Hotchkiss v. Greenwood (JWB Class)

The Case

• Novelty: combining shank/spindle with clay/porcelain door knob (which had previously only been used with metal door knob)
• Supreme Court had to decide if a combination in itself was patentable
  • Ultimately decided that a “mere substitution of one for another” did not hold non-obviousness
  • The material had been known
  • Not a new knob, not a new way to manufacture – trivial combination is not an invention
  • Only better because of the superiority of the selected material – didn’t make it better; took something that was already better and tried to patent it
• Dissenting opinion
  • it shouldn’t matter that it didn’t take skill (of an ordinary mechanic); as long as it is new and helpful
    • some discoveries happen by accident
  • now it does matter – needs skill for non-obviousness

Non-Obviousness

• Patent: novelty, utility, non-obviousness (inventiveness, invention, combinations)
• For patentability, a combination should:
  • Complete a task better than either of its parts
  • Combine them in a way where others have tried and failed