User:Dongxiao

Homework due Monday, 1/24/11 Xiao Dong

• Patent Number: United States Patent 4664372
• Date Issued: 05/12/1987
• Title: Bicycle-type exercise machine
• Link: [1]

This patent describes a bicycle-type exercise machine that has to ability to exercise the arms, shoulders, and legs. The machines includes pedals and flywheel mechanics like a bike for lower body exercising. It also has handle mechanics with resistance for upper body exercising. The machine is very compact, and fits in a housing that can fit in very small spaces. The user will have to provide his/her own sitting arrangement. The machine is small enough for usage inside a car, and has a handle for easy carriage. This machine is very useful as it is both small, and easily portable. It is very helpful for use on a long road trip or traveling, and ability to exercise both upper and lower bodies makes it a great workout machine.

Homework due Monday, 1/24/11 Xiao Dong

• The patent that I choose was Patent no. 4666372, a Bicycle-type exercise machine. The patent citied Patent 3968963, which is a Chair-type bicycle exercise device, and it also citied Patent No 3995491, which is Ergometer. These are just 2 of the patents that were cited among many others. For Patent No 3968963, it was a Chair-type bicycle exercise device. This is a very simple device. It is a described as “bicycle-type pedals are rotatable mounted on a frame in a manner whereby the pedals are rotatable by a user seated in a chair in proximity with the frame. The frame is connected to tracks that can draw the frame into under the chair for further storage.” The other device is the Ergometer, which is a bicycle-type exerciser that includes a flywheel that drives a sprocket and chain. By using permanent magnets on the coil and electromagnetic principals, no external electrical power is needed to power the metering apparatus, and the mechanic work from the operator is enough.
• Under the analysis of Hotchkiss and A&P, the patent that that I choose, the bicycle like exercise machine would not be patentable. As seen in the Ergometer, bicycle like exercise machines have been around for a long time and patented before. The key to the patent that I choose was the fact that it also gives an upper body workout using the handle mechanism and its small size and thus versatility by having the user provides his own sitting arrangement, giving it flexibility to be used everywhere. Under the A&P, it was argued that a merely combination of prior inventions could not be considered a new invention. The patent that I have chosen did exactly this. It combined the small size from Patent 3968963, which is a Chair-type bicycle exercise device, and merely added an upper body workout system with a simple addition of a handle. It could be claimed that the added handle for upper body workout is patentable, but it does not fit the non-obvious clause of the patent law. As shown in Hotchkiss vs Greenword, any simple addition that is obvious to a skilled mechanic is considered obvious, and this handle is very obvious to most general public it seems even, and thus this patent would not be patentable at all.
• However, it would work under the nonobviousness requirement of 35 USC 103 under the Lyon Case. It is said in the Lyon case that if a need or something is required for a longtime in a certain field, but no one solves the problem using available technology. If someone uses an obvious solution, it is still considered a patent. This patent works because of this ruling. The patent that I have chosen fills a requirement long needed by the fitness community. People would always complain about the inability to exercise during long ride trips, and this device is able to deliver a great work out. Also the principal of working out both the upper body and lower body using a simple device is seek by some fitness members as they want a simple machine that can do both. Since this patent shows the first machine that is able to full these needs, it is valid under the Lyon ruling.
• As seen through the differences of ruling from these cases, an evolution of standards has definitely occurred in terms of the code regarding non-obviousness. With Congress passing the Act of 1952, it seems more lenient on patent placement. With the Hotchkiss and A&P cases, an invention was very strictly defined, and hard for many devices that merely combines things and adds simple addition, no matter how useful or out of the box, to be not an invention. With the law, patents are valid for much more circumstances, and places less strict emphasis on being completely more research and technology.

Homework due Friday, 2/4/11 Xiao Dong

• Non obvious:

Patent 811 describes a device designed to absorb shock from the shanks of chisel plows as they plow through rocky soil and thus to prevent damage to the plow. This patent solved this problem by attaching the plow shanks to spring clamps, to allow them to flex freely underneath the frame of the plow. Patent 798 were improvements to the clamp design by placing the hinge plate beneath the plow shank rather than above it, in order to minimize the outward motion of the shank away from the plate. The question that is called is whether the jump from patent 811, prior art, to patent 798 is obvious or non obvious. Although the Anderson’s Black Rock v Pavement Co, and KSP International Co v. Teleflex cases resulted in rulings of obvious from prior art. This case is very different, and should have a different decision. Two major points are different about the Patent 798 than the Patent 811. First, the stirrup and the bolted connection of the shank to the hinge plate do not appear in '811. Second, the position of the shank is reversed, being placed in patent '811 above the hinge plate, sandwiched between it and the upper plate. Although seemingly small, these improvements allow flexing of the plow shank was limited to the points between the spring clamp and the tip of the plow shank, absorbing the shock of hard objects on the ground more efficiently. In the KSP case, the obviousness was due to the combination of two already known systems that provided the benefits. In the Anderson case as well, the combination of two already known old elements resulted in the system. Many people, especially those in the arts, can recognized the benefits of combining the systems. This case is different, the Patent 798 is an upgraded, and much better version of the old patent with many noteworthy and innovative inventions. The positioning of the shank and connections allow for much greater efficiently, and this is not obvious to a person with ordinary skill either. Having the hinge plate reversed is drastically different, having it sandwiched cannot come from a man of ordinary skills as the same with the stirrup and bolted connection as its use is very innovate is these designs. Overall, this new patent is not obvious, and the patent should hold.

• Obvious:

Patent 811 describes a device designed to absorb shock from the shanks of chisel plows as they plow through rocky soil and thus to prevent damage to the plow. This patent solved this problem by attaching the plow shanks to spring clamps, to allow them to flex freely underneath the frame of the plow. Patent 798 were improvements to the clamp design by placing the hinge plate beneath the plow shank rather than above it, in order to minimize the outward motion of the shank away from the plate. The question that is called is whether the jump from patent 811, prior art, to patent 798 is obvious or non obvious. Following the rulings of Anderson’s Black Rock v Pavement Co, and KSP International Co v. Teleflex cases which resulted in rulings of obvious from prior art. Two major points are different about the Patent 798 than the Patent 811. First, the stirrup and the bolted connection of the shank to the hinge plate do not appear in '811. Second, the position of the shank is reversed, being placed in patent '811 above the hinge plate, sandwiched between it and the upper plate. These two improvements should be quite obvious to an ordinary mechanic skilled in the arts. As in the KSR case, “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Any person that had some knowledge would probably easily seen and thought of moving the hinge plate and adding an extra connection. These two differences are very small. Also stated in the Anderson case, “The combination of putting the burner together with the other elements in one machine, though perhaps a matter of great convenience, did not produce a ‘new or different function” Similarly, the new patent 798 did not give a new function to the device, it only was absorbing the shock of hard objects on the ground more efficiently. Such a great convenience from efficiency cant not be called a new function. Following precedent from the previous rulings, this is considered obvious.

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.

The result of this case gave the precedent that a mere substitution of materials is not enough to quality for a patent.

It seemed to be supposed, on the argument, that this mode of fastening the shank to the clay knob produced a new and peculiar effect upon the article, beyond that produced when applied to the metallic knob, inasmuch as the fused metal by which the shank was fastened to the knob prevented the shank from acting immediately upon the knob, it being enclosed and firmly held by the metal; that for this reason the clay or porcelain knob was not so liable to crack or be broken, but was made firm and strong, and more durable.

This is doubtless true. But the peculiar effect thus referred to is not distinguishable from that which would exist in the case of the wood knob, or one of bone or ivory, or of other materials that might be mentioned.

Now if the foregoing view of the improvement claimed in this patent be correct, it is quite apparent that there was no error in the submission of the questions presented at the trial to the jury, for 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 ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor.

Although changing the materials does lead to better use and better quality of the door knob, the novelty of it does not qualify for a patent. It is an improvement of the door knob by switching the materials, not a new invention. As improvements can be done by the work of a skillful mechanic, and not an inventor. This ruling leads to later rulings that if something can be done or is obvious to a person skilled in the arts of the field, then it is not patentable.

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.

35 USC 103 (1952)

This section of the code was adopted in 1952 and prohibits a patent in a case where

the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

Lyon v. Bausch & Lomb (1955)

In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) Learned Hand, in his brilliance, expounded on the new standard thusly:

Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4

Graham v. John Deere (1966)

In Graham v. John Deere, 383 U.S. 1 (1966) indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include

• scope and content of the prior art;
• differences between the prior art and the claims at issue;
• level of ordinary skill in the pertinent art; and,
• secondary considerations, including:
  • commercial success of the invention;
  • long-felt but unsolved needs;
  • failure of others to find a solution, etc.

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.

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.

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.

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.

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