- 1 Historical Development
- 2 Suggestion to Combine
- 3 Objective Tests
- 4 The Inventive Step
- 5 Relationship with Novelty
- 6 Nonobviousness vs. Invention
- 7 Secondary Considerations
- 8 Ordinary Skill in the Art
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&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 for the product as well as commercial success both of which are included as a standard used today for nonobviousness. In this case it was ruled that a long felt need is not enough to make an invention patentable.
- Second, it expressed an emphasis toward patent protection at the frontier of science or engineering, but not for more mundane things like pencil erasers, stamps, etc. It must serve a higher end, the advancement of science, to obtain a patent.
- Third, it dealt with the issue of the fact that any invention is basically a combination of old elements. The combination of old elements can be patentable; it depends on how the elements interact. If the old parts are placed together with no new function, then it is not patentable. If the whole is greater than the sum of it’s parts then the invention is 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.
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
In conclusion, there was a long felt but unsatisfied need for an optical glass having a “hardy tenacious coating” with limited reflection. Due to the fact that no scientific advancement was holding this advancement back and it became common practice to use this manufacturing method, the practice was clearly novel and non-obvious. Also had this patent been created and taken to court prior to the Act of 1953, then it probably would have been rejected.
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;
- What was in the previous patents and exactly what range of things they applied to
- differences between the prior art and the claims at issue;
- level of ordinary skill in the pertinent art;
- If an average person who works in the field would be able to create and find the invention obvious based on past patents
- secondary considerations, which tend to focus on economic and motivational issues rather than technical ones, including:
- commercial success of the invention;
- long-felt but unsolved needs;
- failure of others to find a successful solution, etc.
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. Adams created a wet battery that was significantly better than attempts in the past such as greatly increasing current capacity, conducing constant voltage, performance under extreme circumstances like temperature. • The Supreme Court concluded that although only small changes were made, Adam’s battery was still patentable. The reasons include that experts in the field were amazed it actually worked, and subsequently improved on his invention through their own patents. The patent office failed to cite any evidence against Adams. Therefore the wet battery was clearly not 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 known elements can become patentable. They rule that the four elements of the patent in question serve no new purpose, and are therefore neither inventive nor nonobvious. Although the secondary consideration of commercial success should be considered, it does not by itself indicate invention. With no invention there is clearly no patent.
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."
- In summary, this case establishes that a new suggestion requirement be added in regards to the issue of patent denial when combining prior elements in an invention. This requirement is used to protect against claims that use hindsight to claim patentability of inventions invalid. So if a patent is to be dismissed for the reason of combining old elements, it must prove that not only would a person of ordinary skill in the particular field to find the combination obvious, it must also show that an implication to actually combine those elements existed. Just because a skilled person would find the changes obvious, it does not mean that they would have the initiative to actually apply it.
- By implementing this suggestion, it will prevent inventions from becoming unpatentable because of a high ordinary skill. The US Court of Appeals in this decision establishes that inventions are a process of joining together elements of prior art in a manner that is nonobvious.
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.
- Documenting the process of invention becomes very important. If the procedure for developing an invention is well documented it is admissible evidence in establishing ownership, even if its contents are not known for a considerable amount of time after submission.
- The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they must be considered by the court.
- This is significant because it marks a turning point in court cases. It now allows judges to take economic considerations into account, which sometimes lead to decisions that contradicted themselves.
- 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 specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”
The Inventive Step
An inventive step is an integral part of any invention. It is determined by considering the obviousness of the “inventive” step in relation to the most relevant prior art and deciding if a skilled person in the art finds the invention obvious. If it is not obvious, an inventive step is taken and the patent is valid. Without an inventive step, there is no achievement in the field, and no patent is warranted.
Relationship with Novelty
All things that are nonobvious are novel, however all things that are novel are not nonobvious. Due to this both criterion must be satisfied for an invention to be patented. A novelty requirement is much more concrete and therefore is a nice first obstacle to have to ensure that all patents do not reach the stage of ambiguity that nonobviousness is very near to. This bottleneck allows for more time to be spent on legitimate patents where nonobviousness can be delved into deeper.
Nonobviousness vs. Invention
Originally the basis for a patent was inventiveness as well as utility and novelty. By the year 1952 inventiveness had become more difficult to ascertain and made way for nonobviousness as a requirement stated in the Act of 1952. Nonobviousness offered a better idea of whether the invention was an actual advancement in the field. This differentiation is clear in the Adams case where small nonobvious advancements were patentable although overall inventiveness would probably be considered small and thus the invention unpatentable.
Secondary considerations were taken into account to help decide if inventions were indeed patentable. Although an object being commercially successful does not indicate a patentable invention (it could just be marketed well), it is a strong indicator that the invention is useful and nonobvious. Some cases may have obvious advancements or infringements, but in cases where patentability is in question, it can be helpful to see how the field reacted to the invention. If it was widely accepted, satisfied a long felt need, or succeeded where others failed, there is strong evidence that society is telling you that an advancement was made.
Ordinary Skill in the Art
Section 103 of Article 35 of the US Constitution states that a patentable product must be nonobvious to a person with ordinary skill in the art. A person with ordinary skill in the art is considered an average person who works in the field on a regular basis. If this person with ordinary skill in the art either finds the invention trivial and obvious, or has the skills necessary to create the invention, the invention is not patentable.