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" 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 order for a combination to be patentable, its whole had to be greater than the sum of its parts. This means the combination of elements should perform some function other than those of its parts.
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.
This was not a new set of rules to be followed. Instead it was a unification of the previous Supreme Court decisions into the law.
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
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.
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.
- Court said that known disadvantages that would normally discourage research in that direction may be considered when determining nonobviousness. However, ignoring disadvantages and finding new uses for old inventions does not necessarily lead to patentability.
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.
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 Teaching, Suggestion, Motivation (TSM) Test
- Used in KSR v. Teleflex by Court of Appeals as method for determining obviousness
- If prior art or ordinary skill teaches, suggests, or motivates a combination, then it is obvious.
- Method for creating a set of guidelines for determining obviousness
- Rejected by Supreme Court as too rigid. Court said it limited the obviousness of inquiry. For example, the problem that motivated a patent might only be one of many, so all aspects need to be investigated.
The Inventive Step
The meaning of the phrase, “Patentability shall not be negatived by the manner in which the invention was made,” from Section 103 of the U.S. code means one does not need a flash of genius for something to be patentable. If the invention was discovered by accident, it is still patentable.
Relationship with Novelty
Novelty and nonobviousness are two separate sections of the U.S. Code, but they are both requirements of patentability. An invention cannot be novel but obvious, and it cannot be not novel but nonobvious. One requirement is not more important than the other. Novelty is more well defined than nonobviousness because nonobviousness was only added to the law in 1952 so there is more controversy around defining nonobviousness than novelty.
Novelty and nonobviousness do not necessarily follow each other. For example, an invention can be completely new, but it can also be obvious at the same time depending on the amount of skill needed to create the invention. However, it is likely that a nonobvious invention is also novel, since in order to be novel it took more than ordinary skill to create and has sufficient differences from the prior art.
Nonobviousness vs. Invention
- Nonobviousness deals with inquiry. In order to determine nonobviousness, research must be done into the scope and content of the prior art, the differences between the prior art and the present claims, and if there was only a level of ordinary skill applied. If the inquiry shows that more than ordinary skill was needed for the present claim and there are sufficient differences between the present claims and the prior art, then nonobviousness can be determined. Nonobviousness is one requirement for the patentability of an invention.
- Invention deals with quality. It is most associated with novelty. An invention is something new that an inventor has created. An invention can be either nonobvious or obvious. Sections 102 and 103 of the U.S. Code refer to the patentability of inventions, which means inventions do not necessarily fulfill the requirements of patentability.
- As indicated in Hotchkiss v. Greenwood, the idea of nonobviousness came from the idea of inventiveness. This means nonobviousness is a form of inventiveness.
Secondary considerations can be used to learn more about the circumstances surrounding the creation of the subject matter that is trying to be patented in order to determine if it is nonobvious. These secondary considerations include:
- Commercial Success
- Long felt but unsolved need
- Failure of others
It should also be noted that these considerations focus more on motivational and economic issues instead of technical issues.