User:Charles R Talley/Homework Assignments/hw0209

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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 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.

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.

  • First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
  • Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
  • Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

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.

Objective Tests

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

The inventive step is extremely similar to the nonobviousness condition applied by United States patent law. "Inventive step" is the terminology used by European patent laws, in both individual countries and the European Patent Office (EPO) as a whole. The EPO states, under Article 52 of the European Patent Convention (EPC) that "European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step."

Included in Article 52 are some unpatentable "inventions":

  • discoveries, scientific theories and mathematical methods;
  • aesthetic creations;
  • schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
  • presentations of information.

Article 56 EPC goes on to define the inventive step- "An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents are not to be considered in deciding whether there has been an inventive step."

Relationship with Novelty

Novelty, Nonobviousness, and Utility are the three fundamental criteria of patentability, all related to prior art. Since novelty and nonobviousness are the two primary criteria, it has often been debated whether these are independent conditions or sequential ones. Those who view these two criteria as sequential usually interpret novelty as the gateway criteria, an initial check on the invention, followed by a deeper evaluation under nonobviousness. The major distinction between novelty and nonobviousness is their respective relationships with prior art. When assessing novelty, the patent examiner can only compare the proposed invention to each instance of prior art individually; but in the nonobviousness assessment, the examiner has the freedom to look at the proposed invention in the light of different combinations of prior art.

Novelty can be achieved by two means. One can invent something in the purest sense of the word, creating something that has never been created before and stands alone from precedent or prior art. Much more common however is the novelty that comes from improvement on prior art, and the degree of improvement necessary to be deemed novel requires definition. Nonobviousness is the tool used to qualify these improvements as inventions; and in this sense, nonobviousness seems to clearly succeed novelty. There are instances that seem to allow for the separate consideration of the two, but the natural flow of logic encourages the consideration of novelty before nonobviousness.

Nonobviousness vs. Invention

Very simply, one can have nonobviousness without invention, invention without nonobviousness, or both.

To have nonobviousness without invention is usually the case for unpatentable innovation. Examples include

  • ideas
  • scientific discoveries, theories, or methods
  • laws of nature
  • algorithms

To have invention without nonobviousness is the scenario in which inventions pass the novelty criterion, validating their status as invention, but fail the nonobviousness criterion. This scenario is incredibly common in the realm of combination of prior art. As discussed earlier, a proposed invention can pass the novelty test if it is significantly different from each case of prior art individually; but if the proposed invention is merely an obvious combination of prior art, with no significant gains in innovation other than convenience or business advantage, it would fall into this category of unpatentable subject matter.

Finally, a proposed invention can pass both nonobviousness and invention; and as long it is deemed useful, it will qualify for a patent.

Secondary Considerations

As one might expect, the application of the nonobviousness constraint can be very subjective. In the same way that the solution to a nonlinear, partial differential equation may be obvious to Dr. Goodwine and incomprehensible to his students, technical patents can be difficult to judge for their obviousness. In that regard, a number of court cases have set precedent to help interpret the obviousness judgement. The determining factors brought forth in those cases lay down a set of secondary considerations for aiding in the determination of obviousness. Secondary considerations that support nonobviousness and a valid patent include...

  • The invention's commercial success
  • Long felt but unresolved needs
  • The failure of others
  • Skepticism by experts
  • Praise by others
  • Teaching away by others
  • Recognition of a problem
  • Copying of the invention by competitors

Ordinary Skill in the Art

Typical of the United States Legislative system (excluding the great state of Louisiana), a confusing and subjective concept(obviousness) has been defined using another confusing and subjective concept (ordinary skill in the art). Once again, we must rely on the courts to objectify its meaning.


Factors that may be considered in determining level of ordinary skill in the art include:
  1. The educational level of the inventor;
  2. Type of problems encountered in the art;
  3. Prior art solutions to those problems;
  4. Rapidity with which innovations are made;
  5. Sophistication of the technology;
  6. Educational level of active workers in the field.
Orthopedic Equipment Co., Inc. v. All Orthopedic Appliances, Inc.,707 F.2d 1376 at 1381-1382 (Fed.Cir.1983). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. The important consideration lies in the need to adhere to the statute, i.e., to hold that an invention would or would not have been obvious, as a whole, when it was made, to a person of "ordinary skill in the art" — not to the judge, or to a layman, or to those skilled in remote arts, or to geniuses in the art at hand.


The district court specifically found that the level of ordinary skill at the time of the invention was that of an engineer having at least a few years of design experience working in the field of developing orthopedic soft goods. Appellant attacks this finding as lacking evidentiary support and setting the level of skill at an unnecessarily high level. It, however, points to no evidence in the record establishing that the district court's finding is clearly erroneous, although the inventor himself was not an engineer. Although the educational level of the inventor may be a factor to consider in determining the level of ordinary skill in the art, it is by no means conclusive. Other factors which may be relevant in ascertaining the level of ordinary skill in the art include "the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field * * *." Orthopedic Equipment Company v. United States,702 F.2d 1005, 1011, 217 USPQ 193, 198 (Fed.Cir.1983), quoting Jacobson Brothers, Inc. v. United States,512 F.2d 1065, 1071, 185 USPQ 168 (Ct.Cl.1975).

Reiner v. I. Leon Co. (full text)

Reiner v. I. Leon Co.

South Corp. v. US (full text)

South Corp. v. US