Nonobviousness: LMiller's Page

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 show “originality and usefulness.” This case basically established the notion that there had to me more to it, some sort of threshold for “inventiveness,” which ultimately became the idea of nonobviousness.

The invention in question was a clay knob with a metal shank. The shape of the entire knob setup was not new, and neither were knobs made out of potter’s clay. The novelty of the invention consisted in the substitution of the clay material of the knob in the place of one made of metal or wood, allowing the shank to still be made of metal. As a side note, the case could become a different issue entirely if clay had NOT been used in knobs before. If this were the case, it could be urged that an “old contrivance” of a knob using a new composition of matter, resulting in a new and useful article, was the proper subject of a patent.

The novelty of the invention consisted 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.

As mentioned previously, the knob is not new, nor the knob setup including the metallic shank and spindle and the dovetail form of the cavity in the knob. The means by which the metallic shank is securely fastened is also not new. 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.

It could be argued that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced that is better and cheaper than the metallic or wood knob. However, this does not result from any new mechanical device or contrivance, but from the fact that the clay material of the knob happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, which is NOT new, over that previously employed in making the knob.

Using a different material can never be the subject of a patent. If a machine were made of materials better than the materials of which the old one was constructed, even if the new materials made the machined better and cheaper, that would not entitle the manufacturer to a patent. The difference is “destitute of ingenuity or invention.” While some judgment and skill may be required in the selection and adaptation of the materials for the purposes intended, this improvement is “the work of a skillful mechanic, not that of the inventor.”