User:Charles R Talley/Homework Assignments/hw0204

Obviousness Debate (Graham 2627798)

As I stated in the title, if this invention were in fact obvious, by the nature of its definition, the decision would be blatantly apparent, and this case would not exist. Therefore, since this case managed to make it all the way to the Federal Court of Appeals Eighth Circuit, I can only conclude that the invention was in fact non-obvious and worthy of a valid patent under 35 U.S.C. 103.

However, for the sake of academia, I will debate the issue with myself.

From the Opinion

Five prior patents indicating the state of the art were cited by the Patent Office in the prosecution of the '798 application. Four of these patents, 10 other United States patents and two prior-use spring-clamp arrangements not of record in the '798 file wrapper were relied upon by respondents as revealing the prior art. The District Court and the Court of Appeals found that the prior art "as a whole in one form or another contains all of the mechanical elements of the 798 Patent." One of the prior-use clamp devices not before the Patent Examiner - Glencoe - was found to have "all of the elements."

We confine our discussion to the prior patent of Graham, '811, and to the Glencoe clamp device, both among the references asserted by respondents. The Graham '811 and '798 patent devices are similar in all elements, save two: (1) the stirrup and the bolted connection of the shank to the hinge plate do not appear in '811; and (2) the position of the shank is reversed, being placed in patent '811 above the hinge plate, sandwiched between it and the upper plate. The shank is held in place by the spring rod which is hooked against the bottom of the hinge plate passing through a slot in the shank. Other differences are of no consequence to our examination. In practice the '811 patent arrangement permitted the shank to wobble or fishtail because it was not rigidly fixed to the hinge plate; moreover, as the hinge plate was below the shank, the latter caused wear on the upper plate, a member difficult to repair or replace.

Obvious

Regarding the orientation of the hinge plate and the shank, it is obvious to a person of ordinary skill in the art that the orientation used in the '811 patent is not conducive to a free-flexing shank and that the solution is to invert the arrangement to achieve such a shank.

The only other matter of novelty between the '811 patent and the '798 patent was bolting the shank to the hinge plate. But this was bolting mechanism had already been patented by Pfeifer (2014451); so '811 is simply a combination of '811 and Pfeifer's clamp. Therefore it was obvious and the patent is invalid.

Not Obvious

The '811 patent had several problems with instability and wear. These problems were the motivation behind the '798 patent and presented no small feat. If the problems presented by the '811 design had in fact been obvious, Graham would have addressed them before submitting his '811 application. Instead, it took him another four years to produce the fix. Clearly, the changes presented in '798, though subtle, were not obvious and the patent is valid.