User:Rabot

United States Patent 4,424,275

(Homework 1)

Logistics

• Patent 4,424,275
• Continuous Process for Producing N-Butanol Employing Anaerobic Fermentation
  • Issued: Jan. 3, 1984 (Filed: Aug. 3, 1981)
• Inventor: Sidney Levy

The Invention

From its inception, the fermentation of n-butanol from carbohydrate-containing substrate was hampered by several problems, the largest of which was the maximum n-butanol concentration of 2.5% in the fermentation broth, at which point it became toxic to the butanol-producing bacteria. The aims of this invention were to address these shortcomings in the old batch-reactor processes as well as introduce a continuous process for the production of solvents by anaerobic (oxygen-free) fermentation of substrates that contained sugars. The invention is both a process that allows for the continuous production of solvents and their extraction as well as an apparatus for conducting this process. It allows for the continuous production of n-butanol using various substrates and extraction solvents while achieving higher n-butanol concentrations and reusing the extraction solvents.

I found this patent interesting because butanol has many advantages over ethanol as an alternative, biologically-based fuel source and because I have worked in refining. It will be interesting to explore other inventions, including bacteria cultures and devices, and to see how this technology is being employed in several pilot plants. I found the patent while searching Google Patents: [1]. Google Patents includes the patent overview and documentation: [2]. The drawings are particularly interesting: [3].

Rabot 23:23, 23 January 2011 (EST)

Patentability Case-Study: Tracing Hotchkiss, A.&P., and Lyon

(Homework 2)

Cited Patents

• Patent 2,389,263
• Method of Producing 2:3 Butanol
• Patented Nov. 20, 1945
• Alfred J. Liebmann and George de Becze
  • Assignors to Schenley Distillers Corporation, NY

• Patent 1,875,536
• Continuous Butyl Alcohol Fermentation Process
• Patented Sept. 6, 1932
• Maynard C. Wheeler and Charles D. Goodale
  • Assignors to Commercial Solvents Corporation, IN

Disclosure

Sidney Levy’s 1984 patent cites the 1932 patent of M. C. Wheeler et al, “Continuous Butyl Alcohol Fermentation Process,” and the 1945 patent of A. J. Liebmann et al, “Method of Producing 2:3-Butanediol.” For the purposes of this analysis, I will assume that the Wheeler patent would not have interfered with the Liebmann patent given the analyses of Hotchkiss and A.&P., even if this is not the case. All three patents claim processes for fermentation and extraction of a desired substance from a fermentation brew. In the Liebmann et al patent, the aim is to produce a “substantially pure 2:3 butylene glycol (Col. 1, lines 2-3) while greatly reducing “the cost of extraction of the butylene glycol from a fermented beer which contains said glycol” (Col. 1, lines 13-16). The claims in the Wheeler et al patent are much closer to the claims of Levy’s patent. Like Levy, Wheeler et al disclose a “continuous process for the fermentation of carbohydrate-containing mashes by means of butyl alcohol producing bacteria” (lines 1-4). They also treat the production of n-butyl alcohol and other common products through micro-organisms such as Clostridium acetobutylicum; this is also similar to the Levy patent. Furthremore, both Wheeler et al and Levy hope to address common shortcomings in old batch-reactor acetobutylicum processes while also claiming under a patent a continuous process for the production of solvents by fermentation of carbohydrate substrates. Liebmann et al claim a fermentation and extraction, but their patent pertains to a different product with very different properties and is produced by an organism that behaves differently. Furthermore, the Liebmann et al patent claims both batch and continuous processes where Levy and Wheeler et al’s patents both pertain to continuous processes exclusively. All three patents claim both a process that allows for the continuous production of solvents and their extraction as well as an apparatus for conducting this process. Both Wheeler et al and Levy allow for the continuous production of n-butanol using various substrates and extraction solvents while achieving higher n-butanol concentrations and using various extraction solvents.

For the criterion of nonobviousness, it is important to note the following aspects of each patent. All patents give general descriptions of which fermentation agents and solvents can be employed in the process at each stage, but they also relate specific constraints and examples of each class. The Levy patent describes a continuous process that involves one tubular reactor, consisting of concentric tubes, and an extraction column. Condensers and feed tanks are employed as needed. One of the concentric tubes of the reactor contains a matrix that serves to immobilize the fermenting bacteria. Liebmann et al disclose a method for fermentation and concentration of a butylene-glycol-containing beer, followed by the recovery, extraction, and precipitation of the butylene-glycol. The process can be conducted continuously, as semi-batch, or batch. The process primarily involves separating the beer into a solvent phase and a semi-sludge phase. Each is then treated with solvents. The emphasis is upon the extraction portion of the process and not the fermentation. Several examples of both batch and continuous processes are given.

The device disclosed by Wheeler et al is closer to Levy’s invention. Both start with a coarse carbohydrate meal that is diluted to 8% in water. It is pressure cooked in steam and then cooled to 37°C. The mash is then inoculated with the fermenting culture at 2% by volume. New mash is added at intervals. The device differs primarily in its lack of a culture matrix and in the use of a series of tanks rather than a large plug-flow tank.

Analysis of Hotchkiss v. Greenwood, 52 U.S. 11

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.

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.

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.

Analysis of A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147

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.

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.

Analysis of modern nonobviousness and closing remarks

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.

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.

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.

Two Faces: US v. Adams, 383 U.S. 39 (1966)

(Homework 3)

Case Information

• UNITED STATES, Petitioner, v. Bert N. ADAMS et al.
• Argued Oct. 14, 1965.
• Decided Feb. 21, 1966.
• companion case to No. 11, Graham v. John Deere Co.

Patent Information

Adams Patent

• Patent 2,322,210
• Battery
• Patented June 22, 1943
• Applied Dec. 18, 1941
• Bert N. Adams
• 11 claims

Wood Patent

• Patent 1,696,873
• Magnesium Primary Cell
• Patented Dec. 25, 1928
• Applied Aug. 5, 1925
• Robert T. Wood
• 9 claims

Hayes Patent

• Patent 282,634
• Chloride of Silver Battery
• Patented Aug. 7, 1883
• Applied Oct. 21, 1882
• Plymmon S. Hayes
• 1 claim

Introduction (Both For and Against)

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.

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.

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.

Engineering Argument for the United States

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.

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.

Engineering Argument for Adams

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.

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.

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.

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.

Other Considerations

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.”

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.

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.