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== Homework 1: Due 24 January 2011 ==

Patent: 4737788 Helicopter Obstacle Detector Inventor: Peter D. Kennedy Assignees: Motorola, Inc. Primary Examiner: Bernarr Earl Gregory Filed: 4 April 1985 Issued: 12 April 1988

Obstacle Detector for helicopters and other aircraft having rotary blades. The detector uses pulsed Doppler radar to sense any obstacles in the flight path of the helicopter of like aircraft. The pulsed Doppler radar is mounted adjacent to the tip of one of the helicopter or like aircraft rotor blades. The rotor blade tip velocity of the helicopter or like aircraft shifts the frequency of radar echoes. This allows pulsed Doppler radar techniques to be used so that the echoes from obstacles are distinguished from clutter. Information for this patent can be found here.[1]

== Homework 2: Due 28 January 2011 ==

Patent: 4038656 Helicopter Discrimination Apparatus for the Murine Radar Inventors: John G. Webb, Jr. and Roger M. Gray Assignee: USA as represented by the Secretary of the Air Force Filing Date: 27 March 1974 Issue Date: 26 July 1977

This apparatus uses radar doppler filtering to distinguish between a missile and ground clutter. This patent includes the detecting means receiving a doppler signal, means to provide output doppler signal, means to receive output doppler signal. The main difference between this patent and patent 4737788 is that the latter is for a pulsed Doppler radar and it senses all obstacles in the flight path not just distinguishing between missiles and ground clutter like patent 4038656 does. Information for patent 4038656 can be found here. [2]

Under the ruling in Hotchkiss vs. Greenwood (1850), which stated that if the improvement could be done by a mechanic of the field then the invention is not be patentable, I am not sure that this patent 4737788 would still be valid. With the improvements in radar sensing, it seems natural to have a need to sense obstacles in the flight path of an aircraft, especially because of the many collisions in the early years of flight. The difficulty might come in to how to attach the sensor so that it is able to sense all around the aircraft for any obstacle not just missiles like the invention of patent 4038656. The ruling does also deal with material change, and I assume that the improvement of patent 4038656 by patent 4737788 involves improvements in computer software and electrical components. However, these improvements did take many years and are not always as obvious as changing clay for wood or metal. For patent 4737788 to stay valid it would need to be determined that the improvements made are not simple and the details to accomplish this improvement are not obvious to an ordinary person in the field.

Under the ruling in A.&P. Tea Co. v. Supermarket Corp (1950), which stated that a mere compilation of inventions which were already in common use, does not make that compilation patentable if benefit of the whole is not greater than the sum of its components, I think that the patent 4737788 is still valid. It seems that the invention of patent 4737788 is not a compilation of existing inventions but merely an improvement of patent 4038656. However, if a pulsed Doppler was already made for an airplane or other like aircraft, and the difficulty of attaching a doppler radar to the rotating blade was demonstrated as it is in patent 4038656, then under the ruling in the A.&P. case, the patent 4737788 would be invalid. For the patent 4737788 to be invalid with regards to this case, it would have to be shown that the invention of patent 4737788 was a compilation of existing inventions and that its function as a whole is not new or different from the functions of the parts used to make the invention.

Under the ruling of Lyon v Bausch & Lomb (1955), which stated that even though it was theoretically an obvious improvement on an existing invention the fact that many had tried to make the invention and had failed along with the great need for the invention, that it was patentable, I think that patent 4737788 would still be valid. There is always a great need to make air travel safer especially in low visibility and other bad flight conditions, which the invention of patent 4737788 does. Also, there is about a 10 year gap between the issuing of patent 4038656 and the filing of patent 4737788. Since the invention would be in such high demand, it would seem unlikely that the improvement made on the invention of patent 4038656 by the invention of patent 4737788 would be simple in practice since it did take over 10 years to accomplish.

The differences in the how the validity of patent 4737788 might be understood can be explained by the evolution of the idea of the patent requirement for nonobviousness. Hotchkiss v Greenwood emphasized the fact that if an invention was a simple logical step from an existing invention then it was not patentable. In this case the patent was for a clay doorknob and its components. However, the knob had been made previously from wood and metal and there had be differently shaped door knobs made from clay. The ruling was therefore that the clay door knobs were not patentable because the improvement is merely on an improvement in material and any ordinary mechanic of this background could make this change. In A.&P. Tea Co. v Supermarket Corp. the main emphasis was on if a combination of existing inventions is patentable. In this case a cashier's counter was the invention being disputed and it was shown that the only difference in the compilation of other inventions was an extension of the counter. The combination of inventions did not perform any new or different function either which would have made the court more likely to rule that it was patentable. In Lyon v Bausch & Lomb the main emphasis was on the need for the invention and the failed attempts of other inventors to do the same thing. The invention in this case was a process of coating an optical surface such as for a binocular. The way this was done was by heating the optical surface in a vacuum to rid it of water and grease, then vaporize "inorganic salt" in the vacuum while keeping the optical surface heated. The process is repeated until the desired thickness is reached. While this might have seemed obvious to someone in the field at that time, the fact is that no one was able to successfully do what Lyon did and there was great need in the military services especially the Navy.

Patent: 4275396 Helicopter Rotating Blade Detection System Inventor: Omar J. Jacomini Filing Date: 12 October 1979 Issue Date: 23 June 1981

This patent is for an airborne pulse doppler radar that scans for any helicopters in the flight path. This patent includes the processors for detection which includes ones for transmitting and ones for receiving. It appears that the main difference between patent 4275396 and patent 4737788 is the ability of the later to distinguish the obstacles from clutter. However, the invention of patent 4275396 does include a means of inhibiting the transmitting processor from sending interference signals which can falsely identify a helicopter. Patent 4737788 appears to deal with all types of obstacles including those below whereas patent 4275396 appears to only deal with other helicopters in the flight path. The other difference is in order for the helicopter to be detected by the invention of patent 4275396 it must have a processor as well. This is not seem to be the case with patent 4737788. Information on patent 4275396 can be found here. [3]

Under Hotchkiss v Greenwood, it could seem like the invention of patent 4737788 was an obvious improvement on the invention of patent 4275396. The difficulty is clearly in being able to detect an obstacle not just a helicopter without having the processor on that obstacle. This however, was demonstrated by patent 4038656. So then the main distinction might be attaching an invention like that of patent 4038656 in a manner like the invention of patent 4275396 is attached to the aircraft. Also, there might be a distinction in just looking for missiles versus looking for any type of obstacle including other helicopters. Looking for one specific object like a missile which is usually about the same shape and has the same speed, at least for its size, seems like it would be easier to detect than using a system that searches for any obstacle, thus showing the difficulty in inventing an invention like that of patent 4737788. However, I think that under the Hotchkiss ruling, patent 4737788 would be considered invalid because they would think that the existing patents 4038656 and 4275396 would make it easier to invent and invention like that of patent 4737788.

Under A.&P. Tea Co. v Supermarket Corp., patent 4737788 would still be valid. It is not just a compilation of the inventions of patents 4038656 and 4275396 but an improvement of them. Also, the invention of patent 4737788 does have a new and different function than the functions of the inventions of patents 4038656 and 4275396. If the invention of patent 4737788 was just a combination of the inventions of patents 4038656 and 4275396, the invention of patent 4737788 would just be able to detect other helicopters which had a processor on it and missiles both in the flight path and the sensor would be attached to a blade. However, it seems that the invention of patent 4737788 allows any object to be detected in the flight path without it having a processor on it.

Under Lyon v Baush & Lomb, it seems that the patent 4737788 would still be valid. The need for improved detection of obstacles in the flight path can be shown by the issuing of patent 4275396. However, the limitations on what the sensor can detect by the invention of patent 4275396 also shows the need for an invention like that of patent 4737788. Also, the failure to expand the sensing abilities on the invention of patent 4275396 shows the difficulty in inventing something like that in patent 4737788 which has more expansive sensing capabilities. Patent 4275396 also shows the inability of the inventors of that patent to come up with an invention that had better sensing abilities suggesting the difficulty in inventing the improvement made by the invention of patent 4737788.

== Homework 3: Due 4 February 2011 ==

Graham v John Deere (1966) The patent belonging to Graham for a device that absorbs the shock on a plow shank, was deemed invalid because it was determined that it was obvious. It was found that Deere's device was merely a combination of prior art. Two of the patents referred to in the prior art are described below.

The patent in question: Clamp for Vibrating Shank Plows Inventor: William T. Graham Patent Number: 2627798 Filing Date: 27 August 1951 Issue Date: February 1953 More information on this patent can be found here. [4]

Prior Art: Fastening Device Inventor: William Pfeifer Patent Number 2014451 Filing Date: 30 March 1933 Issue Date: September 1935

This patent is for a fastening device which secures corrugated or other metal sheeting to parts of a supporting framework. Pfeifer describes his invention for use in this manner but makes it clear that this is only one way in which the invention can be used and thus there are many applications for it. The main purpose for this patent was to have a device for fastening sheet metal which was cheap and efficient as well as to eliminate damage to the sheeting caused by the attachment of the device to the sheeting while still mainting a tight seal around the contact between the device and the sheeting. More information on this patent can be found here. [5]

Vibrating Plow and Mounting Inventor: William T. Graham Patent Number: 2493811 Filing Date: 26 February 1947 Issue Date: January 1950

This patent is for a plow with many lateral tools that work under the surface to lift and break the soil to then use the exposed dirt clods to make alternate ridges and furrows. More information on this patent can be found here.[6]

The main emphasis claim by Graham in his later patent 2627798 was that shank along with the plow absorbed much of the vibration making the plow more durable and less prone to breaking. The earlier patent by Graham 2493811 tried to do the same thing but used a spring clamp to do so. Before Graham's work, most chisel plows had their shanks attached rigidly to the frames of the plows. However this led to the shank breaking and also to the need for a plow that could withstand hitting rocks.

Non-obviousness: Grahams later patent 2627798 is non-obvious with reference to his earlier patent 2493811 and Pfeifer's 2014451 because of the fact that the shank is able to absorb the shock of hitting a rock. in Pfeiffer's patent 2014451, the fastening device is for a rigid attachment. While Pfeiffer claims there are other uses for his fastening device, there is no indication that shank be pivoted. Graham's earlier patent 2493811 is also for a rigid attachment with a spring clamp. Also, if Grahams later patent 2627798 were merely a combination of his earlier plow in patent 2493811 and Pfeifer's shank in patent 2014451, then the device described in patent 2627798 would merely be a plow with a new way to attach a plank. One of Graham's intentions for the device in patent 2493811 was to reduce the shock placed on the invention after hitting a hard object, but this was not the case of Pfeifer's fastening device in patent 2014451. Pfeifer states the primary needs of the device in patent 2014451 to be low cost with respect to production and installation along with improved efficiency in the performance of the work of the fastening device. Improved efficiency is not necessarily improved durability; efficiency more relates to the method and speed of the plowing than to shock absorbtion. Some secondary concerns are that Graham's invention in 2627798 did fill a long felt need and it did have commercial success. Also, Graham first tried to solve the problem of shock to the chisel with his earlier patent 2493811. The fact that the invention of Graham's patent 2627798 took a few years, shows that the novelty of the device is not likely to be obvious because Graham had been trying to solve the problem for awhile. Just because Graham was earlier able to absorb the shock of the chisel by using a spring clamp in patent 2493811, and that Pfeiffer had found a good way to fasten shanks to supporting frames in patent 2014451, does not mean that it would be an obvious combination to someone of ordinary knowledge in the plow designing field. Graham would most likely be considered an expert in the field, and even though it might be obvious to him based on his own previous work, does not mean an ordinary plow mechanic would find it obvious. This can be demonstrated by the fact that Graham's device in patent 2627798 filled a long felt need which would have already been filled if the novelty in patent 2627798 were obvious to other people.

Obviousness: It appears that Graham's device in patent 2627798 is merely a combination of the devices in his previous patent 2493811 and Pfeifer's 2014451. The only novelty in the device of Graham's patent 2627798 is in the hinge allowing the chisel to absorb the shock better. It seems that the main emphasis for device in patent 2493811 is the laterally aranged tools for plowing in that the main desire for this device is to have device which is able to plow better whereas for the later device by Graham 2627798 is for absorbing the shock of hitting a hard object which emphasizes a more durable plowing machine. Therefore if Graham's primary focus for the device in the 2493811 patent was not shock reduction or elimination, then the obviousness of the device in patent 2627798 seems clearer. The first patent 2493811 was filed in 1947 and issued in 1950 whereas the second patent 2627798 was filed in 1951 and issued in 1953. This means that after Graham's initial plow patent 2493811, it took him at most 4 years to discover the novelty in his device in patent 2627798. Being well learned in the design of plow making, as demonstrated by his abilities in patent 2493811, and the fact that he had already come up with a way to reduce the shock absorbtion, it seems that the device in patent 2627798 would a likely next step. The issue then becomes whether it would be obvious to someone of ordinary skill in the field of plow design. The first suit of infringement of patent 2627798 filed by Graham was in 1955 just 2 years after the patent was issued and just 4 years after the patent was filed. Because the timeline is so close, it is reasonable to believe that novelty of the device in patent 2627798 was obvious because other people specifically those at John Deere were able to come to the same conclusions as those of Graham's in patent 2627798, and fairly quickly as well, even if it was after Graham. (It would be interesting to see who specifically at John Deere came up with Graham's device, to see if he would also be considered an expert or a person with average knowledge of plows). Also, Pfeifer specifically states in his patent that there are many uses for his device and his patent should not be limited to the one use which he describes in patent 2014451. This is clear that the possibility to attach the shank to the plow in Pfeifer's manner was available to Graham and not his own. Therefore, the attachment used by Graham in patent 2627798 could be an obvious combination of his previous patent 2493811 and Pfeifer's attachment metod in patent 2014451. In other words, Graham's own patent 2493811 makes his newer one 2627798 invalid on the basis of obviousness, and that patent 2627798 could be considered valid if patent 2493811 did not exist.

== Homework 4 Due: 9 February 2011 == Non-Obviousness

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 and useful. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of nonobviousness.

...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent. The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known. But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement. Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob. But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent. The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more. It can be seen in this pronouncement of the court opinion by Justice Nelson, that the original requirement of novelty is not satisfactory, as the knob designed by Hotchkiss is a new product. Although the term "nonobviousness" will not be developed for some time, the court's decision hinges on the fact that the mere substitution of better suited materials is too obvious a development to warrant a patent. The fundamental premise of nonobviousness is presented a few paragraphs later, as Justice Nelson states,

"....unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingeunity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor." Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field.

There was one judge who dissented, Justice Woodbury. Because non-obviousness was not explicitly stated in the requirements for non-obviousness, Woodbury believed that the clay door knobs by Hotchkiss were still patentable even though it was merely a substitution. Woodbury said that it didn't matter how an invention was found, it could be accidental. This idea however is concurrent with that expressed by section 103 which states that "patent not negatived by manner in which it was made" and the idea was exemplified in Graham v. John Deere (1966). Woodbury's notion of the law seems to be closer to the current view of the requirements for non-obviousness, including using what are now secondary considerations to show that the device filled a long-felt need and had commercial success. This only shows that the non-obiousness requirement took many years to develop a decent understanding of the requirement. After non-obviousness was added to the requirements for patentability, subsequent cases state that the purpose of the new requirement is not to change the law but to codify it stemming back to this case with Hotchkiss.As we understand the requirement of non-obviousness better, the non-obviousness requirement will be further refined. The case can be found here. [7]

A&P Tea v. Supermarket Equipment (1950) While it pre-dates the language of section 103, A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:

First, that the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness. The importance of a "long felt but unsatisfied need" in the determination of nonobviousness is that it is difficult to claim that an invention is obvious if there has been a demand for a certain product and no one has been able to fulfill that need. However, it is important to note that there are two requirements that must be met here. There must be a need for the product and the need must have existed for a long time. If the need is relatively new, then it is difficult to claim that a person with ordinary skill in the field would have not developed such a design had he been aware of demand for such a device. On the other hand, if the market related to a certain field has provided no sign that there is a need for such an improvement, then it can be argued that the design would have been obvious had anyone expressed interest in the proposed device.

Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc. In Graham v. John Deere, the history of the patent process is discussed, particularly Thomas Jefferson's outlook on the purpose of providing a patent. Jefferson made it clear that patents were only to be granted for inventions that furthered human knowledge and were new and useful. The granting of patents for small details, obvious improvements, or frivolous devices was neither worthwhile nor helpful. In A&P v. Supermarket Corp., Jefferson's sentiment is echoed, except the focus of the court is narrowed further to the important frontier of science and engineering. As Justice Douglas states, "the purpose is to promote the Progress of Science and Useful Arts," and the two disciplines most associated with progress at that time (and still currently) are science and engineering. Even later, the court states, "patents serve a higher end-the advancement of science," which make this point very clear.

Third, it dealt with the issue of the fact that any invention is basically a combination of old elements. The court's outlook on the evaluation of patents in regard to the combination of prior elements is best summarized in the following explanation. "The mere aggregation of a number of old parts or elements which, in the aggregation, peform or produce no new or different function or operation than that theretofore performed or produced by them is not patentable invention....only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

This case precedes the non-obviousness requirement by 2 years and might have influenced the requirement. Justice Douglas and Black added to the court's decision their disapproval of some of the previous patents protected by the Patent Office and the lower courts to which the Supreme Court has denied patentability. By including the new requirement for non-obviousness, determining the validity of a patent by the Patent Office and lower courts should be easier. This would prevent the unnecessary cases for devices which were clearly obvious and therefore invalid. However, as can be shown by the subsequent cases, the obviousness of a device could still be difficult to determine. The case can be found here. [8]

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.

As stated above, the requirement now says that it is not necessary to discover an invention by a 'stroke of genius'. The requirement can be found here. [9]

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

Since the non-obviousness requirement for a patent was new, the Courts used some secondary considerations to determine the validity of the patent. The Lyon patent was for a method for coating glass. The reason this method was more effective than others was because of the way in which the glass was heated and at what particular stage the glass was heated. These secondary considerations were defined later and are not meant to determine obviousness outright only aide in the determination. The secondary considerations used in the Lyon case were an unsatisfied long-felt need, commercial success, and failure by others to create something that had the same fuction. These helped demonstrate the non-obviousness of the invention by Lyon. The case can be found here. [10]

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.

The main reason stated for the plow by Graham was obviousness and particularly that is was just a combination of existing devices. Calmar, Inc v Cook Chemical Co and Colgate-Palmolive Co v Cook Chemical Co are also viewed in the same manner as Graham's plow. These cases deal with a sprayer can by Scoggin of Cook Chemical Co. This patent was also considered invalid because of obviousness as a combination. The reason for not allowing patentability to combinations is that combinations would hinder the progress of science which should come from an invention. It was also decided that both devices could have been created by any ordinary person of the field with ordinary skill. Both cases can be found here. [11]

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.

This case was a companion to the Graham and Cook Chemical Co cases. Here, like in the Lyon case, secondary considerations helped to prove the validity of the patent. This patent is for a wet battery. However, the electrodes used in the battery and the electrolyte used were contrary to the long held beliefs of that field. Therefore, the court used the fact that the chemicals substituted into the conventional form for a battery were contrary to the science known at the time and also the fact that other experts did not believe that Adams was able to accomplish what he did. The case can be found here. [12]

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.

This patent is for a paving device. This was again considered merely a combination of pre-existing devices whose result was not greater than the sum of the result of the combination of parts. Although it was shown that the device met some secondary conditions as commercial success and long felt want, the courts stated that those are not enough by themselves to prove obviousness. The device was therefore not only just a combination but also did not provide anything new to those parts which made up the combination. The case can be found here. [13]

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. The case can be found here. [14]

"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. The case can be found here. [15]

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 (To be edited later).

Relationship with Novelty (To be edited later).

Nonobviousness vs. Invention (To be edited later).

Secondary Considerations (To be edited later).

Ordinary Skill in the Art: Reiner v. I. Leon Co. The full text version of the case can be found here. [16]

Reiner v. I. Leon Co. (To be edited later).

South Corp. v. US The full text version of the case can be found here. [17]

South Corp. v. US A brief analysis of the case can be found here. [18]

== Homework 5 Due: 23 March 2011 ==

Printed Publication In Re Lister 583 F .3d 1307

The patent was for a method of playing golf in which the handicap was using a tee for every shot instead of just the first shot of the hole. As a pschyologist and avid golfer, Dr. Lister realized that golf scores improved when allowed to tee off of each shot of the hole, however play in hazards (sand, etc) would not allow for a tee. This method of playing golf also quickened the pace of the game as a result of the improved scores.Dr. Lister wrote a manuscript entitled 'Advanced Handicap Alternatives for Golf' describing this method of playing golf. At first Dr. Lister thought of copyrighting this method on 18 July 1994 but then learned he needed a patent instead and filed for one 5 August 1996. This case reached the U.S. Court of Appeals, Federal Circuit (CAFC) on 22 September 2009 after an appeal for reexmination of the patent's rejection. The two issues in question were the unpatentability of the design with respect to Section 102a and 102b. The CAFC reversed the patent's rejection by 102a because 102a states that the invention is unpatentable when there is a printed publication of the invention before the date of the invention. Since Dr. Lister was both the author of the manuscript and the inventor, he could not have submitted a printed publication for something he invented before he had actually invented it. This reasoning seems sound especially when looking back at the Telephone cases in which Bell was granted a patented for something that was designed on paper but had not physically been built yet. From this fact, Bell was considered the inventor before the invention was finished in totality and therefore an invention of utilitarian nature could not be an exception to the ruling of the CAFC in this case with respect to Section 102a. However, the CAFC affirmed the ruling that the invention was unpatentable with respect to Section 102b. Section 102b says that the invention is not patentable when there is a printed publication describing the invention more than one year prior to the date of the filing of the patent. The Court concluded that the date the publication was publicly accessible was also the date of the manuscript's copyright registration issuance which was 18 July 1994. The date of the publication is much more than a year prior to the filing date, 5 August 1996, and it was concluded that a search of the Copyright Office's catalog would have easily resulted in finding Dr. Lister's manuscript.

== Homework 6 4 April 2011 ==

Honeywell International, Inc. and Honeywell Intellectual Properties, Inc. v Hamilton Sundstrand Corporation 523 F.3d 1304, 86 U.S.P.Q.2d 1718 Brief for the Appellant Honeywell

The issue in the ruling of the District Court of Delaware is that the court seems to have gone against precedent. Warner-Jenkinson Company v. Hilton Davis Chemical Co., (1997) involved purifying dyes for a certain pH range. This case established that equivalence must be decided at infringement not at the time of patent issuance. Also, the court offered a method for determining equivalence which said that each element of the claim should be looked at for infringement not necessarily just the patent as a whole. The District Court in this case did not go element by element in determining the equivalence of the invention by Honeywell to that of Hamilton Sundstrand. Also, the court ruling looked at the equivalence at the time that the patent was issued and not at infringement.

Another issue in this case is that Hamilton Sundstrand pleads that its invention was forseeable and therefore does not infringe but also pleads that its invention is unique. These two characteristics seem at odds with each other and just a way for Hamilton Sundstrand to get around the infringement issue. Hamilton Sundstrand also never denies that all elements of the Honeywell invention are in its invention as well.

There also seems to be an issue about what the prosecution history estoppel actually is. The District Court ruled that because Honeywell changed dependent claims to independent claims that they therefore surrender the claims that are in question. However, prosecution history estoppel is used to first look at the changes made by the patentee and then look at the reasons for doing so to see if the removal or change of claims was made in order to make the claims patentable and therefore the act of removing or changing the claims limits the claims in some way. This is to avoid a patentee from narrowing claims in order to be passed by the Patent Office and then sue an alleged infringer for something the patentee never really had ownership of, because a patent already existed covering it or to fit sections 101,102,103 and 112 of U.S. Code. The usual protocol for patent application ammendments is that if an initial independent claim is surrendered then the next dependent claim becomes independent but this does not mean that all dependent claims under the surrendered dependent claim were surrendered, like the District Court ruled. The ammendment of the claims by Honeywell do not involve the IGV’s which are in question. The only difference between the two inventions is that Honeywell has an extra step involving both high and low flow.