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.
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. At the time of the case, the wording used was that there must be a level of "inventiveness," which later evolved into the non-obviousness requirement.
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."
When a new function is performed utilizing the combination of old devices in a novel way it may be worthy of a patent. Similarly, when an old function is performed in an improved manner from new devices it may be worthy of a patent. However, using old devices to perform their respective functions but combining them is not deserving of a patent.
35 USC 103 (1952)
This section of the code was adopted in 1952 and prohibits a patent in a case where
- the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Lyon v. Bausch & Lomb (1955)
In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) Learned Hand, in his brilliance, expounded on the new standard thusly:
- Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4
Graham v. John Deere (1966)
In Graham v. John Deere, 383 U.S. 1 (1966) indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
- scope and content of the prior art;
- differences between the prior art and the claims at issue;
- level of ordinary skill in the pertinent art; and,
- secondary considerations, including:
- commercial success of the invention;
- long-felt but unsolved needs;
- failure of others to find a solution, etc.
This court case was the first real analysis of section 103 since it was written. Although phrased differently, the court held that section 103 contained the same meaning as was originally intended since its inception in 1850.
U.S. v. Adams (1966)
This case involved the invention of a new battery. Interestingly, the U.S. government (specifically the Army and Navy) did not believe that Adams's battery was worthy of a patent, and so they knowingly violated it. The government felt that Adams's battery, "...represented either no change or an insignificant cange as compared the prior batterydesigns." However, the Adams battery was water-activated, which was novel compared with prior batteries, additionally it yielded unexpected results. Previous attempts at creating a battery with components used by Adams did not yield desirable results, Adams combination of materials to create his battery, however, worked very effectively. Had the battery operated as was expected based on others' attempts, this would not have been patentable.
- 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.
- Unexpected results, even from seemingly minor changes, may be a key indication of non-obviousness - if the change was obvious, then the results should be expected.
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 was found invalid, upholding the precedent that a combination of old elements must somehow be greater than the sum of its parts, which this was not.
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."
The idea of teaching, suggestion, or motivation (TSM) was used by the supreme court to help determine obviousness. When the prior art gives reason to proceed in a certain direction, that tends to be obvious, however, if the prior art does not lead in the direction taken by a patent in question, it would suggest that the item in question was not obvious. While this test alone is insufficient to determine obviousness, it does provide some insight.
- "[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.
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
In order to be patentable, there must be some aspect of inventiveness. Obvious or trivial modifications to an existing device are not deserving of a patent. If they were, then it would allow for a class of people to wait until an invention was discovered by someone else and merely apply for a patent on the next logical step. This goes against the idea of promoting the advancement of useful arts for the good of the public. One of the key determinants of obviousness is that the item in question needs to have been the result of some form of inventiveness or ingenuity and not merely the work of a skilled mechanic in the related field.
Relationship with Novelty
The need for a non-obvious clause in patent law stemmed in part from Hotchkiss v. Greenwood. The supreme court found that novelty alone does not warrant a patent. In that particular case, there was disagreement as to whether or not a clay doorknob was patentable. The methods used to fashion the doorknob were previously known and clay had been in use as a material. However, clay had not, as claimed by the patent holders, ever been used as a material for doorknobs. While this was novel, if it was known that clay was a superior material to wood, and the methods of joining known, it would appear obvious to substitute one material for another. The reason for having patent laws is to provide incentive for innovation. Allowing novelty to be the only requirement for obtaining a patent contradicts this goal.
At the time of the case, the wording was "inventiveness," which later evolved into the non-obviousness requirement.
Nonobviousness vs. Invention
The evolution from "inventiveness" to "non-obviousness" was in part to clarify that there is no "flash of genius" requirement. In the past it was thought that an invention must be something somewhat complex that is discovered during a flash of genius. This is unrealistic and unnecessarily restrictive as to what is patentable. According to current patent law, it does not matter the method of discovery or how long it took to discover it.
In Graham v. John Deere it was pointed out that secondary considerations, such as, "...commercial success, long felt but unsolved needs, failure of others, etc.," may be useful in helping to determine whether or not the patent in question is obvious or not. It is important to note however, that these secondary reasons are just that secondary. Commercial success does not equal non-obvious.
Ordinary Skill in the Art
In Reiner v. I Leon Co., a patent was upheld for a hair clip. While the device used springs and other prior art, the product was both novel and non-obvious and so deserving of a patent.
1850 - Hotchkiss v. Greenwood
- Novelty is not the only requirment for a patent i.e. a substitution of material is insufficient
- Inventions require ingenuity beyond that of an ordinary mechanic skilled in the relevant field
1950 - A&P v. Supermarket Equipment
- Inventions stemming from the combination of existing elements must be greater than the sum of their parts
- perform a new function using existing devices combined in a novel way OR
- perform an old function in an improved fashion using new devices
1952 - The non-obvious section, 35 USC 103, is added. 1955 - Lyon v. Bausch & Lomb
- "Simple" changes may still be patentable
1966 - Graham v. John Deere
- Comparison should be made between the invention in question and the prior art
- Secondary considerations, commercial success etc., may provide further insight into the obviousness
1966 - U.S. v. Adams
- Unexpected results stemming from what otherwise might have been argued an "obvious" change tend to point towards the change being non-obvious
1969 - Anderson's Black Rock v. Pavement Salvage
- Precedent of the necessity of combination inventions needing to be "greater than the sum of their parts" upheld
Obviousness and the Purpose of Patent Law
Patent laws were created in order to encourage innovation and progress in science, technology, and the useful arts. In order to do this, limited-time monopolies are granted to persons who have achieved some advance in a particular field. In order for society to continue to progress in science, there must be true advancement. Patents given to obvious "inventions" contradict this by unfairly limiting others and cause a halt or slowing of the potential progress in a field. The inclusion of section 103 was an important step to allow patent law to continue promoting the progress of science while helping to weed out patent applications that would hinder progress.