Nonobviousness, homework for 2/8/2011

The Formation of the Current Standard for Nonobviousness

Section 103 of the Patent Act of 1952 states: “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.” The nonobviousness requirement for patentability as outlined in section 103 is somewhat vague when considered in judicial settings. There has been extensive discussion in the Circuit Courts and in the U.S. Supreme Court that has set precedents for the nonobviousness requirement. This discussion has covered such matters as material substitutions, combinations of old elements in new inventions, changing standards of patentability, the definition of “ordinary skill in the art”, and the relevance of prior art to new inventions. While the Supreme Court tends to avoid producing simplified rules and checklists for patentability and tends favors more expansive and flexible rulings, the discussions in the Courts have set a standard for the nonobviousness requirement in patentability.

The U.S. Supreme Court's decision on Hotchkiss v. Greenwood in 1850 was the first major decision to establish the requirement of nonobviousness for an invention to be patentable. Under consideration in the case was the validity of a patent for a particular type of doorknob. The court determined that the only thing new about the doorknob was the substitution of clay in the place of wood or metal as the material for the knob. The court held that such a simple material substution, even if more effective than other materials, could never be the subject of a patent. The court determined that since there was “no more ingenuity or skill required to construct the knob in this way than that possessed by an ordinary mechanic acquainted with the business, the patent was invalid.”

In the decision on A & P Tea v. Supermarket Equipment in 1950, the Supreme Court outlines standards for inventions consisting of a combination of known elements. The court stated that in order to be patentable, an invention that combines previously known elements must perform some function additional or different than the elements could perform separately. According to the court, the fact that the invention outlined in the patent fulfilled a long-felt want did not in itself make the invention patentable. For these reasons, the court struck down the sliding grocery store rack patent under consideration in A & P.

In sustaining a patent under consideration in Lyon v. Bausch & Lomb, in 1955, the Court of Appeals for the Second Circuit acknowledged the changing standards of patentability. The Court ruled that Lyon’s added step to a process for coating lenses was patentable because it was not "obvious […] to a person having ordinary skill in the art". The most competent workers in the field had been working for ten years to find a process as effective as Lyon’s, and once it was invented, it took control of the field. The Court cited the nonobviousness language in the Patent Act of 1952 as the foundation for its decision, and it acknowledged that if the case had been reviewed in the 20 years before the Act, the patent would have been declared invalid. This decision signaled a shift away from a standard level of inventiveness to a standard of nonobviousness.

In Graham v. John Deere, the U.S. Supreme Court discussed Section 103 of the Patent Act of 1952 at length, emphasizing the shift from “inventiveness” to “nonobviousness”. The Court determined patentability in the case by determining the level of skill necessary to bridge the gap between prior art and the patent under consideration. The Court found no nonobvious distinctions or mechanical differences between the prior art and the patent under considerations, and thus declared the patent to be invalid.

In U.S. v. Adams, the Supreme Court ruled that Adams’ battery patent was nonobvious and valid, confirming that small changes resulting in large consequences are relevant in patent consideration. The Court ruled that since the prior art would have discouraged Adams’ combination, and since experts who initially disbelieved the success of Adams’ combination later recognized its usefulness, the combination was not obvious, and the patent was valid.

In the cases of Anderson's Black Rock, Inc. v. Pavement Co. and KSR v. Teleflex, the Court ruled that the combinations of known elements led to no unexpected or different result. The Supreme Court thus declared that, since the patents under consideration would be obvious to a person of ordinary skill in the art, they were invalid. Neither patent showed a new synergy using the combination of known elements—each element perform together as it would have separately.

In summary, the standards of patentability have changed over the years, and there has been some inconsistency in applying the test of “inventiveness” versus the test of statutory nonobviousness. However, court rulings and legislation have laid a broad foundation for the conditions of nonobviousness. The chief test for nonobviousness was originally laid out Hotchkiss and later codified in the Patent Act of 1952: “if the differences between the subject matter sought to be patented and the prior art […]would have been obvious […] to a person having ordinary skill in the art.” A. & P. established that, in order not to be obvious, combinations of previously known elements must show some additional or different function than the elements could perform separately. The decision delivered in Adams, however, clarified that even small changes can result in large consequences that may not be obvious. A. & P. also established that the invention outlined in the patent fulfilled a long-felt want did not in itself make the invention patentable. The decision in Lyon, acknowledging that it would not have been ruled the same in previous years, stated that though Lyon’s change was simple, it was not obvious, since experts had been looking for a solution to the problem that Lyon’s process solved.