Homework 4 - Editing NONOBVIOUS - Due 2/9

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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.
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.

Personal Notes on Hotchkiss v. Greenwood taken from reading and class discussion

Conditions in 1850 for non-obviousness

  • Used the terminology "new and useful" to describe patentable subject matter as this was all that was codified at this time
  • Any machine made of materials better adapted for its purpose than previously used materials cannot be distinguished from the old one and is therefor not entitled to a patent
    • Court stated that a substitution of materials was not enough to qualify for a patent
  • Improvement must be the work of an inventor, no a skillful mechanic
  • Dissenting judge in the case believed the standard for patentability should be if the invention was "better and cheaper"
    • Also believed "Law has no regard to the process of mind" so inventiveness is not a proper standard

This case because the first to address the standard of patentability that today is known as "non-obviousness." Although the only codified standards for a patent at this time were novelty and utility, the Hotchkiss court set a precedent for a new standard that it deemed "inventiveness." According to this court, in order to be the subject of a patent, a machine, manufacture, process, etc. had to require more ingenuity and skill to create than the "work of a skilled mechanic acquainted with the art."

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.

Personal Notes on A&P Tea v. Supermarket Co. taken from reading and class discussion

Conditions for non-obviousness in 1950

  • "New and useful" were still the codified standards
  • This case set a precedent for dealing with combination patents under the precedent of non-obviousness set by the Hotchkiss court
    • Must decide what to do if nothing tangible is new and the invention is only bringing old elements together
    • Court had never given a precise definition of this test
  • Determined that the combination must perform an addition or different function than the individual parts which were previously known would have performed
  • The lower courts in this instance had upheld the validity of the patent largely on the grounds of its commercial success
    • The Supreme Court determined that under the Hotchkiss precedent, this was not enough to earn the protection of a patent as economic success was a secondary consideration

The A&P court essentially upheld the standard of non-obviousness that was initially recognized in Hotchkiss. It was no longer enough for an invention to be "new and useful," it also needed to require sufficient skill to develop. The court cited US patent laws which state that the purpose of patents is to promote science and the useful arts and stated that by grating patents for inventions which required no skill beyond that which would be expected of anyone reasonably familiar with the related art was in fact hindering the advancement of science by removing common knowledge from public use. Again the lower courts in this case relied on standards of commercial success and the fulfillment of a long-felt want for a more convenient supermarket counter, and again the USSC determined that these were not strict enough standards for patentability as they could be met with inventive efforts. Although still not codified, the concept of inventiveness was again used a standard for ruling a patent invalid, upholding the precedents set in Hotchkiss.

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.

Personal Comments

This addition to US federal patent law served to codify standards that had been in place in the court system since the Hotchkiss court set the precedent for the standard of inventiveness, which evolved into the concept of non-obviousness. Although this statute codified this standard, it did so in a very broad way that leaves much room for interpretation by the courts, as can be seen the the following cases relating to patentability under non-obviousness. In fact, the standards of non-obviousness outline in section 103 are in general less strict than those of inventiveness employed by the Hotchkiss and A&P courts, but after this statute was added, it was no longer legally enough for a patent to be granted for a new and useful machine, manufacture, process, etc.

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

Personal notes on Lyon v. Bausch & Lomb taken from reading and class discussion

  • The court had to determine if the patent depended on the few alterations Lyon had made to instances of prior art
  • Comments of the court in light of the Act of 1952
    • Case would have been invalid 25 years prior because the standards for non-obviousness were more strict under the precedent of Hotchkiss
    • The Act of 1952 was supposed to apply retroactively which is unconstitutional usually, but the court stated that this act merely codified standards which should have already been in use by the courts based on the precedents of Hotchkiss and other cases, therefore applying this statute to patents grated before 1952 was legitimate

This was one of the first Supreme Court cases to analyze the validity of a patent under the Act of 1952, passed three years before this decision. While much of this case dealt with the novelty of the patent, a separate issue, once Lyon's invention was determined to be novel the court then had to determine if it was also non-obvious. The following excerpt from the case sums up the court's findings under 103:

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

Here the court addresses another test of non-obviousness: whether there had been previous instances of unsuccessful attempts to solve a problem addressed by a patented invention. If there were a number of such instances, it is obvious, according to the Lyon court, that the present invention was non-obvious, or others would have already discovered it.

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.

Personal notes on Graham v. John Deere taken from reading and class discussion

  • Patent clause is a grant of power and limitation
  • Congress may set out conditions and tests for patentability, such as novelty and non-obviousness
  • Jefferson was a founder of the patent system
    • Recognized the social and economic rationale of the patent system - to bring forth new knowledge
  • Original patent board formed a set of patent rules
    • Congress stayed away from statutes other than novelty and utility
    • Hotchkiss first formulated a general condition for patentability - "invention"
  • Act of 1952 laid out the conditions in three sections
    1. 101 and 102 - novelty and utility
    2. 103 - non-obviousness
    • Uses non-obvious instead of the previous condition of invention because it is more clear
      • The Graham court tried to go in another direction that inventiveness
  • According to the court, Section 103 requires more than ordinary skill to support a patent as evidenced by the following excerpt:

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.

    • According to this court, whether or not an invention is patentable with regards to non-obviousness should remain an engineering-based decision and non a business-based one, hence why such factors as commercial success, satisfying an long-felt need, etc. should remain secondary in considerations to those listed in the above quote
  • The last sentence of 103 basically means that an invention does not require a “flash of genius”
    • Method of discovery is not important

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.

Personal notes on US v. Adams taken from reading and class discussion

  • In this case, the government was being sued for infringement and claimed that the invention in question (a wet battery) provided no significant change from prior designs even though it was an improvement
    • Several errors in this as it was the first water-activated battery with the specific electrodes
  • If his battery was merely full of identically functioning substitutions it would not have been an improvement
  • The Supreme Court in this instances also conclude non-obviousness on the following bases:
    • Long accepted notions about batteries would have deterred an inventor from the combination used by Adams
    • Noted experts expressed disbelief when Adams first presented his design
    • The battery produced unexpected results (all positive)
    • Primary considerations (as outlined in the Graham case) for non-obviousness were applied and the USSC determined that on an engineering level Adams’ invention was a very unique combination

This case established a few new standards by which the obvious or non-obvious of an invention could be determined. The standards used in this case centered mostly around the fact that while the present invention was a combination of prior art, the combination was a valid patent because it produced new and improved results than one would have expected from the individual pieces. Essentially, if the battery had merely been an obvious combination of prior art elements, the results would have been just as obvious, which in practice was not the case. The court overwhelmingly showed that the combination used by Adams had been widely discredited originally but managed to produce improved performance compared to the most similar forms of prior art and therefore the batter could not be considered obvious.

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.

Personal notes on Anderson's Black Rock v. Pavement Co. taken from reading

This case once again addressed the issue non-obviousness as it relates to combinations of prior art. In this instance, the Supreme Court determined that a combination of a paving machine with a radiant-heat burner was obvious because the two machines performed the same tasks despite being used in combination. This decision seems a bit counter to the recent standards of non-obviousness because the combination of the two machines did serve to produce a more desirable effect of joining strips of blacktop compared to a standard "cold joint." The court seemed to base its decision on the fact that there was no inventive nature to combining two old machines so that they performed, individually, the same tasks as before, although one could argue the validity of this patent based on the fact that the combination did provide an improved result, the standard usually applied since the Act of 1952.

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

Relationship with Novelty

It is common for people to confuse the concept of novelty with that of non-obviousness when considering the validity of a patent, however the two are very separate issues and it is important to analyze a patent under both standards separately. Novelty is laid out in 35 USC 102 in order to determine if an invention is patentable with regards to several forms of prior art. The specifications for novelty deal with whether or not the specific invention in question had been previously patented or disclosed in some form, such as if it was in use by the public or printed in a publication prior to the patent application. Just because an invention is determined to be novel, however, does not guarantee that it is non-obvious, however the reverse is usually true. Novelty focuses on prior instances of nearly the exact same nature as the current invention whereas the purpose of non-obviousness is to determine if specific changes from instances of prior art, or combinations thereof, would have been obvious to a person of ordinary skill in the art. With these considerations in mind, it is important not to confuse and interchange novelty and non-obvious analysis for determining the validity of a patent.

Nonobviousness vs. Invention

The concept of non-obvious was first disclosed in 1850 in the Hotchkiss case, however the court at that time and up until 1952, referred to it in terms of inventiveness. The two standards are very much related but differ enough that it is important to clarify the distinction. The concept of an invention seems to imply that to be the subject of a patent a discovery must be entirely new and, more importantly, that the holder of the patent served as an inventor in the process of making the new machine, manufacture, process, etc. An invention seems to require a certain amount of skill to develop, as said in Hotchkiss: more than is possessed by a person of ordinary skill in the art. In order to be non-obvious, however, the new device need only not be obvious to the same person of ordinary skill. The difference here arises from the focus of the standards. The concept of an invention is related to how a device is created whereas the concept of non-ovbiousness relates direction to the invention itself. In this manner, non-obviousness does not analyze the method by which a device was discovered, but merely the device itself. As a result, the standard of non-obviousness is less strict than that of inventiveness because it does not care about the means by which a new device was created. Under non-obviousness, a person of ordinary skill may be perfectly capable of producing a similar device in their art as a patent applicant as long as it would not have been obvious to them to do so, whereas this would be unacceptable under the standards of invention. The difference between the two is codified in 35 USC 103 which states "patentability shall not be negatived by the manner in which the invention was made." This essentially means that the method of discovery of a patent is not important, it does not require a "flash of genius," but rather what is important is the discovery itself.

Secondary Considerations

As first mentioned mentioned in the Lyon case and further disclosed in Graham, there are secondary considerations for non-obviousness which may be a factor in determining the validity of patents under section 103. These considerations include

  • Commercial success
  • Fulfillment of a long-felt industry need
  • Previous failures to find a solution

among others, but as stated by the Graham court these "might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented" but should not be the basis for deciding that validity or invalidity of the patent. The purpose of defining these considerations as secondary is to ensure that the standards of non-obviousness remain primarily a matter of engineering and science (which the patent laws are designed to promote) instead of a matter of economics, which is not the intent of federal patent law.

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