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.
It can be seen in this pronouncement of the court opinion by Justice Nelson, that the original requirement of novelty is not satisfactory, as the knob designed by Hotchkiss is a new product. Although the term "nonobviousness" will not be developed for some time, the court's decision hinges on the fact that the mere substitution of better suited materials is too obvious a development to warrant a patent. The fundamental premise of nonobviousness is presented a few paragraphs later, as Justice Nelson states,
- "....unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingeunity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor."
Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field.
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. In particular, this case dealt with three significant issues related to the process of determining patentability:
- First, that the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
The importance of a "long felt but unsatisfied need" in the determination of nonobviousness is that it is difficult to claim that an invention is obvious if there has been a demand for a certain product and no one has been able to fulfill that need. However, it is important to note that there are two requirements that must be met here. There must be a need for the product and the need must have existed for a long time. If the need is relatively new, then it is difficult to claim that a person with ordinary skill in the field would have not developed such a design had he been aware of demand for such a device. On the other hand, if the market related to a certain field has provided no sign that there is a need for such an improvement, then it can be argued that the design would have been obvious had anyone expressed interest in the proposed device.
- Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
In Graham v. John Deere, the history of the patent process is discussed, particularly Thomas Jefferson's outlook on the purpose of providing a patent. Jefferson made it clear that patents were only to be granted for inventions that furthered human knowledge and were new and useful. The granting of patents for small details, obvious improvements, or frivolous devices was neither worthwhile nor helpful. In A&P v. Supermarket Corp., Jefferson's sentiment is echoed, except the focus of the court is narrowed further to the important frontier of science and engineering. As Justice Douglas states, "the purpose is to promote the Progress of Science and Useful Arts," and the two disciplines most associated with progress at that time (and still currently) are science and engineering. Even later, the court states, "patents serve a higher end-the advancement of science," which make this point very clear.
- Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
The court's outlook on the evaluation of patents in regard to the combination of prior elements is best summarized in the following explanation. "The mere aggregation of a number of old parts or elements which, in the aggregation, peform or produce no new or different function or operation than that theretofore performed or produced by them is not patentable invention....only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."
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.
In evaluating nonobviousness of a patent, this is the fundamental evaluation criteria. The cases discussed on this page provide examples of devices that did and did not adhere to section 103. Furthermore, the cases exemplify specific aspects of an invention that can be used in the determination of nonobviousness.
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
The point discussed by Learned Hand in Lyon v. Bausch & Lomb is an important characteristic of the effects of Section 103. The design in question is for a coating that prevents reflection, which at first glance seems to be a very simple development. Historically, as Learned Hand states, a patent may not have been provided for such a minor improvement, even if the effects of such an improvement are significant. However, the long lasting need for a coating that prevented reflection combined with the inability of skilled designers in the field to produce such an improvement emphasizes that the invention, although minor, is far from obvious and thus worhty of a patent.
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 case revolved around the institution of a device designed to absorb shock from plow shanks in rocky soil by John Deere, which Graham argued infringed upon his original patent. The Fifth Circuit held the patent valid, but the Supreme Court reversed the decision on the grounds that in light of the prior art, the improvements made by Graham would have been obvious to an indiviudal with ordinary skill in the art. The case serves as a prime example of many of the criteria used to evaluate the obviousness of a design.
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
In the case of Graham v. John Deere, the most significant contributor to the prior art was a patent that Graham had submitted earlier. The Supreme Court was faced with determining whether Graham's '811 patent included differences from the '798 patent that were substantially different and effective, but also nonobvious to a person of reasonable skill in the art. Because the primary difference between the two patents was simply a rearrangement of previously used mechanisms (i.e., an inversion of the shank and hinge plate) it was determined that this would be a fairly obvious conclusion to someone who was acquainted with tractor design.
However, there are also secondary considerations, including:
- Commercial success of the invention
- Long-felt but unsolved needs
- Failure of others to find a solution
The difference between the primary criteria and the secondary considerations is that a strict adherence to the criteria ensures nonobviousness, while accordance with the secondary considerations only supports the case for nonobviousness. If an inventor produces a product that is commercially successful and has long been sought after by the related market, it strongly supports the case for nonobviousness, but a strict reviewal of the prior art will still stand as the final determination.
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.
U.S. v. Adams is one of the few cases related to nonobviousness in which the court upheld the patent under review. In this case, the patent was for a battery designed to provide constant voltage current without the usage of acids and without the generation of dangerous fumes. Most importantly though, the Adams invention was the first practical, water activated, constant potential battery, which could be fabricated and stored indefinitely without any fluid in its cells. A comparison between the Adams patent and prior art reveals very few changes however. Adams uses magnesium and coprous chloride as the electrodes in his battery, which is similar to many of the previous models. The Codd treatise and the Skrivanoff patent both reference magnesium as electrode, while the Wensky patent acknowledges the use of coprous chloride in other areas of the battery. Thus, it can be concluded that neither of these design attributes would be nonobvious to someone with minimal experience in the field of batteries. The lone major difference between Adam's battery and the prior art is the fact that it is water-activated. Because of this significant performance improvement, the court concluded that the Adams party was nonobvious. Even though the elements of his battery were well known in the prior art, their combination far surpassed then-existing wet batteries and thus the design could not have been 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" and revisiting the old problem of when a combination of old or know elements can become patentable. The question posed by the court is whether the manner in which Anderson combined the old elements would be fairly obvious to a person of ordinary skill in the art. Even if the guideline of "inventiveness" is satisfied by the placement of the radiant heater upon the side of the standard bituminous paver, the mere relocation of previously used elements cannot satisfy the qualification of nonobviousness. Thus, the court rules against the Anderson patent, stating, "We conclude that while the combination of old elements performed a useful function, it added nothing to the nature and quality of the radiant-heat burner already patented. We conclude 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."
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.
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 term inventive step is another way to describe the requirement of nonobviousness in the evaluation of patents. While "nonobviousness" is most often used in the United States, "inventive step" is predominantly expressed in Europe, though the meaning is virtually the same. This alternate means of presenting nonobviousness does assist in explaining the qualifications that the court was attempting to establish in the creation of this precedent though. A design may be undeniably novel, with little relation to the prior art, and may serve a distinct, functional purpose; however, if there is no "inventiveness" required to develop the device, then it cannot be patented. For an invention to be patented, it must be a unique and maybe more importantly,"unusual" combination of existing elements. The design must be unexpected to satisfy nonobviousness because even novel, functional devices can be expected.
Relationship with Novelty
The relationship between novelty and nonobviousness can be seen in many of th patent cases referenced above. In Anderson v. Pavement, the court determined that although the placement of the radiant heat burner in a specific location upon the vehicle was a novel idea, it was too obvious to anyone with knowledge of the problem to be considered patentable. Many other cases reflect this same sentiment, as it is easy to develop an idea that is new and different, but far more difficult to invent a solution unusual enough that someone with reasonable skill would not also be able to duplicate. In U.S. v. Adams, a ruling was made that the battery developed by Adams was both novel and nonobvious, as it utilized both new and used elements, but more importantly combined them in a manner that was counter to the suggestions of many experts at the time. Because the results of the battery were significantly different than previous models, it was obviously novel, but it was the previously unadvised combination of elements that satisfied the nonobvious clause.
Nonobviousness vs. Invention
Unlike the relationship between nonobviousness and novelty, nonobviousness and invention are significantly intertwined. While many patents in the cases we have reviewed adhered to the novelty requirement, but failed the nonobviousness requirement, most patents either exuded the qualities of both invention and nonobviousness or neither. Like nonobviousness, invention requires that a device or process be developed against the grain established by the existing art. The combination of prior art is acceptable, but the mixture of previous elements must be such that it would be unlikely for others in the field to readily attempt such a combination. Similarly, nonobviousness states that the concept must not be obvious to someone with ordrinary skill in the field. Thus, if the design would not be apparent to someone with normal skill in the art, then it can be stated that the designer has "invented" a new, innovative solution to the problem.
As outlined in the Graham v. John Deere section above, there are several secondary considerations that the court takes into consideration in their attempt to determine if a patent passes the nonobviousness requiremen, including:
- Commercial success of the invention
- Long-felt but unsolved needs
- Failure of others to find a solution
One case that best exemplifies the role of secondary considerations is A&P Tea. v. Supermarket Corp., in which the patent for a design of a tray to move groceries along the counter was ruled invalid. The claim of the petitioners was that the invention had filled a long-time need of the market and had enjoyed great commercial success. The court however, responded by saying, "commecial success without invention will not make patentability." This ruling makes it clear that although the court will take into consideration the secondary considerations listed above, they cannot be the basis upon which a patent is granted. The final two secondary considerations are used most often to prove nonobviuosness, as petitioners will argue that if no one has found a solution to a long-felt need, then the design could not be obvious. While all three factors are discussed in many of the patent cases, it is clear that the decision to grant a patent never hinges on the evidence provided in support of secondary considerations.