The Nonobvious Requirement by Sean

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Handbook Summary

In order to determine the obviousness of a patent, it must be decided if “the differences between the subject matter sought to be patented and the prior art are such that 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,” according to 35 USC §103. This is the definition of nonobviousness and is the law that establishes it as criteria for patentability. There are a few ways to disqualify a patent from meeting this criteria, including:

1. The invention is obvious to a person of ordinary skill. This means that the new patent cannot be granted for minor improvements that may have been bade to a product if they would have been easily apparent to any knowledgeable person in the field at the time.

2. The invention is a result of a simple change of material. Merely changing the material that is used in a previously known invention does not constitute nonobviousness, even if the new material does provide greater utility or lessens the cost of the product.

3. The invention is a combination of prior art and does not create any new or useful function. While the Supreme Court admits that all invention is based upon previous knowledge, a simple assortment of useful devices into one machine does not make an invention nonobvious, it must be shown that the whole is greater than the sum of the parts.

Also, if there is a longtime need that has gone unsatisfied, then a new invention can be seen as nonobvious and can warrant a patent despite being a substitution of new material or a combination of parts, especially if the result is unexpected. Other Secondary consideration include previous failures in the field and the commercial success of the new product.  

Policy Considerations

The above guidelines are the basis for the rulings administered by the United States Patent Office and are used to determine if an invention is eligible for a patent, and they are also the standard that the Supreme Court uses when ruling on cases of patentability when nonobviousness is in question. The foundation of this policy is rooted in the ideas of Thomas Jefferson and his desire to promote the advancement of new science and technology by granting property rights to inventors. He was exceedingly wary of monopolies however, and sought to make sure that patents were restricted only to such inventions that would advance these goals. This makes it necessary to establish standards of evaluating patent applications, and these are as stated in the Federal U.S. Code; that the obviousness is determined by a skilled person in the same field as the invention. To make this determination in a legal setting, many things must be compared and considered.

The scope of all prior art must be known and compared to the patent in question. It is a fine line to draw between what may or may not have occurred to a skilled mechanic in the field, but other considerations such as the duration between innovations can help clarify this. A good example is the optical coating that was the subject of the Lyons v. Bausch and Lomb case in 1955. The new patent described a simple step but solved a problem that had eluded the most competent workers in the field for ten years, and thus could not be considered obvious. For a new patent to be granted the product in question must also show that it is not merely an improvement made upon an earlier invention. The ruling in Hotchkiss v. Greenwood created this criterion by invalidating a patent for doorknobs that merely swapped material of the doorknob in order to improve the product. Since no new fabrication or production method was required, it was determined that a skillful worker could easily have made this improvement and thus the “invention” was not worthy of a patent. This applies also to combinations of prior arts, as which all inventions inevitably could be described. The invention must accomplish more as a whole than its individual parts; simply joining together previously used technology into one contraption does not constitute invention. As such was the case in A&P Tea v. Supermarket Equiptment and in Anderson Black Rock v. Pavement Salvage, where the “inventions” in question were ruled to be obvious because they only combined previous known elements and did not achieve any new or improved function.

The courts have utilized various methods to determine whether a patent meets these criteria, including the testimony of skilled people working in the field of relevant study, and the prior art expressed in past patents. The teaching-suggestion-motivation (TSM) test was and is still used by District Courts to evaluate nonobviousness. This test makes it necessary for there to exist some suggestion in prior patents that would lead to the then obvious innovation being considered. It exists primarily to guard against a hindsight bias, and is meant to include implicit as well as explicit suggestions. However the test has been frowned upon by the Supreme Court as being both a narrow-minded way of examining a patent and inconsistent with §103 and the court’s precedents. In KSR v. Teleflex the Supreme Court stated this opinion and ruled that the combination of elements represented in the control pedal system in question was obvious based upon prior art. Here there is an emphasis on whether a person in the field, with knowledge of difficulties and design needs, would have seen this combination or elements as desirable.


Patent law in the United States originates from the Copyright Clause of the U.S. Constitution. In Article I, Section 8, it is stated that Congress shall have the power “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” This power was codified in 1790 when President Washington signed into law the Patent Act of 1790. This act was modified by Thomas Jefferson three years later to define a patent as “any new and useful art, machine, manufacture or composition of matter and any new and useful improvement on any art, machine, manufacture or composition of matter,” a definition that persists today. However the concept of nonobviousness did not begin to be considered for more than a half century after this. In the U.S. Supreme Court case Hotchkiss v. Greenwood in 1850, the court ruled that mere introduction of new material not previously used in a doorknob was not enough of an alteration to warrant a new patent. The new material did improve the function of the doorknob, but the court ruled that “unless more ingenuity and skill in applying the old method … 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.” This set a precedent for nonobviousness, even though it was not explicitly defined or codified in law at this point.

In 1950 the Supreme Court decided on a the case A&P Tea v. Supermarket Equipment and further illuminated what it meant for an invention to be obvious. The court rejected the validity of a new patent for a cashier counter that was an aggregation of old and familiar parts. The court stated that while all new inventions clearly relied on previous innovations, they must be combined in a new and useful way so that the whole is greater than the sum of its parts to be patentable. They also specified that the level of inventiveness could be partially determined by the presence of a “long felt but unsatisfied need” and reiterated Thomas Jefferson’s original intent for patents: that they be primarily for the promotion of new science and engineering and less about the protection of the inventor’s moral right to their invention. These opinions went on to influence the Patent Act of 1952, in which the current language of 35 USC §103 prevents a patent from being granted if “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 issue was also considered in Lyon v. Bausch and Lomb in 1955, when a patent for a non-reflective coating for optical surfaces was upheld in the US Court of Appeals. They judged that even though the new patent introduced was a short step away from previous technology, it satisfied a need that had long existed and had failed to be realized for many years by technicians in the field, thus making in nonobvious.

Later, in a ruling on the case Graham v. John Deere Co. in 1966, the Supreme Court established the interpretation of §103 requires that nonobviousness be determined by examining the scope and content of the prior art, the differences between the claimed invention and the prior art, and the level of ordinary skill in the prior art. These tests could also be influenced by things such as the before mentioned “long felt but unsatisfied need,” the commercial success of an invention, or the previous failures of others. They also ruled in the same year on the case of United States v. Adams that any unexpected result of experimentation with new materials or combinations of prior art can be seen as evidence of nonobviousness. In Anderson's Black Rock v. Pavement Salvage in 1969 the court confirmed this by rejecting the patent because it was seen as a mere aggregation of prior art that, while convenient, did not produce any new of different function and was thus obvious.  

Proposal Standard

It is my opinion that the current standard of nonobviousness accomplishes its goal but is somewhat convoluted in how it does this. There has been evidence in recent years of divergence between the Supreme Court and lower courts in how they measure the obviousness of an invention, despite the admonitions of the former. I believe that the Supreme Court is right in affirming that a simple TSM test is not adequate in determining obviousness, but that an overall analysis must be performed, with the higher goals and intentions of specific standards kept at the forefront of consideration. It makes sense that all patents pass the strict definition for nonobviousness described in §103, but to effectively evaluate whether a invention meets this criteria requires a thoughtful analysis that takes into account all of the previous opinion put forth by the Supreme Court. I would reject any sort of test or strict standards not open to interpretation. Especially with the pace that technology progresses, it becomes exceedingly difficult to address nonobviousness in complex circuitry and other modern technologies. Because of this it is essential that the underlying motivations and reasons for such standards as nonobviousness be understood and held in the forefront of the mind by anyone evaluating patents. I would also recommend that testimony provided by skilled technicians and experts in the field be given great importance, especially with complicated technology that goes beyond the individual scope of understanding of a typical judge. This is the only way that the obvious nature of inventions can really be decided, because to someone with no knowledge of certain technologies, any innovation or improvement would seem nonobvious. But it is by definition the insight of skilled mechanics that is the basis for deciding this, and it must be given due importance.