Homework 4 - ewolz
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.
In Hotchkiss v. Greenwood, Hotchkiss alleged that he had invented a new and useful improvement by making knobs of clay and porcelain with dovetail cavities used to assist in attaching the knobs to the shank and spindle. The court found however that while there was no evidence of clay knobs being made with dovetail cavities, the art of making knobs of clay was "known and practiced". Likewise, dovetail cavities were not novel either, having been the mode of connecting doorknobs of wood or metal in the United States for many years.
It was found that simply substituting one material for another without any further changes was not an invention and not patentable. Within this case, it was said that if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void". By substituting clay for wood or metal, it was found that the improvement of the work (creating better knobs cheaper) was simply the work of the skillful mechanic and not the inventor.
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.
In this court case, the patent in question claims invention of a cashier counter with a three-sided frame/rack which when pushed or pulled would move groceries deposited within. The frame is kept on the counter by guides. The District Court recognized that each element in the device was known in prior-art, yet the combination of a counter with an extension to receive the unloading tray was a novel feature and thus qualifies as a "new and useful combination". The Court of Appeals agreed that this counter qualified as an invention, and pointed at the counters commercial success as evidence of it being a new invention.
The Supreme Court however decided otherwise. Initially, it reviewed the extension of the counter, which the lower courts perceived as an invention. The Supreme Court decided the extension was not an invention for two reasons. One, it was not mentioned in the claims of the patent, and two, even if it was mentioned in the claims, the length of the counter has traditionally been whatever length needed by the merchant. The Supreme Court then reviews the fact that the "invention" is a combination of previously known elements. The court states that "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable". As all the parts within the merchant counter performed the same function, the act of giving a patent to this device would "withdraw what already is known into the field of its monopoly and diminish the resources available to skillful men".
The court then addresses the evidence used by the Court of Appeals and respondents in saying this device is patentable due to it fulfilling a long-felt want and its commercial success. The Supreme Court explicitly states that "commercial success without invention will not make patentability".
Lastly, Justice Douglas discusses the original purpose of patents, and makes a distinction between "inventions" and "gadgets". Justice Douglas recalls that patents serve to "promote the progress of science and useful arts", and that the reward for doing so was a limited time monopoly given to the inventor for making a contribution to scientific knowledge. As a result, the courts have commonly taken "inventive genius" as the test for patentability. He states the intention of patents were not to provide monopolies for "every trifling device, every shadow of shade of an idea" which would occur to any skilled mechanic.
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
This case was brought to court shortly after 35 US 103 was adopted in 1952, which attempted to codify the standard of non-obviousness that had been in use by the courts since Hotchkiss v. Greenwood. This case dealt with two main questions, the first being whether or not the invention had been disclosed in any earlier patent, and secondly, whether or not Lyon's contributions would support a patent. Of these two questions, it is the second one that needs to be focused on as it is the one that deals with non-obviousness while the former deals with novelty.
Lyon's process for coating optical elements(2398382) consisted of two steps. The first consisted of heating an optical surface in a vacuum until water and grease on the surface have evaporated. The second was to vaporize an inorganic salt within the vacuum while keeping the optical surface heated. Of all the similar patents found, none suggested that the optical surface should be kept heated while being coated. It is here that Lyon makes his contribution to the process-keeping the optical surface heated while being coated.
In order to show that Lyon's process was non-obvious, Learned Hand points to the fact that "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". Evidence existed that showed people searched for a solution for many years but could not find one. Perhaps most interesting, even when experts in the field attempted to apply the coating to the heated surface, they were unable to get it to work completely (Hewlett) and eventually abandoned further work in this area. This abandonment gives more credence to the non-obviousness of Lyon's addition to the process, as not only did the abandoned project "fail to advance the art; it put the process among those efforts that are proved useless".
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.
In this case, two District Courts ruled in opposite ways which led to the intervention of the Supreme Court. This case dealt with improvements to plows made by Graham that reduce damage to plow shanks when they come across obstructions such as rocks in the soil. This case is the first time that the court literally deals with section 103 of the US Code since its adoption in 1952. The court begins by going through the history of the patent laws, and points out that though the language of the patent laws have changed completely since the 1850s by congress, the court believes it represents the same standard.
When the court reviewed the Patent Act of 1952, it states that the distinction emphasized by Congress was "nonobviousness", which was to be used as the operative test rather than the less definite "invention" language that was a result of Hotchkiss v. Greenwood. Section 103 of Title 35 of the US code is the first statutory expression of an additional requirement for patentability. Under 103, the obviousness or nonobviousness of the subject matter is determined by "the scope and content of prior art are to be determined, differences between prior art and claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved". While these are the primary considerations, secondary considerations such as "commercial success, long felt but unsolved needs, and failures of others" may possibly be relevant although not statutorily required.
The patent in question(2627798) made several slight changes to a previous patent(2493811) which amounted to moving the plow shank so that it is situated underneath the lower hinge plate with an attaching rod at the end of it rather than sandwiched between the upper and lower hinge plates. The motivation for this change was the fact that when the plow shank was sandwiched between the hinge plates and rotated in its upward position, the shank would apply pressure to the upper plate and cause damage to a part of the plow that was hard to repair.
In the end, the court found no operative mechanical distinctions or nonobvious differences between Graham's '798 patent and the prior art (his '811 patent as well as other plows such as those made by Glencoe). The "free flexing" qualities of the shank due to it being placed below the lower hinge plate and argued for as a crucial difference by the petitioners wasn't even referenced in the patent application. Additionally, it was found that such free flexing played a very small part in the plow as a whole, and that if mechanics wanted to prevent the sandwiching of the shank between the hinge plates while maintaining its rotating capabilities, the obvious location would have been to place it below the lower hinge plate.
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.
The patent in question in this case regards the first practical, water-activated "wet" battery filed by Adams. The object of this battery was to provide a constant voltage and current without the use of acids. Additionally, the battery operates without generation dangerous fumes, is light in weight with respect to capacity, and can be manufactured and distributed in a dry condition and is activated by adding water. The battery could also perform over a very wide range of temperatures.
When Adams brought his battery to the US Navy, they did not believe his claims and decided the battery was not workable. About two years later however, the government concluded the battery was feasible and entered into contracts with various battery companies to produce it without notifying Adams, leading to this lawsuit.
In defense, the US Government challenged the patent under sections 102 (novelty) and 103 (non-obviousness). Again, it is the second of these challenges that are relevant for this section. The government states that the electrodes in Adam's battery were merely substitutions of pre-existing battery designs used by prior art. If this was the case, the patent could have been invalidated in a similar way to the Hotchkiss patent discussed earlier. However, it was found by the court that Adam's battery "wholly unexpectedly" demonstrates several operating advantages over other batteries that a simple substitution of materials wouldn't have predicted. The court concludes that though the individual elements of Adams' battery were well known in prior art, combining them led to unexpected results that went against the mainstream scientific view. Therefore, the court rules that Adams' battery was non-obvious because it required that a person skilled in the prior art ignore consenting thoughts that batteries which continued to operate on an open circuit and heated during normal use were impractical as well as ignore the thought that water-activated batteries were only successful when combined with electrolytes "detrimental to the use of magnesium".
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 idea of the "inventive step" first came about in Hotchkiss v. Greenwood when the court realized that in order for an invention to be patentable, it must display that it is more than just "new or useful." The court decided that simply substituting one material for another, even if it was an improvement of the work, didn't have an inventive step. Inventiveness was determined by the test if the new device required "more ingenuity and skill than possessed by an ordinary mechanic."
The "inventive step" eventually transformed into the idea of "non-obviousness", which was codified in 1952 in 35 US 103.
Relationship with Novelty
It isn't enough that an invention or improvement thereupon be non-obvious, in order to obtain a patent, it must still conform to all the regulations of 35 US 102. That is to say, an invention must be both novel and non-obvious. In light of this, the validity of a patent can be attacked under both terms. In the case US v. Adams, 383 U.S. 39 (1966), the United States government challenged the validity of Adams patent both on the grounds that it lacked novelty (35 USC 102a) as well as obviousness (35 US 103). Novelty and non-obviousness are separate tests of patentability and both must be satisfied in a valid patent.
Nonobviousness vs. Invention
In Graham v. John Deere, the Supreme Court explores 35 USC Section 103 for the first time since the patent act of 1952. Justice Clark states that "patentability is to depend, in addition to novelty and utility, upon the 'non-obvious' nature of the 'subject matter sought to be patented' to a person having ordinary skill in the pertinent art." He notes that the first sentence of this section is "strongly reminiscent of the language in Hotchkiss." In both the precedent set by Hotchkiss and section 103, emphasis is placed on the pertinent art existing at the time of the invention as well as advances made in that art. Clark states however that in 103, Congress places an emphasis on "nonobviousness" as the operative test of the section, instead of the less definite "invention" language of Hotchkiss. As part of this new emphasis and understanding, it is thought that Congress attempted to abolish the controversial phrase "flash of creative genius" used in previous court cases. Though different wording, this new section sought to merely provide a statutory expression for the additional requirement of non-obvious while retaining the same level of patentability.
Secondary Considerations
As mentioned previously, the Supreme Court case Graham v. John Deere was the first case to deal explicitly with section 103 of the US code. Within this case, Justice Clark reminds the court that non-obviousness is one of three conditions that must be satisfied in order to obtain a patent. Determining non-obviousness can't just be a matter of opinion, but must be based on law. With that in mind, primary considerations for determining non-obviousness are the scope and content of prior art, the differences between prior art and the claims at issue, and the level of ordinary skill in the relevant art.
Justice Clark makes a distinction between these and secondary considerations such as commercial success, long felt but unsolved needs, and failure of others. These secondary considerations can help give light to the circumstances, but they are not grounded in statutes and cannot solely be used to determine non-obviousness.
This distinction between primary and secondary considerations can be grounded in Learned Hands conclusion in Lyon v. Bausch & Lomb. In this case, Learned Hand makes obvious that the scope of the prior art doesn't include Lyon's method of keeping the surface heated while applying the coating and that more than ordinary skill was required in creating this coating on the glass as several inventors had tried similar things and failed or abandoned their project. With this in mind, Hand then goes on to reference what we now call secondary considerations and states the fact that "the most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection;...number of attempts, none satisfactory;...supplanted the existing practice and occupied substantially the whole field" and that he sees no combination of evidence that could more clearly show that the change had not been obvious.
Ordinary Skill in the Art
Originally expressed in the bill of exceptions in Hotchkiss v. Greenwood, if "no other ingenuity or skill being necessary to construct...than that of an ordinary mechanic acquainted with the business, the patent is void" became a test used by the court to determine patentability. This test eventually became codified in Title 35 Section 103 of the US code, which requires that a patentable invention or improvement must be non-obvious. The idea is that patents are supposed to bring forth progress in science and the arts, and if something is obvious to a "mechanic of ordinary skill", than patenting such an "invention" reduces the knowledge available to skilled men.
