Homework 3: Due Friday February 4

Section 103 of the U.S. Code

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if 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. Patentability shall not be negatived by the manner in which the invention was made.

2 Key Features

As mentioned in the Graham v. John Deere case, there are 2 parts of patent '798 that are different from patent '811 that preceded it:

• 1) "the stirrup and the bolted connection of the shank to the hinge plate do not appear"
• 2) "the position of the shank is reversed, being placed in patent '811 above the hinge plate, sandwiched between it and the upper plate. The shank is held in place by the spring rod which is hooked against the bottom of the hinge plate passing through a slot in the shank"

Arguing a Conclusion for Non-Obviousness

In arguing for a conclusion for non-obviousness, it is important to cite the fact that there was a glaring need to fix the problems that the shanks fishtailed and wobbled and that there was excessive wear on the upper plate because the hinge plate was below the shank. It can be argued that reversing the position of the shank was not an obvious invention for the plow because of the significant impact that this change had on the effectiveness of the plow. Graham first and foremost claimed that this change significantly reduced the amount of wear and tear on the plow. An added bonus that Graham did not originally claim was that the shank was now capable of flexing under stress, which reduced the fishtail and wobbling. This added bonus is the key to non-obviousness. Never before had a plow been made with shanks capable of flexing in order to deal with impact forces. The reversed position of the shank was not only a new idea that was not obvious, it also had consequences that would not have been particularly obvious to someone with ordinary skill in the art.

Supporting a Conclusion of Invalidity

With only the two features being named as differences by the examiner of the patent, it must now be stated why these two differences are not enough for patent '798 to be considered valid under section 103. It should first be noted that Graham's initial patent application for '798 was rejected because the 12 claims were all deemed to be to similar to those claims made in patent '811. Graham's second try at patent '798 was to put explicitly make the two claims that are now in question as stated in Graham v. John Deere. It does not make sense for a person's patent to be rejected one time, but then accepted on the next application because different claims were made despite the fact that the invention remained the same. The reversed position of the shank is really the most glaring point of discussion in declaring patent '798 invalid due to lack of non-obviousness. In patent '811, the arrangement of Graham's shank permitted fishtailing or wobbling. While patent '811, was a valid patent, it was clearly not perfect because of this wobbling or fishtailing. Naturally, Graham attempted to solve this problem by reversing the position of the shank and patent this improved version of the plow. This improvement does not make the patent valid because it is an obvious improvement. Anyone with ordinary skill in this particular art would know that a potential solution to this problem would be to reverse the position of the shank. The examiners argue that the only other logical place for the shank to go, besides where it is in the faulty design of patent '811, would be in the reversed position. Therefore, patent '798 is invalid due to obviousness The Pfiefer patent of 1933 also makes patent '798 invalid due to lack of non-obviousness. Graham's new bolted connection of the shank is first and foremost not really an invention due to lack of novelty. Pfiefer's bolt connection was original and deserving of that patent. Just because Graham used a connection, similar to Pfiefer's but not exactly the same, to connect his shank and hinge plate does not mean that he is deserving of a patent. An examiner would have to believe that anyone looking for a strong connection for a plow in this case, would think of a stirrup and bolt connection like the one cited in patent '798. It should be assumed that anyone with average skill in the art of making plows would think of a connection like the one Graham used, especially since he cited Pfiefer's connection from 1933. The technology existed to promote obvious new ideas.