NONOBVIOUSNESS (JWB)
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.
- A “mere substitution of one [material] for another” did not hold non-obviousness
- A trivial combination of a material 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
- For patentability, a combination should
- complete a task better than any of its parts
- combine parts in a way that others have tried and failed
- Before this case, Congress only required that an invention must be new and useful
- "Unless more ingenuity and skill in applying the old method" were necessary "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. In other words, the improvement is the work of a skillful mechanic, not that of the inventor."
Hotchkiss changed the requirement from being simply 'new and useful' to something 'inventive.' In this case, the act of substituting an existing material into an existing design does not show inventiveness, and therefore does not deserve a patent. After this case, the standards of patentability were much more rigorous. The dissenting judge on the case argued as long as the product was 'cheaper and better' than its predecessor, it deserved a patent. He thought inventiveness was not necessary, because some inventions happen by accident. It would be decades before law would reflect his opinions, because after this case, inventiveness became a key to patentability.
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.
- ‘Combination’ implies the presence of invention, ‘aggregation’ implies absence of invention
- Old elements which made up device must perform additional or different function in the combination than they perform out of it
- Process of inventing must be difficult, the invention must be a scientific advancement, and it must be important
A&P built on the requirements set forth by Hotchkiss, that 'inventiveness' had to be present for a patent to be valid. This case specified that combinations of old elements had to perform additional or different functions than the elements of the combination alone. It also set a standard that inventions had to be difficult to bring about, making the patentability of the invention dependent on the process of inventing.
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.
Prior to this Section, the standards for patentability were outlined in 35 USC 101:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 103 added that inventiveness had to be present, such that it would not have been obvious to a person having ordinary skill in the art, because if that were the case, it was not inventiveness that was present but knowledge of the mechanic. This added a very difficult new aspect to patentability.
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
- Inventor of prior art researched the use of adding a second step to his process, but abandoned it.
- “When [the second step] 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'"
This was the first case since the codification of nonobviousness from the 1952 Act. The Act put the practices of the last hundred years since Hotchkiss into US Code, namely that an invention must not be "obvious to a person having ordinary skill in the art." This lessened the rigorous standards of Hotchkiss and A & P (which did not allow for substitution of materials or the combination of old elements without new function). Because the addition of the second step in the coating process became the industry standard upon its publication, and that the most competent workers in the field had been seeking such a coating process for ten years, there is no way an person of ordinary skill in the field could find the addition of the second step to be obvious. Just because it was a minor change to an established practice does not make it obvious.
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.
- With respect to each patent involved here the differences between the claims in issue and the pertinent prior art would have been obvious to a person reasonably skilled in that art.'
- After studying the prior art and establishing what 'ordinary skill' is, it was found that switching the position of a shank and lower plate would have been obvious to any mechanic with ordinary skill.
The Constitution and US Code (up through 1952) had words like “inventiveness." In Section 103, the last sentence of 103 states that patentability cannot be affected by the manner in which the invention comes about. In other words, inventions do not need to come from rigorous scientific practice; the means of invention can be a simple thing and still be nonobvious. With Section 103 of the 1952 Patent Act, Congress added the statutory nonobvious subject matter requirement (originally ordered in Hotchkiss in 1850), which merely codified judicial precedents requiring a comparison of the subject matter sought to be patented and the prior art, tying patentable inventions to advances in the art. Section 103 emphasizes nonobviousness, rather than 'inventiveness.' This section permits a more practical test of patentability. The determination of "nonobviousness" is made after establishing the scope and content of prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art. The Constitution and US Code (up through 1952) had words like “inventiveness" as a requirement for patents. In Section 103, the last sentence of 103 states that patentability cannot be affected by the manner in which the invention comes about. In other words, inventions do not need to come from rigorous scientific practice; the means of invention can be a simple thing and still be nonobvious.
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 involved the use of Magnesium in a wet battery. Even though prior art had used Magnesium instead of zinc, none of the prior art indicated that water could be used as the battery's fluid (rather than harmful acidic liquids). Because the battery unexpectedly outperformed the prior art, it was nonobvious. Anything with unexpected results cannot be called 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.
Pavement Co. combined a radiant-heat burner, a spreader of the bituminous material against the strip, and a tamper/screed for shaping the newly placed material. A heater has always been used laying asphalt as far back as 1905. Pavement Co. claimed that its patent involved a combination of prior art which produced the new and useful result of eliminating the cold joint. Even though it was new and useful, "it added nothing to the nature and quality of the radiant-heat burner already patented. [The USSC] concluded 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," reflecting standards of combining old materials from A & P.
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
The standards of patentability have always included novelty, dating back to the 1790s. The first standards required an invention to be 'new and useful', and that standard has remained to date. After 1850 (and codified in 1952), an invention had to be both novel, useful, and nonobvious. However, nonobviousness and novelty are not mutually exclusive; an invention can have novelty and not nonobviousness. For example, Hotchkiss' doorknob was novel but obvious. No one had yet made a doorknob out of clay/porcelain with the metal shank/spindle before, so his invention was novel. However, it was ruled that such a substitution of materials was obvious to someone with ordinary skill in the art, and the invention lacked nonobviousness. On the other hand, almost everything nonobvious is novel. If something is nonobvious, then something about a change made to a prior invention was not obvious to a person with ordinary skill in the art. The fact that this definition of nonobviousness assumes changes from a prior art, and is therefore novel.
Nonobviousness vs. Invention
After Hotchkiss, inventiveness became a standard for patentability. Inventiveness requires some skill in the development of the invention. After 1952, the inventiveness wording became 'nonobvious.' Nonobviousness simply requires a difference from the prior art and a definition of 'ordinary skill in the art.' The dissenting opinion of Hotchkiss was that the amount of skill required to invent the doorknob should not matter, as long as the invention is new and helpful, because sometimes great inventions happen by accident. However, the opinion help by the majority of the Court, and reaffirmed in A & P, was that an invention had to be difficult, a scientific advancement, and important. After the 1952 Act and Graham case, Section 103 permitted a more practical test of patentability. The determination of "nonobviousness" is made after establishing the scope and content of prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art. Perhaps most importantly, the last sentence of 103 states that patentability cannot be affected by the manner in which the invention comes about. In other words, if someone stumbles upon a useful, new, nonobvious invention (without rigorous scientific testing), it is still patentable.
Secondary Considerations
Other considerations besides the prior art and 'ordinary skill' factor into the decision of obviousness or nonobviousness. For example, in the Lyon case, the industry had been searching ten years for coating method. The fact that the leaders in the industry could not find a proper method after ten years helps prove that Lyon's invention is nonobvious. This thought is reaffirmed in Graham. Commercial success, unsolved needs, failure of others, etc., might be utilized to give light to the circumstances of obviousness or nonobviousness.
