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.”

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, such as:

• whether the combination of old elements could constitute an invention,
• if the fact that a device meets a “long felt but unsatisfied need” could meet a standard of nonobviousness, and
• if patent protection should be reserved for devices at the frontier of science and engineering and not “wasted” on mundane articles such as plows.

The invention at issue in this case was a cashier’s counter, to be used in a grocery store, which moves groceries along it from where the customer places the groceries to the cashier. These counters had been widely and successfully used beforehand. While each element of the invention was known beforehand to “prior art,” the concept of a counter with an “extension” was decided to constitute a “new and useful combination.”

The Supreme Court, in its decision, first pointed out that the extension of the counter in and of itself does not constitute an invention for the following reasons:

• The extension is not mentioned in any of the patent’s claims
• Even if the extension were mentioned in the claims, it would not constitute an invention because changing the dimensions of a countertop is a contrivance that any vendor/user of the counter would do to suit the needs of the merchant
• Even if the extension were patentable, the counter still wouldn’t be patentable because it simply was a combination of old elements

This left the question as to what sort of invention would be patentable, if nothing tangible was new and the only inventiveness present was in bringing old elements together. The Court points out that there had never been a PRECISE definition of what sort of test should be used to determine the patentability of combination patents (which have been sustained before). Generally, however, it is agreed that the combination must perform some “new or different function;” namely, the whole must exceed the sum of the parts. It was found that the invention in question is wanting of such an effect, and the extension of the counter does not add any new functions to the invention.

The owner of the patent argued that the patentability of the invention lies in (extensive) evidence that “this device filled a long-felt want and has enjoyed commercial success.” The Court, in reply, stated that commercial success and meeting a need do not make an invention patentable if there is no “inventiveness” in it. While the addition of a counter expansion made the invention better for business, many “ideas in business are not patentable.” Thus, the patent was declared invalid.

The third issue called into question during this case was actually addressed in the concurring opinion at the end. Justice Douglas believed that the invention wasn’t patentable for an entirely different reason. Douglas stated that the point of patent protection is to encourage innovation in science and engineering, and thus serve a higher end than protecting every little idea people come up with. He then basically started to complain about how far the Court has fallen, to have to argue over something so trivial as counter extensions.

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.

It is worth noting that this addition to the US Code was described as simply putting into writing the precedents that had been consistently used by the Courts beforehand. At the same time, it is widely accepted that Section 103, while complying with the precedents, keeps with the spirit of the Constitution and the purposes which the founders, specifically Thomas Jefferson, intended for the patent system: namely, that there be a balance between rewarding those who promote the progress of Science and engineering and between avoiding a monopoly on ideas.

Lyon v. Bausch & Lomb (1955)

In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) the main issue at hand lied in the application of the Act of 1952, which adopted §103 of the US Code.

The invention in question is a process involving the coating of lenses with an inorganic salt to prevent reflection and scratching of the lens. While this process had been used before, the new part of this invented process was keeping the workpiece heated before, during and after the process, whereas before it was not heated during the coating process. In question was whether this added step was enough to warrant a patent.

On one hand, if this case had come up twenty or thirty years ago, the step would be enough to support a patent. It met a long-felt need that, for years, no one had been able to fill or come up with a satisfactory solution. This meant that the change to the process, however small, could not have possibly been obvious because it would have been discovered beforehand.

On the other hand, under the now-codified Section 103, the invention would be found invalid. Learned Hand, the judge delivering the opinion, stated that:

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

In the end, they decided that they could not retroactively apply the law to this invention, and it was upheld.