, whereas non-obviousness implies that TSM does not exist. The lack of an inventive step and related lack of non-obviousness fails to bring about the advancement of science in the art.

Relationship with Novelty

Novelty, as defined in 35 USC 102, essentially means that an invention must be new, which implies that it cannot have existed previously. Novelty is significantly related to non-obviousness, especially in the case of combining previously known parts to create a new invention. In order for a patent to be valid, it must be both new and non-obvious. Non-obviousness seems to imply novelty, and novelty non-obviousness; for if an invention were obvious then it could not be considered a novel idea, and if an invention were not novel then it would certainly be obvious.

Secondary Considerations

While secondary considerations cannot single handedly prove the non-obviousness of a patent, they can serve to assist in proving the non-obviousness when used in conjunction with other significant or primary considerations. Such secondary considerations include, but are not limited to:

  • commercial success of the invention;
  • long-felt needs for the invention;
  • failure of others to find a solution;
  • significant attempts over time to find a solution;
  • acceptance of the invention in the field;
  • unexpected results of the invention;
  • "experts" in the field regarding the invention as impossible;
  • etc.

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