Homework 4: Non-obvious Page Edit

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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 established the criterion that, in addition, the invention must go above and beyond the "skill of an ordinary mechanic acquainted with the business." This threshold of "inventiveness" ultimately evolved into the idea of "non-obviousness."

The case brief states the following arguments:

...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."

This is essentially summed up in the statement of the case summary which reads, "if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void...."

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.
  • 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.

The case brief states the following arguments:

It is agreed that the key to patentability of a mechanical device that brings old factors into cooperation is presence or lack of invention.
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 store counter does what a store counter as has done.
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 stick of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.
The Court of Appeals and the respondent both lean heavily on evidence that this device filled a long felt want and has enjoyed commercial success. But commercial success without invention will not make patentability."

Within the concurring opinion, the following statements are made:

"It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end--the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance.

35 USC 103 (1952)

This section of the code was adopted in 1952 and prohibits a patent in a case where

"the differences between the subject matter sought to be patented and the prior art are such that 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."

Lyons v. Bausch & Lomb (1955)

In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) Learned Hand, in his brilliance, expounded on the new standard in this manner:

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 "non-obviousness." The criteria to determine non-obviousness 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.

Supporting statements from the case brief are as follows:

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 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 surrounding the origin of the subject matter sought to be patented.

U.S. v. Adams (1966)

In the case US v. Adams, 383 U.S. 39 (1966), the point that is emphasized is that ALL the evidence must be considered. Even small changes can have large consequences, and those small changes are relevant to a determination of non-obviousness.

As the case brief states,

As we have seen, the operating characteristics of the Adams battery have been shown to have been unexpected and to have far surpassed then-existing wet batteries. Despite the fact that each of the elements of the Adams battery was well known in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium. These long-accepted factors, when taken together, would, we believe, deter any investigation into such a combination as is used by Adams. This is not to say that one who merely finds new uses for old inventions by shutting his eyes to their prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness.
Nor are these the only factors bearing on the question of obviousness. We have seen that at the time Adams perfected his invention noted experts expressed disbelief in it. Several of the same experts subsequently recognized the significance of the Adams invention, some even patenting improvements on the same system.

Anderson's Black Rock v. Pavement Salvage (1969)

In the case of Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969) the Supreme Court returns to the idea of "inventiveness" by revisiting the old problem of when a combination of old or know elements can become patentable.

"We conclude that while the combination of old elements performed a useful function, it added nothing to the nature and quality of the radiant-heat burner already patented. We conclude further that to those skilled in the art the use of the old elements in combination was not an invention by the obvious-nonobvious standard. Use of the radiant-heat burner in this important field marked a successful venture. But as noted, more than that is needed for invention."

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.

Relationship with Novelty

Novelty is the idea of the "newness" of a patent's subject matter. The criteria for novelty can be found in Title 35, Section 102 of the US Code. Novelty does not imply non-obviousness, however, as can be observed in the case of Hotchkiss v. Greenwood. The "novelty" of substituting a metal or wooden door knob for a ceramic knob was not sufficient to establish the non-obviousness of that exchange, since the substitution was ruled to be well within the ordinary skill of the art.

Secondary Considerations

In an case for non-obviousness there are certain "secondary considerations" that may be taken into account to argue for or against the non-obviousness of a given patent's subject matter. These secondary considerations may act as supporting evidence for obviousness or non-obviousness, but by themselves may not be enough to settle the issue. The level of "inventiveness" still needs to be primarily determined from comparison with the prior art and ordinary skill in the art.

Secondary considerations include

  • commercial success of the invention;
  • long-felt but unsolved needs;
  • failure of others to find a solution, etc.

This list of secondary considerations, and the concept of secondary considerations itself, originate from Graham v. John Deere, 383 U.S. 1 (1966).

Additional secondary considerations that came up in US v. Adams, 383 U.S. 39 (1966) are (1) unpredicted/unexpected results and (2) expressed disbelief from other experts in the field.

Ordinary Skill in the Art

Ordinary skill in the art is one of the primary tests for determining a patent's subject matter's non-obviousness. By examining prior art and the differences between the prior art and the claims of a patent, the level of skill necessary to accomplish the "inventive" elements can be determined. If the level of skill appears to be above and beyond that of "someone with ordinary skill in the art," then non-obviousness can be established for that patent's subject matter.

Ordinary skill in the art was first established as a method of determining non-obviousness in Hotchkiss v. Greenwood.

Reiner v. I. Leon Co. (full text)

Reiner v. I. Leon Co.

South Corp. v. US (full text)

South Corp. v. US