- 1 My Patent
- 2 Examining the Patent in accordance to Lyon v. Bausch & Lomb, A. & P. Tea Co. v Supermarket Corp., and Hotchkiss v. Greenwood
- 3 Graham v. John Deere : Examination of Non-obviousness
- 4 "Non-Obviousness"
- 4.1 Historical Development
- 4.2 Suggestion to Combine
- 4.3 Objective Tests
- 4.4 The Inventive Step
- 4.5 Relationship with Novelty
- 4.6 Nonobviousness vs. Invention
- 4.7 Secondary Considerations
- 4.8 Ordinary Skill in the Art
- 5 3323372 Kristel ETAL Linear Servo Accelerometer
- 6 Case: In re Wyer
- 7 Brief in Defense of Hamilton Sunstrand
- 8 Brief of Dell Inc., Hewlett-Packard, Co., Cisco Systems, Inc., and Ebay Inc. as Amici Curiae in Support of Petitioners
Patent Number: 4292795
- Electro-mechanical locomotive bell ringing apparatus for quick and easy replacement of existing pneumatic bell ringing systems
In the summer of 2010, I worked at GE Transportation testing locomotive diesel engines. Many days I found myself firing up the large diesel engines and hearing the bell of the locomotive ring out.
- Patent Description: This patent is for an electro-mechanically operated locomotive bell ringing apparatus which is mounted within a bell and attached to an existing bell striker. A switch on Engineers Console triggers a timer energizing a coil to move the striker against the bell. Found using PatentStorm .
Examining the Patent in accordance to Lyon v. Bausch & Lomb, A. & P. Tea Co. v Supermarket Corp., and Hotchkiss v. Greenwood
References: Patent 4706037 – Soft Contact Solenoid Contractor (http://www.patentstorm.us/patents/4706037.html)
The U.S. Supreme Court case of A. & P. Co. v. Supermarket Corp. investigated the validity of a patent when the invention is considered merely a combination of the parts. In this case the supermarket cashier’s counter was considered useful and novel, but because there was nothing actually “inventive” about the counter, there was no merit to the patent. The court argued that an invention which is a combination of parts must amount to more than just the summation of the parts (i.e. 2 + 2 must equal 5, not just 4). The case goes as far as listing all of the undeserved patents that the court had issued with loose standards of “inventiveness”.
In the same manner, the U.S. Supreme Court case of Hotchkiss v. Greenwood investigated a patent for a clay doorknob saying that it was invalid. The court argued that nothing about the invention was new. “The knob was 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 was securely fastened therein. Knobs had also been used of clay”. The court ruled that it was a mere substitution of materials.
Under the standards of these previous U.S. Supreme Court decisions, I believe the patent for Electro-mechanical locomotive bell ringing apparatus would still be valid. Certainly locomotive bells had been used before, and solenoid magnets had been used to move metallic masses. However, this unique combination added value to the invention by eliminating a myriad of functional issues that accompanied standard pneumatic bell ringing systems that were in use that the time. Patent 4706037 for a Soft Contact Solenoid Contractor, which was issued a year earlier, discusses the movement of an armature, but the Electromechanical Bell Ringer adds an “inventive” dimension by using the solenoid to ring a bell, along with all the circuitry and controls that accompany this action.
link titleIn the United Sates Court of Appeals Second Circuit case of Lyon v. Bausch & Lomb, the court investigates the validity of a patent for an optical coating method. The court argued that “If an improvement is to obtain the privileged position of a patent more ingenuity must be involved than the work of a mechanic skilled in the art.” Because it was known that the method was practiced by other mechanics in the field, it was not considered an inventive method. Some testified that they did not even think that the method was effective, and that is why they had personally discontinued use of the method.
Under these standards of the courts, it would be more difficult to argue that the Electro-mechanical bell ringer was something that a “mechanic skilled in the art” could not have designed. At the same time though, the need for a new bell ringing system had certainly been present for a long time. If this is the case, then why had someone else not already invented it? Without the appropriately technical background it is difficult to determine a verdict for this case.
Graham v. John Deere : Examination of Non-obviousness
In support of the “non-obviousness”:
In order for Graham to receive his patent, it is necessary that his patent bear “evidence of more ingenuity and skill than that possessed by an ordinary mechanic acquainted with the business.” The decision of “non-obviousness” can also only be made upon establishing “the scope and content of prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art.” The primary concerns in the “non-obvious” nature of Graham’s patent is the the introduction of a hinge-plate bolt and the inversion of the shank to the hinge plate. Within the field, there has been a long felt need to reduce wear on plow shanks and add flexibility in order to deal with rocky soils of certain regions. Plow shanks were prone to breaking. By inverting the shank position in respect to the hinge plate, Graham added more flexibility to the system by permitting the shank to flex about its entire length rather than just the extension beyond the hinge plate. The introduction of a bolt provided for consistent contact with the hinge plate which reduced wear on the shank. Although, both of these introductions seem like minor changes they significantly change the performance of the mechanism. Adding a bolt to a mechanism is a simple alteration. Thus, if the need existed, but this addition had not yet been utilized, it would seem that this addition was not an “obvious” introduction.
Supporting conclusion of invalidity:
Graham claims the the introduction of a hinge-plate bolt and the inversion of the shank to the hinge plate have improved the performance of his previous patent. Although, this claim may hold true, it cannot be shown that the steps taken from the previous art required “more ingenuity and skill than that possessed by an ordinary mechanic acquianted with the art.” It was known that flexibility in the shank allowed more tolerance in the plow to discourage breaks and wear. The spring mechanism is evidence of this. It would then to a mechanic in the area, be also obvious that are larger length of flexable shank area would be beneficial. The mere inversion of the shank to the hinge plate to provide this design change, would not require any true “inventive” genius. It was also known that wear on the shank was detrimental to the system. Making contact with the hinge plate and shank more consistent by bolting them together would also be in the realm of “ingenuity and skill possessed by an ordinary mechanic”.
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.
It can be seen in this pronouncement of the court opinion by Justice Nelson, that the original requirement of novelty is not satisfactory, as the knob designed by Hotchkiss is a new product. Although the term "nonobviousness" will not be developed for some time, the court's decision hinges on the fact that the mere substitution of better suited materials is too obvious a development to warrant a patent. The fundamental premise of nonobviousness is presented a few paragraphs later, as Justice Nelson states,
- "....unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingeunity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor."
Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field.
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. In particular, this case dealt with three significant issues related to the process of determining patentability:
- First, that the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
The importance of a "long felt but unsatisfied need" in the determination of nonobviousness is that it is difficult to claim that an invention is obvious if there has been a demand for a certain product and no one has been able to fulfill that need. However, it is important to note that there are two requirements that must be met here. There must be a need for the product and the need must have existed for a long time. If the need is relatively new, then it is difficult to claim that a person with ordinary skill in the field would have not developed such a design had he been aware of demand for such a device. On the other hand, if the market related to a certain field has provided no sign that there is a need for such an improvement, then it can be argued that the design would have been obvious had anyone expressed interest in the proposed device.
- Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
In Graham v. John Deere, the history of the patent process is discussed, particularly Thomas Jefferson's outlook on the purpose of providing a patent. Jefferson made it clear that patents were only to be granted for inventions that furthered human knowledge and were new and useful. The granting of patents for small details, obvious improvements, or frivolous devices was neither worthwhile nor helpful. In A&P v. Supermarket Corp., Jefferson's sentiment is echoed, except the focus of the court is narrowed further to the important frontier of science and engineering. As Justice Douglas states, "the purpose is to promote the Progress of Science and Useful Arts," and the two disciplines most associated with progress at that time (and still currently) are science and engineering. Even later, the court states, "patents serve a higher end-the advancement of science," which make this point very clear.
- Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
The court's outlook on the evaluation of patents in regard to the combination of prior elements is best summarized in the following explanation. "The mere aggregation of a number of old parts or elements which, in the aggregation, peform or produce no new or different function or operation than that theretofore performed or produced by them is not patentable invention....only when the whole in some way exceeds the sum of its parts is the accumulation of old devices 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
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.
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.
It is important to note this distinction because the combination of elements which were all previously independently known is not always obvious. In the case of KSR International Co. v. Teleflex this is discussed in depth.
- ”As is clear from cases such Adams, a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most if not all, instances rely upon building blocks long since uncovered, and claim discoveries almost of necessity *419 will be combinations of what, in some sense, is already known.”
This is precisely the reason that the TSM test must be used, because all inventions are based from the building blocks of science and human understanding, which is long since discovered.
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
Relationship with Novelty
Nonobviousness vs. Invention
It is common in controversial areas of patent law to leave patentability open for interpretation. Rather than constructing very stringent guidelines for patentability, the courts prefer that decisions be made with respect to underlying principles of patent law, that is to “promote the progress of…useful arts”. That being said cases and patents which are more difficult often can be swayed in one direction or another by what are considered “secondary considerations”. These are considerations which do not strictly grant or deny patentability, but rather they act to affirm a decision in one respect or another.
In the case of of US v. Adams, the patent was ultimately held valid for Adams because of the “non-obviousness” nature of his invention, but secondary considerations were investigated and helped to affirm this decision. Adams invented a dry store, constant current, constant voltage battery that just needed water added to it. The court justified the “non-obvious” nature of the invention based on the fact that the battery had unexpected advantages. “As we have seen, the operating characteristics of the Adams battery have been shown to have been unexpected and to have far surpassed then-existing wet batteries.” Adams also benefited from the disbelief that certain experts initially expressed in his invention. “We have seen that at the time Adams perfected his invention noted experts expressed disbelief in it. Several of the same experts subsequently recognized the significance of the Adams invention, some even patenting improvements on the same system.” The final secondary consideration that benefited Adams was that there had been previous disadvantages in similar methods that would have dissuaded the pursuit of his invention. All of these factors contribute to the decision of “non-obviousness”, that Adams’ development was more than just the logical next step.
In the case of Graham v. John Deere, Graham was ultimately not granted a valid patent. There were, however, secondary considerations that made his case to patent the vibrating plow shank much stronger. “Such secondary considerations as commercial success, long felt 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”. Graham argues that there had been a long felt need for dealing with the force on plow shanks created by rocky soil. He also notes the commercial success of his invention and the failure of others to deal with the issue the way he had. It would later be revealed in the courts, however, that prior art of Glencoe had done exactly that.
Ordinary Skill in the Art
3323372 Kristel ETAL Linear Servo Accelerometer
Invention is concerned with: 1) an improved capacitance pick-off – flat metalized plate located between a pair of fixed metalized plates, and capacitive gap between these plates is 1/1000 of an inch so that sensitivity is extremely high 2) improved miniaturized accelerometer, providing complete instrument in single housing 3) Provision of a servo accelerometer employing a highly improved magnet assembly; a novel seismic element 4) High Natural Frequency w/ minimum electrical connections
Prior Art: - Servo accelerometer – uses a test mass w/ electrical coil in a magnetic field to produce resultant forces. However, these lacked the compact and ruggedness of new invetion. Also lots of disadvantages to these servo motors
Case: In re Wyer
Court: United State Court of Customs and Patent Appeals
An appeal was taken from the decision of the PTO sustaining the examiner’s rejection of all claims for the invention of a "Cable Junction Box" on the grounds that the invention was described in a printed publication more than one year prior to the application for the patent in the U.S. The examiner had determined that the contents of the application had been described in a Australian patent application where copies were made of the patent and made accessible to the public at the Australian Patent Office and each of its five suboffices. In this case large paper copies of the invention were even available for purchase by the public. The US Court of Customs and Appeals affirmed the decision of the patent examiner.
Brief in Defense of Hamilton Sunstrand
Through various previous cases it had been established by the courts that the Doctrine of Equivalents can be used to claim infringement if a substantially similar invention is used to create a substantially similar result in a substantially similar manner. It is also established by the courts that it is the responsibility of the patentee to disclose the manner of an invention sufficiently in the claims of the patent so that it could be recreated by someone of ordinary skill in the art, that is, if there is intent to use the Doctrine of Equivalents to claim infringement. In this case, Honeywell’s patent establishes a “set point” for minimum flow which surge can be avoided in an Aircraft Auxiliary Power Unit by ambient air which is drawn through a set of inlet guide vanes. The set point is determined by the position of the inlet guide vanes. The Hamilton Sunstrand product that is being accused is an APU which established the “set point” by the temperature measurement of the ambient air along with a measurement of the inlet guide vain position. Honeywell attempts to claim infringement based on the accusation that Hamilton Sunstrand’s APU achieves a substantially similar result in a substantially similar manner. Sunstrand’s APU does indeed use one of the same method’s for detecting a minimum flow rate, that being the position of the inlet guide vanes, but it also using temperature detection to determine the “set point”. Regardless, Honeywell does not define in its claims the use of inlet guide vane position, and thus they forfeit their right to claim infringement on this basis. Honeywell’s claim 51 which did include the inlet guide vane was not allowed because it was dependent on claims that were rejected for obviousness. In rewriting the independent inlet guide vane claim, Honeywell narrowed the scope of the claim, and consequently they are barred from asserting the doctrine of equivalents. Honeywell also surrenders the ability to claim infringement based on unforseeability. As Sunstrand points out, there existed an APU in 1970 that distinguished between high flow and low, and the use of inlet guide vanes to make this distinction was foreseeable to one skilled in the art in 1982-1983 (the relevant time period). For these reasons Honeywell is unable to accuse Hamilton Sunstrand of infringement for the APS 3200.
Brief of Dell Inc., Hewlett-Packard, Co., Cisco Systems, Inc., and Ebay Inc. as Amici Curiae in Support of Petitioners
Supreme Court of the United States. QUANTA COMPUTER, INC., et al., Petitioners, v. LG ELECTRONICS, INC. Respondent. No. 06-937. November 13, 2007. On Writ of Certiorari to the United States Court of Appeals for the Federal Circuit Brief of Dell Inc., Hewlett-Packard, Co., Cisco Systems, Inc., and Ebay Inc. as Amici Curiae in Support of Petitioners
List of Arguments: • The Amici Curiae argue in this case that is common practice for companies in this area to purchase chips and memory from an outside firm and use them as a single unit or on the other hand to purchase them and assemble the components separately as well • They argue that allowing the interested party, LGE, the ability to receive royalties at any manufacturing chain that in any way implicates its patents, gives LGE an unjust ability to receive royalties which add to manufacturing costs of other companies and do nothing to serve the patent law system • If the doctrine of exhaustion excludes method claims then every apparatus claim could avoid exhaustion by simply adding a method claim to his apparatus claim which stated how to use the apparatus • The lower courts decision would create considerable confusion about the downstream participants in the manufacturing process as well as open new door for substantial and abusive patent infringement suits • “The declared purpose of the patent law is to promote the progress of science and the useful arts by granting to the inventor a limited monopoly, the *6 exercise of which will enable him to secure the financial rewards for his invention.” United States v. Univis Lens, 316 U.S. 241, 250 (1942). This decision shows the purpose of the patent law system, wherein, once the purpose has been realized (i.e. benefits have been gained by selling the product) then there no longer exists any basis for restraining the product/patent being sold • It is argued that at the point of initial sale the patent owner has the opportunity to demand the sum reflecting the full value of its invention over the full life cycle of the product. This is not a value to be determined after the sale. • These legal rules allow the patent law function, that is, encouraging progress in the useful artsw by rewarding innovation with minimal intrustion into the operation of the free market and minimal disturbance to the normal conception of ownership • It is argued “the regime envisaged by the Federal Circuit, where patent owners can partition their rights in a patented article and sell those rights piecemeal, obtaining a portion of the total royalty from each entity that purchases or uses the article (presumably according to the proportional value derived from the *13 invention by each entity), is economically and practically unrealistic.”