User:Dongxiao

Homework due Monday, 1/24/11 Xiao Dong

• Patent Number: United States Patent 4664372
• Date Issued: 05/12/1987
• Title: Bicycle-type exercise machine
• Link: [1]

This patent describes a bicycle-type exercise machine that has to ability to exercise the arms, shoulders, and legs. The machines includes pedals and flywheel mechanics like a bike for lower body exercising. It also has handle mechanics with resistance for upper body exercising. The machine is very compact, and fits in a housing that can fit in very small spaces. The user will have to provide his/her own sitting arrangement. The machine is small enough for usage inside a car, and has a handle for easy carriage. This machine is very useful as it is both small, and easily portable. It is very helpful for use on a long road trip or traveling, and ability to exercise both upper and lower bodies makes it a great workout machine.

Homework due Monday, 1/24/11 Xiao Dong

• The patent that I choose was Patent no. 4666372, a Bicycle-type exercise machine. The patent citied Patent 3968963, which is a Chair-type bicycle exercise device, and it also citied Patent No 3995491, which is Ergometer. These are just 2 of the patents that were cited among many others. For Patent No 3968963, it was a Chair-type bicycle exercise device. This is a very simple device. It is a described as “bicycle-type pedals are rotatable mounted on a frame in a manner whereby the pedals are rotatable by a user seated in a chair in proximity with the frame. The frame is connected to tracks that can draw the frame into under the chair for further storage.” The other device is the Ergometer, which is a bicycle-type exerciser that includes a flywheel that drives a sprocket and chain. By using permanent magnets on the coil and electromagnetic principals, no external electrical power is needed to power the metering apparatus, and the mechanic work from the operator is enough.
• Under the analysis of Hotchkiss and A&P, the patent that that I choose, the bicycle like exercise machine would not be patentable. As seen in the Ergometer, bicycle like exercise machines have been around for a long time and patented before. The key to the patent that I choose was the fact that it also gives an upper body workout using the handle mechanism and its small size and thus versatility by having the user provides his own sitting arrangement, giving it flexibility to be used everywhere. Under the A&P, it was argued that a merely combination of prior inventions could not be considered a new invention. The patent that I have chosen did exactly this. It combined the small size from Patent 3968963, which is a Chair-type bicycle exercise device, and merely added an upper body workout system with a simple addition of a handle. It could be claimed that the added handle for upper body workout is patentable, but it does not fit the non-obvious clause of the patent law. As shown in Hotchkiss vs Greenword, any simple addition that is obvious to a skilled mechanic is considered obvious, and this handle is very obvious to most general public it seems even, and thus this patent would not be patentable at all.
• However, it would work under the nonobviousness requirement of 35 USC 103 under the Lyon Case. It is said in the Lyon case that if a need or something is required for a longtime in a certain field, but no one solves the problem using available technology. If someone uses an obvious solution, it is still considered a patent. This patent works because of this ruling. The patent that I have chosen fills a requirement long needed by the fitness community. People would always complain about the inability to exercise during long ride trips, and this device is able to deliver a great work out. Also the principal of working out both the upper body and lower body using a simple device is seek by some fitness members as they want a simple machine that can do both. Since this patent shows the first machine that is able to full these needs, it is valid under the Lyon ruling.
• As seen through the differences of ruling from these cases, an evolution of standards has definitely occurred in terms of the code regarding non-obviousness. With Congress passing the Act of 1952, it seems more lenient on patent placement. With the Hotchkiss and A&P cases, an invention was very strictly defined, and hard for many devices that merely combines things and adds simple addition, no matter how useful or out of the box, to be not an invention. With the law, patents are valid for much more circumstances, and places less strict emphasis on being completely more research and technology.

Homework due Friday, 2/4/11 Xiao Dong

• Non obvious:

Patent 811 describes a device designed to absorb shock from the shanks of chisel plows as they plow through rocky soil and thus to prevent damage to the plow. This patent solved this problem by attaching the plow shanks to spring clamps, to allow them to flex freely underneath the frame of the plow. Patent 798 were improvements to the clamp design by placing the hinge plate beneath the plow shank rather than above it, in order to minimize the outward motion of the shank away from the plate. The question that is called is whether the jump from patent 811, prior art, to patent 798 is obvious or non obvious. Although the Anderson’s Black Rock v Pavement Co, and KSP International Co v. Teleflex cases resulted in rulings of obvious from prior art. This case is very different, and should have a different decision. Two major points are different about the Patent 798 than the Patent 811. First, the stirrup and the bolted connection of the shank to the hinge plate do not appear in '811. Second, the position of the shank is reversed, being placed in patent '811 above the hinge plate, sandwiched between it and the upper plate. Although seemingly small, these improvements allow flexing of the plow shank was limited to the points between the spring clamp and the tip of the plow shank, absorbing the shock of hard objects on the ground more efficiently. In the KSP case, the obviousness was due to the combination of two already known systems that provided the benefits. In the Anderson case as well, the combination of two already known old elements resulted in the system. Many people, especially those in the arts, can recognized the benefits of combining the systems. This case is different, the Patent 798 is an upgraded, and much better version of the old patent with many noteworthy and innovative inventions. The positioning of the shank and connections allow for much greater efficiently, and this is not obvious to a person with ordinary skill either. Having the hinge plate reversed is drastically different, having it sandwiched cannot come from a man of ordinary skills as the same with the stirrup and bolted connection as its use is very innovate is these designs. Overall, this new patent is not obvious, and the patent should hold.

• Obvious:

Patent 811 describes a device designed to absorb shock from the shanks of chisel plows as they plow through rocky soil and thus to prevent damage to the plow. This patent solved this problem by attaching the plow shanks to spring clamps, to allow them to flex freely underneath the frame of the plow. Patent 798 were improvements to the clamp design by placing the hinge plate beneath the plow shank rather than above it, in order to minimize the outward motion of the shank away from the plate. The question that is called is whether the jump from patent 811, prior art, to patent 798 is obvious or non obvious. Following the rulings of Anderson’s Black Rock v Pavement Co, and KSP International Co v. Teleflex cases which resulted in rulings of obvious from prior art. Two major points are different about the Patent 798 than the Patent 811. First, the stirrup and the bolted connection of the shank to the hinge plate do not appear in '811. Second, the position of the shank is reversed, being placed in patent '811 above the hinge plate, sandwiched between it and the upper plate. These two improvements should be quite obvious to an ordinary mechanic skilled in the arts. As in the KSR case, “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Any person that had some knowledge would probably easily seen and thought of moving the hinge plate and adding an extra connection. These two differences are very small. Also stated in the Anderson case, “The combination of putting the burner together with the other elements in one machine, though perhaps a matter of great convenience, did not produce a ‘new or different function” Similarly, the new patent 798 did not give a new function to the device, it only was absorbing the shock of hard objects on the ground more efficiently. Such a great convenience from efficiency cant not be called a new function. Following precedent from the previous rulings, this is considered obvious.

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.

The result of this case gave the precedent that a mere substitution of materials is not enough to quality for a patent.

It seemed to be supposed, on the argument, that this mode of fastening the shank to the clay knob produced a new and peculiar effect upon the article, beyond that produced when applied to the metallic knob, inasmuch as the fused metal by which the shank was fastened to the knob prevented the shank from acting immediately upon the knob, it being enclosed and firmly held by the metal; that for this reason the clay or porcelain knob was not so liable to crack or be broken, but was made firm and strong, and more durable.

This is doubtless true. But the peculiar effect thus referred to is not distinguishable from that which would exist in the case of the wood knob, or one of bone or ivory, or of other materials that might be mentioned.

Now if the foregoing view of the improvement claimed in this patent be correct, it is quite apparent that there was no error in the submission of the questions presented at the trial to the jury, for 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 ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor.

Although changing the materials does lead to better use and better quality of the door knob, the novelty of it does not qualify for a patent. It is an improvement of the door knob by switching the materials, not a new invention. As improvements can be done by the work of a skillful mechanic, and not an inventor. This ruling leads to later rulings that if something can be done or is obvious to a person skilled in the arts of the field, then it is not patentable.

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.

Nonobviousness could possible be determined if there is a long felt but unsatisfied need in the field,yet no one has conducted the change.

• Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.

The bias toward patent protection at the frontier of science or engineering is result of reasoning from the Framers of the Constitution.

Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science-to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge. That is why through the years the opinions of the Court commonly have taken ‘inventive genius' as the test. It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end-the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But is has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance.

• Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

While this Court has sustained combination patents, it never has ventured to give a precise and comprehensive definition of the test to be applied in such cases. The voluminous literature which the subject has excited discloses no such test.It is agreed that the key to patentability of a mechanical device that brings old factors into cooperation is presence or lack of invention. In course of time the profession came to employ the term ‘combination’ to imply its presence and the term ‘aggregation’ to signify its absence, thus making antonyms in legal art of words which in ordinary speech are more nearly synonyms. However useful as words of art to denote in short form that an assembly of units has failed or has met the examination for invention, their employment as tests to determine invention results in nothing but confusion. The concept of invention is inherently elusive when applied to combination of old elements. This, together with the imprecision of our language, have counselled courts and text writers to be cautious in affirmative definitions or rules on the subject. A merely combination of already known machines and processes change does not qualify for an invention as it is obvious to a person skilled in the arts.

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

Following the ruling of the previous A&P Tea v. Supermarket Equipment case, the level of invention concept was applied. Although the optical device was only an extra step from previous patents, the added step was ruled not obvious and thus patentable. There was a long need for this extra step in the field, yet no one produced a procedure for a long time. Since this no one did so, Lyon's extra step was thus non obvious and ruled patentable. The ruling would have been different if it occurred 10 years before and before the passing of the 1952 Patent Act. The act clarified the ruling regarding patents regarding if it was obvious to a person with skills in the arts. This ruling established that a patent is not obvious if it fills a long need in the field.

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.

Before the Patent Act of 1952, the Congress required only novelty and utility for issuance of patent, and never requirement the examination of nonobviousness. As seen in the above Hotchkiss court, the court started to investigate if the patent is obvious or not. The Hotchkiss court effectively added the requirement of nonobviousness, and it had been left to the judiciary to determine whether the patent involved non-obvious invention. After that case, the obvious requirement started to evolve. It was not until the Congress enacted the Patent Act of 1952 that the test was to be given with some degree of predictability.The Patent Act started for judges to look at the scope and content of the prior art, the differences between the claimed invention and the prior art,and the level of ordinary skill in the prior art. Also, secondary considerations could serve as evidence of nonobviousness, which include: commercial success, long felt but unsolved needs.

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.

Despite the fact that each of the elements of the Adams battery was well known in the prior art.... [K]nown disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."

The Court used the secondary considerations in favor of nonobviousness. In particular, the Court observed that the record disclosed the skepticism of experts before the invention, the endorsement of experts after disclosure, and unexpected results. In a case that featured a great deal of prior art very close to the invention, these secondary considerations evidently played an important, perhaps even dispositive, role.

The decision shows how the obvious requirement can be determined. Even if the difference between the prior art and the patent in question is seeming obvious and a mere substitution of material can be seemingly obivous. If the results produced is unexpected, then it can be considered non obvious.

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. The combination of putting the burner together with the other elements in one machine, though perhaps a matter of great convenience, did not produce a ‘new or different function,’” Accordingly, the Court held the combination obvious.

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.

Ordinary Skill in the Art

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

Reiner v. I. Leon Co.

South Corp. v. US (full text)

South Corp. v. US

Homework due Monday, 2/28/11 Xiao Dong

Guidelines

• According to the U.S. Federal Code, Title 35, For an invention to be patentable, it must follow this clause. “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.”

Some guidelines that should be followed in determining if an invention is patentable that follow the Federal code are listed below:

Non obvious to a person with ordinary skill. As stated in the code, for an invention to be not obvious, the inventive portion must not be obvious to a person having ordinary skill in the field of the subject matter.

A simple change of material is obvious, and will not usually qualify for a patent. As ruled in the Hotchkiss vs Greenwood case, a simple change of material from wood to ceramic will not sufficient for a new patent.

Combination of prior inventions does not usually qualify. As seen in many cases, simply adding and combining different prior known inventions and machines does not result in a patent as it would be obvious.

If there is a longtime need in the subject field, but no one has published the added step to meet the need. The added step is considered non-obvious. As stated in the Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) case, the fulfillment of a long time need in the field will usually result in a patent even if the added step is very simple.

Policy Considerations

The guidelines above only serve as a simple guide to judge if maybe the invention is patentable or not. The true policy and ruling considers all of the above guidelines to consider if a patent is valid or not. The key to non obviousness as stated in the Federal Code, is regarding if the patent would be obviousness or not to a person with merely ordinary skills in the arts of the subject field. The patent under question will be compared to prior art and similar patents. Under comparison, if the differences between the prior art and the patent under question is obvious to a person with ordinary skill in the subject matter, then it is not patentable. This person with ordinary skill does not have to be a super genius or great inventor in the subject field. If it is obvious to most common average mechanics of subject matter, then only then is it obvious. Often, in trial, people and experts from the subject matter field will be asked to testify and asked if they think if it is obvious. A person of ordinary skill is also a person of ordinary creativity, not an automaton.

Even with these testimonies, obvious is still a hard concept to determine. Some considerations have been established over the years. After Hotchkiss vs Greenwood, it is determined that a simple change and substitute of materials is not enough to qualify. Although changing the materials does lead to better use and better quality of the door knob, the novelty of it does not qualify for a patent. It is an improvement of the door knob by switching the materials, not a new invention. As improvements can be done by the work of a skillful mechanic, and not an inventor. This ruling leads to later rulings that if something can be done or is obvious to a person skilled in the arts of the field, then it is not patentable.

Also, in determining if the subject is obvious or nonobvious, combinations of old patents will not qualify either. As seen in the A&P Tea v. Supermarket Equipment case, merely adding combinations of older patents does not qualify as it is new and not obvious. Also in the Anderson's Black Rock v. Pavement Salvage case. The combination of putting the burner together with the other elements in one machine, though perhaps a matter of great convenience, did not produce a ‘new or different function’. As almost all inventions are some combination of known elements, the TSM test requires a patent examiner (or accused infringer) to show that some suggestion or motivation exists to combine known elements to form a claimed invention. There must be a suggestion or teaching in the prior art to combine elements shown in the prior art in order to find a patent obvious. Thus, in general the critical inquiry is whether there is something in the prior art to suggest the desirability, and thus the obvious nature, of the combination of previously known elements. When determining nonobvious, the court will look at scope and content of the prior art; the level of ordinary skill in the art; the differences between the claimed invention and the prior art; and objective evidence of nonobviousness. The court will also consider secondary characteristics such as commercial success; long-felt but unsolved needs; and failure of others.

History

On April 10, 1790, the first U.S. Patent Act was passed into law. The Patent Act empowered any two of: The Secretary of State, the Secretary of War, and the Attorney General to grant a patent to a petitioning inventor for an invention “not before known or used” “if they shall deem the invention or discovery sufficiently useful and important”. In 1793 the first Patent Act was modified, by Secretary of State Thomas Jefferson, to include a definition of a patent which persists till date, “any new and useful art, machine, manufacture or composition of matter and any new and useful improvement on any art, machine, manufacture or composition of matter.”. On July 4, 1836 the Patent Office became a part of the State Department as a result of the enormous dissatisfaction on hearings on patent appeals. Written in the ruling of Graham v. John Deere Co case, U.S. patent law was started by Thomas Jefferson, who based his ideas on patent law on the utilitarian economic concern of promoting technological innovation rather than protecting inventors’ moral rights to their discoveries. This was largely because Jefferson was quite suspicious of monopolies. Jefferson intended that the limited monopoly granted by a patent was only to be permitted for those inventions which were new, useful, and furthered human knowledge, rather than for small details and obvious improvements.

In coming to these policy considerations, the non obviousness requirement has gone through a long history of evolution throughout the years. It started before the Civil War in 1850, following the ruling of the Hotchkiss vs Greenword case. It was the first US Supreme Court case to introduce the concept of non-obviousness as patentability requirement in United States patent law. Before this case, all patents were judged based on novelty and usefulness. 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. It also started the notion regarding This ruling leads to substitution of materials is not enough for a patent, and if doesn’t qualify if it is obvious to a person with ordinary skill in the field matter. In the A&P Tea v. Supermarket Equipment case in 1950, the ruling was that a merely combination of already known machines and processes change does not qualify for an invention as it is obvious to a person skilled in the arts.

In 1952, Congress added to the Patent Act of 1952 section 35 U.S.C. § 103, which effectively codified nonobviousness as a requirement to show that an idea is suitable for patent protection. The section essentially requires a comparison of the subject matter sought to be patented and the prior art, to determine whether or not the subject matter of the patent as a whole would have been obvious, at the time of the invention, to a person having ordinary skill in the art.

Following the Lyon v. Bausch & Lomb case in 1955, the level of invention concept was applied. Although the optical device was only an extra step from previous patents, the added step was ruled not obvious and thus patentable. There was a long need for this extra step in the field, yet no one produced a procedure for a long time. Since this no one did so, Lyon's extra step was thus non obvious and ruled patentable. This ruling established that a patent is not obvious if it fills a long need in the field. Secondary characteristics such as long time unfilled need, commercial success, and failure of others started to be factored into the ruling as well.

Following the Graham v. John Deere Co case in 1966. Although patentability is a matter of law, the Court held that §103 required a determination of the following questions of fact to resolve the issue of obviousness: the scope and content of the prior art; the differences between the claimed invention and the prior art; and the level of ordinary skill in the prior art. In addition, the Court mentioned “secondary considerations” which could serve as evidence of nonobviousness. They include: commercial success; long felt but unsolved needs; and failure of others. The decision shows how the obvious requirement can be determined. The U.S. vs Adams case also in 1966 showed that even if the difference between the prior art and the patent in question is seeming obvious and a mere substitution of material can be seemingly obvious. If the results produced is unexpected, then it can be considered non obvious. In the Anderson's Black Rock v. Pavement Salvage in 1969 case, by returning the focus to "inventiveness" by revisiting the old problem of when a combination of old or know elements can become patentable. The combination of putting the burner together with the other elements in one machine, though perhaps a matter of great convenience, did not produce a ‘new or different function,’” Accordingly, the Court held the combination obvious.

Personal Standard

Personally, I think that standard of non obvious requirement should be more clearly established. The statement about a person having ordinary skill in the arts is great. I believe more expert testimonies should be relied on as most judges are not experts in the subject matter. The judgment of the patent examiner should have more weight as the patent examiner is a person with ordinary skill in the arts. Maybe, the court should hold 5 or 7 expert witnesses and their majority decisions should be the decision or have a heavy weight in the judges final decision.

Having the judges, whom usually have no understanding of the subject field themselves really should not be the ones conducting the decisions, and should be passed off to a panel of experts.

Homework due Wed, 3/23/11 Xiao Dong

United States Court of Appeals, Federal Circuit. MEHL/BIOPHILE INTERNATIONAL CORP., Selvac Acquisitions Corp. and Nardo Zaias, M.D., Plaintiffs-Appellants, v. Sandy MILGRAUM, M.D., Palomar Medical Technologies, Inc., and Spectrum Medical Technologies, Inc., Defendants-Appellees.

MEHL/Biophile International Corp., Selvac Acquisitions Corp., and Dr. Nardo Zaias (collectively, MEHL/Biophile) asserted that Dr. Sandy Milgraum, Palomar Medical Technologies, Inc., and Spectrum Medical Technologies, Inc. (Milgraum) infringed U.S. Patent No. 5,059,192 (the '192 patent). Milgraum claimed that the claim was already in an instruction manual for the Spectrum RD-1200 laser and by a 1987 Journal of Investigative Dermatology article authored by Dr. Luigi Polla and others (the Polla article). The laser manual was used to describe how the laser is used to remove human tatoos. The Polla article describes the use of laser for hair removal on guinea pigs. Milgraum moved for summary judgment of invalidity based on 35 U.S.C. § 102 (1994), arguing that two prior art references each teach all the limitations of the claims. As noted at the outset, Milgraum relied on the manual for the RD-1200 laser which describes the use of a laser to remove tattoos. The manual teaches the use of a Q-switched ruby laser to remove a tattoo: “[E]nergy is selectively absorbed only by pigmented chromophores and not surrounding tissue, greatly reducing the risk of scarring.” The ending result was that in New Jersey Court was agreed with Milgraum and that the manual was prior to the claim, and the case was dismissed. The ruling was upheld in the Appeal Court but had a different summary. The manual wasn't upheld to anticipate the claim because there was no mention to the vertical alignment of the laser, which is a critical step and part of the invention. However, the Polla article was anticipation of the patent claim, thus the ruling was upheld.

Homework due Wed, 3/30/11 Xiao Dong

Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc.

After reading and examining the APU device, the APS 3200, it is clearly evident that it infringes upon the Honeywell patents ‘194 and ‘893 based on the doctrine of equivalents. Claim 8 of ‘194 states it is having adjustable inlet guide vanes; Claim 4 of the ‘893 patent also states A method of utilizing a compressor of a gas turbine engine to power pneumatically-operated apparatus having a variable inlet air flow demand, the compressor having adjustable inlet guide vanes, and also adjusting the relationship between the magnitudes of said integral and proportional control signals and the magnitudes of said parameter variations as a function of the position of the inlet guide vanes. The key competent is regarding the inlet guide vane position. APU claims that they use the ambient air temperature and that their inlet guide vane position is used for a very different function and is used to determine when to block control signals used to operate the surge bleed valve. But the block control signals is part of the control systems overall anyways, and thus is used to efficiently control the system. Blocking control signals is still very important part of the control system. Also, the ambient air temperature is the very related to the inelt guide vanes, and this simply substitution should be obvious to anyone skilled in the arts. Thus this infringes upon on the patent based on the doctrine of equal equivalents.

After reading and examining the APU device, the APS 3200, it is clearly evident that it infringes upon the Honeywell patents ‘194 and ‘893 based on the doctrine of equivalents. Claim 8 of ‘194 states it is having adjustable inlet guide vanes; Claim 4 of the ‘893 patent also states A method of utilizing a compressor of a gas turbine engine to power pneumatically-operated apparatus having a variable inlet air flow demand, the compressor having adjustable inlet guide vanes, and also adjusting the relationship between the magnitudes of said integral and proportional control signals and the magnitudes of said parameter variations as a function of the position of the inlet guide vanes. The key competent is regarding the inlet guide vane position. APU claims that they use the ambient air temperature and that their inlet guide vane position is used for a very different function and is used to determine when to block control signals used to operate the surge bleed valve. But the block control signals is part of the control systems overall anyways, and thus is used to efficiently control the system. Blocking control signals is still very important part of the control system. Also, the ambient air temperature is the very related to the inelt guide vanes, and this simply substitution should be obvious to anyone skilled in the arts. Thus this infringes upon on the patent based on the doctrine of equal equivalents.

Homework due Fri, 4/29/11 Xiao Dong

Supreme Court of the United States. QUANTA COMPUTER, INC., Quanta Computer USA, Inc., Q-Lity Computer, Inc., Compal Electronics, Inc., Bizcom Electronics, Inc., Sceptre Technologies, Inc., First International Computer, Inc. and First International Computer of America, Inc., Petitioners, v. LG ELECTRONICS, INC., Respondent. No. 06-937. March 9, 2007. On Petition for a Writ of Certiorari to the United States Court of Appeals for the Federal Circuit Brief of Minebea Co., Ltd. as Amicus Curiae in Support of Petitioners

Joel E. Lutzker, Counsel of Record, David H. Kagan, Schulte, Roth & Zabel LLP, 919 Third Avenue, New York, New York 10022, (212) 756-2000, Counsel for Amicus Curiae, Minebea Co., Ltd.

• They are arguing that by conducing the sale to another party, the patentee ends his hold and rights on the patents. This is established in the Adams Case. • In the Unvisi case, it is clearly showed that that “exhaustion acts to limit the power of a patentee to control the disposition of a patented article after the first sale” • If the patent was not exhaust after the first sale, then it would violate the originally purpose of the patent law and creating monopolies.