Tennant Homework 4: Defining Nonobviousness
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.
The issue derives from the nature of the doorknob design. The basic structure and components of the doorknob were already known and in use; the only "novel" aspect of the design was that the knob itself was made of clay or porcelain and not metal or wood. Yet even the concept of a clay knob was not new, as it had been in use before. Had the knob been made of an entirely new "composition of matter," then the design would certainly have been protected by a patent. However, the concept was not new and the assembly and function of the doorknob as a whole did not change, and so the patent was void.
According to the ruling, the novelty would consist in:
- New composition which leads to practical use in daily life;
- A new manufacture, because the general process and function of the doorknob design had been previously known.
While the substitution of a new material may make the doorknob better or cheaper, it does not make an entirely new invention. The improvement is derived from a higher quality material, which is not new. The improvement takes no ingenuity or invention, but rather is an adaptation of an existing process which makes it almost entirely the same as before. Instead of inventing a new doorknob, the defendants rather had mechanically altered an existing one.
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.
Although the United States had awarded patents to new combinations of old parts before, it had failed to really define what criteria should be assigned to such combinations in order to ascertain their patentability. The Court proposes the following test: combinations of old things may only be patentable when the whole is in some way greater than the sum of its parts. In the case of the counter extension and accompanying features, the Court ruled that neither lower court had ascertained a new function had been derived as a result of their combination. Because the patent did not contribute any new knowledge, it was invalid. The Court emphasized that Congress does not have, in its power, the ability to grant patents as freely as it wishes. The power to grant patents is qualified by restricting the award of patents only to those inventions which "promotes the progress of science and the useful arts." The Court cited a litany of cases in which patents were granted to the individual parts of the patent in question, and believed that this was only an indication of just how far the practice of granting patents had gone astray.
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.
The common application of this section is to determine what the ordinary level of knowledge and skill in the industry. This imagined benchmark, termed "the mechanic," is the standard by which the inventiveness of the subject matter is judged. In order for a development to be considered an invention, there must be something, some additional step, that would not have been apparent to an ordinary mechanic. This is discussed in a later section, "The Inventive Step."
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 matter here is the same as discussed in other court cases. Were the contributions of Mr. Lyon discussed in prior art, and if so, does his work constitute a promotion of science and the useful arts? While the improvements proposed by Mr. Lyon were of a different nature than many other previous yet similar patents, there was one matter of prior art which was of interest and pertinence to the patentability of his efforts.
Cartwright and Turner took out three patents that were much more similar to Lyon's than the others. In particular, Cartwright was considered an expert in this method of coating, and he conducted many experiments and studies which provided a scientific description of Lyon's later efforts. Lyon added another step to Cartwright's method, which provided the optimal bond conditions for coating the glass containers. Cartwright wrote a series of letters to Hewlett, a scientist at General Electric, detailing the process and its potential to develop this intimate bond. Hewlett himself produced a number of such bonded glassware, although he eventually abandoned the process. Cartwright, however, continued experimenting with the method; however, he eventually seemed to have abandoned the concept as not useful or worth pursuing. While his method produced some wares which were sold, the items sold would not necessarily evince the method used to produce them; thus, the art was not considered part of the public domain. In addition, because Cartwright abandoned his research (despite indicating that he was considering patenting the idea), he was not considered to be a prior inventor to Lyon.
The ruling further added to the Hotchkiss v. Greenwood decision by saying that improvements must demonstrate more ingenuity than an average mechanic with an average knowledge of the subject; in other words, the combination must be nonobvious to someone well versed in the art. However, the ruling stressed that legislatures, who had been criticized in earlier statements such as the Supermarket Corp. ruling as being too willing to grant patents, must be free to follow the fundamental rules of the law without the waters getting muddies by subsequent court decisions.
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.
The ruling lists several cases in which patentability, and in particular nonobviousness, were both at issue; several cases discussed previously were included in this listing. The main impact of this section is the establishment of a methodology by which one can determine whether an invention is patentable. The first determinations to be made are the scope and content of prior art, the difference between the prior art and the current claims, and the level of ordinary skill in the art closely related to the claims. Considerations such as commercial ability, the length and satisfaction of needs, or the success/failure of others are secondary qualifications of nonobviousness; they are not the first discourse to be undertaken in determining patentability. This method is exercised in determining the patentability of the chisel plow design which incorporates a free shock-absorbing system to minimize damage due to rocky soil. Graham developed one plow which sought to reduce the wear due to rocky soil and patented it. He then developed a modification for the plow and patented it, as well; he then sued John Deere and others for infringement. The lower courts determined that the new patent was not an invention under Graham's claims because it required no extraordinary skill in the art. He then began to claim patentability under other features which were not previously mentioned in the patent application. The Court found that the petitioners' arguments were unfounded and that there were no aspects of the patent which were nonobvious. The aspects of the patent which were considered to be inventions were in fact part of the body of prior art and thus were not new. The features which the petitioners claim as new do not in fact result in an advancement of the art; thus, the design is not an invention.
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.
The government presented 24 pieces of evidence aimed at proving the Adams battery patent was invalid due to lack of novelty and nonobviousness. These articles strove to show that the materials comprising the anode and cathode of the battery were not new and had been used in batteries before. However, the battery patent claims novelty in the use of water as the electrolyte. The arguments presented by the government were inapplicable to the matter of the patentability of the battery. The battery was determined to be both new and nonobvious.
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.
The addition of the heater on the side of the vehicle is the main point of contention. The owner of the patent claims that previous heaters were used primarily for patchwork, whereas this heater is to be used for continuous heating of the previous strip so as to prevent cold joints. The District Court found that the new design was not an invention, citing that the chassis was merely a combination of prior art. The Court of Appeals ruled that it was, in fact, an invention. The Supreme Court reversed this ruling, citing that the patent was invalid due to the fact that it was "obvious."
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
In the history of patentability in the U.S., it is very difficult to find examples of patents which are not some combination of previously known materials. Few things are truly "new" in that most of the inventions of the last 200 years are combinations of old things. However, the patentability of an item has been shown in the courts to be dependent not on the fact that it is a brand new invention, but that there is something extra within the item that is not obvious to a person with ordinary skill in the art. This may be termed "the inventive step," the point of the design at which the article becomes something besides its constituent parts.
Relationship with Novelty
Nonobviousness is not the same as novelty; yet, both are integral parts of the patent process. To demonstrate this, an example may be helpful. A system of parts that is made up of many smaller subsystems has recently been put together in its specific configuration or using its specific method for the first time. This makes the system "novel." However, the system's configuration is fairly obvious to somebody familiar with the industry. The system is not therefore patentable because it lacks the inventive step. To be more specific, say a would-be inventor designs a car with a dash-mounted stick shift instead of one placed in the cavity between the two front seats. This design is probably not patentable. However, the transformation of the stick shift into paddle shifters is patentable because while it performs the same function with probably many of the same constituent parts, the new configuration is not obvious and therefore patentable.
Nonobviousness vs. Invention
There are some things patented in recent history which were actual inventions. New digital technology such as computers and other electronic hardware can probably be considered "inventions" in that they are completely new and never-before-seen devices. But inventions cannot be purely new materials: constituent parts, systems, and processes are often involved. Thus, few things are "inventions" in the truest sense of the word. This is why 103 has been added to the code. A patent may not necessarily be an invention, but if it is a nonobvious combination of prior art, then it may still be patentable.
Graham v. John Deere did a lot to define precisely how the patentability of an "invention" should be determined. First consideration must be given to the scope and content of prior art, the differences between prior art and the item to be patented, and the level of ordinary skill in the art. Only after these have been determined can nonobviousness be applied by looking at commercial success, a longstanding unmet need, and the failure of others to produce such a device.
Ordinary Skill in the Art
This is an ultimate determination for nonobviousness. In the instance of the Bausch and Lomb case, Cartwright could be considered as having ordinary skill in the art of bonding agents for glassware. However, he failed to produce the desired glass coating in the manner which he was trying, so he abandoned his process. When Lyon added heating the glass during the coating process, he added a new step which had not been obvious to those with ordinary skill. Thus, his method was patentable.