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| ==Links to Assignments == | | ==Links to Assignments == |
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| [[United States Patent 3,643,513 (HW 2-25) (RCTA)]]
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| [[United States Patent 4,424,275 (RCTA)]] | | [[United States Patent 4,424,275 (RCTA)]] |
| (Homework 1) | | (Homework 1) |
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| [[Patentability Case-Study: Tracing Hotchkiss, A.&P., and Lyon (RCTA)]] | | [[Patentability Case-Study: Tracing Hotchkiss, A.&P., and Lyon (RCTA)]] |
| (Homework 2) | | (Homework 2) |
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| === Analysis of ''Hotchkiss v. Greenwood, 52 U.S. 11'' ===
| | [[Two Faces: US v. Adams, 383 U.S. 39 (1966) (RCTA)]] |
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| <p>''Hotchkiss'' required “invention” for patentability, and despite a dissenting opinion, the Court held that the patent in question was invalid because it lacked this inventiveness. As per the case syllabus, “The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void.” The invention had to possess a “degree of skill and ingenuity” beyond that of the “ordinary mechanic acquainted with the business.” In the ''Hotchkiss'' case, the Court held that the clay or porcelain knob in question was not patentable because “the knob of clay was simply the substitution of one material for another,” and that the other parts and their mode of connection were in common use before. In other words, the patent tried to claim as novel what was a “mere substitution” of material. </p><br />
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| <p>Levy’s invention may not have been patentable under the analysis in ''Hotchkiss'', despite the significant technical hurdles present in creating a reliable, efficient, and economically viable continuous fermentation process for n-butanol. One could argue that Levy merely substituted a pre-existing mesh for the continuous adding of bacteria. Indeed, Levy’s invention also relies on an initial inoculum, just as both of referenced patents so require. The devices used in the fermentation are also more similar than the drawings suggest. Wheeler et al use a cascade of fermentation tanks, but while only three are illustrated, the patent recognizes the possible use of many. The cascade becomes a plug-flow reactor in Levy, but plug-flows are analyzed, for practical purposes, as a cascade with many tanks in series. Furthermore, other pieces of the Levy process are nearly identical to those in the Wheeler et al process. Both require two “cooks” (or carbohydrate charges) to enter the first tank that are cooled, with subsequent charges added later. Both also have similar extraction requirements, with the addition that several extraction towers may be used. All of these stages serve the same function in each process. </p>
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| <br /> <p>
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| The most important part of the ''Hotchkiss'' ruling lies in the "inventiveness" requirement. While something could be "better" and "cheaper," it had to go beyond "mere substitution." A trivial improvement could not be an invention. It also illustrates that having a patent does not guarantee property rights.</p>
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| === Analysis of ''A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147'' ===
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| <p>Some of the same considerations would have also barred the patentability of Levy’s invention given the standard set by the ''A.&P.'' Court. Under ''A.&P.'', the patent on a cashier’s counter equipped with a three-sided rack for making grocery store check-out more efficient was held invalid. The Court cited ''Lincoln Engineering Co. of Illinois v. Stewart-Warner Corp.'': “The mere aggregation of a number of old parts or elements which, in the aggregation perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention.” Furthermore, the Court noted, “The conjunction or concert of known elements must contribute something; only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable.” The rationale provided for this test goes back to the primary function of patents: to encourage addition to open knowledge. Therefore, a “patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men” and cannot be allowed to stand as valid. </p> <br /> <p>
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| When the Wheeler et al and Leibmann et al patents are taken together, the Levy process as a whole seems like a combination of parts from the first two patents. The extraction phases of Leibmann et al and Levy are similar. The fermentation phases of Wheeler et al and Levy also are very similar, as previously discussed. Furthermore, all of the individual parts of Levy’s invention do not serve any new function. The condensers, extractors, pipes, fermentation tank, and matrices do the same things that they do in other contexts. There is no change to their “respective functions.” ''A.&P.'' would not allow Levy’s patent to stay valid because it withdraws elements that were already known to the chemical engineering field. While it is an improvement upon Wheeler et al and Liebmann et al, the stringent ''A.&P.'' standard would bar its patentability. </p>
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| === Analysis of modern nonobviousness and closing remarks===
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| <p>In enacting §103 of the U.S. Code, Congress sought to reform the patentability criterion of “inventiveness” that had stood, however confusingly, from the days of ''Lincoln'' and ''A. &. P.''. The Lyon Court recognized that many elements of the process that Lyon used were similar to processes that were used, published, and commonly known in the field before he made his invention. However, most of them “so widely diverged from that of Lyon that under §100(b) they would not serve as anticipations.” Furthermore, even the closest to an “anticipation” did not take the crucial step that Lyon took—the second step that allowed him to create a coating that many people, including the United States Navy, recognized as a pressing need. </p><br /> <p>
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| Similarly, while many of the process steps and devices used in the Levy patent might have been used before, he was able to integrate them in such a way as to satisfy a long-standing need in the field which had never before been adequately addressed. The production and extraction of n-butanol from carbohydrate substrate was not accomplished to an acceptably profitable state. Several aspects of Levy’s invention were important in this respect. The addition of the culture matrix and the recycle methods into his extraction reduced costs significantly. The modern processes of fermentation and extraction of n-butanol all rely on a culture matrix that hearkens back to Levy. Modern processes look strikingly similar to Levy’s device; the arrangements of Wheeler et al and Liebmann et al might have worked in principle and on bench-scale, but industry-scale processes cannot realistically use either one. The arrangement that Levy began is currently being deployed by several companies in pilot-scale plants. The culture matrix, the recycle loop, and the achievement of adjustable flows in the extraction tower were all nonobvious under the requirements of 35 USC 103 as shown under Lyon. </p>
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| <p> The standards of inventiveness or nonobviousness changed significantly between ''Hotchkiss'' and ''A.&P.'' and Lyon. Certain factors that would have served to bar patentability in the past were eased. With regard to ''Hotchkiss,'' cases must be examined closely before “mere substitution” might be used as grounds to bar patentability. The sharp distinction between “aggregation” and “invention” arose at the time of ''A.&P.'', but its restriction has also relaxed, as shown in the discussion pertaining to the ''Lyon'' standard. At the time of ''A.&P.'', patents were viewed as being reserved for very elevated purposes; they had to contribute substantially to scientific advancement. Despite the confusion around the standard for invention, everything was absorbed into nonobviousness with the enactment of 35 USC 103. In short, the ''Lyon'' Court examined the context of the patent closely, and so the ''Lyon'' standard is better at recognizing when significant advances to a particular field are accomplished. From this perspective, the dissenting opinion in ''Hotchkiss'' is closer to the modern standard than what the Court held at the time. Seeing the value in an invention that was similar to something that came before except that it was "better" and "cheaper" ties into today's standard of, among other considerations, meeting a long-felt need in a field.</p>
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| == Two Faces: ''US v. Adams, 383 U.S. 39 (1966)'' (RCTA) ==
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| (Homework 3) | | (Homework 3) |
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| === Case Information ===
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| * UNITED STATES, Petitioner, v. Bert N. ADAMS et al.
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| * Argued Oct. 14, 1965.
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| * Decided Feb. 21, 1966.
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| * companion case to No. 11, Graham v. John Deere Co.
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| === Patent Information ===
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| <p>
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| Adams Patent
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| * Patent 2,322,210
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| * Battery
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| * Patented June 22, 1943
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| * Applied Dec. 18, 1941
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| * Bert N. Adams
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| * 11 claims
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| </p>
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| <p>
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| Wood Patent
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| * Patent 1,696,873
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| * Magnesium Primary Cell
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| * Patented Dec. 25, 1928
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| * Applied Aug. 5, 1925
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| * Robert T. Wood
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| * 9 claims
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| </p>
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| <p>
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| Hayes Patent
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| * Patent 282,634
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| * Chloride of Silver Battery
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| * Patented Aug. 7, 1883
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| * Applied Oct. 21, 1882
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| * Plymmon S. Hayes
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| * 1 claim
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| </p>
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| | [[Historical Development of Nonobviousness (RCTA)]] |
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| === Introduction (Both For and Against) ===
| | [[Suggestion to Combine (RCTA)]] |
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| <p>
| | [[Objective Tests (RCTA)]] |
| According to 35 USC 103, an invention does not meet the non-obviousness requirement of patentability when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” That is, to determine patentability, a court or an examiner must inquire into the scope and content of the prior art; the differences between the prior art and the claims at issue; and the level of ordinary skill in the art.
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| </p> <br /> <p>
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| In this case, we examine two patents to determine the state of the prior art when Adams filed his patent in 1941. The Hayes patent discloses a combination device consisting of a “chloride-of-silver battery” wherein a glass tube encloses a silver wire. The glass tube, Hayes’ the principal claim, prevents unwanted contact between parts of the battery and prevents battery exhaustion when it is not in use. The electrode plates consist of silver and zinc. The battery supplies a considerable electromotive force in a relatively small space, runs longer than its contemporaries, and can use acid solutions or a solution containing a small amount of sodium chloride with distilled water. </p> <br />
| | [[The Inventive Step (RCTA)]] |
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| <p>The Wood patent employs magnesium and a neutral electrolyte. It notes that all previous attempts to use magnesium as a negative electrode were unsuccessful. These previous attempts were desirable though unsuccessful because, while magnesium can provide a higher voltage due to its place near the top of the electrochemical series, it also corrodes rapidly in the standard solutions of the time. Its corrosion is decreased by means of the neutral electrolyte and oxidizing agents in the solution. Wood’s claims include electrolytes containing acids and salts of acids. </p>
| | [[Relationship with Novelty (RCTA)]] |
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| === Engineering Argument for the United States ===
| | [[Other Historical Considerations (RCTA)]] |
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| <p> Given the state of the prior art as reflected in the 1883 Hayes Patent for “Chloride of Silver Battery” and the 1928 Wood patent for “Magnesium Primary Cell,” the 1943 Adams patent for “Battery” does not meet the non-obviousness requirement under 103. The Adams battery simply combines a collection of elements that were old and well known in the prior art. Adams employs magnesium and cuprous chloride electrodes in a solution of pure or salt water to create a functioning battery. The use of magnesium is well within the scope of the prior art as articulated in the Wood patent. Wood taught that the use of magnesium would have certain predictable advantages over other materials, notably in the voltage induced, due to its high position on the electrochemical series. Furthermore, zinc and silver chloride batteries are also old in the art; the Hayes patent discloses one variation and dates from the 19th century. That Adams substituted magnesium for zinc and cuprous chloride for silver chloride was simply the next logical step in the development of higher-voltage batteries. </p> <br />
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| <p>Furthermore, Adams claims that the use of water to run the battery is non-obvious. However, this is incorrect as Hayes patented a battery that could function on a water solution of 2% sodium chloride. Like the Adams battery, the Hayes battery could also produce a constant voltage and current without the use of acids or the generation of dangerous fumes. For the voltage and current available, the Hayes patent was also relatively small. For all of these reasons, the combination that Adams puts forth is not patentable.
| | [[United States Patent 3,643,513 (HW 2-25) (RCTA)]] |
| </p>
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| === Engineering Argument for Adams ===
| | [[Printed Publication (HW 3-23) (RCTA)]] |
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| <p>
| | [[Doctrine of Equivalents (HW 4-4) (RCTA)]] |
| Given the state of the prior art as reflected in the 1883 Hayes Patent for “Chloride of Silver Battery” and the 1928 Wood patent for “Magnesium Primary Cell,” the 1943 Adams patent for “Battery” meets the non-obviousness requirement under 103. The lightweight Adams battery can produce both a constant voltage and current regardless of the rate of current withdrawn and without the use of acids or the generation of dangerous fumes. Furthermore, it was the first practical battery that can be produced, transported, and stored in dry condition while being rendered serviceable by the mere addition of water. The Adams patent also discloses key discoveries that differentiate it from the prior art. </p> <br />
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| <p> While it is true that Hayes discloses a zinc-silver chloride cell that runs with a saline solution, there are several notable differences that would preclude obviousness from the Hayes invention. First, the battery is mechanically prevented from acting upon itself while it is not in use. Secondly, while that battery could function in salt water, it is principally effective in an acid solution. Additionally, neither Hayes nor Wood use magnesium and cuprous chloride electrodes. Wood uses magnesium instead of zinc, but he solved the magnesium corrosion problem with a “neutral electrolyte containing a strong soluble oxidizing agent,” not a system that prevented magnesium corrosion in water. What is most important in the consideration of the obviousness of the Adams battery is that the parts had to function together as a system. This system was both novel and non-obvious. </p> <br />
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| <p> This is clear because the Adams battery had unexpected benefits and considerable advantages over other batteries. One of these benefits was that it was unaffected by temperature. The other patents do not mention a range of effectiveness. Another surprising result is its efficacy despite its continuous action. Prior art teaches that non-continuous batteries are better and that continuous ones (those that act internally despite not being in use) are not practical. Further, that the Adams battery has advantages over other batteries, such as constant power, shows that a mere substitution of components was not at work.
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| </p> <br /> <p>
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| Finally, the Wood patent suggests that the Adams patent also satisfied several secondary conditions that the Court may use in determining non-obviousness. Wood notes that there were substantial attempts to make a viable magnesium battery and that they were unsuccessful. Thus, the Adams battery met a long-felt but unsatisfied need; was appreciated by those versed in the art that the need existed; and there were substantial attempts to meet the need for a magnesium battery.
| | [[Honeywell Ruling (RCTA)]] |
| </p><br />
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| === Other Considerations ===
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| While this information is not included in the other patents, the Court eventually found in favor of Adams. Many secondary considerations contributed: the commercial success of his invention; replacement in the industry by his invention; teaching away by those skilled in the art; and disbelief or incredulity on the part of experts. Adams had to “ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium. These long-accepted factors, when taken together, would, we believe, deter any investigation into such a combination as is used by Adams.”
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| ==Historical Development (RCTA) ==
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| The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.
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| ===Hotchkiss v. Greenwood (1850)===
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| 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''.
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| :...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.
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| :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.
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| :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.
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| :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.
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| :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.
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| :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.
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| <p> ''Hotchkiss'' required “invention” for patentability, and despite a dissenting opinion, the Court held that the patent in question was invalid because it lacked this inventiveness. In other words, while something could be "better" and "cheaper," it had to go beyond "mere substitution" to be considered an invention. A trivial improvement could not be an invention. Though the majority recognized that the doorknob was indeed better, they also determined that it was not sufficiently inventive. However, the dissenting opinion in ''Hotchkiss'' took a more expansive view. Essentially, the dissent argued that an invention should be considered in light of its overall “betterness” or improvement. The dissent recognized the value of the doorknob beyond simple substitution: it was “better,” “cheaper,” and “new.” Furthermore, in citing ''Earle v. Sawyer'', they asserted that skill was immaterial to the invention; that is, anyone could have invented it. </p>
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| <p>With respect to the first argument, the dissent in Hotchkiss is actually closer to the modern standard of non-obviousness than the position adopted by majority. The criteria of “new and better” are echoed in the secondary, though not optional, considerations of meeting a long-felt need in the field and the commercial success of the invention. </p>
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| ===A&P Tea v. Supermarket Equipment (1950)===
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| Under ''A.&P.'', the patent on a cashier’s counter equipped with a three-sided rack for making grocery store checkout more efficient was held invalid. <br />
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| 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.
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| *First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
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| *Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
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| : The Court felt that patents ought to be reserved for very high purposes—that is, “advancing the Arts and Sciences.” Patentable inventions should be difficult and not trivial. They should contribute to important scientific advancement. However, this criterion would later seem too strict to really further the principal motivation behind patents: offering economic incentives to spur development and, ultimately, economic growth.
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| *Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
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| * Fourth, the evolution of the sharp patent law distinction between two former synonyms surfaces again. Whether something is an “aggregation” or a “combination” has distinct legal implications. The Court cited ''Lincoln Engineering Co. of Illinois v. Stewart-Warner Corp.'':
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| :: The mere aggregation of a number of old parts or elements which, in the aggregation perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention.
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| : Furthermore, the Court noted,
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| :: The conjunction or concert of known elements must contribute something; only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable.
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| : This rationale traces back to one of the primary functions of patents: to encourage addition to open knowledge through disclosure. Therefore, a “patent for a combination which only unites old elements with no change in their respective functions […] obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men” and cannot be allowed to stand as valid.
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| <p> Finally, the Court also rejected “a rule for patent cases to the effect that this Court will not disturb a finding of invention made by two lower courts” as fundamentally erroneous. Inventiveness and obviousness are legal matters, and lower courts cannot ever overrule the highest court on legal matters. </p>
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| ===35 USC 103 (1952)===
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| This section of the code was adopted in 1952 and prohibits a patent in a case where
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| :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.
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| ===Lyon v. Bausch & Lomb (1955)===
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| In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
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| :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
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| <p> In enacting §103 of the U.S. Code, Congress sought to reform the patentability criterion of “inventiveness” that had stood since the ''Lincoln'' and ''A.&.P.'' Courts. The ''Lyon'' Court recognized that many elements of the process that Lyon used were similar to processes that were used, published, and commonly known in the field before he made his invention. However, most of them “so widely diverged from that of Lyon that under §100(b) they would not serve as anticipations.” Furthermore, even the closest invention to approach an ”anticipation” of Lyon’s method did not take the crucial step that Lyon took—the second step that allowed him to create a coating that many people, including the United States Navy, recognized as a pressing need. </p>
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| ===Graham v. John Deere (1966)===
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| The Court in ''Graham v. John Deere'' believed, as Congress asserted, that the standard codified in 35 USC 103 is the same as the prior judicial precedent dating from 1850 even though Congress significantly changed the language used. However, In [[Graham v. John Deere, 383 U.S. 1 (1966)]] the Court indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
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| * scope and content of the prior art;
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| * differences between the prior art and the claims at issue;
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| * level of ordinary skill in the pertinent art; and,
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| * secondary considerations, including:
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| ** commercial success of the invention;
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| ** long-felt but unsolved needs;
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| ** failure of others to find a solution, etc.
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| ==== Other Considerations ====
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| * The Court noted that a patent’s file wrapper and prosecution history through the Patent and Trademark Office are matters of import for the Court to consider in an issue of patent dispute.
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| * The Court clarified that the default position is not to grant monopolies. Ideas cannot be controlled, and a monopoly should be reserved for unusual circumstances.
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| * Finally, the entire scope of the field is open to consideration—whether the patent holder and patent examiner were aware of it at the time: “It is also irrelevant that no one apparently chose to avail himself of knowledge stored in the Patent Office and readily available by the simple expedient of conducting a patent search—a prudent and nowadays common preliminary to well organized research.”
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| ===U.S. v. Adams (1966)===
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| * 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.
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| ===Anderson's Black Rock v. Pavement Salvage (1969)===
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| 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.
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| === Historical Summary ===
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| The standards of inventiveness or nonobviousness changed significantly between ''Hotchkiss'' and ''A.&P.'' and ''Lyon''. Certain factors that would have served to bar patentability in the past were eased. With regard to ''Hotchkiss'', cases must be examined closely before “mere substitution” might be used as grounds to bar patentability. The sharp distinction between “aggregation” and “invention” resurfaced at the time of ''A.&P.'', but its restriction has also relaxed, as shown in the ''Lyon'' standard. At the time of ''A.&P.'', patents were viewed as reserved for very elevated purposes; they had to contribute substantially to scientific advancement. Despite the confusion around the standard for invention, everything was absorbed into nonobviousness with the enactment of 35 USC 103. In short, the ''Lyon'' Court examined the context of the patent closely, and so the ''Lyon'' standard is better at recognizing when significant advances to a particular field are accomplished. From this perspective, the dissenting opinion in ''Hotchkiss'' is closer to the modern standard than what the Court held at the time.
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| ==Suggestion to Combine (RCTA) ==
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| [[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.
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| :"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
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| :"[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.
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| <p> ''KSR International Co. v. Teleflex, Inc.'' also dealt with the issue of combinations. In trying to navigate the murky waters of “ordinary skill in the prior art,” the Court of Appeals for the Federal Circuit (CAFC) established the TSM Test. In this test, the Court looks to the field for a combination of ''teaching, suggesting, or motivating'' to combine old elements into the form under scrutiny for patent approval to determine if the combination was obvious at the time. Ideally, the courts would draw the line of obviousness in such a way that it still furthers the ultimate economic purpose of patents and does not deprive the public of knowledge that it can already access and use. The ''KSR'' Court advocated an “expansive and flexible” approach in discerning whether an invention ought to be considered patentable. Unfortunately, this conflicts with the CAFC and PTO’s understandable desire to establish simple, clear rules and checklists. In order to manage the volume of appeals and patents that they process daily, both organizations are often forced to opt for clear and imperfect guidelines over the ambiguous and carefully considered approach of the Supreme Court. However, in choosing quick decisions over drawn-out deliberation, the CAFC and PTO have sometimes confused “necessary” conditions with “necessary and sufficient” conditions. This could allow many patents to issue which would in fact have been obvious, thereby depriving the public of useful knowledge rather than disclosing to it something new. </p>
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| <p> Ultimately, patent law needs to look beyond the listed patents to really serve its purpose. Hints of obviousness might be found in the listed patents, in the state of technology in general, or from somewhere as far removed from the literature as real-world market demands. The PTO and CAFC have to put themselves in the place of inventor. </p>
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| ==Objective Tests (RCTA) ==
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| Two important considerations were the focus of [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375]].
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| *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.
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| *The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court.
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| *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.
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| ==The Inventive Step (RCTA) ==
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| In a footnote to [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]], the Court notes, “[P]atentability as to this requirement is not to be negatived by the manner in which the invention was made, that is, it is immaterial whether it resulted from long toil and experimentation or from a flash of genius.” Nonobviousness is not limited by the moment of invention. All other things being equal, an invention born of a “eureka moment” is as patentable as one birthed through years of careful experimentation and refinement.
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| ==Relationship with Novelty (RCTA) ==
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| Nonobviousness guarantees novelty, but novelty does not guarantee nonobviousness. The ''Hotchkiss'' Court introduced the notion of nonobviousness, and 35 USC 103 codified this idea. Meanwhile, 35 USC 102 describes the manners in which one might lose the right to patent something because the same invention exists elsewhere. 35 USC 102’s novelty criterion is comparatively straightforward. Presentations of documents or product models predating the claimed invention are enough to negate novelty. The PTO and the Court judge things ''as they were'' at the time of invention. Nonobviousness is much more ambiguous because the PTO and the Court must determine how things ''would have been'' at the time prior to the invention without reading the revelations of the patent into the past. That is, if circumstances were such that it would have been trivial to create the invention, then it is obvious. However, if the mix of everything from the literature to market forces to the state of seemingly unrelated fields was such that it would not have been a clear and simple matter to create the invention, then it is nonobvious.
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| ==Nonobviousness vs. Invention (RCTA) ==
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| ==Secondary Considerations (RCTA) ==
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| ==Ordinary Skill in the Art (RCTA) ==
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| [[Reiner v. I. Leon Co. (full text)]]
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| [[Reiner v. I. Leon Co.]]
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| [[South Corp. v. US (full text)]]
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| [[South Corp. v. US]]
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| == Brief of Amici Curiae AMA, ACMG, ASHG, APHMG, and Mayo Clinic in Support of Respondents (Oct. 2, 2009) ==
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| Brief of Amici Curiae American Medical Association, the American College of Medical Genetics, the American Society of Human Genetics, the Association of Professors of Human and Medical Genetics, and Mayo Clinic in Support of Respondents (Oct. 2, 2009)
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| * Interest
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| ** "A basic tenet of medical ethics is that discoveries should and advances in medical care should be shared freely and disseminated openly."
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| ** Join with the government
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| :: Amici join with the government in appealing from the non-medical decision below because the Federal Circuit has more recently used its “machine or transformation” test to approve patents that cover physicians' mental impressions, in ''Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 2009 WL 2950232'' (Fed. Cir. Sept. 16, 2009).
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| * Ruling conflicts with ethical duty and Supreme Court case law
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| * If construed too broadly, Section 101
| | [[Quanta Brief Summary 901330223]] |
| ** Blocks spread of medical knowledge
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| ** Creates unfair monopolies
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| ** Harms patients
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| ** Drives up the cost of healthcare
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| === Argument === | | == Links to Notes == |
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| I. The Federal Circuit's “Machine or Transformation” Test Must Be Applied Properly
| | [[ Brief of Amici Curiae AMA, ACMG, ASHG, APHMG, and Mayo Clinic in Support of Respondents (Oct. 2, 2009) ]] |
| * Instructive, not determinative
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| * Driven instead by more fundamental, historical standards
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| * "it also cannot trump long- applied limits against patent claims that try to pree- mpt the use of fundamental principles"
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| ** Earth and sun
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| ** DNA double helix
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| :: Both processes - which undoubtedly have particular machines and/or transformations that are core to their execution - are unpatentable if they are not limited to some particular application of the principle, because they would cover, and thus “preempt,” every possible implementation that could come from recognizing the fundamental principle. See Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972).
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| II. Public Policy is Well Served by Current Limits on Patentable Subject Matter, Which Preclude Patenting Scientific Data
| | [[Abbott timeline (RCTA)]] |
| * Patents on scientific principles raise ethical concerns for physicians
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| * Patents solely on scientific facts threaten to stifle innovation, including the development of personalized medicine, and to increase health care costs
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| * Patents on scientific principles erode physicians' ability to provide quality patient care
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| ** Thomas Jefferson
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| :: If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keepsit to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it.
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| * L. Lessig, The Future of Ideas: The Fate of the Commons in a Connected World 94 (2001)
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| :: Such is the nature of scientific fact; once known, it must be considered. Quality patient care demands that a physician consider test results in light of, among other things, current medical knowledge.
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| Conclusion: Amici support the conclusion of the Federal Circuit, but caution that the “machine or transformation” test not be allowed to override the Court's traditional standards for patentable subject matter.
| | [[Appellate Brief for Petitioner (January 1939) in The Electric Storage Battery Co., Petitioner, v. Genzo Shimadzu and Northeastern Engineering Corporation, Respondents (RCTA)]] |
