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 that although an invention may be made of a combination of previously known elements, this is not inherently obvious according to the decisions of the courts. This was the case in US v. Adams, in which although wet batteries had been known of, no one thought that Adams' particular idea was useful or necessarily possible. In this case, Adams' patent was held valid, because it went directly against what most experts at the time considered obvious, and succeeded.
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.
Ordinary Skill in the Art
Relationship with Novelty
Although there are many things that can be made that would be technically novel, many of them would fall beyond the realm of what is patentable. This is the purpose of non-obviousness, and its relation to novelty. While novelty simply means if something is new, non-obviousness subtly deals with a different issue than the technical newness of a device. It is also much harder to accurately define at all times. Novelty is a seemingly simple concept, either the invention is new, or it is not. Non-obviousness does not seek to establish whether something is new, but rather whether or not it truly advances the arts, and is not so readily foreseeable an improvement as to be a simple chore for anyone in the field. This is why simply replacing a material in something does not make it patentable. The doorknob in Hotchkiss v. Greenwood was in fact new, in that its specific combination had never before been made, but it did not really advance the arts to simply make an object out of clay and mash all the elements together in the exact same fashion. Therefore, while novelty has to do with the technical newness of an invention, non-obviousness has more to do with the advancement of the field beyond the readily foreseeable future.
The Inventive Step
The Inventive Step is another expression for what we call non-obviousness. It is more prevalent in Europe, where it is used instead of the term non-obviousness, although they are basically identical. The expression is used to suggest that something patentable must have an element of invention to it, something that would be not be readily apparent to the standard worker skilled in the art. This is of course important, and is the basic premise of non-obviousness, but the expression and the interpretation of the word "invention" has shifted throughout the history of law, as discussed in the next section.
Nonobviousness vs. Invention
Invention in and of itself is not the easiest thing to define. To this end, non-obviousness was created in order to make a term which would have more formal definition, less open to interpretation and therefore more stable in the law. A good example of this is the interpretation of invention and inventiveness in the decade just prior to the creation of 35 USC 103. The emphasis of invention at this time was so great, that a type of test being used to evaluate whether an idea was inventive enough was the "Flash of Genius" test, in which the inventor had to prove that the idea for the patent had come all it once in a flash of genius. This effectively barred any so-called invention whose formulation had come as the result of long-time testing and tinkering from receiving a patent. It is worth noting that this is a very harsh standard, as many new inventions or ideas come as the result of months of work and careful experimentation, not just "Eureka!" moments. Therefore non-obviousness was made, in order to close the interpretation of invention and inventiveness from the law, and present a more formally defined idea. It is also worth noting that 35 USC 103 strikes down the "Flash of Genius" test, by stating that the manner in which the invention was made is irrelevant to its patentability, so long as it meets the standard of non-obviousness.
The Importance of Non-Obviousness, with Regards to Constitutional Purpose
The U.S. Constitution states that Congress has 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 is the very purpose of all patent law. It seeks to promote the progress of the nation in science and useful arts, by encouraging innovation and invention within the fields. The patent itself is a trade-off, giving someone exclusive rights to an invention for a limited period of time, after which point it enters the public domain and may be used by anyone as a new base from which to further innovate. In this way, a delicate balance is struck. Without the protection of patent law, invention would be highly detrimental to the inventor, as they would watch all their effort and time waste away the instant someone found a way to duplicate it. What is the purpose of spending effort creating something new if your competitor will simply steal it immediately and not waste the resources to develop it himself? On the other hand, if no one is ever permitted to use the invention but the inventor himself, how can the industry grow? If only the inventor can use his own work forever, then only he can make improvements upon it or build upon his own knowledge, and the field outside of his company stagnates or must go to great lengths to develop a separate path of innovation. By granting limited-time rights to the holder of a patent not only is there incentive to innovate, in that you may profit off of your invention exclusively for a length of time, but the knowledge is then released and free to use so that the entire field might grow and become more advanced.
Non-obviousness is an important part of this Constitutional Purpose. It keeps things which do not truly advance the arts from becoming patentable. How detrimental would it be if someone were to make a brilliant new invention, like a car which allowed near-instant travel over long distances, and secure a patent, only for the next company to change something trivial such as the color of plastic in the dashboard and secure its own patent? What then of the next company, which would add a cup holder and patent it again? This series of ideas, although technically novel, does nothing to advance the field. If this were possible, each of these patents would restrict the field, in fact, by keeping the technology away from the public domain even longer by simply tweaking an insignificant feature and obtaining an entirely new exclusive right. This is directly contrary to the Constitutional Purpose, and it is why non-obviousness is so important. It keeps the careful balance employed by patent law in place, and furthers the advancement of science and useful arts. In the end, this benefits everyone, as it is the advancement of our country and the human race, which is arguably the purpose of all advancement in science and the useful arts.