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Non-Obvious Argument

The thought of putting a hinge on the mechanism in question could be thought to be obvious, especially to someone skilled in the art. Someone skilled in the art would see that adding a hinge could add flexibility and better maneuverability. However, the way that the design of Mr Grahams hinge acted with the entire plow shows a great deal of time and testing that would not be obvious to someone skilled in the art without replicating his testing and careful design. The hinge also offers the plow a longer life cycle due to the ability to handle greater impact. This, along with other favorable outcomes of the addition of the hinge, makes the new design superior to older designs and worthy of a patent.

Obvious Argument

Any engineer or designer would have eventually come up with this improvement after use of the plow. After use, it would have become very obvious that the plow could use greater motion and would be better if it could handle greater impact. Hinges, an obvious prior art used in countless mechanisms, are designed and used for just such a purpose. To any person skilled in the art would have thought to put adjust the plows motion with a movable part, such as a hinge. Therefore, it is not worthy of a patent.

Homework 2/9

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.

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."

So in summary, a combination becomes patentable when the net value of the combination is greater than the individual parts. The combination also must bring an unexpected result. In this case, the simple swap of materials and claim that it was a combination of prior art was not enough to bring unexpected results. They argued that the combination was better, cheaper and new, but it was argued that this still did not allow for a patent because someone skilled in the art could have come up with this improvement.

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 dealt with a tough dilemma. The court system can not give out monopolies to people if it could be found out by anyone skilled in the art. However, the courts do have to give incentive to inventors to bring progress to science. So monopolies on worthy combinations and inventions must be given. Nonobviousness deals with this area. If the combination of prior art is worthy of a patent and does advance the progress of science, and it is not obvious to someone skilled in the art, then a patent must be given.

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

Cartwright first worked on this process but then abandoned it due to failed results. Lyon then took up the research and found a process that worked. His use of heat during the entire coating process allowed for better resistance to scratching and rubbing, something that others in the field were unable to accomplish. Nothing else in the field used his process. Due to the failure by others in the field, and the nonobviousness of his process, he was given a patent. The advancement of nonobviousness in this case came from the fact that others in his field were surprised to see his process work so well. The unexpected results and the failure by other people in his field gave perfect reason to claim that his process was nonobvious. Prior to the Act of 1952, it most likely would not have been a patentable process.

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.

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.

Prior art did not use water in their invention. They used different chemicals. When looking at the results given by the invention including water, experts were in disbelief. They could not believe the characteristics of the new battery. Most found that the invention was better than they could have ever expected and no disadvantages were found. The fact that others in the field were surprised by the improvement and did not expect the results that were given, it was deemed nonobvious and it passed 103.

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 solved the problem that the connections between a cold joints is not as good as warm joints. The patent used a similar but not exact process that other prior art and other practitioners in the field use. The use of radiant heat burners dates back to 1905. The use of this type of process was obviously not patentable. The patent uses the burner alongside the paver and claims this to be the central feature of the invention. However, the District Court calimed that this was a commercial success but not a patentable combination. It was deemed that the combination could and probably have been found by ordinary skill in the art.

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.

In the case KSR International vs Teleflex, a combination patent of adjustable pedals with an electronic pedal sensor was filed. A previous application was rejected, but that patent did not specify the sensor had to be mounted on the pivot point. A TSM test claimed that prior art offered teaching, suggestion and motivation of the combination and therefore did not allow for a patent due to obviousness. The court claimed that someone with ordinary skill in the art, specifically a mechanical engineer with a bachelors degree. This test made the patent obvious and did not allow for a patent.

Objective Tests

Two important considerations were the focus of Hybritech v. Monoclonal Antiboties, 802 F.2d 1375.

  • A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
  • The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they must be considered by the court.
  • This case also considers the concept of enablement which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.

The Inventive Step

The inventive step disallows for ordinary people without skill in the art to be able to file for patents. Without long study or steps towards a goal, there can not be a patentable invention. A simple flash of brilliance can be considered patentable, however it is favorable to have a step towards inventiveness. The inventive step allows for later research and work towards a patentable invention. Someone unskilled in the art will not be able to come up with a nonobvious invention. The nonobviousness clause protects against these types of inventions. The steps and work put into a patentable invention, help prove that the invention would not have been found by someone skilled in the art.

Relationship with Novelty

Novelty is necessary, but that is no longer the only thing that needs to be required by a filing of a patent. Novelty, something new and inventive, does not mean nonobvious. Hotchkiss is the perfect example of this. The new use of porcelain was novel, better, cheaper and more durable. However, it was not given a patent due to the fact that it would have been found by any one skilled in the art. Science progresses naturally without invention. Anyone would have eventually seen that porcelain was a better choice over wood or metal given enough time. Therefore, it was not nonobviousness. Novelty is not enough for a patent. Nonobviousness combined with novelty is required for a patent.

Nonobviousness vs. Invention

Invention can not be just a simple swap of materials. It does result in something new, however it is not patentable. Hotchkiss swapped material. However, this was obvious. The combination of invention and nonboviousness is required. Invention can be held under improvement of something inventive that is nonobvious.

Secondary Considerations

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

Brief Arguing for Honeywell

Kevin Dacey

In the case of Honeywell Intern v Sundstrand Hamilton, Honeywell sued Sundstrand for infringement upon one of their prior patents. The patent at hand deals with a device that uses APU's that allow for surge control through a compressor. The APU allows for the regulation of airflow into the compressor. Along with the APU's, IGV's are used to regulate the airflow into the compressor. The IGV’s use a feedback to insure that no surge goes through the compressor, damaging the apparatus.

Sundstrand is being sued by Honeywell due to the invention of a very similar device, called the APS 3200. Honeywell argues that Sundstrand is infringing on their invention that they produced well before the invention of the APS 3200. The DC held that the invention by Sundstrand was infringing upon the invention discovered by Honeywell. The CAFC overruled the courts decision, saying that no such infringement was applicable. They ruled in this favor due to the fact that Honeywell was forced to amend their original claim for the patent to create a narrower claim. While doing this, the company surrendered the technology used by Sundstrand.

The CAFC was wrong in their analysis of this case. When Honeywell was forced to rewrite their dependent claims into independent claims, they were forced to cancel the original independent claims. This caused Honeywell to be unable to claim anything in the original independent claims. Included in these dependent claims was the use of the IGV’s. The court, while claiming that the original independent claims were no longer usable to Honeywell, gave the same reasoning to the subject matter in the dependent claims, which included the IGV’s. This was not fair to Honeywell. In prior cases, it has been established that infringement should be looked at by an element-to-element nature. Had this been properly practiced by the CAFC, they would have looked at the IGV’s in both claims and realized that they were unaltered and therefore belonged exclusively to Honeywell. Nothing in the revision of the independent claims vs the dependent claims changed in relation to the IGV’s. The claims regarding the IGV’s were practically identical. Therefore, it was unfair for the court to toss aside the claims made by Honeywell in regards to the IGV’s due to the discard of the dependent claims.

Since the IGV’s claims were not changed, they do not fall under the estoppel. Since they were unaltered and not narrowed like the other claims, they are available to be subject matter for infringement by Sundstrand.

Honeywell is said to have erred by the non-claiming of the foreseeable technology in their patent. Sundstrand is claiming that their IGV’s were unique a decade after the Honeywell patent while also saying that Honeywell’s technology was foreseeable. This is counter-intuitive. Sundstrand took a decade to develop their IGV system. This time frame makes the claim that Honeywell’s invention included foreseeable technology invalid.