User:Adam T. Letcher/Non-obviousness

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Historical Development

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 be more to it, some sort of threshold for inventiveness, 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 courts called into question the ingenuity and effort required to produce the disputed patent, since it was a combination of previously known mechanical elements. They upheld the jury's directions in the lower courts that if

The spindle and shank being the same as before in common use, and also the mode of connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required to construct the knob in this way than was possessed by an ordinary mechanic acquainted with the business, the patent was invalid.

This case set a precedent of using language which encouraged a comparison of inventions and potential patents to the skill of an ordinary person in the field. This language would later be incorporated into court rulings and eventually in the modern patent code in 35 U.S.C. 103. Justice Woodbury objected to this language, and asserted that the courts should not disregard the issue of whether or not an invention produces an object better or cheaper than previous art. His dissenting opinion set forth the view that an invention that produces a better or cheaper object is surely an improvement on previous patents, and is thereby patentable. In addition, Justice Woodbury claims that the ability of an ordinary mechanic in the field to construct the invention is irrelevant and immaterial and that

Some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, an wealth of the community.

The notion of the manner in which an invention is created became an important issue later on in the evolution of non-obviousness and is discussed below.

A&P Tea v. Supermarket Equipment (1950)

While it pre-dates the language of 35 U.S.C 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.

The opinion of the court expressed the need for a type of more concise and comprehensive definition of the test that needed to be applied in cases dealing with "combination patents". Previously, the key to patentability was the presence of the ambiguous "invention" and this led to considerable confusion and ultimately caused the courts and patent examiners to "be cautious in affirmative definitions or rules on the subjects".

Instead of relying on ambiguous and imprecise language, Justice Jackson urged the following

Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men. This patentee had added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly.

Jackson also goes on to analyze the tests applied by the lower courts, which relied heavily on the fact that the device "filled a long-felt want and has enjoyed commercial success". While these conditions can certainly indicate the presence of non-obviousness, it does not make a patentable object without the presence of invention.

In addition to the opinion presented by Justice Jackson, a concurrent opinion by Justice Douglas expands on the advancing border of patentable materials, and the need to keep in mind the "constitutional standard" of patentability. He asserts that the attempts to get a "broader, looser conception of patents than the Constitution contemplates have been persistent" and that they ultimately hurt the ultimate goal, set forth by the patent clause of the Constitution, to advance scientific knowledge. Justice Douglas encourages the raising of the level of invention required for patents, expressing bias towards patent protection at the frontiers of science and engineering. On the subject of the patent at hand, he comments

The fact that a patent as flimsy and spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

The courts reversed the previous decision of the lower courts and deemed the patent invalid.

35 USC 103 (1952)

This section of the code was adopted in 1952 and primarily prohibits a patent in a case where

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made.

This codification included language to illuminate the definition of non-obviousness and its attributes, as well as the final sentence which accounts for #The Inventive Step and rejects the need expressed in previous court opinion for a "flash of genius" to prove the presence of invention.

Lyon v. Bausch & Lomb (1955)

In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) Judge Learned Hand expounded on the new standard:

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)

While the impetus for patent laws was the clause set forth in the Constitution, it is the obligation of the Congress to specify the tests and conditions for patentability that it believes best achieves the constitutional aim. This obligation was first approached by Thomas Jefferson and the Patent Acts of 1790 and 1793. Jefferson believed that awarding a patent is not awarding a “natural right” to the inventor. He has no natural right to any monopoly, since ideas and resources are the property of the community at large in a free economy. Rather, the award of a patent is an incentive to encourage innovation and the advance of the sciences, and the monopoly given is only a temporary one. Jefferson, abhorrent of monopolies, saw clearly the trouble with "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."

Graham v. John Deere, 383 U.S. 1 (1966) indicated a shift away from trying to establish a level of "inventiveness". Instead, the court looked to the statutory language of "nonobviousness." For the first time since the Patent Act of 1952, the exact definition of non-obviousness was addressed.

Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

This language is reminiscent of Hotchkiss v. Greenwood, and upholds the distinction in that case between inventions worthy of patent protection and those that are not. Some interpretations of the new patent code described the law as lowering the bar. However, Justice Clark asserts

The revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

The opinion of the court sought to provide a "handbook" by which the patentability of an object could be assessed under the new language of non-obviousness, as set forth by 35 U.S.C. 103 as well as previous judicial rulings.

While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

While this provides some basic guidelines in determining obviousness, the court recognizes that each case needs to be approached individually, since no law or code could explicitly cover the inevitable variety of patent cases. As before, this should be left to the court's to decide. In addition, the practices of the Patent Office should follow the same standard of patentability that the courts hold, since awarding patents to ultimately unpatentable materials will only cripple the judicial system while cases await litigation.

U.S. v. Adams (1966)

In US v. Adams, 383 U.S. 39 (1966) the patent in question concerned an unissued patent for a new water activated wet battery that was eventually employed by the U.S. military. The case boiled down to the fact that even small changes can have large consequences, which is relevant to a determination of nonobviousness. The small changes at hand were the substitution of cuprous chloride and magnesium for the electrodes, or metal plates placed at a fixed distance from each other, and water as the electrolyte which served as a conductor for the flow of electricity. All aspects of the battery were the same as prior art, which had been using the electrode-electrolyte model for a considerable time.

However, the case brought to light the necessity to examine each individual case carefully. Upon inspection, it was shown that the substitution of magnesium was not actually obvious. The prior art used to discredit the initial patent application, showed that while magnesium was a viable electrode, it rapidly decayed and corroded, making it a generally poor electrode material in most electrolytes. Indeed, according to the logic of Hotchkiss v. Greenwood, whose language is embedded in 35 U.S.C. 103, the simple substitution of one material for another material with the exact same function is obvious and not patentable. However, in this particular case,

Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium.

In addition to the substitution of magnesium, Adams' battery also set itself apart by being water activated, which is indeed what allowed the use of magnesium electrodes. The specific combination of these materials took careful foresight and ingenuity that indicated nonobviousness. Above and beyond that fact, Adams' battery performed with unexpected positive results. The battery performed so well in fact, that military examiners did not believe the data. An unexpected result would certainly point towards something that is not obvious. It was the details of the case that revealed characteristics particular to the patent application and its validity. Such should be the case with each case.

Anderson's Black Rock v. Pavement Salvage (1969)

The lower courts' ruling on Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969) seemed to return the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. However, the ruling of the Supreme Court showed the patent to be invalid since the combination of mechanical elements did not improve any of their functions or provide new or unexpected performance. The apparatus in question simply allowed the elements to perform their functions in tandem, and did not add to nature and quality of a radiant burner that was already patented.

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.

Objective Tests

Two important considerations were the focus of Hybritech v. Monoclonal Antiboties, 802 F.2d 1375, a case in which much of the evidences hinges on laboratory notebooks. The opinion expounds on the importance of conception and reduction to practice.

Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)).

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 ruling of the lower court was therefore based on false logic.

We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that “there was no credible evidence of conception before May 1980” is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice.

Secondary considerations such as commercial success, are not optional considerations. If evidence is available pertaining to them, they must be considered by the court, for a thorough and precise investigation into nonobviousness.

Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely “icing on the cake,” as the district court stated at trial.

In addition, the case raises the issue of enablement in criticism of patent documents do not disclose or describe the invention to an adequate degree. Since this is the benefit for society which is gained for the limited monopoly given, complete disclosure is a key point of patents.

Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489.

The 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 "inventive step" is a concept that arose from a case prior to the development of modern patent code. In the case, the opinion of the court used the phrase "flash of genius" as the indication that invention was present and an object was patentable. This is false and should be more in line with the logic presented in Hotchkiss v. Greenwood. The manner in which an invention is created is irrelevant to the determination of obviousness or nonobviousness. This is stated in the last sentence of 35 U.S.C. 103(a)

Patentability shall not be negatived by the manner in which the invention was made.

An invention that is found accidentally or through unexpected means does not exclude itself from patentability, as its disclosure to society could still add significantly to the general knowledge and benefit the advance of the sciences.

Relationship with Novelty

During the evolution of modern patent laws, one of the first requirements for patent protection was novelty, which is to say the invention must be a new invention. It is subject to the restrictions that it will not be eligible for patenting if

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

The novelty clause restricts inventors from filing for patent protection for inventions that have not only been patented in this country, but also those that are known or used in the United States prior to their filing. The issue of proving whether or not an invention was previously known and its difficulty is illustrated in Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986). Nonobviousness, on the other hand, is a second condition for patentability that was codified in the 1952 Patent Act.

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made.

While an invention may satisfy the condition of novelty, it may fail the test of nonobviousness. The logic of the clause is to prevent small manipulations or changes to existing patents in order to gain monopolies, which further stagnate innovation and progress.

Nonobviousness vs. Invention

Prior to the codification of modern patent law, the ruling on patents, specifically combination patents, was governed by court precedents. Hotchkiss v. Greenwood used the term "inventiveness" and ingenuity in attempting to rationalize a patent's invalidity. This language guided courts' decisions on the subject of combination patents for years, but the ambiguous terminology of "invention" rapidly caused confusion and resulted in conflicting rulings throughout the United States. The court's opinion in A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) expressed the need for new language and definition of the evolving concept of nonobviousness

However useful as words of art to denote in short form that an assembly of units has failed or has met the examination for invention, their employment as tests to determine invention results in nothing but confusion. The concept of invention is inherently elusive when applied to combination of old elements.

The explicit language of the Patent Act of 1952 sought to provide an unambiguous and well defined expression of nonobviousness that upheld the concept as it had evolved in the courts. It did not raise or lower the required level of inventiveness for patents, but nominally held the same standard as set forth in the Constitution while providing a more uniform ruling on the subject.

Secondary Considerations

Secondary considerations that can be taken into account, as initially set forth in Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) by Learned Hand.

  • commercial success of the invention;
  • long-felt but unsolved needs;
  • failure of others to find a solution;

Fulfilment of the U.S.C. is the sole indicator of patentability, but these considerations can be used to aid in determination of nonobviousness. For example, in the aforementioned case with Learned Hand, it was shown that, while keeping the workpiece heated throughout the coating process is a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years without success. This meeting of long-felt needs thus means that the process qualified as being nonobvious.

Ordinary Skill in the Art

Examination of the opinion in Reiner v. I. Leon Co. (full text) reveals attempts at putting the modern patent statutes into practice.

We are of course acutely aware of the constant reminders in the books that the sale of a patented device is not alone a measure of its invention, and we accept that conclusion. Nevertheless, great commercial success, when properly scrutinized, may be a telling circumstance. It is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a "combination": that is to say, it consists of former elements in a new assemblage. All the constituents may be old, if their new concourse would not "have been obvious at the time the invention was made to a person having ordinary skill in the art" (§ 103, Title 35).

The codification of nonobviousness was intended to provided definition and unambiguity to the ruling of courts in the United States. However, the language still leaves room for interpretation that needed to be developed in the judicial system. Specifically, the concept of "ordinary skill in the art" is difficult to evaluate for judges and justices clearly outside of that "art"

The test laid down is indeed misty enough. It directs us to surmise what was the range of ingenuity of a person "having ordinary skill" in an "art" with which we are totally unfamiliar; and we do not see how such a standard can be applied at all except by recourse to the earlier work in the art, and to the general history of the means available at the time. To judge on our own that this or that new assemblage of old factors was, or was not, "obvious" is to substitute our ignorance for the acquaintance with the subject of those who were familiar with it. There are indeed some sign posts: e. g. how long did the need exist; how many tried to find the way; how long did the surrounding and accessory arts disclose the means; how immediately was the invention recognized as an answer by those who used the new variant?

The approach followed by Judge Hand, an approach still followed today, was to rely on testimonies of those people thoroughly acquainted with the field and those who could provide the court with expert testimony on the subject at hand.

South Corp. v. US (full text)

South Corp. v. US