- 1 My Selected US Patent
- 2 Evaluating my selected patent's unobviousness
- 3 Jacob Marmolejo Graham Case Obviousness Analysis
- 4 Jacob Marmolejo Improving of The Obvious page
- 5 Historical Development
- 6 Suggestion to Combine
- 7 Objective Tests
- 8 The Inventive Step
- 9 Relationship with Novelty
- 10 Nonobviousness vs. Invention
- 11 Secondary Considerations
- 12 Ordinary Skill in the Art
My Selected US Patent
- Assignment for Monday January 24
- Patent number: 4542903 Hand-held apparatus
- Company: Nintendo Co.
- Inventors: Gunpei Yokoi, Kyoto and Satoru Okada, Osaka
- Filing date: Dec 22, 1982
- Issue date: Sep 24, 1985
- Source: Google Patents
- I chose this patent because I (like every other kid) loved Nintendo growing up. It was interesting to discover that Nintendo's design for a hand-held gaming system was much more advanced than the original Game Boy, created in 1989.
Evaluating my selected patent's unobviousness
Patent number: 4542903
- The Nintendo patent for a hand-held game apparatus is the first of its kind. It is a foldable, hand-held device with two LCD screens, and controller buttons, that allows the user to play games. The only things that relate to the system are a tv game system (Patent number: 4034990) and an electronic digital watch with a folding computer keyboard (Patent number: 4120039). Although the Ninendo system contains parts of these two previous patents, it is so different that the new product is not merely a substitution of the old product. The original requirements for patents required utility and novelty. The case of Hotchkiss vs. Greenwood in 1850 decided that although the new knobs were better than the old ones, there was no innovation and the improvement was only because of the substitution of new material. Because this case used substitution as its basis for deciding the validity of the patent, it does not apply to the Nintendo patent.
- The Nintendo system may be invalid for being a combination of the two existing patents because it contains some of the same features. The digital watch contains an LCD screen and a foldable computer keypad and the tv game system uses similar controls and game programming. A&P vs. Supermarket Corp reviewed the patentability of the combination of old items to form a new product. The court decided that if the combination performs a new function, then it is patentable. Although both game systems both allowed the user to play games, the portability of the hand-held device gave it a fairly different function. The court also required that the combination exceeds the sum of the parts. Althought the game system and the digital watch contained similar parts, the previous products could not play portable games. The court also decided that any combination or change of a current patent does not count as a new patent if the idea would naturally occur to any skilled mechanic. Because the Nintendo patent was filed seven years after patent for a tv game system, making the game hand-held was not easy or obvious to any skilled mechanic. Because the Nintendo system performs a different function, is not just a combination of existing parts and the idea did not naturally occur to a skilled mechanic, the court of A&P vs. Supermarket Corp would rule that the Nintendo patent is valid.
- Lyon vs. Bausch & Lomb involved testing patentablility based on discolsure, abandonment, obviousness. Because detailed drawings and descriptions of both the body and programming of the Nintendo patent are included, it is assumed that full disclosure was given. Because Nintendo has made additional hand-held gaming systems, they have not abandoned their patent. It was also already shown that making a game portable was not obvious to the average mechanic.
- Because the Nintendo patent was the first of its kind, there were no good prior patents to compare it to. Therefore, I will analyze to patents that occured after the selected patent. One patent for an invertible game submitted by Atari in 1989 (Patent number: 4969647) and another was for a hand-held system filed by Nintendo in 2004 (Application number: 10/837,650).
- Hotchkiss vs. Greenwood based patentability on innovation and not being a simple substitution. The Atari game system containted a similar structure and function to the first Nintendo system. It also was not foldable, which made it worse than the Nintendo patent. The Atari system did, however, have the ability to play a game sideways, while using the controller inverted. Although this feature is not very practical, it is fairly innovative and could have some benefits. Therefore, this addition is not trivial and the patent is novel. Therefore, the court of Hotchkiss vs. Greenwood would find the Atari system patentable. The second Ninendo patent is for the Nintendo DS. It is very similar to the first Nintendo system and the only new feature is a touch screen that can be controlled by a stick. Although the touch screen game system is fairly innovative, the function is the same as Nintendo's old patent. The touch screen does not allow the user to perform any function it could not accomplish with buttons. Therefore, the court would find the second Nintendo patent invalid. There was no patent issue date for this second patent, and the lack of an new function could be a main reason.
- A&P vs. Supermarket Corp decided that if a combination of existing items performed a new function, then it was patentable. The Atari game system could be inverted to play at different angles. This new function made it different enough from the first Nintendo system. Therefore the court would find the patent for the Atari system valid. Because the touch screen was already patented in 1989 (Patent number: 4821029), the second Nintendo patent was just a combination of two existing patents. The new design completes the same function in a different way, but not very innovative way. Therefore the court would find the 2004 patent invalid.
- Lyon vs. Bausch & Lomb would mainly base the patentability on obviousness. The invertible Atari game was very innovative and would probably not be obvious to the average person in the field. Therefore, the court would find the patent valid. Using a touch screen to control a game is not obvious. It has been shown that the touch screen does not complete a new function, so it might not be needed. If the touchscreen is not needed, then it is not obvious to add it to a game system. Therefore, the court would not find the patent invalid for obviousness. It might however, find the patent invalid for other reasons like combination or lack of utility.
Jacob Marmolejo Graham Case Obviousness Analysis
- Assignment for Feb 4
- Evidence For Obviousness
- The Graham patent is merely a combination of all the elements of the Glencoe patent. The Graham patent also performs the same function as the Glencoe patent and only replaced the stirrup with the heel of the hinge plate. The '811 varies with the '798 only by the position of the shank. Interchanging the shank and the hinge phase permits flex under stress for its entire length, which is a different feature than the prior art, but there is only a small change in flex. The only other effective place to attach the shank is below the hinge plate and run it though a bracket. Since it is more effective for the shank to be allowed to run the entire length of the shank, inverting the shank and the hinge plate is obvious. The free flexing shank was later considered a key feature, but it was not included in the application. Since it was not included, it may have been considered trivial, and therefore, obvious.
- Evidence For Unobviousness
- Although the Graham patent was a combination of the Glencoe patent, it had one different feature. It used a hinge plate instead of a stirrup. Although they performed th same function, it allowed the device to perform better than prior art. Interchanging the shank and the hinge phase permits flex under stress for its entire length, which is a different feature than the prior art. Although the flex change is small, it effectively absorbs the tremendous forces of the shock of the obstructions, and other patent designs have failed. Although the parts are combined from the Glencoe patent, it took effort and thought to allow it to run the entire length of the shank. After considering this feature, it may have been obvious to reverse the shank and the hinge plate. However, there was still work needed to develop this idea, which was not listed in the Glencoe patent. Although both patents were performing the same task, the Graham patent allowed constant contact of the underface fo the hinge plate. This allowed the device to absorb the forces better and made it more resistant to breaking than the prior art.
Jacob Marmolejo Improving of The Obvious page
- Assignment for Wednesday Fbruary 8
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.
- Although the Supreme Court decided Hotchkiss' patent was not valid because it was merely a substitution of materials, other combination and substitutions can be held valid. The knob was better but it was because the procelain is better than wood. The substition, not the process or invention, makes it better. This case emphasized that merely being better, cheaper, or new is not enough to qualify for a patent if it does not contain a novel, unobvious feature. This substitution may have taken skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but does not qualify as a novel and unobvious discovery.
- The official code for obvious did not exist until 1952. The primary goal is to determine if the idea is obvious to a person of ordinary skill in the field. Secondary concerns involve whether others have failed and you have succeeded. Because the court decided the substitution was obvious, and did not qualify as novel, the secondary concerns were not examined.
A&P Tea v. Supermarket Equipment (1950)
While it pre-dates the language of section 103, A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) discussed some of the more difficult issues related to the level of invention.
- First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
- Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
- Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
- Although this product satisfied some secondary considerations, like a long term need and commercial success, it failed the primary considerations. The District Court found that all the features were prior art and this new patent was merely a combination of these old materials. The device also speeds the checking out process, reduces checking costs, and has been successfully used. The counter extention was not seen as an innovative feature and was considered obvious, but there are some inconsistencies with this decision. The court decided the extention was obvious because the length of the counter has been adjusted to a length that is most convenient. If there was a long term need and if the device had success, then it was not obvious to other stores to adjust this length. Extending this counter would not have cost much money, so stores would have had incentive to perform an obvious adjustment to save money on checking out costs. Although the prior art shows that the new device is a combination of old materials, and the combination is fairly simple, there is some evidence that the adjustment was not obvious. This case emphasizes that strong secondary considerations do not overthrow a patent that is considered obvious. The secondary considerations only make a decision based on the primary considerations stronger.
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
- One of the main features of this case was the idea of patenting a process, not a device. Although the surfaced lens was the final product, the process cannot be understood from merely examining a lens. The process needs to be fully disclosed and described in the patent. The lens also had secondary considerations. The step was not obvious because no one made the next step despite a ten year need. This was the first case we studied that occurred after the Act of 1952 that put code to obviousness. The code specified what the courts have been saying all along. This Act of 1952 relaxed the requirements for a patent and this case admitted this fact. The court would have dismissed the claims before the Act of 1952. The court admitted this fact, but said the code of section 103 specified what the courts have been saying all along, so there is some conflict. The courts may have meant that the code gave e relaxed version of what the courts decided previously.
- This case also showed the importance of filing a patent in a timely manner and not abandoning your invention. Although there was no penalty in waiting to file a patent if it was not sold or described in a publication, there is a penalty in abandoning your invention.
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 case also emphasized that secondary considerations may have relevancy but are not the primary law.
- The case also showed that the manner in which the patent was created is not important. Stroke of genius is just as valid as hard work.
- The free flexing shaft was the novel part of the patent. This free flexign shaft was ommited, therfore it was not important, therfore it was obvious. The courts decided Grham's modifications were obvious to an engineer with ordinary skill. This case also showed the importance of a device's function. Even though the position of the shank and hinge plate are reversed, the operation of the device is the same, so the court denied the patent.
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.
- Adam's created the first practical, water-activated, constant potential battery which could be fabricated and stored indefinitely without any fluid in its cells.
- The results of Adams were unexpected because the Navy said it was not working. These unexpected results show that the change was not obvious. The court decided the battery was not a substitution because the two devices had different operating characteristics.
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 case showed how to analyze combination of existing items. The combination must provide a new function, not just added convenience. The combination of the elements must also result in a better effect than the sum of its individual components. The courts decided that while the combination performed a useful function, but it was based more on cenvenience. The combination did not result in a new function or greatly improve the current function. The case also showed that primary considerations of section 103 weigh more than the secondary considerations. Although the device received commercial success, it was not enough to outweight the obviousness.
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.
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
Relationship with Novelty
Nonobviousness vs. Invention
Ordinary Skill in the Art
- Assignment for Mon April 6
Honeywell Intern., Inc. v. Hamilton Sundstrand Corp Hamilton Brief The main issue in the case was whether Hamilton’s patent was equivalent, if it used a different component to control airflow. The prior art was examined to determine if the modification was inventive or just an equivalent design. The “alleged equivalent proposed by Hamilton bore a direct, not merely tangential relation to the amendment.” This modified device was not equivalent because it added the inlet guide vanes limitation to the claimed invention. Honeywell also did not show that the alleged modification was unforeseeable at the time of the narrowing amendment or that the amendment was only an equivalent modification. The burden of proof is on Honeywell to prove the modification is still equivalent. Although both devices controlled air flow surge in APUs, the Hamilton patent was not equivalent. It built on the Honeywell patent, but it was not equivalent. The prior art systems that claim equivalency were inefficient at accomplishing the task. The issue of patentability may fall under obviousness, but not equivalency. Honeywell’s original independent claims also did not contain any reference to IGV’s or any use of the position of these guide vanes in the surge control system. It is the responsibility of the patent author to draft the appropriate claims. He is trading a monopoly for the information, so if the patent is incomplete, then the public is at a disadvantage and the patent holder should be punished. Although Honeywell argued that there was ‘some other reason suggesting that the patentee could not reasonably have been expected to have described the alleged equivalent. However, Hamilton’s device uses a shock switch and not IGV position to accomplish this task. The modification accomplished the same function, but with a completely different component. The results also showed that there were benefits to using a shock switch.