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MY Selected US Patent

  • Patent4817219 issued April 4, 1989
  • The Sitting Bath tub
  • I decided to pick this patent because I have recently obtained much interest in inventions that help disabled or handicaped people with their everyday activities. This Sitting Bath tub does just that for people in wheelchairs or people who have trouble with mobility on the lower half of their body. More details can be found here. [1]

Patent Law HW 1/28/11

  • Reference Patents used include:
    • Patent 2570053 Issued Oct. 2, 1951[2]
    • Patent 4202060 Issued May 13, 1980 [3]
  • Looking at a close description of the patent chosen, Patent 4817219 The Sitting Bathtub and comparing this patent to two reference patents, Patent 4202060 The Openable Bathtub and Patent 2570053 Walk in Bathtub we must look at the distinctive points made in both cases to decide whether or not the chosen patent would hold validity under these court case rulings.
  • First taking a look at the Hotchkiss v. Greenwood (1850) case the key ideas from this case were:
    • Substitution for simply a better material keeping all other design aspects the same does not warrant a patent
    • If the device took no more skill to construct than the skill of an ordinary mechanic or expert n the field the device does not warrant a patent
    • If a similar device, or devices similar except in material used, are sold currently or prior to the date the patent was obtained, the patent is not valid

The court sites the conditions upon which the patent would be valid as follows: “And upon the evidence being closed, the counsel for the plaintiffs prayed the court to instruct the jury that, although the clay knob, in the form in which it was patented, may have been before known and used, and also the shank and spindle by which it is attached may have been before known and used, yet if such shank and spindle had never before been attached in this mode to a knob of substantial article, and it required skill and invention to attach the same to a knob of this description, so that they would be firmly united, and make a strong and substantial article, and which, when thus made, would become an article much cheaper than the knobs made of metal or other materials, the patent was valid, and the plaintiffs would be entitled to recover.” According to the three conditions above for a patent and comparing the two previous patents to the current Sitting Bathtub the patent would be a valid patent. Not only do the materials for the 1989 patent differ from previous models, but the main mode of operation for the device differs. The Walk-in-Bathtub does not offer a specific sitting device for handicapped or disabled people, although it does have a similar hinged entry door that allows the user to enter the tub at floor level. The second previous patent, Open able Bathtub, is much more similar to the chosen patent and has a similar shape and look. However the key feature of the tub, the opening device, is significantly different. The previous patent uses a translating section to close the tub, while the newer patent uses a hinged side door to close the tub (making it easier for the user to close the tub while sitting inside). While the same ceramic type material for both tubs are used, the key door feature of the tub differs, which constitutes a patent for the newer invention in light of the previous patents. An interesting aspect about this device, pertaining to the second criteria according to the Hotchkiss case, is the fact that this new devices actually simplifies older methods of trying to provide the same service rather than trying to over-complicate the process. With a simple side hatched door that closes and uses hydrostatic pressure to seal the door completely to fill the tub, this devices has less parts than older devices and is much more simpler to operate. According to the Hotchkiss case, this device should be patentable.

  • Taking a look at the A&P case the most important aspects of the case that were debated about were:
    • Patents most hold the proper amount of innovation
    • If the new device or process is merely a combination of previous ones without any added skill to the process the patent is not valid

This criteria is a bit harder to decide upon. Everything that is created is a combination of previously known materials, so how are patentable objects distinguished? The Supreme Court states: The conjunction of known elements must contribute. When the whole in some way exceeds the sum of its parts then the object is patentable. In regards to the chosen patent compared to prior inventions this patent required more innovation than just combining said parts from previous similar devices together. With a unique handle to operate the device while sitting inside and a hinge mechanism for closing the door instead of rollers or a complicated automated system, this invention combines innovation with non-obviousness in a way that would warrant a patent according to the law back in 1850 and 1950.

  • Another issue that the Lyons case brings up is the problem with using or selling the item before the patent is granted. If such an action occurs, the patent is no longer valid. Article 35 Section 102 states specifically, “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.” In regards to the Lyons case, it was determined that other coatings very similar to the one patented had been created in experimental trials by a scientist working for the Navy. However these experimental trials were deemed to be abandoned by the inventor and full rights and privileges were given to the said patentee in a unanimous Supreme Court decision.
  • Reading through the case, I think that the chosen sitting bathtub would still be patentable according to newer patent laws stating reasons above about unique use and simplified operation of the device. There existed no abandonment of any inventions by previous patentees that could be found so that aspect of the Lyons case does not apply to this patent and previous similar patents. The non-obviousness requirement under Lyons would be satisfied because with a need for such an invention, no one before had quite figured out how to simplify such a device and make it as user friendly as the 1989 patent for the Sitting Bathtub.
  • Answering the question of why the issue of patentability might differ from the Hotchkiss case to the Lyons case is an issue solely based on more stringent requirements for a patent. In the Lyons case a judge uses the Hotchkiss case to point out the trivial quality of the case and is not happy that the Supreme Court had to bother with such cases. The requirements for patents have gotten more strict over the years to a) reduce the number of obvious patents and keep public knowledge broad and b) to reduce the number of court cases or make it easier for lower courts to concur on the right judgment for patent laws and reduce the amount of trivial patents that reach the supreme court.
  • Information about referenced previous similar patents was extremely helpful in better understanding how my chosen patent operates. This information was also interesting to link time periods and concepts together. The first reference of a patent from 1951 for the Walk-in-Bathtub provided many detailed pictures for a complicated automatic system for opening and closing the ground level tub. Interestingly enough this patent was the earliest patent referenced in the chosen patent and it provides the most complicated system. The description provided helps flush out the intricate sketches, but the system is still overly complicated in my opinion. The 1950s were perhaps the time when people started becoming aware of a need for handicapped assistance to conduct daily activities such as bathing.

The next referenced used was from 1980 and was a very similar design to the chosen patent from 1989. Innovation can really be seen if you compare the two patents side by side. While they may look almost identical from the sketches provided in the patents, these devices are quite different in how people interact with them and use them to assist them in everyday life. The openable bathtub provided a start for the sitting bathtub, showcasing the need for a simpler device which can be easily opened and closed by the user. The reason that the 1989 sitting bathtub is considered a patent in light of previous inventions is the fact that the chosen device improved the concept and did so in a non-obvious, innovative, better way. New materials simply weren’t used as a means for improvement like in the Hotchkiss case. And existing inventions were not simply combined together to make a “super product” as in the A&P case. This invention had unique qualities and features which would warrant it a patent according to 1890 patent law and in present patent law.

Patent Law HW 2/4/2011

  • Why the Graham Patent '798 is obvious: Not Patentable
    • It is clear that the said improved device, Patent 2,627,798 “Clamp for vibrating Shank Plows” is obvious in reference to 35 S. 103 of the U.S.C which states: “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.”
    • It can be justly argued that this improvement is nothing more than a combination of Graham’s old patent with an improved hinge that has been previously developed in similar patents (see Pfeifer and Glencoe Patents). First off, except for two elements of “stirrup and bolted connections of the shank to the hinge plate and the position of the shank,” Graham’s older ‘811 patent is identical to his ‘798 patent. These two improvements separately would not be patentable in light of previous art, mainly the Glencoe 3258076 patented adjustable spring clamp shank assembly which utilizes the same mechanics to focus wear along a plane rather than at a point. The only difference between the Glencoe device and the Graham ‘798 patent is the “mere shifting of the wear point to the heel of the ‘798 hinge plate from the stirrup of Glencoe.” In light of this fact, it is reasonable to conclude that the combination of two patented devices does not warrant a patent under the non-obvious clause.
    • To further stress the non-obviousness of the ‘798 patent let’s conduct a quick engineering analysis. It is common knowledge to mechanical engineering graduates that wear occurs at joints where parts are fastened together. To reduce wear on parts stronger materials for hinges and fasteners can be used or the mode at which these joints are attached can be modified to reduce stresses in the part. Obviously if there is a stress concentration at one joint (patent ‘811) rather than distributed along the base of a support (patent ‘798), there will be excessive wear at that joint. The Glencoe clamp and the Pfeiffer clamp both addressed this issue implementing a hinge plate or stirrup to distribute shock forces during plowing. It is obvious from a basic engineering standpoint how to fix this problem by simply adjusting the positioning of the I-beam structure and adding in a hinge to distribute the load from the plow. Even if Graham’s new device was able to bring greater flexibility and more reduced stress for the plowing device, Graham failed to urge before the Patent Office the greater flexing qualities of his ‘798 patent which he so heavily relied on in court. This difference in flex is what absorbs the tremendous forces of the shock of obstructions during plowing. Graham can claim that the prior arts of Pfeiffer and Glencoe sited do not achieve the flexibility capabilities of his ‘798 patent, but since he failed to stress this crucial difference in court his point falls on deaf ears.
    • In light of the above facts, I have to affirm the ruling of the Supreme Court which issued the Graham ‘798 patent invalid due to the non-obvious code from 35 S 103 of the U.S. Code.

  • Why the Graham Patent '798 is Non-obvious: Patentable
  • It is clear that the said improved device, Patent 2,627,798 “Clamp for vibrating Shank Plows” is not obvious to the general public or a person skilled in the art in reference to 35 S. 103 of the U.S. Code which states: “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.”
  • In the district court case Graham v. John Deere the defendants failed in their efforts to prove that the improved design for reducing wear on plow parts and increasing flexibility to absorb greater forces of shocks from obstructions in plowing was of obvious nature to any general person having a background in plowing of some type of mechanical engineering. A combination patent is warrantable if finished whole device exceeds the sum of the parts in ingenuity and desirability of a product. Comparing Graham’s hinge clamp to Glencoe’s and Pfeiffer’s clamps, the devices differ in structure and simplicity. Glencoe’s clamp uses merely the mechanics of a spring and stirrup to pull the rake arm up and down. Graham’s clamp uses an I-beam structure for support as well as a hinge mechanism that attaches to the spring in the back to pull the rake arm up and down. While the mechanics of the device are similar, Graham’s hinge integrates the I-beam supports with a hinge plate in a novel way which reduces forces on the rake dramatically.
  • Another point to take into consideration is that an invention doesn’t have to be a stroke of genius to be deemed patentable. Take for example the case of Adams vs. US where Adams created a water-activated, constant potential battery which would be fabricated and stored indefinitely without fluid in the cells. A long felt need for this device existed, and Adams used chemicals (magnesium and cuprous chloride) previously known to design his batteries. The Supreme Court ruled that the manner in which Adams combined the prior art elements deemed his work patentable. This too could be said of Graham’s device, where instead of a non-obvious chemical reaction is patented a non-obvious mechanical operation is patented. As the US code states: “Patentability shall not be negated by manner in which the invention was made.” A need for this device existed to reduce the wear on plowing devices and Graham’s improvements to his old ‘811 patent provided the user with a better mechanism to support the rake arms which would also absorb more force and see a decreased amount of wear over the product’s use.
  • The last and final point made will be about the Supreme Court’s knowledge in the said mechanical field. Just because Supreme Court said it was obvious doesn’t mean it was obvious to people in the field of agriculture or mechanical engineering. I could bring in a panel of 10 engineers, and not every one of them would come up with the same solution. I believe for this solution to be deemed “obvious” at least a majority (6/10) of expert witnesses in the field must be told the problem and then come up with Graham’s solution on their own, which I don’t believe is likely at all. Ingenuity and non-obvious ideas stem from trying to solve a problem many different ways and optimizing the solution. The idea to have the shank flex the entire length of the plate to absorb forces and reduce wear seems trivial after it has been suggested, but who is to say that this optimal solution would have been “obvious” out in the field?
  • I dissent the Supreme Court’s decision made about the Graham ‘798 patent on the basis that the defendant did not prove the obviousness of the clamp for the vibrating shank plow.

HW 2/9/11: Non-Obviousness Chapter

NON-OBVIOUSNESS

  • According to the U.S. Code there are three conditions that must be met in order for a process or device/ machine to be eligible for a patent. These three conditions are: novelty, utility, and non-obviousness. This section of the chapter deals with the non-obvious clause of the U.S. Code which pertains to inventiveness, inventions, and combinations of prior art in such a way that warrants a patent. Before historical cases are cited which highlight the evolution of today’s non-obviousness standard for patents, it is important to know what the U.S Code sites:
  • (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.” (S. 103 U.S. Code)

Historical Development

  • The following are some cases through history that trace the evolution of what is currently the non-obviousness 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 inventiveness, which ultimately became the idea of non-obviousness. The important decisions of this case are cited as follows:

“...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 main takeaways regarding non-obvious subject matter from this case were:

  • Simply substituting old materials with the use of stronger, cheaper, or better material does not warrant a patent
  • If the device took no more skill to construct than the skill of an ordinary mechanic or expert in the field, the device is not patentable
  • If a similar device(s) all except in material used are currently sold or exist prior to the date the patent was obtained, the patent is not valid

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 non-obviousness. This case highlighted the requirement that a patent must solve some long felt unsatisfied need in a particular market.
  • Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc. A certain level of knowledge is required for patent subject matter which surpasses common public knowledge and gives privileges and rights to the patentee.
  • Third, it dealt with the issue of the fact that any invention is basically a combination of old elements. This third realization made it more difficult for the Supreme Court to decide on patentability of future processes or inventions. The Supreme Court would later decide upon a notion which stated more or less that for combination inventions, the conjunction of known elements must contribute. When the whole in some way exceeds the sum of its parts then the object is 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”

The important takeaways for this case regarding patent law for non-obviousness were as follows:

  • If there is an existing long unsatisfied need for an object or process which the patent addresses, the non-obviousness criterion is met. If this process or invention were otherwise obvious to the public, this long felt need would not exist in the first place.
  • Ruling from this case made it possible for processes which took previous work and added additional (non-obvious) steps, like Lyon’s coating, to be eligible for patents. Under the old standards for patent law prior to Section 103 Non-obvious clause, this case would’ve been thrown out and a patent would not have been granted.

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 "non-obviousness." The criteria to determine non-obviousness 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.
  • This particular case also brought in a lot of history to the scope of patent laws. Thomas Jefferson was the original founder of the first patent laws in the United States, being a well known inventor himself. Jefferson promoted the natural rights of all and discouraged monopolies of an idea. In his belief patents should not promote monopolies. “He rejected a natural-rights theory in intellectual property rights and clearly recognized the social and economic rationale of the patent system.”

While this case discussed patent law history it also showed how engineering analysis can play a big role in determining non-obviousness of a patent. When examining these Supreme Court cases, being an engineer, it is important to remember that just because the Supreme Court claimed it was obvious doesn’t mean the invention/process was obvious to the people in the field. Great care must be taken when analyzing these cases, and this is one flaw of our patent system today. 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 non-obviousness.
  • This case is a very interesting case to look at. One of the few instances where the federal government loses to a civilian in court. This fact points to the solidity of Adam’s patent.

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.

Final judgment on the case was as follows: “We conclude that while the combination of old elements performed a useful function, it added nothing to the nature and quality of the radiant-heat burner already patented. We conclude further that to those skilled in the art the use of the old elements in combination was not an invention by the obvious-non obvious standard.” 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 non-obvious 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 the final step in a combination patent which makes the new patent valid. For example, in the US vs. Adams case it was this inventive step of combining previously known materials in an unexpected way which produced an entirely new viable patent. This inventive step is crucial for patents. It is the step that incorporates the added knowledge to surpass a simple ordinary skill in the art. Learned Hand’s decision on the Lyon’s coating patent also shows the importance of the inventive step in patents. While the coating seem to have existing prior art involved, his additional step of heat treating while curing the material proved to be an inventive step worth patenting.

Relationship with Novelty

  • It could almost be said that non-obviousness and novelty go hand in hand for patents. Webster defines novelty as the quality of being new, original, and different. And non-obvious is defined to mean not easily discovered, seen or understood. Certainly for an object or process to be patentable, it must be the first of its kind. But there are certainly novel developments which do not meet the non-obvious requirement. The non-obvious requirement further narrows down the patent subject matter to processes and devices which have some inventive merit and higher knowledge incorporated in them. This requirement a). reduces the work of the Patent and Trademark Office for filing millions of frivolous patents and b). provides incentive to inventors to produce high quality products or processes with high intellectual development.

Secondary Considerations Secondary considerations include:

  • a long-felt but unsatisfied need met by the invention;
  • appreciation by those versed in the art that the need existed;
  • substantial attempts to meet this need;
  • commercial success of the invention;
  • replacement in the industry by the claimed invention;
  • acquiescence by the industry;
  • teaching away by those skilled in the art;
  • unexpectedness of the results; and,
  • disbelief or incredulity on the part of industry with respect to the new invention.

Ordinary Skill in the Art

  • The term, “having ordinary skill in the art” is thrown around a lot in reference to non-obviousness patent law requirements. What exactly does the Supreme Court mean when they say this phrase? According to the Supreme Court, ordinary skill in the art is the basic knowledge that any professional of the field would be expected to have. For example, a mechanical engineer with a degree from an accredited university would be expected to know how to conduct force analysis on parts to decide where supports should go. Using an example of the Graham vs. Deer case, an engineering analysis was conducted to determine that the new placement of the hinge was deemed obvious to any mechanical engineer or person in the industry at the time. This is why the paten was said to be invalid. For further references, additional cases can be looked at where heightened intellectual skill and knowledge of the patent is challenged by the Supreme Court.

Reiner v. I. Leon Co. (full text) Reiner v. I. Leon Co. South Corp. v. US (full text) South Corp. v. US

Non-Obviousness Paper

Handbook to Non-Obviousness Requirements and the History of Non-Obvious Patents Non-Obviousness is one of the three basic requirements, along with novelty and utility, which must be met in order for a process or machine to be eligible for a patent in the US. The part of the constitution which highlights this matter of non-obviousness is Section 103 of part 35 of the US Code. The exact statement of non-obvious subject matter can be found at: http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000103----000-.html , but the purpose of this paper is to provide a handbook summary of the important guidelines of non-obvious subject matter and to take a look at the Supreme Court cases which have shaped the non-obviousness standards for today. In order to summarize the non-obviousness of inventions in a brief description, it is probably easiest to describe the most general cases where an invention or process is not eligible for a patent as a result of this clause. The scenarios provided below are general cases which the non-obviousness clause rules out patent eligibility. Coming straight from Section 103 of the 35 US Code, “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. Other criteria which render a patent ineligible under the non-obviousness clause are not limited to but generally include: • Simply substituting old materials with the use of stronger, cheaper, or better material does not warrant a patent. • If the device took no more skill to construct than the skill of an ordinary mechanic or expert in the field, the device is not patentable. • If a similar device(s) all except in material used are currently sold or exist prior to the date the patent was obtained, the patent is not valid. • If the patent doesn’t meet a long felt, unsatisfied need this is a clue of ineligibility due to obviousness. It stands to follow that if there was a strong need for this process or machine and it did not exist yet, the invention or process was not obvious to the majority of the public. • If patent subject matter is base and no more than common public knowledge to ordinary people in the field of work, the patent does not meet non-obvious standards. • Combination patents take special level of care and are more difficult to determine. In a sense, everything is a combination of “prior art.” The guideline for combination patents include: o Standards of the TSM test (teaching suggestion motivation) – which point to inventors combining prior art in a way that is not obvious to the majority or in a way that is not suggested by obvious aspects of the prior art evolving through time. o If a combination invention is to be patentable, the conjunction of known elements must contribute in a non-obvious way. When the whole in some way exceeds the sum of its parts, then the object is patentable.

When dealing with non-obviousness patent eligibility, certain policy considerations arise which typically must be dealt with on a case-to-case basis since the scope of patent eligibility stretches across a wide variety of subject matter. These policy considerations and their impact on the foundations of non-obvious subject matter will be discussed individually here. The policies will also be tied to individual court cases which we have read as a class and discussed in great detail. The first policy for non-obviousness which must be discussed is the Ordinary Skills Policy. This policy states that if the patent’s knowledge required no more skill than the knowledge of an ordinary person in the art, the patent does not meet non-obviousness standards. It is important to note the two key aspects of this policy: ordinary skill or knowledge, and a person in the same art. Since patents stretch over such broad categories, it is necessary to narrow down the field of study per individual patent. For example, a patent which dealt with batteries is not going to have an ordinary skill test applied to construction engineers who build bridges and roads. Also, the fact that ordinary skill is the bar which must be surpassed instead of expert skill is another important aspect of the ordinary skills policy. If the skill level for patents was set so high that inventions must require the knowledge of geniuses of our time like Albert Einstein it is safe to say that virtually no intellectual property protection would exist and patents would be few and far between. This ordinary skills policy applied to every single one of the patents we discussed in class to my knowledge. This policy is one of the first ones that is analyzed to determine non-obviousness. An example from the cases discussed in class would be the Anderson’s Black Rock vs. Pavement Salvage case, where it was determined “We conclude that while the combination of old elements performed a useful function, it added nothing to the nature and quality of the radiant-heat burner already patented. We conclude further that to those skilled in the art the use of the old elements in combination was not an invention by the obvious-non obvious standard.” The next policy for non-obviousness which is important to discuss is the requirement of an Inventive Step. This final step is what separates patentable inventions from obvious, non-patentable machines or processes. What constitutes an inventive step though? This inventive step is the step that incorporates the added knowledge to surpass a simple ordinary skill in the art. For example, in the US vs. Adams case it was this inventive step of combining previously known materials in an unexpected way which produced an entirely new viable patent for the rechargeable dry battery. This inventive step is crucial for patents. Learned Hand’s decision on the Lyon’s coating patent also shows the importance of the inventive step in patents. While the coating seem to have existing prior art involved, Lyon’s additional step of heat treating while curing the material proved to be an inventive step worth patenting. Another policy which is crucial to the non-obviousness clause is the Relationship with Novelty. It could almost be said that non-obviousness and novelty go hand in hand for patents. Webster defines novelty as the quality of being new, original, and different. And non-obvious is defined to mean not easily discovered, seen or understood. Certainly for an object or process to be patentable, it must be the first of its kind. But there are certainly novel developments which do not meet the non-obvious requirement. The non-obvious requirement further narrows down the patent subject matter to processes and devices which have some inventive merit and higher knowledge incorporated with them. This requirement a). reduces the work of the Patent and Trademark Office for filing millions of frivolous patents and b). provides incentive to inventors to produce high quality products or processes with high intellectual development. When looking back through all the cases discussed, it is hard to separate novelty, from non-obviousness, from utility. A worthy patent has all three components, and all three components work together to create a valid patent held up by the Supreme Court. The TSM (teaching, suggestion or motivation) test has had an impact on the requirements for non-obviousness over the years as well and while it does not apply to every patent, it is a helpful tool in determining the obviousness of certain ones. This test is used for combination patents to determine the obviousness of the combination in light of the prior art. This test was discussed in the KSR vs. Teleflex case of 2007. A patent claim can be proved obvious if, “some motivation or suggestion to combine the prior art teachings can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in that art.” Sometimes however the TSM test can be incompatible with precedents set out in prior cases. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand rather than scientific literature, will drive design trends. Finally, the last policy which is critical to discuss when dealing with non-obviousness of patents is the description of prior art which pertains to said patents. What prior art, when combined together makes a patent invalid? Is it the subject of the prior art, how the prior art is compiled together, or the lack of synergy created by the new device that makes prior art a delicate subject when discussing a patent’s obviousness? “Common sense teaches that familiar items may have obvious uses beyond their primary purposes, and that in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle” (KSR vs. Teleflex). It is a requirement for all patent applicants to submit all prior art which pertains to their said patent to their best knowledge. This is a policy set in place to promote inventiveness and non-obviousness of the patent and to make it easier for anyone reviewing the patent to determine if the proper additional knowledge was added to the prior arts in the field to warrant a patent to the applicant. These were the main policies that are considered in the non-obviousness requirement for patentability. The next section will discuss how the law developed over time and how certain Supreme Court cases changed the requirements for patentability based on the non-obvious standards. Historical Development The following are some cases through history that trace the evolution of what is currently the non-obviousness 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 inventiveness, which ultimately became the idea of non-obviousness. The important decisions of this case are cited as follows: “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.” Final Outcome: Patent of doorknob with new material substitution Not Valid.

The main takeaways regarding non-obvious subject matter from this case were: • Simply substituting old materials with the use of stronger, cheaper, or better material does not warrant a patent • If the device took no more skill to construct than the skill of an ordinary mechanic or expert in the field, the device is not patentable • If a similar device(s) all except in material used are currently sold or exist prior to the date the patent was obtained, the patent is not valid 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. The main takeaways regarding non-obviousness subject matter from this case were: • Level of invention was partly evidenced by a “long felt and unsatisfied need” from the public in a particular market. This is a standard used today for non-obviousness. • The case expressed a bias toward patent protection for patents that dealt with scientific discoveries or engineered machines. This bias hints towards the knowledge bar that is expected of a patent, which surpasses common public knowledge and gives elevated rights and privileges to the patent holder. • This case also discussed the issue of combinations of old elements for a new patent. This put a wrench in the patent system thus far, displaying a need for a more clear and concise ruling on the patentability of combinations of old elements. Final Outcome: A&P patent for checkout counter found invalid for obvious prior art combinations. 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.” This section put into writing all that had been decided Lyon v. Bausch & Lomb (1955) The important takeaways for this case regarding patent law for non-obviousness were as follows: • If there is an existing long unsatisfied need for an object or process which the patent addresses, the non-obviousness criterion is met. If this process or invention were otherwise obvious to the public, this long felt need would not exist in the first place. • Ruling from this case made it possible for processes which took previous work and added additional (non-obvious) steps, like Lyon’s coating, to be eligible for patents. Under the old standards for patent law prior to Section 103 Non-obvious clause, this case would’ve been thrown out and a patent would not have been granted. Final Outcome: Supreme Court found Lyon’s coating patent valid. 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 "non-obviousness." The criteria to determine non-obviousness 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, This particular case also brought in a lot of history to the scope of patent laws. Thomas Jefferson was the original founder of the first patent laws in the United States, being a well known inventor himself. Jefferson promoted the natural rights of all and discouraged monopolies of an idea. In his belief patents should not promote monopolies. “He rejected a natural-rights theory in intellectual property rights and clearly recognized the social and economic rationale of the patent system.” While this case discussed patent law history it also showed how engineering analysis can play a big role in determining non-obviousness of a patent. When examining these Supreme Court cases, being an engineer, it is important to remember that just because the Supreme Court claimed it was obvious doesn’t mean the invention/process was obvious to the people in the field. Great care must be taken when analyzing these cases, and this is one flaw of our patent system today. Final Outcome: Graham’s patent for plow found invalid for obvious prior art combinations. U.S. v. Adams (1966) The important takeaways from this case included: • All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of non-obviousness. • This case is a very interesting case to look at. One of the few instances where the federal government loses to a civilian in court. This fact points to the solidity of Adam’s patent. Final Supreme Court Ruling: Adam’s Battery Patent Valid. 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. Final judgment on the case was as follows: “We conclude that while the combination of old elements performed a useful function, it added nothing to the nature and quality of the radiant-heat burner already patented. We conclude further that to those skilled in the art the use of the old elements in combination was not an invention by the obvious-non obvious standard.” Final Outcome: Supreme Court found Anderson pavement patent invalid on grounds of obvious combination of old elements. It is evident that over the years the non-obviousness standard for patent law has changed dramatically due to new developments in technology and new fields of development in general. It is clear that there needs to be a standard adopted which the lower courts can use to determine obviousness of today’s patents. If I were to construct a guideline for patentability I would try and compromise the need for a simple code for non-obviousness with the need for a code which is broad enough to encompass all types of patent applications. The criteria for non-obviousness that I would include would be: • If the device took no more skill to construct than the skill of an ordinary mechanic or expert in the field, the device is not patentable. • If a similar device(s) all except in material used are currently sold or exist prior to the date the patent was obtained, the patent is not valid. • If the patent doesn’t meet a long felt, unsatisfied need the patent should be held obvious and therefore invalid. It stands to follow that if there was a strong need for this process or machine and it did not exist yet, the invention or process was not obvious to the majority of the public. In regards to combination patents which seemingly appear to merely use prior art without added knowledge the following test should be applied: • Simply substituting old materials with the use of stronger, cheaper, or better material does not warrant a patent. • Try to use the TSM test to determine if the said patent would have evolved on its own in time from the prior arts in its field. However, if the combination produced unexpected result, like the Adam’s patent, then by definition it is not obvious and therefore patent eligible. • Finally, the invention or process must be tested to see if the whole is greater than the sum of its parts. If a new synergy is created by combining prior art in a novel way the non obviousness requirement is met. These requirements, while broad, give direction to lower courts who review patent law cases across the nation. If a clear concise guideline like above is provided for not only courts but for patent applicants as well, a better patent law system can be put in place which protects the intellectual property rights of its citizens, while avoiding monopolies and patents on obvious subject matter. While it is important to try and set a standard for non-obvious patent requirements, it is also important to realize that this standard must be flexible with time. As science and technology transform the world we live in, the patent system must too be able to evolve with time and not be forever stuck in the 1800s, trying to apply precedents from three centuries ago which may not be relevant to the inventions of the future. Flexibility and constant adaption for patent law is key.

Patent Law HW 3/23/11

  • US Court of Appeals
  • Case: Boileau vs. Diamond (1981)

Jacques Boileau saught a patent for a compound called tetranitroglycoluril and the process used to manufacture the substance known as tetranitroglycoluril, a compound used in explosives. Patent examiner Diamond denied a patent on both the compound and the process. The court of appeals affirmed the denial of the patent of the compound, but reversed the denial of a patent for the process. This decision was based upon the grounds that a prior printed publication entitled “Minsky Mr-16” (The Minsky Report) anticipated appelant’s claims and barred the patentability under 35 U.S.C. s102. The Minsky Report was prepared in 1952 by Minsky for arsenal for the US Army. This report claimed that Minsky had made tetranitroglycoluril , disclosed its formula, and described its properties and two methods of production for the chemical substance. The appellant argues that this report does not constitute prior art because it was never available to the public. However, the Court of appeals held that although a publication must be available to the public to bar patentability, it is sufficient if the document is available to that class of persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents. Due to the fact that prior to 1964 eighty-seven copies of the Minsky report had been distributed to government agencies, corporations and universities, it was ruled that the Minsky report was available to the public. The final ruling of this case remanded it back down to the District Courts to determine whether the appellants claim on the pure form of the compound (claim 9) is valid in light of genuine issue of material fact of the pure form of tetranitroglycoluril in the Minsky Report.

Patent Law HW 4/4/11

  • Case: Honeywell vs. Hamilton Sunstrand
  • Argument for Defendant: Hamilton Sunstrand

In the ruling of Honeywell Intern. Inc. v. Hamilton Sundstrand Corp., the Federal court ruled: Sundstrand's Motion for Summary Judgment is DENIED in part and GRANTED in part;

A. Sundstrand's Motion is DENIED as to the issue of the plaintiff's alleged offer to sell products embodied by the patents-in-suit more than one year before the patent application date;

B. Sundstrand's Motion is GRANTED as to the issue of limiting damages because of Honeywell's failure to mark its products.The relevant damages period for any infringement of the '893 and '194 patents begins on February 3, 1999.

First, the main argument against ruling A is related to precedent of previous cases where “non-official” offers to sell were made which discredited patents. A perfect example of a prior case we have discussed would be Pfaff vs. Wells Elecronics where it was held “The primary meaning of the word “invention” in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea. The statute does not contain any express requirement that an invention must be reduced to practice before it can be patented. Neither the statutory definition of the term in § 100[8] nor the basic conditions for obtaining a patent set forth in § 101[9] make any mention of “reduction to practice.” Pfaff’s patent was found to be invalid due to this statue, and for the same reason so should the Honeywell invention. The court ruled that there wasn’t sufficient evidence to determine if the invention was offered for sale prior to the critical 1-year date. However, it is the job of the patentee to prove that no such offer was made, as set by precedent like the case stated above, and Sunstrand’s evidence should have led to a more thorough investigation of the matter. Even if the APUs were not made for Boeing by this critical date, the invention was reduced down to drawing which an engineer skilled in the subject and knowledgeable of prior art could have determined. Both parties present contradicting evidence from expert witnesses regarding this claim. As a point against Honeywell’s argument, it is much easier and more affective to prove something can be done than to prove something can’t be done. All it takes is one expert witness or skilled engineer to prove that from the drawings provided, a device containing all the patent elements could be created.. Drawings for Boeing or another customer are considered to be reductions to practice for all intensive purposes according to the precedent of patent law.

The second argument for the defendant relates to patentees fully disclosing their invention to the public. A patentee must mark his patent number on products practicing the patent in order to collect damages arising from infringement. 35 U.S .C. § 287(a). The penalty for failure to mark is that the patentee's damages will be limited to the time frame subsequent to actual notice. The United States government cannot expect a person to check all prior art before using or modeling after a product. If the general knowledge is not readily available to the public, no infringement claims can be drawn up due to inadequate disclosure. Taking this issue one step further, the estoppel issue can be drawn on here. Estoppel in its broadest sense is a legal term referring to a series of legal and equitable doctrines that preclude "a person from denying or asserting anything to the contrary of that which has, in contemplation of law, been established as the truth, either by the acts of judicial or legislative officers, or by his own deed, acts, or representations, either express or implied. Since this knowledge was not readily available to companies like Hamilton Sustrand, and they had been using similar technology for the APUs which infringed claims for the Honeywell patents, why should Sustrand be punished for Honeywell’s incompetency? Estoppel should rule out Sustrand’s infringement based on Honeywell’s established lack of public knowledge of their invention.

For these reasons stated above, the Federal court ruling should be reversed and Sunstrand’s motion for summary judgment should be granted in full. Honeywell’s patent should be invalidated based on inconsistency with the critical date for sales precedent. Also, Sunstrand’s gas turbine engines should be ruled in favor of non- infringement due to Honeywell’s lack of marking on their products and issues of estoppel .