Homework 4 - Edit Nonobviousness Page (Potter)

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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 and useful. Simple inventions or improvements could be patented as long as that exact thing had not been created before. 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."

The key precedent set forth in Hotchkiss v. Greenwood was the idea that "unless more ingenuity and skill in applying the old method ... were required in the application of it ... 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."

Until the Patent Act of 1952, this would serve as the fundamental basis for deciding the nonobviousness of a patent.

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.

A&P Tea v. Supermarket Equipment builds upon the precedent of Hotchkiss v. Greenwood and provides more insight into what constitutes "invention."

The decision of the court discussed the level of invention necessary to determine nonobviousness. It was conceded that the device filled a "long-felt want" and was commercially successful, but that if there was no invention to the device it was still not patentable. Thus, long felt need and popularity were secondary considerations.

It was conceded that the device filled a long-felt want and enjoyed commercial success, which can be indicators of nonobviousness, but that there was not enough invention to warrant patentability
"...only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."
"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."

The concurring decision of Justice Douglas took the decision further, claiming that the liberality of patents had departed from the purpose of patent law.

"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."

This case stressed the consideration of the fundamental purpose of patent law. Patents are meant to encourage progress and innovation by providing an incentive for disclosure those who have made significant contributions to their field of interest. The nonobviousness requirement is so important because if patent protection was available to every trivial invention or improvement, progress in that field would be stifled until the patent expired, at which point another trivial invention would halt progress again. Nonobviousness is fundamentally a check that a patented device is, in fact, a significant contribution.

The test set forth in this case is that an invention is likely to be obvious if it combines familiar elements and does nothing more than produce predictable results.

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.

It is basically a codification of the judicial precedents set forth in Hotchkiss and A&P, though the focus is shifted from the word "invention" to "obvious," which grants further clarity to Hotchkiss and A&P, as "nonobvious" is a slightly easier concept to apply than "invention," which seems very broad.

Later cases refer to section 103 in lieu of Hotchkiss or A&P as it is succinct and explicit.

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"

Lyon's method had been explored in the prior art, specifically by Cartwright and Hewlett, but it was ultimately abandoned because the coating scratched more easily. This would have served as a deterrent rather than a motivation to further pursue Lyon's method, so it is hard to argue that it would have been obvious.

Lyon's method also provided a solution to a longtime problem in the industry. The fact that others had tried to solve this problem and failed indicates that the Lyon's method was likely not obvious.

Graham v. John Deere (1966)

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.

Basically, the Graham precedents lay out a method of determining obviousness relying most heavily on a technical analysis of the invention as it relates to the prior art while also drawing insight from commercial and other "social" considerations.

The decision also noted the importance of the file wrapper of a patent application, and that attention must be payed throughout the entire process in order to determine the legitimacy of the claims.

"Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent."

The court stressed that the distinction between what is obvious and what is not would not be uniform, as each invention/case is unique, so it would still have to be determined on a case-by-case basis, but that strict adherence to the test above would produce "uniformity and definiteness".

This case also dealt with the relationship between the relatively new Patent Act of 1952 and the long standing judicial precedents concerning patents.

"We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Additionally, the Court looks back to Thomas Jefferson, who was probably the most influential person in the establishment of U.S. patent law.

  • Jefferson was very much opposed to the idea of monopolies and thought that even limited monopolies should be avoided as much as possible
  • He did, however, recognize the economic and social incentive of granting limited monopolies to inventors to encourage innovation
  • He stressed the importance of "drawing a line between the things that are worth to the public the embarrassment of an exclusive patent, and those which are not"

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.
  • This case was similar to Lyon v. Bausch & Lomb in that the decision that the patent was nonobvious relied on the fact that the prior art was a discouragement rather than an encouragement to pursue the device in question.
    • "This is not to say that one who merely finds new uses for old inventions by shutting his eyes to the prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in the old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
  • The primary stress is on a technical analysis of the device, with secondary importance given to economic and social repercussions of the device.

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.

  • It was reiterated that patents should not be allowed "whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
  • This case was another example of an invention that combined two known things and yielded an entirely expected result, which, according to A&P, makes it obvious

Suggestion to Combine (The TSM Test)

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.

This has come to be referred to as the TSM test. Under the TSM test, an invention is proved obvious if there was “some motivation or suggestion to combine the prior art teachings” that could be found in the prior art, the nature of the problem, or something clear to a person of ordinary skill in the art.

The TSM test and its proper application is discussed in the Supreme Court case KSR v. Teleflex

  • The KSR case was interesting in that the District court rejected the validity of the patent under the TSM test but the Court of Appeals held the validity of the patent under the same test
    • The Supreme Court rejected the validity of the patent and held that the TSM test must not be applied too rigidly, otherwise it loses its purpose
      • While it is important to establish "uniformity and definiteness" in decisions on nonobviousness (as set forth in Graham), this is achieved through a "functional approach" to the case at hand (Hotchkiss)
  • Graham sets forth a standard for broad inquiry that loses its effectiveness if it is followed too literally or rigidly
  • The TSM test is meant to be a "helpful insight," not a rigid formula. As stated in KSR,
"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents"


It is also important to note that the TSM test is broad and complex. Its scope is not limited to one field of inquiry. KSR expands the concept of obviousness beyond the scope of the prior art relating to the specific problem at hand. In other words, common sense is another important consideration when determining obviousness.

"A person of ordinary skill is also a person of ordinary creativity, not an automaton."

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

Very few inventions are truly "novel" because they are almost always a combination of things and ideas that are already known. Combining things in a new way doesn't guarantee patentability (as argued in Hotchkiss), which is where nonobviousness comes in. The test of nonobviousnes, in some sense, is a test of whether or not an invention is new enough.

Nonobviousness vs. Invention

What has come to be known today as the idea of "nonobviousness" was originally introduced as "invention." In Hotchkiss v. Greenwood the court decided that the knob in question was simply a combination of old elements did not warrant patent protection because "there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention." This case laid the fundamental groundwork for nonobviousness in patent law, demanding an inquiry into the prior art when determining whether or not a device was worthy of patent protection. The idea that there must be some level of invention beyond that of a person with ordinary skill in the art served as the broad basis upon which to judge patentability.

A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) addressed some of the difficulties with the precedents laid out in Hotchkiss, as to what constituted an invention.

"The concept of invention is inherently elusive when applied to a combination of old elements."

The court addressed that this difficulty and the vagueness of the Hotchkiss precedents, had yielded a history of courts very cautious to grant that patents were valid. They further refined the idea of "invention" by saying that a combination of old parts may be patentable if if contributes something new.

Then, in 1952, Congress passed the Patent Act, which added Section 103 to the US Code. While section 103 was essentially a codification of the judicial precedents up to that point, the language used required that a patentable device or process must not be "obvious" to someone skilled in the art. This represented the shift from the idea of invention to the idea of nonobviousness. In Graham v. John Deere, 383 U.S. 1 (1966), the court discussed the new law and determined that while the language used was slightly different, the overall purpose was the same.

"Although 103 places emphasis upon inquiries into obviousness, rather than into "invention," the general level of innovation necessary to sustain patentability remains unchanged under the 1952 Act."

They determined that the "nonobviousness" test was more practical than the "invention" test because it more clearly established a level of difference required between the claims under consideration and the prior art in the field. After the 1952 Act, courts would refer to 35 USC 103 and "nonobviousness" instead of Hotchkiss v. Greenwood and "invention."

Ordinary Skill in the Art

The idea of ordinary skill in the art is central to nonobviousness. It provides the meter stick by which standards of patentability can be set. In order to determine whether or not an invention is obvious, the courts or patent examiners must decide whether or not it required a level of skill and ingenuity beyond an average person familiar with the art. This test is intentionally very broad and vague, because no strict standard can be applied uniformly across every industry or science. The prior art in the field at hand must be studied and then compared to the invention in question to determine the degree of improvement.

In order to determine exactly what constitutes ordinary skill in the art, often older patents must be reviewed, the industry's commercial/market activity must be studied, and sometimes those considered "experts" in the field are asked to lend their insight.

Summary of Nonobviousness Precedents

Almost all inventions are a combination of previous inventions (very little is truly “novel”). It then becomes important to determine whether or not said combination actually constitutes an “invention,” i.e. whether or not it was an “obvious” combination.

  • In order to be patentable, an invention must require some level of skill or ingenuity beyond that of a person with ordinary skill in the art at hand (Hotchkiss)
  • If the combination of known parts does nothing more than produce an expected result, it is probably obvious. In order to truly be an invention, the whole should in some way be greater than the sum of the parts. (A&P)
  • If an invention answers some long-felt need in the market or industry, it may not be obvious. Especially if others have tried and failed to solve the same problem (Lyon) or the prior art suggests against the particular method used (Adams), the invention is likely not obvious.
    • According to the Graham outline, these are secondary considerations that may provide important additional insight after considering Section 103/Hotchkiss
  • A sort of checklist of criteria to determine nonobviousness is laid out in Graham, consisting of primary and secondary considerations
    • Primary Considerations
      • The scope of the prior art
      • The differences between the prior art and present claims
      • The level of ordinary skill in the art
    • Secondary Considerations
      • Long felt and unanswered need
      • Attempt and failure of others to answer the need
      • Commercial success
      • Discouragement in prior art to pursue present invention
  • If there is some teaching, suggestion, or motivation found in the prior art to combine certain elements in such a way as to produce a certain result, that combination is most likely obvious (TSM test, KSR)

These precedents and tests form the basic framework within which nonobviousness can be determined. It is important, though, that they are not treated as rigid formulas, because different scenarios may call for different interpretations. Thus, somewhat paradoxically, inventions must be examined on a case-by-case basis to achieve a sense of uniformity in decisions.